Professional Risk Associates, Inc.

Patent Trials and Appeals Board

Jan 3, 2022

2021002231 (P.T.A.B. Jan. 3, 2022)

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. 14/724,912 05/29/2015 Stephen S. Fargis 147506.000101 1272 11951 7590 01/03/2022 Troutman Pepper Hamilton Sanders LLP (Rochester) 70 Linden Oaks Suite 210 Rochester, NY 14625 EXAMINER SOREY, ROBERT A ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 01/03/2022 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): BadumK@pepperlaw.com USPTOinboxroc@pepperlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN S. FARGIS ____________ Appeal 2021-002231 Application 14/724,912 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and TARA L. HUTCHINGS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 3-7, 9-13, and 15-18. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). The Appellant identifies the real party in interest as Professional Risk Associates, Inc. Appeal Br. 3. Appeal 2021-002231 Application 14/724,912 2 THE INVENTION Appellant claims a method for optimizing analysis of risk management data for medical practices. (Spec. ¶ 2, Title). Claim 1 is representative of the subject matter on appeal. 1. A method for providing improved risk management analytics to facilitate generation of risk management interventions, the method implemented by one or more risk analyzing computing devices and comprising: determining a frequency of occurrence of each of a plurality of International Statistical Classification of Diseases (ICD) codes in obtained condition indication data associated with a medical practice and generating a ranking of the ICD codes based on the frequency of occurrence, wherein the frequency of occurrence corresponds to a frequency of use of each of the ICD codes in the treatment of patients of the medical practice; comparing the condition indication data to obtained medical malpractice claims data for a plurality of medical liability insurance carriers to identify one or more of a plurality of risk issues associated in the medical malpractice claims data with a subset of the ICD codes, wherein the subset of the ICD codes is determined based on the ranking and each of the risk issues corresponds with at least one basis for a medical malpractice claim; and outputting, for electronic display on a display device, one or more recommended risk management interventions determined based on a correlation of the one or more recommended risk management interventions with the identified one or more of the risk issues. THE REJECTIONS Claims 1, 3-7, 9-13, and 15-18 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Appeal 2021-002231 Application 14/724,912 3 Claims 1, 5, 6, 7, 11, 12, 13, 17, and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Sullivan (US 2007/0239490 A1, published Oct. 11, 2007) to in view of Langan (US 2004/0064341 A1, published Apr.1, 2004) to further in view of Simpson (US 6,266,645 B1, issued July 24, 2001). Claims 3, 4, 9, 10, 15, and 16 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Sullivan, Langan, Simpson, and further in view of Segal (US 6,615,181 B1, issued Sept. 2, 2003). ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1, 3-7, 9-13 and 15-18 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. . . . [The Court] described step two of this analysis as a 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.” Appeal 2021-002231 Application 14/724,912 4 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335-36. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50, 50-57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims are directed to providing improved risk management analytics to facilitate generation of risk management interventions. (Non-Final Act. 3). The Examiner determines that the claims under a broadest reasonable interpretation cover fundamental economic principles or practices and/or managing personal behavior, relationships or interactions between people and falls within the certain method of organizing human activity grouping of abstract ideas. (Id ). The Examiner finds that the additional elements of computing devices, a display Appeal 2021-002231 Application 14/724,912 5 device and non-transitory computer medium are recited at a high level of generality such that they amount to incidental and token additions that do not alter or affect how the process steps or functions in the judicial exception are performed and, therefore, do not integrate the judicial exception into a practical application. (Id. at 4). The Examiner also finds that the recitations of the additional elements are not sufficient to amount to significantly more than the judicial exception, because the recitations are no more than mere instructions to apply the exception using generic components. (Id. at 5). The Specification discloses a method of providing risk management analytic data in which “condition indication data is compared with medical malpractice claims data to identify one or more of a plurality of risk issues associated in the medical malpractice claims data with a predetermined number of highest ranked one or more of the condition indications in the condition indication data.” (Spec. ¶6). One or more of the recommended risk management interventions associated with the one or more risk issues are