ORACLE INTERNATIONAL CORPORATION

Patent Trials and Appeals BoardApr 15, 2021

2020002715 (P.T.A.B. Apr. 15, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/790,379 03/08/2013 William Andrew TRIEBEL 2011-0048US02 3226 74739 7590 04/15/2021 Potomac Law Group, PLLC (Oracle International) 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER PORTER, RACHEL L ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 04/15/2021 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): bgoldsmith@potomaclaw.com eofficeaction@appcoll.com patents@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM ANDREW TRIEBEL and MICHAEL LAWRENCE BRAUN-BOGHOS ____________ Appeal 2020-002715 Application 13/790,3791 Technology Center 3600 ____________ Before ERIC S. FRAHM, NORMAN H. BEAMER, and JOYCE CRAIG, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–10 and 12–22. We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Oracle International Corporation as the real party in interest. (Appeal Br. 2.) Appeal 2020-002715 Application 13/790,379 2 THE INVENTION Appellant’s disclosed and claimed invention is directed to integrating a case series repository with one or more software applications. (Abstr.) Independent claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A non-transitory computer-readable medium having instructions stored thereon that, when executed by a processor, cause the processor to integrate a case series repository with a data mining application and a reporting application, the integrating comprising: receiving a case series including one or more adverse event cases, each adverse event case including a data record that includes a patient identifier and drug safety data associated with a patient, the received case series generated by the data mining application that uses data mining to find one or more related groups of cases within drug safety data; receiving a case revision including case revision information, the case revision information including at least one verified change to drug safety data for an adverse event case of the case series; storing the case series and the case revision within a case series repository using a case series data model, the case series data model defining a first format of the case series and the case revision within the case series repository; associating the case revision with the case series using the case series data model; and in response to a request from the reporting application that generates one or more reports that visualize the case series: retrieving the case series and the associated case revision using a case series application programming interface, the request specifying a second format of the case series and the case revision that is different than the first format defined by the case series data model, and Appeal 2020-002715 Application 13/790,379 3 returning the case series and the associated case revision to the reporting application in the second format specified by the reporting application without exporting the case series and the associated case revision from the first format to the second format. (Appeal Br. 15–16 (Claims App.).) REJECTIONS2 The Examiner rejected claims 1–10 and 12–22 under 35 U.S.C. § 112(b), as being indefinite. (Final Act. 4–5.) The Examiner rejected claims 1–10 and 12–22 under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. (Final Act. 5–11.) ISSUE ON APPEAL Appellant’s arguments in the Appeal and Reply Briefs present the following issues:3 Whether the Examiner erred in finding claims 1–10 and 12–22 indefinite. (Appeal Br. 3–4.) Whether the Examiner erred in finding claims 1–10 and 12–22 as directed to non-statutory subject matter. (Appeal Br. 4–13; Reply Br. 2–3.) 2 The Examiner’s rejection of claims 1–10 and 12–22 under 35 U.S.C. § 112(a) has been withdrawn in the Answer. (See Final Act. 3–4, Ans. 9– 10.) 3 Rather than reiterate the arguments of Appellant and the positions of the Examiner, we refer to the Appeal Brief (filed Sept. 18, 2019); the Reply Brief (filed Feb. 23, 2020); the Final Office Action (mailed Apr. 19, 2019); and the Examiner’s Answer (mailed Dec. 30, 2019) for the respective details. Appeal 2020-002715 Application 13/790,379 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments. Arguments Appellant could have made but chose not to make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner rejected the claims as indefinite, stating that “it is unclear what the term/phrase ‘visualize the case series’ encompasses.” Final Act. 4. In response, Appellant cites portions of the Specification that explain what that term refers to, including citing Figure 9, which illustrates an “example report” generated form and “example query.” (Appeal Br. 3–4 (citing Spec. Fig. 9, ¶¶ 16, 74, 82).) We are not persuaded that “visualize the case series” is indefinite in this context, and therefore we reverse the indefiniteness rejection. In regard to the rejection pursuant to 35 U.S.C. § 101, the Examiner determined the claims are patent ineligible because the claims are directed to “the abstract idea of managing patient medical referrals,” which the Examiner characterized as within the abstract idea classification, “certain methods of organizing human activity.” (Ans. 4.) The Examiner further determined that the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea, and is not integrated into a practical application, but rather makes use of generic computer technology. (Ans. 5–11.) Appellant argues that the claims are not directed to an abstract idea, but rather are directed to “improvements in the performance of the computer system due to the direct access provided by the case series application programming interface to the case series and the case revision in the second format specified by a reporting application” by making use of separate Appeal 2020-002715 Application 13/790,379 5 software