Ex Parte Tribble et al

Patent Trial and Appeal Board

Aug 17, 2017

13399092 (P.T.A.B. Aug. 17, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/399,092 02/17/2012 Dennis Tribble 03946/000117-US3 6910
118075 7590
K&L Gates LLP-Chicago
Baxter
P.O. Box 1135
Chicago, IL 60690-1135
EXAMINER
RAJ, RAJIV J
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/21/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS TRIBBLE, JOEL A. OSBRONE,
ABDUL WAHID KHAN, MATTHEW VALENTINE, and
BHAVESH PADMANI
Appeal 2015-008278
Application 13/399,092
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Pursuant to 37 C.F.R. § 41.52, Appellants filed a Request for
Rehearing on July 31, 2017 (“Req. Reh’g”) seeking reconsideration of our
Decision on Appeal mailed June 13, 2017 (“Dec.”), in which we affirmed
the Examiner’s decision to reject claims 1—18 and 32 under 35U.S.C. § 101
Appeal 2015-008278
Application 13/399,092
as directed to non-statutory subject matter.1 We have jurisdiction over the
Request under 35 U.S.C. § 6(b).
ANALYSIS
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a). Arguments not raised and evidence not previously
relied upon in the briefs on appeal are not permitted, except in the limited
circumstances set forth in §§ 41.52(a)(2)—(4). In particular, § 41.52(a)(2)
allows an appellant to present a new argument based upon a recent relevant
decision of either the Board or a Federal Court.
Pursuant to § 41.52(a)(2), Appellants argue that claims 1—18 and 32
are patent-eligible in view of the Federal Circuit’s decision in BASCOM
Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016). Req. Reh’g 2. More particularly, Appellants contend that
BASCOM provides guidance in relation to the second step of the two-step
framework for determining patent-eligibility. Id. We have considered
Appellants’ arguments in light of BASCOM, and, for the reasons set forth
below, we conclude BASCOM does not alter our determination that,
pursuant to the second step of the patent-eligibility analysis, the claims do
not include inventive concept—an element or combination of elements
sufficient to ensure that the claim amounts to significantly more than the
1 We also reversed the Examiner’s decision to reject claims 1—18 and 32
under 35 U.S.C. § 103(a). Appellants seek reconsideration of only the
affirmed rejection under § 101. Req. Reh’g. 2.
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abstract idea and to transform the nature of the claim into a patent-eligible
concept.
Appellants argue that, in BASCOM, the Federal Circuit held a
specific, discrete implementation of an abstract idea is patent-eligible even if
the underlying process itself is an abstract idea not eligible for patent
protection. Req. Reh’g 4. As such, Appellants assert that, like the claims in
BASCOM, the present claims, as an ordered combination, recite an inventive
concept under the second step of the patent-eligibility analysis because the
claims represent a specific, discrete implementation of the abstract idea of
“receiving & managing dose order preparation.” Id. at 4—8. According to
Appellants, “[comparing the specificity of the present claims regarding the
process of management of dose orders to the claims of BASCOM regarding
filtering content, the present claims are at least as specific as those recited in
BASCOM.” Id. at 5.
Contrary to Appellants’ arguments, the Federal Circuit did not find
that the claims in BASCOM recited an inventive concept because the claims
recited a specific implementation of the abstract idea of filtering content.
Rather, in BASCOM, the Federal Circuit followed the Supreme Court’s
guidance for determining whether the claims recite an inventive concept set
forth in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347,
2357-60 (2014).
In Alice, the Supreme Court explained that, under the second step of
the patent-eligibility analysis, “the relevant question is whether the claims
here do more than simply instruct the practitioner to implement the abstract
idea of intermediated settlement on a generic computer.” 134 S. Ct. 2347,
2359 (2014). The Supreme Court also provided examples of claims that
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represent more than instructions to implement an abstract idea on a generic
computer, such as claims that purport to improve the functioning of the
computer itself and claims that effect an improvement in any other
technology or technical field. Id. at 2359—60.
Turning to BASCOM, the Federal Circuit held “[t]he inventive
concept described and claimed in the ’606 patent is the installation of a
filtering tool at a specific location, remote from end-users, with
customizable filtering features specific to each end user.” 827 F.3d at 1350.
In determining this feature to be an inventive concept, the Federal Circuit
explained that the remote location of a filtering tool having customizable
user-specific filtering features provides the filtering tool both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server and
is a technical improvement over prior art ways of filtering content. Id. at
1350—51. Notably, the Federal Circuit specifically determined that “the
claims may be read to ‘improve[] an existing technological process.’” Id. at
1351 (citing Alice, 134 S. Ct. at 2358).