provided to the medical practice. As such, we agree with the Examiner that the invention is directed to providing improved risk management analytics to facilitate generation of risk management interventions. We thus agree with the Examiner’s determination that the claims are directed to controlling the behavior of persons concerning the fundamental practice of risk assessment which is a certain method of organizing human behavior. Also, we find the steps of “determining a frequency of . . . codes,” “comparing the condition indication data to obtained medical malpractice claims data,” and “outputting. . . one or more recommended risk management interventions. . . ” constitute “analyzing information by steps Appeal 2021-002231 Application 14/724,912 6 people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that the claims recite the judicial exception of a certain method of organizing human activity and in the alternative, a mental process. Turning to the second prong of the “directed to” test, claim 1 requires “computing devices” and a “display device.” These recitations do not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible.”). We also find no indication in the Specification that the claimed invention affects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or Appeal 2021-002231 Application 14/724,912 7 functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitations do not affect an improvement in the functioning of computing device or the electronic device a computer or other technology, do not recite a particular machine or manufacture that is integral to the claims, and do not transform or reduce a particular article to a different state or thing. Id. Thus, claim 1 is directed to a judicial exception that is not integrated into a practical application and thus claim 1 is directed to abstract ideas. Turning to the second step of the Alice analysis, because we find that the claim is directed to abstract ideas, the claim must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). The introduction of a computer components like computing devices and an electronic display into the claim does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same Appeal 2021-002231 Application 14/724,912 8 deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Instead, “the relevant question is whether claim 1 here does more than simply instruct the practitioner to implement the abstract ideas . . . on a generic computer.” Id. at 225. It does not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval-one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis Appeal 2021-002231 Application 14/724,912 9 other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Claim 1 does not, for example, purport to improve the functioning of the computing devices or the electronic display. As we stated above, claim 1 does not affect an improvement in any other technology or technical field. Thus, claim 1 at issue amounts to nothing significantly more than instructions to apply the abstract idea of providing improved risk management analytics to facilitate generation of risk management interventions using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments that Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected Appeal 2021-002231 Application 14/724,912 10 under 35 U.S.C. § 101. (Appeal Br. 12-18). We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of emphasis, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that claim 1 does not relate to any fundamental economic principles, commercial or legal interactions or managing any personal relationships. (Appeal Br. 13). We agree with the Examiner’s response to this argument found on pages 7-8 of the Answer and adopt the same as our own. Specifically, we agree with the Examiner that the purpose of the invention is to provide an output to the medical practice of one or more recommended risk management interventions associated with one or more risks and the in this way the invention covers the behavior of the person or persons providing the intervention. We note that mitigating risk, as is done in claim 1 is specifically listed as a certain method of organizing human activity in the Guidance. Guidance, 84 Fed. Reg. at 52. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the claims recite a practical application because the claims provide a technical solution to a technological problem relating to improved risk management analytics. Appellant specifically argues that with the technology recited in the claims, “medical malpractice claims data for numerous medical practices associated with a plurality of insurance liability carriers is advantageously compared to medical practice data to identify risk issues associated with condition indications, such as codes ICD-9 codes, in the data.” (Appeal Br. 14). This argument fails at the outset because claim 1 does not recited numerous medical practices but Appeal 2021-002231 Application 14/724,912 11 rather claim 1 recites “a medical practice.” In any case, we agree with the Examiner’s response to this argument found on pages 8-9 of the Answer and adopt the same as our own. In addition, the improvements touted by the Appellant come from the conceptual idea itself of providing improved risk management analytics to facilitate generation