Ex Parte Wiley et al

Patent Trial and Appeal Board

Feb 13, 2019

14221415 (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/221,415 03/21/2014
68820 7590 02/15/2019
Frisina, LLC
4600 Euclid Ave. Suite 420
Cleveland, OH 44103
FIRST NAMED INVENTOR
Paul Wiley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
14011002.001 4219
EXAMINER
REICHERT, RACHELLE LEIGH
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/15/2019 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):
dominic @FrisinaIP.com
assistant@FrisinaIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL WILEY, MATTHEW LEVINE, and AARON LLOYD
Appeal2018-000658
Application 14/221,415 1
Technology Center 3600
Before STEPHEN C. SIU, DAVID M. KOHUT, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-17. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify the real party in interest as Opargo, LLC. Br. 3.
Appeal2018-000658
Application 14/221,415
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
"scheduling patients in a medical practice." Spec. ,r 1. More specifically, in
a disclosed embodiment, scoring parameters are used to calculate a patient
score for each patient. Spec. ,r 27. Patients are prioritized and ranked (i.e.,
assigned a patient bucket) based on the calculated patient scores. Spec. ,r 27.
Appointment times with a healthcare provider are divided into time ranges
which may be associated with a set of rules governing, for example, the
allowed proportion of patients from each patient bucket. Spec. ,r 27.
Patients are assigned a time range consistent with the proportioning rules
associated with the time range. Spec. ,r 27. According to the Specification,
specific scoring parameters may differ from one embodiment to another and
may include quantitative and/or qualitative data. Spec. ,r 28. Appellants set
forth exemplary scoring parameters such as: (i) the patient bucket to which
the patient has been assigned; (ii) whether the patient is a new or existing
patient; and (iii) the urgency of the requested medical care. Spec. ,r 28.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A process for scheduling patients in a medical practice to
achieve a set of predetermined scheduling goals of the practice,
comprising the steps of:
collecting a set of scoring parameters for scoring a
patient;
assigning a numerical quantity to each scoring parameter
according to a set of predetermined scoring rules;
calculating a patient score as an average of the scoring
parameters;
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defining a set of patient score ranges, each range
comprising a patient bucket;
assigning the scored patient to a patient bucket according
to the patient's score;
dividing available appointments into time ranges
measured relative to the present time, wherein each time range is
associated with a set of rules governing the allowed percentage
of patients from each patient bucket; and
assigning the scored patient to an appointment without
violating any rules governing the allowed percentage of patients
from each patient bucket.
The Examiner's Rejections
1. Claims 1-17 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2-5.
2. Claims 1-5, 8, and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Vaccaro et al. (US 2013/0096934 Al; Apr. 18, 2013)
("Vaccaro"); Wachtell et al. (US 2010/0312581 Al; Dec. 9, 2010)
("Wachtell"); Abraham-Fuchs (US 2005/0182663 Al; Aug. 18, 2005)
("Abraham-Fuchs"); Larsen et al. (US 2006/0047554 Al; Mar. 2, 2006)
("Larsen"); and Chiu et al. (US 2013/0197942 Al; Aug. 1, 2013) ("Chiu").
Final Act. 5-12 and 20-21.
3. Claims 6 and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Vaccaro, Wachtell, Abraham-Fuchs, Larsen, Chiu, and
Amberg et al. (US 2012/0173259 Al; July 5, 2012) ("Amberg"). Final
Act. 12-13.
4. Claims 7 and 10 stand rejected under 35 U.S.C. § 103 as
unpatentable over Vaccaro, Wachtell, Abraham-Fuchs, Larsen, Chiu, and
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Application 14/221,415
Prasad et al. (US 2014/0297318 Al; Oct. 2, 2014) ("Prasad"). Final
Act. 13-15.
5. Claims 11 and 17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Vaccaro, Wachtell, Larsen, and Chiu. Final Act. 15-18.
6. Claims 12-14 and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Vaccaro, Wachtell, Larsen, Chiu, and Wilkerson et al.
(US 2014/0100866 Al; Apr. 10, 2014) ("Wilkerson"). Final Act. 18-20.
ANALYSIS 2
Re} ection under 3 5 US. C. § 101
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter. Br. 10-13. In particular,
Appellants argue the Examiner failed to consider the claims as written (i.e.,
the Examiner "has improperly rewritten the claim elements") and as a whole
in determining the claims are directed to a judicial exception. Br. 11-12.
Appellants assert the claimed invention is not directed to an abstract idea
(e.g., a fundamental economic practice, a method of organizing human
activity or a mathematical formula), but is instead directed to "a concrete
scheduling method and machine." Br. 11-12. Moreover, Appellants assert
the claims recite "significantly more" than the alleged abstract idea. Br. 12.
2 Throughout this Decision, we have considered the Appeal Brief, filed
June 12, 2017 ("Br."); the Examiner's Answer, mailed August 10, 2017
("Ans."); and the Final Office Action, mailed October 11, 2016 ("Final
Act."), from which this Appeal is taken. Appellants did not file a Reply
Brief. To the extent Appellants have not advanced separate, substantive
arguments for particular claims or issues, such arguments are considered
waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
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Appellants argue the claims provide "a technological improvement to the
technical problem of computerized patient scheduling." Br. 12.
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 573 U.S. 208,217 (2014). In addition, the Office recently published
revised guidance for evaluating subject matter eligibility under 35 U.S.C.
§ 101, specifically with respect to applying the Alice framework. US PTO' s
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("Office Guidance"). If a claim falls within one of the
statutory categories of patent eligibility (i.e., a process, machine,
manufacture, or composition of matter) then the first inquiry is whether the
claim is directed to one of the judicially recognized exceptions (i.e., a law of
nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217.
As part of this inquiry, we must "look at the 'focus of the claimed advance
over the prior art' to determine if the claim's 'character as a whole' is
directed to excluded subject matter." Affinity Labs of Tex., LLC v. DirecTV,
LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016) (internal citations omitted).
Per Office Guidance, this first inquiry has two prongs of analysis: (i) does
the claim recite a judicial exception ( e.g., an abstract idea), and (ii) if so, is
the judicial exception integrated into a practical application. Office
Guidance 54. Under the Office Guidance, if the judicial exception is
integrated into a practical application, see infra, the claim passes muster
under§ 101. Office Guidance 54--55. If the claim is directed to a judicial
exception (i.e., recites a judicial exception and does not integrate the
exception into a practical application), the next step is to determine whether
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any element, or combination of elements, amounts to significantly more than
the judicial exception. Alice, 573 U.S. at 217; Office Guidance 56.
Here, Appellants' claims are generally directed to scheduling patients
based on scoring parameters. This is consistent with how Appellants
describe the claimed invention. See Br. 11-12 ( describing the claims as
being directed to a "scheduling method"). Scheduling patients based on
scoring parameters is a method of organizing human activities (i.e.,
managing relationships or interactions between people }-i.e., an abstract
idea. See Office Guidance 52; see also Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (deeming
the claim at issue "not meaningfully different from the ideas found to be
abstract in other cases before the Supreme Court and our court involving
methods of organizing human activity").
Claim 1, reproduced below, identifies the claim limitations that recite
the identified judicial exception in italics.
1. A process for scheduling patients in a medical practice to
achieve a set of predetermined scheduling goals of the practice,
comprising the steps of:
collecting a set of scoring parameters for scoring a
patient;
assigning a numerical quantity to each scoring parameter
according to a set of predetermined scoring rules;
calculating a patient score as an average of the scoring
parameters;
defining a set of patient score ranges, each range
comprising a patient bucket;
assigning the scored patient to a patient bucket according
to the patient's score;
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dividing available appointments into time ranges
measured relative to the present time, wherein each time range
is associated with a set of rules governing the allowed
percentage of patients from each patient bucket; and
assigning the scored patient to an appointment without
violating any rules governing the allowed percentage of patients
from each patient bucket.
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. Office Guidance 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are "any additional elements recited in the claim beyond the judicial
exception(s)" and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
Office Guidance 54--55 (emphasis added); see also Manual of Patent
Examining Procedure (MPEP) § 2106.05(a}-(c), (e}-(h) (9th ed. Rev.
08.2017, Jan. 2018).
Here, there are no additional limitations recited beyond the judicial
exception itself to integrate the exception into a practical application.
Similarly, the additional limitations recited in the dependent claims fail to
integrate the judicial exception into a practical application. More
particularly, the claims do not recite: (i) an improvement to the functionality
of a computer or other technology or technical field (see MPEP
§ 2106.05(a)); (ii) use a "particular machine" to apply or use the judicial
exception (see MPEP § 2106.05(b )); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See also Office
Guidance 55. Rather, the additional limitations amount to extra-solution
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activity (see, e.g., claim 2 adding a means to override the process, and
claims 3, 4, and 5 further adding prioritization of patients). See MPEP
§ 2106.05(g). Thus, the claims do not integrate the judicial exception into a
practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to "significantly more" than
the abstract idea. Alice, 573 U.S. at 217-18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73, 77-79 (2012)). As
stated in the Office Guidance, many of the considerations to determine
whether the claims amount to "significantly more" under step two of the
Alice framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. Office
Guidance 56. Thus, at this point of our analysis, we determine if the claims
add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or simply appends
well-understood, routine, conventional activities at a high level of generality.
Office Guidance 56.
Here, Appellants claims do not recite specific limitations ( or a
combination of limitations) that are not well-understood, routine, and
conventional. For example, independent claim 11 recites a system for
performing the judicial exception comprising "a local general purpose
computer workstation" and "a remote computer system." These components
are described at a high level of generality and do not perform activities
beyond those that are well-understood, routine, and conventional. See Spec.
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,r 47, Figs. 3A, 3B; see also Alice, 573 U.S. at 226 at 2360 ("Nearly every
computer will include a 'communications controller' and a 'data storage
unit' capable of performing the basic calculation, storage, and transmission
functions required by the method claims."); Content Extraction &
Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347--48 (Fed. Cir.
2014) ("storing information" into memory insufficient confer patent
eligibility); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1324--25 (Fed. Cir. 2016) (generic computer components such as
an "interface," "network," and "database," fail to satisfy the inventive
concept requirement); Intellectual Ventures I, 792 F.3d at 1368 (a
"database" and "a communication medium" "are all generic computer
elements"); buySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed.Cir.2014) (
"That a computer receives and sends the information over a network-with
no further specification-is not even arguably inventive.").
Additionally, to the extent Appellants contend the claims do not seek
to tie-up an abstract idea (Br. 13), we are unpersuaded of Examiner error.
"' [W]hile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."'
FairWarning IP, 839 F.3d at 1098 (quotingAriosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Further, "[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
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this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claims 1-17
under 35 U.S.C. § 101.
Rejections under 35 US.C. § 103
Appellants argue Vaccaro, as relied upon by the Examiner, fails to
teach the various claim limitations for which it is cited. Br. 13-15. We
address Appellants' arguments seriatim, but first provide a brief overview of
Vaccaro.
Vaccaro generally relates to a "percolator systems ... for identifying
and prioritizing at-risk members for outreach efforts." Vaccaro ,r 2.
Vaccaro discloses that percolator systems may be used "to identify
individuals who have complex health conditions and are receiving and
utilizing healthcare resources sub-optimally." Vaccaro ,r 5. Vaccaro states
the disclosed percolator system serves three main functions:
( 1) stratifying and assigning risk scores to members for the client;
(2) ranking the priority of members and their issues that need to
be addressed for each individual member associated with the
client; and (3) driving workflow by assigning identified members
to the most appropriate staff member and prioritizing activities
for the staff.
Vaccaro ,r 6. Vaccaro describes a data management unit that provides data
about members to the percolator system. Vaccaro ,r 26. Such data may be
provided by external sources or monitored and provided to the system.
Vaccaro ,r 27. Additionally, Vaccaro teaches a rules database may comprise
rules, business rules, business rule sets, triggers, and/or trigger weights.
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Vaccaro ,r 28. A trigger may be a combination of business rule sets and a
business rule set may be a combination of business rules. Vaccaro ,r 29.
Moreover, a business rule may be one or more questions used to evaluate a
member. Vaccaro ,r 32. Vaccaro teaches a business rule may be used to
examine a member's healthcare background, present healthcare, or ability to
obtain healthcare. Vaccaro ,r 32. An outreach score is determined for each
member based, at least in part, on the triggers. Vaccaro ,r 24. Further,
Vaccaro teaches a risk-evaluation unit that may apply one or more triggers
from the rules database to member data to assign an acuity level, or risk
level to the member. Vaccaro ,r,r 34--35. A risk score may be a sum or other
combination of the determined risks. Vaccaro ,r 36. Members are ranked
according to their risks and acuity levels assigned based on the rankings.
Vaccaro ,r,r 41--42. "Using the outreach scores and acuity levels, the
percolator system ... may output a workflow ... instructing outreach staff
as to which members should be reaches and for what purpose." Vaccaro
,r 57, see also Vaccaro ,r 17 ("Based on an assigned acuity level the
percolator system may determine a type of outreach, frequency, and type of
staff."). An example of outreach may be a face to face encounter. Vaccaro
Appellants assert Vaccaro does not teach "collecting a set of scoring
parameters for scoring a patient." Br. 13. Appellants contend the scoring
parameters "are data elements that relate to scheduling patients in a manner
that optimizes a physician's schedule" and that they are different than
Vaccaro's triggers and business rules. Br. 13-14.
The Examiner finds Vaccaro teaches collecting a set of scoring
parameters to score a patient. See Final Act. 6 (citing Vaccaro ,r,r 28-29);
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Ans. 4--5. In particular, the Examiner finds Vaccaro's business rules
account for various factors in determining a patient's score and, therefore,
correspond to the claimed scoring parameters. Ans. 4--5.
We are mindful that limitations are not to be read into the claims from
the specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
However, claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
In the Specification, Appellants set forth "an exemplary and non-
limiting list" of scoring parameters. Spec. ,r 28. Included among the
examples are whether the patient is a new or existing patient, the patient
bucket to which the patient is assigned, and the urgency of the requested
care. See Spec. ,r 28. As described above, Vaccaro teaches the disclosed
business rules may be used to evaluate a member including, for example, a
member's present healthcare (i.e., a new or existing patient/member).
Vaccaro ,r 32. Further, Vaccaro teaches the business rules (as part of
triggers) may be used to determine a member's outreach and risk scores.
Accordingly, we agree with the Examiner that Vaccaro teaches collecting a
set of scoring parameters for scoring a patient.
As recited in the claim (e.g., claim 1) a patient score is calculated as
an average of the scoring parameters. Appellants assert that because
Vaccaro does not teach the claimed scoring parameters, it cannot teach
calculating a patient score from scoring parameters. Br. 14.
For reasons discussed above, we agree with the Examiner that
Vaccaro teaches scoring parameters. Further, the Examiner finds, and
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Appellants do not persuasively rebut, Vaccaro teaches calculating a patient
outreach score based on the application of the rules engine ( comprising the
business rules). Ans. 5---6 (citing Vaccaro ,r 23). Although Vaccaro does not
expressly state the calculation involves averaging values to determine the
patient's score, the Examiner finds Abraham-Fuchs teaches a patient score
being an average of various parameters. Ans. 5-6 ( citing Abraham-Fuchs
i144).
Appellants also assert Vaccaro fails to teach defining a set of patient
range scores, where each range comprises a patient bucket. Br. 14. In
particular, Appellants argue Vaccaro teaches ranking members according to
a risk score, which Appellants contend is unrelated to the claimed patient
scores. Br. 14.
We disagree. The Examiner finds Vaccaro teaches assigning an
acuity level to each member based on the patient scores. Ans. 6 ( citing
Vaccaro ,r,r 40-42). Further, the Examiner finds, and we agree, Vaccaro
teaches categorizing members (i.e., patients) into different groups based on
the scores. Ans. 6 (citing Vaccaro ,r,r 23, 42, 49-50, Fig. 3). For example,
Vaccaro teaches "acuity levels may be based on the percentiles within risk
score rankings." Vaccaro ,r 42; Ans. 6. Additionally, Vaccaro teaches
various groupings (i.e., patient buckets}-e.g., "VERY HIGH RISK" or
"MEDIUM RISK"-for the ranges of acuity levels within the risk score
rankings. Ans. 6; Vaccaro, Fig. 3.
Appellants assert Vaccaro also fails to teach assigning a scored patient
to a patient bucket according to the patient's score because Vaccaro's risk
scores are unrelated to the claimed patient scores. Br. 14.
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As the Examiner explains, and we agree, assigning members (i.e.,
patients) into risk groups corresponds to assigning patients to patient buckets
as claimed. Ans. 6. Contrary to Appellants' assertions, Vaccaro' s risk
scores are not unrelated to a patient score. As the Examiner notes, in the
Specification, Appellants identify the urgency of care and a scoring
parameter ( thereby contributing to the patient score). Ans. 6 ( citing Spec.
,r 28). The urgency of care includes a patient's risk. Ans. 6.
Lastly, Appellants argue Vaccaro is silent about setting appointments
and, therefore, does not teach assigning a scored patient to an appointment.
Br. 14--15.
The Examiner finds, and we agree, Vaccaro' s teaching of various
types of outreach with a member, including face-to-face encounters and
telephone communications, corresponds to the claimed appointments.
Ans. 7 ( citing Vaccaro ,r 17).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection under 35 U.S.C.
§ 103 of independent claim 1. For similar reasons, we also sustain the
Examiner's rejections of independent claims 8 and 11, which recite similar
limitations and were not argued separately. See Br. 15; see also 37 C.F.R.
§ 4I.37(c)(l)(iv). Further, we sustain the Examiner's rejections of claims 2-
7, 9, 10, and 12-17, which depend therefrom and were not argued
separately. See Br. 15; see also 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1-17 under
35 U.S.C. § 101.
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We affirm the Examiner's decision rejecting claims 1-17 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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