applications for processing case series information versus reporting the information. (Appeal Br. 6–7.) Appellant cites Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), holding eligible claims that recite a self-referential data table, as applicable to the present claims, “which recite a software solution to a technical problem with specialized data using novel interfaces to avoid having to reformat the data when being shared between two different application programs.” (Appeal Br. 7–9.) Appellant further argues that, even if it is determined that the claims recite an abstract idea, the claims include elements that are integrated into a practical application, as reciting “a software solution to a technical problem with specialized data using novel interfaces to avoid having to reformat the data when being shared between two different application programs” — and specifically requiring “a data mining application,” “a reporting application,” and “a case series repository.” (Appeal Br. 10.) In addition, Appellant argues that the Examiner’s determination that the claims at most include generic hardware and software components is not in accord with the evidentiary requirements of Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). (Appeal Br. 11–12.) Finally, Appellant argues that the claims do not preempt all systems and methods for integrating a data repository (i.e., case series repository) with a software application. (Appeal Br. 12–13.) We are not persuaded that the Examiner erred in rejecting the claims pursuant to 35 U.S.C. § 101. An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Here, independent claim 1 and its dependent claims relate to a “non-transitory computer-readable medium,” independent claim 13 and Appeal 2020-002715 Application 13/790,379 6 its dependent claims relate to a “method,” and independent claim 18 and its dependent claims relate to a “system” — i.e., a manufacture, process, and machine, respectively. However, the Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589–90 (2013)). The “abstract ideas” category embodies the longstanding rule that an idea, by itself, is not patentable. Alice, 573 U.S. at 216–17. In Alice, the Supreme Court sets forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 217. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. 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 v. Kappos, 561 U.S. 593, 611 (2010)); mathematical concepts (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). Appeal 2020-002715 Application 13/790,379 7 If the claims are directed to a patent-ineligible concept, the second step in the Alice/Mayo analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other words, the second step is to “search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73) (alteration in original). 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. 573 U.S. at 221. A transformation into a patent-eligible application requires more than simply stating the abstract idea while adding the words “apply it.” Id. Further to the Alice/Mayo analytical framework, and acknowledged by Appellant, the USPTO published the Revised Guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Revised Guidance”). See also USPTO October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019) (hereinafter “Update”), noticed at 84 Fed. Reg. 55942 (Oct. 18, 2019). Under the Revised Guidance, the Office first looks to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing Appeal 2020-002715 Application 13/790,379 8 human interactions such as a fundamental economic practice, or mental processes); 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. 10.2019, June 2020)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are 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. See Revised Guidance. In evaluating the claims at issue, we consider claim 1 as representative, consistent with how Appellant and the Examiner analyze the claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Omitting the portions of the claim invoking use of generic technology (which are discussed separately below), the remaining limitations of claim 1 elaborate on a method of gathering information concerning a “case series” consisting of “adverse event cases,” and generating reports visualizing the case series, via the steps of: (a) receiving a case series including one or more adverse event cases, each adverse event case including a Appeal 2020-002715 Application 13/790,379 9 data record that includes a patient identifier and drug safety data associated with a patient, the received case series generated . . . to find one or more related groups of cases within drug safety data; (b) receiving a case revision including case revision information, the case revision information including at least one verified change to drug safety data for an adverse event case of the case series; (c) storing the case series and the case revision . . . using a case series data model, the case series data model defining a first format of the case series and the case revision . . . ; (d) associating the case revision with the case series using the case series data model . . . . ; (e) in response to a request . . . that generates one or more reports that visualize the case series; (f) retrieving the case series and the associated case revision . . . , the request specifying a second format of the case series and the case revision that is different than the first format defined by the case series data model; (g) returning the case series and the associated case revision . . . in the second format . . . without exporting the case series and the associated case revision from the first format to the second format. Apart from the use of generic technology (a data mining application; a case series repository; a reporting application; and an application programming interface) (discussed further below), each of these limitations describes steps for processing and reporting on a case series. As the Examiner determined, these limitations relate to managing patient medical referrals; thus, the claim recites the abstract idea of “certain methods of Appeal 2020-002715 Application 13/790,379 10 organizing human activity,” as do the remaining claims. (Revised Guidance, 84 Fed. Reg. at 52.) 