of risk management interventions. Appellant argues that the claimed technology is directed toward solving issues relating to optimizing medical data analytics to improve identification of risk management interventions and not directed to improving technology. (Appeal Br. 15). These benefits, however, are not improvements to computing device or electronic display functionality. Instead, they are benefits that flow from performing an abstract idea in conjunction with a well-known computer components. BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018). We are not persuaded of error by the Examiner by the argument that Appellant has not attempted to preempt any particular abstract idea. (Appeal Br. 15, 17). While 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); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362- 63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). And, “[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. Appeal 2021-002231 Application 14/724,912 12 We are not persuaded of error on the part of the Examiner by Appellant’s argument that the Examiner has not presented evidence that the claimed activity is well-understood, routine or conventional in accordance with the requirements set out in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). (Appeal Br. 16). We agree with the Examiner’s response to this argument found on pages 10-11 of the Answer and the Examiner’s findings regarding the additional elements on pages 5-6 of the Non-Final Action and adopt the same as our own. We specifically agree with the Examiner that the elements in addition to the abstract idea are the computing devices and the display device because each of the other limitations in claim 1 are in furtherance of the abstract idea of providing improved risk management analytics to facilitate generation of risk management interventions. In addition, Appellant cannot reasonably contend, nor does Appellant, that the operations of the computing devices and the display device are not well- understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 1 require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving, transmitting, and processing information. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer, 890 F.3d at 1373 (Moore, J., concurring) (internal citations omitted); see also BSG Tech, 899 F.3d at 1291 Appeal 2021-002231 Application 14/724,912 13 (“BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well-understood, routine and conventional database structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). In view of the foregoing, we will sustain this rejection as it is directed to claim 1. We will also sustain this rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. 35 U.S.C. § 103 REJECTIONS We will not sustain this rejection because we agree with the Appellant that the prior art does not disclose computing devices that “identify one or more plurality of risk issues associated in the medical malpractice claims data with a subset of ICD codes,” as required by claim 1. (Appeal Br. 10). This recitation requires the medical malpractice risk issues to be associated with ICD codes. The Examiner relies on Sullivan for teaching comparing condition indication data with obtained medical malpractice claims data and relies on Simpson for teaching determining ICD codes based of the frequency of use of each code. (Non-Final Act. 8-9). However, the Examiner does not make a specific finding that the prior art teaches that the medical malpractice risk issues are associated with the ICD codes, as required by claim 1. We find that the portions relied on by the Examiner of Sullivan do not disclose ICD codes and do not disclose associating the ICD codes with risk issues related to medical malpractice. Rather, we find that Appeal 2021-002231 Application 14/724,912 14 Simpson discloses that patient condition codes are ranked according to frequency of occurrence and later examined to determine which combination of codes likely specified septic shock implicitly. (col. 10. ll. 23-28; col. 16, ll. 17-30). There is no disclosure in Simpson of associating the ICD codes with malpractice risk issues. In view of the foregoing, we will not sustain this rejection as it is directed to claim 1 and claims 5 and 6 dependent therefrom. We also will not sustain this rejection as it is directed to independent claims 7 and 13 and dependent claims 11, 12, 17, and 18, because each of the remaining claims require the identification of one or more plurality of risk issues associated with medical malpractice claims data with a subset of ICD codes. We will not sustain the rejection of claims 3, 4, 9, 10, 15, and 16, for the same reasons. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1, 3-7, 9-13 and 15-18 under 35 U.S.C. § 101. We conclude the Examiner did err in rejecting claims 1, 3-7, 9-13 and 15-18 under 35 U.S.C. § 103. CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-7, 9- 13, 15-18 101 Eligibility 1, 3-7, 9- 13, 15-18 Appeal 2021-002231 Application 14/724,912 15 1, 5, 6, 7, 11, 12, 13, 17, 18 103 Sullivan, Langan, Simpson 1, 5, 6, 7, 11, 12, 13, 17, 18 3, 4, 9, 10, 15, 16 103 Sullivan, Langan, Simpson, Segal 3, 4, 9, 10, 15, 16 Overall Outcome 1, 3-7, 9- 13, 15-18 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED