Gregory Grant et al.Download PDFPatent Trials and Appeals BoardSep 3, 201914542096 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. 14/542,096 11/14/2014 Gregory Grant 092732.000003 9904 23377 7590 09/03/2019 BakerHostetler Cira Centre 12th Floor 2929 Arch Street Philadelphia, PA 19104-2891 EXAMINER COBANOGLU, DILEK B ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GREGORY GRANT, JOHN VANDERHOOF, and MATTHEW JOHN SEIDEL ____________ Appeal 2018-006928 Application 14/542,0961 Technology Center 3600 ____________ Before JAMES R. HUGHES, DENISE M. POTHIER, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–3, 5–7, 10, 12–14, 16, and 18–23, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Photon Medical Communications, Inc. as the real party in interest. Br. 1. Appeal 2018-006928 Application 14/542,096 2 STATEMENT OF THE CASE Introduction The present invention relates to “consultation and remote diagnosis.” Spec. ¶ 3. In particular, the systems and methods of the present disclosure minimize the communication inefficiencies and reduce the amount of wasted time that the emergency room physician and the patient have to deal with during their encounter. As an example, using the disclosed system and methods, an emergency room provider can determine that an orthopedist is necessary for consultation. The emergency room physician can chart like normal, but the data that is inputted into an electronic medical record (EMR) can be transmitted to a non-proprietary server, in which this information can be shared with any provider whether or not they have access to the proprietary system. The information inputted can be transmitted to the non-proprietary system with a single click of a mouse. Spec. ¶ 5. Claim 1 is exemplary: 1. A method comprising: receiving, by a computing device, a request for a diagnostic message from a requesting device, wherein the request for the diagnostic message comprises information relating to an intended recipient of the diagnostic message; receiving, by the computing device, a selection of diagnostic information from at least a source of the request for the diagnostic message, wherein the diagnostic information comprises one or more of secure patient data, secure medical data, and a secure medical image; transmitting a notification to a recipient device associated with the intended recipient to alert the intended recipient of the diagnostic message, Appeal 2018-006928 Application 14/542,096 3 wherein the notification is configured to be rendered via a display of the recipient device; authenticating the intended recipient via the recipient device; allowing access, via the recipient device, to an option to view the diagnostic message; receiving, by the computing device, a selection of the option to view the diagnostic message; retrieving a user setting associated with the intended recipient, the user setting comprising a plurality of pre-defined information fields; identifying a subset of the diagnostic information based on the user setting; retrieving, by the computing device, the subset of the diagnostic information; populating at least one of the plurality of pre-defined information fields with at least a portion of the subset of the diagnostic information; generating the diagnostic message, wherein the diagnostic message comprises the populated at least one of the plurality of pre-defined information fields; and causing the diagnostic message to be securely provided to the recipient device for rendering via the display of the recipient device to facilitate a secure review of the populated at least one of the plurality of pre- defined information fields by the intended recipient. Appeal 2018-006928 Application 14/542,096 4 References and Rejections2 Claims 1–3, 5–7, 10, 12–14, 16, and 18–23 stand rejected under 35 U.S.C. § 101 because they are directed to patent-ineligible subject matter. Final Act. 2–5. Claims 1–3, 5–7, 10, 12–14, 16, and 18–23 stand rejected under pre- AIA 35 U.S.C. § 103 as being obvious over the collective teachings of Holla (US 2008/0021741 A1, published Jan. 24, 2008), Keohane (US 2008/0109335 A1, published May 8, 2008), and McLaren (US 8,326,651 B2, published Dec. 4, 2012). Final Act. 5–18. ANALYSIS 35 U.S.C. § 101 We have reviewed the Examiner’s rejection in light of Appellants’ contentions and the evidence of record. For the reasons discussed below, we concur with Appellants’ contention that the Examiner erred in this case. Section 101 of the Patent Act provides “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. 2 Throughout this opinion, we refer to the (1) Final Office Action dated May 15, 2017 (“Final Act.”); (2) Appeal Brief dated Dec. 15, 2017 (“Br.”); and (3) Examiner’s Answer dated Apr. 20, 2018 (“Ans.”). Appeal 2018-006928 Application 14/542,096 5 Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a Appeal 2018-006928 Application 14/542,096 6 mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO recently published revised guidance on the application of § 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the guidance set forth in the Guidance, we first look to whether the claim recites: Appeal 2018-006928 Application 14/542,096 7 (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (Step 2A, Prong 1); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev. 08.2017, 2018) (Step 2A, Prong 2). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Step 2B.) See Guidance, 84 Fed. Reg. at 54–56. Turning to Step 2A, Prong 1 of the Guidance (Alice step one), independent claims 1, 7, and 13 (with emphases) recite: 1. A method comprising: receiving, by a computing device, a request for a diagnostic message from a requesting device, wherein the request for the diagnostic message comprises information relating to an intended recipient of the diagnostic message; receiving, by the computing device, a selection of diagnostic information from at least a source of the request for the diagnostic message, wherein the diagnostic information comprises one or more of secure patient data, secure medical data, and a secure medical image; transmitting a notification to a recipient device associated with the intended recipient to alert the intended recipient of the Appeal 2018-006928 Application 14/542,096 8 diagnostic message, wherein the notification is configured to be rendered via a display of the recipient device; authenticating the intended recipient via the recipient device; allowing access, via the recipient device, to an option to view the diagnostic message; receiving, by the computing device, a selection of the option to view the diagnostic message; retrieving a user setting associated with the intended recipient, the user setting comprising a plurality of pre-defined information fields; identifying a subset of the diagnostic information based on the user setting; retrieving, by the computing device, the subset of the diagnostic information; populating at least one of the plurality of pre-defined information fields with at least a portion of the subset of the diagnostic information; generating the diagnostic message, wherein the diagnostic message comprises the populated at least one of the plurality of pre-defined information fields; and causing the diagnostic message to be securely provided to the recipient device for rendering via the display of the recipient device to facilitate a secure review of the populated at least one of the plurality of pre-defined information fields by the intended recipient. 7. A method comprising: causing, by a computing device, availability information to be securely provided to a requesting device for rendering via Appeal 2018-006928 Application 14/542,096 9 a display of the requesting device, wherein the availability information relates to one or more of a plurality of on-call professionals; receiving, by the computing device, a selection of a first on-call professional of the plurality of on-call professionals from the requesting device and in response to the provided availability information; receiving, by the computing device, a selection of diagnostic information, wherein the diagnostic information comprises one or more of secure patient data, secure medical data, and a secure medical image; retrieving information relating to the selection of the first on-call professional and the selection of diagnostic information; retrieving a user setting associated with the first on-call professional, the user setting comprising a plurality of pre- defined information fields; identifying a subset of the received selection of diagnostic information based on at least the user setting; populating the plurality of pre-defined information fields with the subset of the received selection of diagnostic information; generating a diagnostic message comprising the populated plurality of pre-defined information fields; transmitting a notification to a recipient device associated with the first on-call professional to alert the first on-call professional of the diagnostic message, wherein the notification is configured to be rendered via a display of the recipient device; Appeal 2018-006928 Application 14/542,096 10 allowing access to the diagnostic message by the recipient device associated with the first on-call professional; and causing the subset of the received selection of diagnostic information to be securely provided to the recipient device for rendering via the display of the recipient device to facilitate a secure review of the populated plurality of pre-defined information fields by the first on-call professional. 13. A method comprising: receiving, by a computing device, a request for a diagnostic message from a requesting device, wherein the request for the diagnostic message comprises information relating to an intended recipient of the diagnostic message; receiving, by the computing device, a selection of diagnostic information, wherein the diagnostic information comprises one or more of secure patient data, secure medical data, and a secure medical image; retrieving a user setting associated with the intended recipient the user setting comprising a plurality of pre-defined information fields; identifying a subset of the received selection of diagnostic information based on at least the user setting; retrieving, by the computing device, the subset of the received selection of diagnostic information; populating at least one of the plurality of pre-defined information fields with the subset of the received selection of diagnostic information; causing a notification of a first diagnostic message to be rendered via a display of a user device; Appeal 2018-006928 Application 14/542,096 11 upon authentication of a user of the user device, allowing secure access of the first diagnostic message, the first diagnostic message comprising the populated at least one of the pre- defined information fields; causing a plurality of first response options to be rendered via the display of the user device, the first response options including at least a pre-determined diagnosis option based on at least the retrieved subset of the received selection of diagnostic information; receiving a selection of one of the plurality of first response options; and initiating a communication session based upon the selection of the one of the plurality of first response options. All of the italicized functions can be performed by a person mentally or using a pen and paper. Regarding claim 1, a person can “receiv[e] . . . a request for a diagnostic message” by receiving a written request on paper. Further, a person can “identify[] a subset of the diagnostic information based on [a] . . . setting” in his mind or by using a pen and paper. And a person can “generat[e] the diagnostic message” by writing the message on paper. Claims 7 and 13 recite similar limitations that can be performed by a person mentally or using a pen and paper. See Claims 7 and 13. Because all of the italicized functions can be performed by a human using a pen and paper, they are like the mental processes in CyberSource and Synopsys. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (“All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. . . . Such a method that can be performed by human thought alone is merely an abstract idea and is not Appeal 2018-006928 Application 14/542,096 12 patent-eligible under § 101.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“[W]e continue to ‘treat[ ] analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.’”) (citation omitted). Accordingly, we conclude each of independent claims 1, 7, and 13 recites mental processes, and thus an abstract idea. See Guidance, Step 2A, Prong 1 (Groupings of Abstract Ideas). For similar reasons, each of claims 2, 3, 5, 6, 10, 12, 14, 16, and 18–23 recites mental processes, and thus an abstract idea. Although each of the claims recites an abstract idea, the Federal Circuit explains the “directed to” inquiry is not simply asking whether the claims involve a patent-ineligible concept: The “directed to” inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world. See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”). Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a whole “focus on a specific means or method that improves the relevant Appeal 2018-006928 Application 14/542,096 13 technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery”). Therefore, we proceed to Step 2A, Prong 2 of the Guidance to determine whether additional elements of the claims integrate the mental processes into a practical application. Such additional elements may reflect an improvement to a technology or technical field. See Guidance, 84 Fed. Reg. at 55. As to claim 1, we determine additional elements of the claim integrate the mental processes into a practical application, as the following additional elements of claim 1 reflect technology improvement of communicating medical diagnostic information with remote users, such as physicians and care providers: receiving, by the computing device, a selection of diagnostic information from at least a source of the request for the diagnostic message, wherein the diagnostic information comprises one or more of secure patient data, secure medical data, and a secure medical image; transmitting a notification to a recipient device associated with the intended recipient to alert the intended recipient of the diagnostic message, wherein the notification is configured to be rendered via a display of the recipient device; authenticating the intended recipient via the recipient device; allowing access, via the recipient device, to an option to view the diagnostic message; receiving, by the computing device, a selection of the option to view the diagnostic message; retrieving a user setting associated with the intended recipient, the user setting comprising a plurality of pre-defined information fields; retrieving, by the computing device, the subset of the diagnostic information; Appeal 2018-006928 Application 14/542,096 14 populating at least one of the plurality of pre-defined information fields with at least a portion of the subset of the diagnostic information; causing the diagnostic message to be securely provided to the recipient device for rendering via the display of the recipient device to facilitate a secure review of the populated at least one of the plurality of pre-defined information fields by the intended recipient. In particular, the technology improvement is directed to a method of communicating medical diagnostic information with remote users, including: receiving, by a computing device, a request for a diagnostic message from a requesting device; receiving, by the computing device, a selection of diagnostic information from at least a source of the request for the diagnostic message; transmitting a notification to a recipient device associated with the intended recipient to alert her of the diagnostic message; authenticating the intended recipient via the recipient device; allowing access, via the recipient device, to an option to view the diagnostic message; receiving, by the computing device, a selection of the option to view the diagnostic message; retrieving a user setting associated with the intended recipient; identifying a subset of the diagnostic information based on the user setting; retrieving, by the computing device, the subset of the diagnostic information; populating at least one of the pre-defined information fields with at least a portion of the subset of the diagnostic information; generating the diagnostic message; and causing the diagnostic message to be securely provided to the recipient device for rendering via the display of the recipient device to facilitate a secure review of the populated at least one of the pre- defined information fields by the intended recipient. See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. Appeal 2018-006928 Application 