4 Further pursuant to the Revised Guidance, we consider whether there are additional elements set forth in claim 1 that integrate the judicial exception into a practical application. Revised Guidance, 84 Fed. Reg. at 54–55. Here, the abstract idea of claim 1 is carried out using a data mining application; a case series repository; a reporting application; and an application programming interface. We agree with the Examiner that “the claimed processor, memory and modules do not add meaningful limitations to the underlying abstract ideas beyond generally linking the system to a particular technological environment, that is, implementation via computers.” (Ans. 11.) “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221. Nor does the subject matter of claim 1 contain additional elements that implement the judicial exception with a “particular machine,” because the claims do not specify any details in regard to the system. See MPEP § 2106.05(b). Further, the method does not transform matter; at best it transforms information. See MPEP § 2106.05(c). Also, claim 1 does not have any other meaningful limitations (MPEP § 2106.05(e)), or any of the other considerations set forth in the Revised Guidance regarding a 4 See Univ. of Fl. Res. Found. v. GE Co., 916 F.3d 1363 (Fed. Cir. 2019) (conversion of medical data into a machine independent format); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016) (misuse detection of patient’s health information); Salwan v. Iancu, 825 F. App’x 862 (Fed. Cir. 2020) (methods of transferring patient health information); In re Salwan, 681 F. App’x 938 (Fed. Cir. 2017) (same). Appeal 2020-002715 Application 13/790,379 11 determination of whether additional elements integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 55. Appellant’s reliance on Enfish is not persuasive. There, the court held the subject claims were “not directed to an abstract idea within the meaning of Alice.” Enfish, 822 F.3d at 1336. The court concluded the claims were directed to “a specific improvement to the way computers operate, embodied in the self-referential table” (id. (emphases added)). The self-referential database table considered by the Enfish court was found to be a specific type of data structure that was designed to improve the way a computer stores and retrieves data in memory. Id. at 1339. Because the Enfish court found the claimed self-referential database table improved the way the computer stored and retrieved data, the court concluded the Enfish claims were not directed to an abstract idea, and thus, ended the analysis at Alice step one. Id. at 1336. Here, Appellant has not shown that any of the features of the claims before us on appeal improve the way the recited generic computer system and the related components operate on data in a manner analogous to that found by the court in Enfish. Accordingly, we conclude that the subject matter of claim 1 (and the remaining claims) is directed to processing and reporting on a case series, which is a certain method of organizing human activity, and thus an abstract idea, and the additional elements recited therein do not integrate the abstract idea into a practical application. Turning to the second step of the Alice inquiry, we consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” 573 U.S. at 217 (quoting Appeal 2020-002715 Application 13/790,379 12 Mayo, 566 U.S. at 66, 79, 78). The Examiner finds, and we agree, that the asserted additional elements are “no more than mere instructions to apply the exception using a generic computer component.” (Final Act. 8.) The Examiner sufficiently demonstrates that the findings satisfy the evidentiary requirements of Berkheimer. (Ans. 13–14.) “[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223. The additional elements of claim 1, whether individually or in combination, fails to add “significantly more” to the basic abstract idea encompassed by the claim sufficient to transform the claimed abstract idea into a patent-eligible application. Nor does the claim recite an additional element or elements that reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. (Ans. 13–14.) Rather, the disputed limitations are part of the abstract idea itself. See Alice, 573 U.S. at 222 (“In holding that the process was patent ineligible, we rejected the argument that ‘implement[ing] a principle in some specific fashion’ will ‘automatically fal[l] within the patentable subject matter of § 101.’”) (alterations in original) (quoting Flook, 437 U.S. at 593). “It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself.” Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018). Moreover, “[p]atent law does not protect claims to an ‘asserted advance in the realm of abstract ideas . . . no matter how groundbreaking the advance.’” Aatrix, 890 F.3d at 1359 (citation omitted). Appeal 2020-002715 Application 13/790,379 13 Nothing regarding any aspect of the “ordered combination” of the claim elements provides significantly more than the abstract idea that claim 1 is directed to.5 Accordingly, we agree with the Examiner that claims 1–10 and 12–22 are patent ineligible. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–10, 12–22 112 Indefiniteness 1–10, 12–22 1–10, 12–22 101 Eligibility 1–10, 12–22 Overall Outcome 1–10, 12–22 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 5 In regard to Appellant’s argument that the claims to do not preempt the field, “[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).