Gregory Grant et al.

Patent Trials and Appeals Board

Sep 3, 2019

14542096 - (D) (P.T.A.B. Sep. 3, 2019)

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.

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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,
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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.

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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.”).
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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
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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:
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(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
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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
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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;

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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;

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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
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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
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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;
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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.
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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).
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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.

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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
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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
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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.
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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 . . . ,”
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“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
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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
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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
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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
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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.

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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