14/542,096 15 2016) (“The inventive concept described and claimed . . . is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server.”). Our determination is supported by the Specification, which describes the technology improvement of communicating medical diagnostic information with remote users: Communication of diagnostic information and/or patient information can be tedious and time consuming. Currently, many physicians and care-providers rely on paging devices and voice calls/messages to communicate diagnostic information and consultation information to and from hospitals, offices, and other physicians, care providers and users of such information. For example, in an emergency room, a physician seeing a patient with an orthopedic problem has to page the orthopedic surgeon on call. The physician can often wait approximately 5- 10 minutes or even longer for the orthopedic surgeon to respond. When the orthopedic surgeon finally responds, the orthopedic surgeon is typically provided only basic diagnostic information about the patient about which the emergency room physician is consulting. The orthopedic surgeon then has to find means to view certain patient diagnostic information, most notably images, such as x-rays. Computer terminals are not always conveniently available. Accordingly, the orthopedic surgeon must travel to a local hospital or office or another area to access a computer for viewing patient information and diagnostic information. Once the orthopedic surgeon has viewed the patient and diagnostic information, the orthopedic surgeon must communicate a response to the consulting physician in the emergency room. Typically, the orthopedic surgeon can rely on telephone communication to respond to the consulting physician with consulting information. Spec. ¶ 2 (emphases added). Appeal 2018-006928 Application 14/542,096 16 The current methods of consultation and remote diagnosis do not provide an efficient means of communicating diagnostic information and consultation responses to and from remote users. Furthermore, the current systems and methods do not provide a means to coordinate availability and schedules of recipients of consultation requests. Spec. ¶ 3 (emphases added). In an aspect, the systems and methods of the present disclosure minimize the communication inefficiencies and reduce the amount of wasted time that the emergency room physician and the patient have to deal with during their encounter. As an example, using the disclosed system and methods, an emergency room provider can determine that an orthopedist is necessary for consultation. The emergency room physician can chart like normal, but the data that is inputted into an electronic medical record (EMR) can be transmitted to a non-proprietary server, in which this information can be shared with any provider whether or not they have access to the proprietary system. The information inputted can be transmitted to the non-proprietary system with a single click of a mouse. Spec. ¶ 5 (emphases added). Because the additional elements of claim 1 integrate the mental processes into a practical application, we determine claim 1 is not directed to an abstract idea. See Guidance, Step 2A, Prong 2. For similar reasons, each of claims 2, 3, 5–7, 10, 12–14, 16, and 18–23 integrates mental processes into a practical application, and is not directed to an abstract idea. Therefore, we reverse the rejection of claims 1–3, 5–7, 10, 12–14, 16, and 18–23 under 35 U.S.C. § 101. Appeal 2018-006928 Application 14/542,096 17 35 U.S.C. § 103 We have considered Appellants’ arguments, and such arguments have not persuaded us of Examiner error. To the extent consistent with our analysis below, we adopt the Examiner’s findings and conclusions in (i) the action from which this appeal is taken (Final Act. 5–15) and (ii) the Answer (Ans. 5–7). Claim 1 On this record, the Examiner did not err in rejecting independent claim 1. I Appellants argue McLaren does not teach “a user setting associated with the intended recipient,” as recited in claim 1 (emphasis added). See Br. 7–9. In particular, Appellants argue “McLaren discloses medical checklists that ‘can be based on customized templates’ . . . the templates in McLaren are ‘potentially customized for individual practice locations,’ and not associated with an intended recipient.” Br. 7. We disagree. Because the Examiner relies on the combination of Holla and McLaren to teach the disputed claim limitation, Appellants cannot establish nonobviousness by attacking McLaren individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In particular, McLaren explains “[t]he displayed user interface, organization of patient entries and phases of care, color and other visual schemes, level of detail, and other information displayed by case board 600 may be customized based on the particular user.” McLaren 24:19–23. Therefore, McLaren teaches “a user Appeal 2018-006928 Application 14/542,096 18 setting associated with [a particular user.]” The Examiner further cites Holla for teaching “the intended recipient” (Final Act. 5–6), and Appellants do not dispute that finding. As a result, Appellants fail to show the Examiner erred in concluding Holla and McLaren collectively teach “a user setting associated with the intended recipient,” as required by claim 1 (emphases added). See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). II Appellants argue Holla does not teach the claimed “user setting” in claim 1. In particular, Appellants argue: Holla generally discusses access based on “the level of clearance of the viewer” but this is distinct from the user