Ex Parte Vemireddy et al

Patent Trial and Appeal Board

Oct 23, 2017

13345336 (P.T.A.B. Oct. 23, 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.
13/345,336 01/06/2012 Madhavi Vemireddy 709409 4284
23460 7590 10/25/2017
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MADHAVI VEMIREDDY, NIK NANIS,
KIMBERLY PAUL, KIRAN UBRIANI, DEREK JACKSON,
and MUKESH KITAWAT
Appeal 2016-006047
Application 13/345,336
Technology Center 3600
Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—9 and 15—21. Claims 10—14 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-006047
Application 13/345,336
Representative Claim
1. A method, comprising:
electronically querying, by a rules engine module included in a
computer system, a set of clinical rules from available evidence-based
medical standards stored in a database on a non-transitory computer readable
medium;
interfacing, by a real-time application messaging module included in
the computer system, with at least one network service for receiving medical
care information relating to a plurality of patients, the at least one network
service having real-time access to at least one source of data, including
claims data containing clinical information relating to the plurality of
patients;
prioritizing, by the rules engine module, at least one patient for care
management from the plurality of patients based on the claims data
containing clinical information relating to the patient and based on a product
score for a care management program, wherein the product score quantifies
an opportunity for outreach for the care management program;
compiling, by the rules engine module, a list of markers associated
with the patient based on the claims data containing clinical information
relating to the patient;
generating, by the rules engine module, a plurality of clinical alerts for
the patient using the claims data containing clinical information relating to
the patient;
receiving, by an alert payload filtering module included in the
computer system, the plurality of clinical alerts;
eliminating, by the alert payload filtering module, from the plurality
of clinical alerts, duplicate alerts generated as a result of applying the same
clinical rule and duplicate alerts generated as a result of applying different
clinical rules that are associated with the same alert; and
delivering, by a message transmit web service, at least one clinical
alert to the patient.
Rejection
Claims 1—9 and 15—21 are rejected under 35 U.S.C. § 101 as being
directed to a judicial exception.
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Application 13/345,336
Grouping of Claims
Based on Appellants’ arguments (App. Br. 10-15), we decide the
appeal on the basis of representative claim 1.
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own the findings, legal conclusions, and explanations, as set forth in the
Ans. (3—7) in response to Appellants’ arguments. (App. Br. 10-15; Reply
Br. 2—7). We highlight and address specific findings and arguments for
emphasis in our analysis below.
Issue: Under § 101, did the Examiner err in concluding claim 1 is
directed to patent-ineligible subject matter?1
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
The Supreme Court, however, has long interpreted § 101 to include an
implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S.
Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks
omitted)). In Alice, the Supreme Court set forth an analytical “framework
for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
1 We consider the claims as a whole and give the claim limitations the
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-79 (2012)).
The first step in our analysis is to determine whether the claims at
issue are directed to a patent-ineligible concept, such as an abstract idea. See
Alice, 134 S. Ct. at 2355.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether [there
are] additional elements [that] ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 78—79).
In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting
Mayo, 566 U.S. at 72-73).
Alice — Step One
Here, regarding the judicially created “abstract idea” exception {Alice,
Step One), Appellants argue Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016) (hereinafter “Enfish”) “provides additional information and
clarification on the inquiry for identifying abstract ideas” (Reply Br. 2) and
contend, inter alia:
The present claims are directed to a specific implementation of
a solution to a problem in the software arts, and not to general-
purpose computer components that are added after the fact to a
fundamental economic practice or mathematical equation.
Looking to the specification, as the Federal Circuit did in
Enfish, the present application describes at paragraph [0017]
that “[t]o facilitate the real-time delivery of alerts, the alert
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Application 13/345,336
payload filtering module reduces the real-time alert payload by
filtering the alert input to the real-time application messaging
module by a plurality of conditions and categories . . . [i]n
addition to improving the speed of real-time delivery of alerts,
alert filtering eliminates redundant alerts and helps to focus the
recipient’s attention on the important alerts” (emphasis added).
Similar to how the claims of Enfish increased flexibility and
provided faster search times, the claims of the present
application improve the speed of real-time delivery of alerts.
Rather, the claims are directed to an improvement in existing
computer technology.
(Reply Br. 4—5).
We find Appellants’ arguments unpersuasive. We conclude claim 1 is
directed to performing generic computer functions on certain data. We note
the Supreme Court in Alice cautions that merely limiting the use of an
abstract idea “to a particular technological environment” or implementing
the abstract idea on a “wholly generic computer” is not sufficient as an
additional feature to provide “practical assurance that the process is more
than a drafting effort designed to monopolize the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (internal quotation marks and citations omitted).
Here, we conclude Appellants’ claim 1 is distinguishable from the
type of claim considered by the court in Enfish because Appellants’ claim 1
is not “directed to an improvement in the functioning of a computer,” as was
found by the court regarding the subject claim in Enfish, 822 F.3d at 1338.
The Examiner finds, and we agree:
The abstract idea is identified as: patient care plan
management and processing information. Patient care plan
management is an abstract idea because it includes
certain methods of organizing human activities (e.g., providing
healthcare by alerting patients regarding their care management
program) and is a fundamental economic practice. Processing
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information is an abstract idea because it uses categories to
organize, store, and transmit information, etc.; collects and
compares known information; obtains and compares intangible
data; compares new and stored information (for example, claim
1 recites receiving medical care information, prioritizing (i.e.,
categorizing) patients based on clinical information, compiling
markers based on clinical information, delivering alerts (i.e.,
transmitting data, etc.); and/or uses mathematical
relationships/formulas (for example, claim 1 recites
prioritizing based on scores, etc.), etc.
Ans. 4.
Thus, we conclude claim 1 is directed to an abstract idea because the
claimed method uses mathematical relationships to manipulate data (e.g.,
prioritize based on a product score) to generate additional information (e.g.,
generate a clinical alert). See Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1350—51 (Fed. Cir. 2014) (holding that “a
process of organizing information through mathematical correlations . . . not
tied to a specific structure or machine” is an abstract idea). See also Enfish
(fundamental economic and conventional business practices are often found
to be abstract ideas, even if performed on a computer). See, e.g., OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015).
For at least these reasons, we conclude representative claim 1 is
directed to an abstract idea. {Alice — Step One).
Alice — Step Two
Proceeding to step two of the Alice test articulated by the Supreme
Court, we further “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
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‘transform the nature of the claim’ into a patent-eligible application.” Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
Regarding step two of the Alice analysis, Appellants contend, inter
alia:
The fact that the claimed invention improves a technical field
and does perform processing in a typical way to achieve a
predicable result is evidenced by the lack of prior art teaching
or suggesting such processing, as stated in the final Office
action dated April 23, 2015 at page 2. Specifically, the
Examiner stated that “claim 1-9 and 15-21 ... appear to include
allowable subject matter” (final Office action dated April 23,
2015, p. 2).
(Reply Br. 6).
Although the second step in the Alice!Mayo analysis includes a search
for an inventive concept, the analysis is not an evaluation of novelty or
nonobviousness, but rather a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 73). A novel and nonobvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90. Further, “under the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
We agree with the Examiner’s findings and conclude the nature of
Appellants’ claims is not transformed into a patent-eligible application of
the abstract idea presented, because these claims do nothing more than
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Application 13/345,336
simply instruct the practitioner to implement an abstract idea “to perform
generic computer functions.” Ans. 4.
Instead, we conclude Appellants’ claims are broadly directed to
abstract general concepts of calculating numerical functions on certain data
in the context of generating an alert. See Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). “[MJerely selecting
information, by content or source, for collection [and] analysis . . . does
nothing significant to differentiate a process from ordinary mental
processes.” (Id.)
We conclude Appellants’ representative claim 1 is directed to a
patent-ineligible abstract concept, and does not recite something
“significantly more” under the second step of the Alice analysis.
Accordingly, for the reasons discussed above, we sustain the Examiner’s
rejection under 35 U.S.C. § 101 of representative claim 1, and grouped
claims 2—9 and 15—21, as being directed to patent-ineligible subject matter in
light of Alice and its progeny. See Grouping of Claims, supra.
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Application 13/345,336
DECISION
We affirm the Examiner’s rejection of claims 1—9 and 15—21 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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