Furthermore, in discussing recent case law regarding the second step
of the patent-eligibility analysis, the Federal Circuit emphasized that the
claims of the ’606 patent are a technical solution that improves computer
technology. For example, in analogizing the claims of the ’606 patent to the
patent-eligible claims in DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d
1245 (Fed. Cir. 2014), the Federal Circuit explained:
[A] 1 though the invention in the ’606 patent is engineered in the
context of filtering content, the invention is not claiming the idea
of filtering content simply applied to the Internet. The
’606 patent is instead claiming a technology-based solution (not
an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on
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the Internet that overcomes existing problems with other Internet
filtering systems. By taking a prior art filter solution (one-size-
fits-all filter at the ISP server) and making it more dynamic and
efficient (providing individualized filtering at the ISP server), the
claimed invention represents a “software-based invention^ that
improve[s] the performance of the computer system itself.”
Id. at 1351 (citations omitted). Similarly, in the claims of the
’606 patent from claims that lack an inventive concept, the Federal Circuit
explained that, unlike the claims of the ’606 patent, the claims lacking an
inventive concept do not provide a specific technical solution apart from
using generic computer concepts in a conventional way to cany out the
abstract idea. Id. at 1351—52.
Accordingly, in BASCOM, the Federal Circuit premised its
determination that the claims of the ’606 patent include an inventive concept
on the fact that the claims represent a technical improvement to filtering
content on the Internet, not on the specificity of the claimed filtering
scheme, as Appellants suggest. As such, the present claims having a
similarly specificity to those claims in BASCOM does not apprise us of error
in our determination that the present claims lack an inventive concept.
Appellants further rely on the specifics of the claimed method and
argue that the management of dose orders by processing dose orders at a
monitoring computer in a network and distributing the orders to
workstations in the network according to a priority based on a comparison of
a dose order record to an inventory record by the monitoring computer is not
a conventional activity performed on a generic computer. Req. Reh’g 6—7.
According to Appellants, the fact that there are no prior art rejections of the
claims under 35 U.S.C. § 102 or § 103 supports Appellants’ contention that
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the claims, as an ordered combination, include non-conventional activities.
Id. at 7. We disagree.
At the outset, we note that novelty is not the standard for an inventive
concept. In considering whether the claims recite an inventive concept
pursuant to the second step of the patent-eligibility analysis, the Federal
Circuit has held: “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016).
Furthermore, as set forth in our Decision on Appeal and unrefuted by
Appellants, the specific steps of the claims do not separate the claimed
method from the abstract idea of “receiving & managing dose order
preparation” under the first step of the patent-eligibility analysis. Dec. 5.
Turning to the second step, in considering the claims individually and as an
ordered combination, we fail to see how the specific steps recited in the
claims improve the functioning of a computer or some other technology.
Instead, the particulars of the claimed method improve the management of
dose orders, which is untechnical. Id. at 10. Consequently, as set forth in
the Decision on Appeal, the claims do not recite something apart from the
generic computer implementation of the abstract idea of “receiving &
managing dose order preparation,” which is not an inventive concept
sufficient to confer patent-eligibility. Id. at 10—11.
Appellants also contend that the claims recite an inventive concept
because they do not preempt all applications of the abstract idea of
“receiving & managing dose order preparation.” Req. Reh’g 4—5. Although
preemption may be the concern driving the exclusion of abstract ideas from
patent-eligible subject matter, preemption is not the test for eligibility. “The
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Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2354).
In view of the foregoing, the Federal Circuit’s decision in BASCOM
does not affect our determination that the claims do not recite an inventive
concept pursuant to the second step of the patent-eligibility analysis. As
such, Appellants do not apprise us of error in our determination that the
claims are directed to non-statutory subject matter, and we, therefore,
decline to modify our decision affirming the Examiner’s decision to reject
claims 1—18 and 32 under 35 U.S.C. § 101.
DECISION
We have reconsidered our Decision on Appeal in light of Appellants’
Request for Rehearing, and we deny Appellants’ request to modify our
original Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
DENIED
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