setting in the present application, which includes “preferences . . . to customize a particular message format and/or content associated with a particular recipient.” Specification ¶ 66. Br. 9. Appellants’ arguments are unpersuasive. It is well established that during examination, claims are given their broadest reasonable interpretation consistent with the specification and should be read in light of the specification as it would be interpreted by one of ordinary skill in the art, but without importing limitations from the specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Paragraph 66 of the Specification states: “As an example, the rules Appeal 2018-006928 Application 14/542,096 19 engine 122 can retrieve preferences and instructions from the user settings 118 in order to customize a particular message format and/or content associated with a particular recipient” (emphasis added). That paragraph merely describes a non-limiting, exemplary embodiment of the user setting, and Appellants have not persuasively shown why we must import the non- limiting, exemplary limitations from the Specification into the term “user setting.” In any event, Appellants’ argument about Holla is unpersuasive, because it is not directed to the Examiner’s specific findings. As discussed above, The Examiner cites McLaren for teaching the “user setting.” As a result, Holla does not need to separately teach that term. III Appellants contend: at least claim 1 recites that the user setting comprise “a plurality of pre-defined information fields” and “populating at least one of the plurality of pre-defined information fields with at least a portion of the subset of the diagnostic information.” The Examiner does not show where McLaren (or Holla) has enabled one of skill in the art to accomplish this type of selective filtering of information in response to a request to view diagnostic information, which was in response to a notification that the diagnostic information was available. Br. 8–9. Appellants have not persuaded us of error. The test of enablement is whether without undue experimentation, one skilled in the art could make or use the invention from the disclosures coupled with information known in the art. See In re Antor Media Corporation, 689 F.3d 1282, 1289 (Fed. Cir. Appeal 2018-006928 Application 14/542,096 20 2012); U.S. v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988) (citation omitted). Further, “[i]n patent prosecution the examiner is entitled to reject application claims as anticipated by a prior art patent without conducting an inquiry into whether or not that patent is enabled or whether or not it is the claimed material (as opposed to the unclaimed disclosures) in that patent that are at issue.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (holding “a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). Here, “both the claimed and unclaimed disclosures” in Holla and McLaren are presumed to “be enabled.” Amgen, 314 F.3d at 1355. Because Appellants have not presented persuasive evidence to overcome that presumption, Appellants have not shown Examiner error. In any event, Appellants’ argument is unpersuasive because “[u]nder § 103 . . . a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein.” Amgen, 314 F.3d at 1357; see also Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (“a non-enabling reference may qualify as prior art for the purpose of determining obviousness under [35 U.S.C.] § 103”). Further, Appellants have not shown claim 1 requires “selective filtering information,” as Appellants assert (Reply Br. 9). IV Appellants contend: McLaren and Holla fail to disclose: “identifying a subset of the diagnostic information based on the user setting . . . ,” Appeal 2018-006928 Application 14/542,096 21 “retrieving the subset of the diagnostic information based on the user setting . . . ,” “populating at least one of the plurality of pre-defined information fields . . . ,” “generating a diagnostic message, wherein the message comprises the populated at least one of the plurality of pre- defined information fields . . . ,” as recited in claim 1. Br. 9. Appellants’ general assertion is unpersuasive of Examiner error. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that “the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). V Appellants argue the Examiner’s rationale for combining the teachings of Holla and McLaren “is misleading and is a mischaracterization of the limitations recited in the claims.” Br. 8. We disagree. The U.S. Supreme Court has held “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Further, “[i]f the claim extends to what is obvious, it is invalid under § 103” and “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged Appeal 2018-006928 Application 14/542,096 22 claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418–19. The Examiner has articulated a reasoning with a rational underpinning as to why one skilled in the art would have found it obvious to combine the teachings of Holla and McLaren. See Final Act. 10. Appellants do not persuasively explain why such reasoning lacks a rational underpinning. In particular, as discussed above, Appellants’ argument about enabling one skilled in the art to accomplish a purported function in claim 1 is unpersuasive. Further, Appellants do not adequately support their assertion that the Examiner’s rationale is “misleading and is a mischaracterization of the limitations recited in the claims.” Br. 8. And Appellants’ assertion that “[t]he claims are not reciting a mere visual customization of a user interface, as apparently described in McLaren” (Br. 8) is unpersuasive, as Appellants do not provide persuasive evidence to show McLaren describes “a mere visual customization of a user interface” (Br. 8). The Examiner’s findings and conclusion are reasonable because the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle,” as the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. Appellants do not present adequate evidence that the resulting arrangements would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). Accordingly, we agree with the Examiner that applying McLaren’s techniques in the Holla method would have predictably used prior art Appeal 2018-006928 Application 14/542,096 23 elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. VI Appellants argue the proposed combination of Holla and McLaren is motivated by impermissible hindsight. See Br. 8. We disagree. Our reviewing courts have not established a bright-line test for hindsight. The U.S. Supreme Court guides that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)). “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” KSR, 550 U.S. at 421. As discussed above, Appellants have not demonstrated the Examiner’s proffered combination of Holla and McLaren would have been “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., 485 F.3d at 1162. And Appellants’ assertion that the Examiner impermissibly relies on the Specification (Br. 8) is unpersuasive, as Appellants do not provide adequate evidence to support that assertion. Further, after reviewing the respective teachings and suggestions of Holla and McLaren, we find the weight of the evidence shows the proffered combination is merely a predictable use of prior art elements according to their established functions, because the combination uses prior art elements according to their known functions. See Final Act. 9–10 (citing MacLaren Appeal 2018-006928 Application 14/542,096 24 24:10–28). Therefore, on this record, Appellants have not persuaded us the Examiner engaged in impermissible hindsight. Because Appellants have not persuaded us the Examiner erred, we sustain the Examiner’s rejection of independent claim 1. Claim 7 On this record, the Examiner did not err in rejecting independent claim 7. Appellants argue the cited prior art portions do not teach “causing . . . availability information to be . . . provided to a requesting device for rendering . . ., wherein the availability information relates to one or more of a plurality of on-call professionals” as recited in claim 7 (emphasis added). See Br. 9. In particular, Appellants argue in Holla, “transmitting a message [is] based simply on whether a selected recipient is available or not. Whether or not a selected recipient is available does not disclose causing availability information for on-call professionals to be rendered.” Br. 9. Appellants also argue claim 7 is allowable for similar reasons discussed above with respect to claim 1. See Br. 9. Appellants have not persuaded us of Examiner error. Holla teaches “[t]he physician’s availability and his/her field of specialty may be available through the databases which are accessible by the console 120 or reside on the remote server 121.” Holla ¶80 (emphasis added). Because Holla teaches “physician’s availability and his/her field of specialty may be available . . . are accessible by the console 120” (Holla ¶ 80), Holla teaches or suggests causing availability information to be Appeal 2018-006928 Application 14/542,096 25 provided to a requesting device (console 120) for rendering. As a result, Appellants’ arguments are unpersuasive. Therefore, and for similar reasons discussed above with respect to claim 1, we sustain the Examiner’s rejection of independent claim 7. Claim 13 On this record, the Examiner did not err in rejecting independent claim 13. Appellants argue the cited prior art portions do not teach “causing a plurality of first response options to be rendered via the display of the user device, the first response options including at least a pre-determined diagnosis option,” as recited in independent claim 13. See Br. 10. In particular, Appellants argue “Holla does not disclose a ‘pre-determined diagnosis option’ that can be selected at the physician’s device to transmit his/her diagnosis.” Br. 10. Appellants also argue claim 13 is allowable for similar reasons discussed above with respect to claim 1. See Br. 9. In response to Appellants’ arguments, the Examiner provides further findings showing Holla teaches the disputed claim limitation. See Ans. 6–7. In particular, the Examiner additionally cites Holla’s paragraphs 114–116 for teaching the disputed limitation. See Ans. 7. Appellants fail to persuasively respond to such findings and therefore, fail to show error in the Examiner’s findings. See Baxter Travenol Labs., 952 F.2d at 391. Therefore, and for similar reasons discussed above with respect to claim 1, we sustain the Examiner’s rejection of independent claim 13. Appeal 2018-006928 Application 14/542,096 26 We also sustain the Examiner’s rejection of corresponding dependent claims 2, 3, 5, 6, 10, 12, 14, 16, and 18–23, as Appellants do not advance separate substantive arguments about those claims. DECISION We reverse the Examiner’s decision rejecting claims 1–3, 5–7, 10, 12–14, 16, and 18–23 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1–3, 5–7, 10, 12– 14, 16, and 18–23 under pre-AIA 35 U.S.C. § 103. Because we affirm at least one ground of rejection for each claim on appeal, we affirm the Examiner’s decision rejecting claims 1–3, 5–7, 10, 12– 14, 16, and 18–23. See 37 C.F.R. § 41.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation