Sumathi Paturu

Patent Trials and Appeals BoardJun 28, 2021

2018008746 (P.T.A.B. Jun. 28, 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. 10/461,603 06/13/2003 Sumathi Paturu 6137 7590 06/28/2021 SUMATHI PATURU, M.D. 126 DEBBIE BLVD. HUNTSVILLE, AL 35811 EXAMINER SEREBOFF, NEAL ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 06/28/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUMATHI PATURU ____________ Appeal 2018-008746 Application 10/461,603 Technology Center 3600 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and JAMES A. WORTH, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has filed a Request for Rehearing (hereinafter “Req. Reh’g”) under 37 C.F.R. § 41.52(a)(3) of our Decision entered on August 31, 2020 (hereinafter “Decision”). Our Decision reversed the Examiner’s rejection of claims 51–56 under 35 U.S.C. § 112(b) and entered a new ground of rejection under 35 U.S.C. § 101 for claims 51–56 pursuant to our authority under 37 C.F.R. § 41.50(b). Decision 16. For the reasons identified below, we deny the Request for Rehearing. Appeal 2018-008746 Application 10/461,603 2 REQUEST FOR REHEARING ARGUMENTS Preliminarily, we begin by noting we have reviewed all the arguments Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis in our Decision substantially covers the substance of all the arguments, which have been made. But, for purposes of responding to the Request, we address various arguments in order to make individual rebuttals of same. Arguments which Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). Appellant asserts: The alleged abstract concepts (a proxy to the needed data gathering/data entry) are ‘integrated’ into the filing for a practical application. It means to say, that a health care practitioner not only accomplishes the tasks like the evaluations, data entry etc., but also he does so for and within the confines of the file, a ‘physical entity’ (hence not per se; compare with the listed ‘general concepts’ that are per se without dispute), as also said ‘physical entity’, including a computer can not create/ generate such data only the humans are aware of. Req. Reh’g 12 We disagree with Appellant. To the extent, Appellant is asserting we have applied a per se standard, Appellant is wrong. We read the claims as a whole. We found, on balance, that claim 51 is directed to a ‘“tracking’ method for the routine periodic follow-up of preventive screening, or for a variable follow-up of acute/chronic disease care by marking the future appointment date and year marked as the page number.” Decision 12. Our Appeal 2018-008746 Application 10/461,603 3 Decision finds that any additional elements in the claim at best can be seen as employing a pen and paper to assist in the mental process: The ‘logged-in’ components of the claim are described in the Specification concerning only in the context of a paper log file. See Spec. 10:22–25 (‘File dividers and the month tabs can be done as shown. As mentioned already there are some printed file dividers and tabs at the end of this text, which can be very helpful. All the patients’ records should be logged into this file.’). Thus, we find that the term ‘log-in’ refers to the use of a paper log or journal used in the assigning of patients a next visit. Id. at 13–14. What remains in the claim after disregarding the paper file limitations, are abstractions, i.e., an appointment scheduling/tracking process. “[A] claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012)). Appellant seeks to distinguish its use of pen and paper from that such as discussed in TLI Commc’ns. Specifically, Appellant argues that “the old time paper ‘computations’ of business concepts and mathematical constructs, at some point, were converted into ‘mechanical computer computations’ (that was how the term ‘computer’ was originally derived).” Req. Reh’g 14. Appellant also asserts: No statute within 35 USC / 37 CFR had set forth a rule to single out ubiquitous prior art structures like paper and pen in a process-execution, no matter the pronouncements of the courts, the latter however imply what was discussed under section-1 herein. The prior art elements like nuts and bolts, also the simplest ubiquitous tools just as pen and paper, are used in patent-eligible inventions without objections. Id. at 14–15. Appeal 2018-008746 Application 10/461,603 4 Appellant’s argument is not persuasive as to error in the rejection because Appellant’s own statements evidence its use of a pencil and paper to mark on paper otherwise mental notes in a scheduling process. For example: “This date has to [] marked as the page number with a pencil or an erasable pen in the right upper corner of the page.” Spec. 12. Also: [s]o a tab can be used to mark the last page that was taken care of, whenever there is an interruption in the middle or at the end of the day, while calling the patients for appointments, so that it is easy to know where to start the next day. If the patient misses an appointment, the rescheduled date has to be marked as the new page number, and record filed where it belongs, without changing the dot. So it must have been understood by now, that a dot tells, that an appointment was taken care of, but the PAP screening is yet to be done (emphasis added). Id. The law in Synopsys is clear, if the process can be “performed in the human mind or with pencil and paper,” it is abstract. Synopsys, 839 F.3d at 1148–49. The case law makes no distinction as to the degree of use of the pencil and paper, but only that it is used to compute. In Appellant’s case, for example, the dot which is made with pencil and paper notes a mental step, memory—“a dot tells, that an appointment was taken care of, but the PAP screening is yet to be done.” Spec 12. In other words, the dot is a representation of mental thought noting that an appointment was seen, but the PAP screening still needs to be done. Citing to footnote 14 of the Guidance,1 Appellant argues that its tracking system “can not be practically performed in the human mind (emphasis omitted),” and hence it is patent eligible. Req. Reh’g 18. 1 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). Appeal 2018-008746 Application 10/461,603 5 We are unpersuaded by Appellant’s argument here because, as discussed above, the rule of law speaks of two modes of mental processes, namely, 1. evaluation, and 2. creating perhaps with paper and pencil, graphic data interpretation perceptible only in the human mind. See TLI Commc’ns, 823 F.3d at 611. As we found above, the marking/use of a date number at a strategic place in a file is determined by the mind of the user which arranges and/or makes the mark. Similarly, the marking of a dot to make a memory note, created by a human with paper and pencil, makes graphic data perceptible only in the human mind –which is abstract. Appellant next argues, “25 innovative process steps are ‘programmed’ to be attributed to page numbers alone (as concrete Arabic numerals), such built-in programming invoking ‘conformational changes’ to facilitate tracking.” Req. Reh’g 18. We are unpersuaded by Appellant’s argument because the programming which is referred to on page 14 of our Decision as “any assertedly inventive programming,” is computer programming. Our Decision makes this clear by its citation to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). In DDR Holdings, the court evaluated the eligibility of claims “address[ing] the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after ‘clicking’ on an advertisement and activating a hyperlink.” DDR, 773 F.3d. at 1257. There, the court found that the claims were patent eligible because they transformed the manner in which a hyperlink typically functions to resolve a problem that had no “pre-Internet analog.” Thus, the programming referred to is computer Appeal 2018-008746 Application 10/461,603 6 machine language which constitutes an Internet hyperlink, and not the mental strategy used for placing notations on file pages and arranging paper file pages according to calendar dates. To the extent Appellant considers the process steps of its tracking system as programming, absent a computer to carry out these steps, they are in fact mental steps, not computer machine language. Appellant’s reference to “non-functional descriptive material” (Req. Reh’g 15, 16, 20, 21) to assert eligibility in the context of 35 U.S.C. § 101 is misplaced because although we acknowledge a functional relationship between the markings made and the file paper substrate on which the marks are made, the meaning of this relationship is intelligible only in the human mind, and thus is an abstraction. Appellant argues: The generic file envelope is conventional but the means of the contained components are not. No other filing has the specific limitation that the page numbers in each month division be confined to 1-31 (the latter in turn conforming to the patients' scheduled dates / years). Such non-generic limitation IS CRITICAL as there exists a new and unobvious function to such limitation in terms of ‘tracking.’ Req. Reh’g 24. We disagree with Appellant because the file envelope constitutes the additional element of the claim, and Appellant admits here that it is conventional. What remains is the hand-placed markings on the pages of the file and arranging of paper file pages according to calendar dates which we have set forth above constitute an abstraction manifested with pen and paper. “[A] claim for a new abstract idea is still an abstract idea.” Synopsys, 839 F.3d at 1151 (citing Mayo, 566 U.S. at 90). Appeal 2018-008746 Application 10/461,603 7 CONCLUSION OF LAW For the reasons above, we are not convinced that Appellant has shown, with particularity, points believed to have been misapprehended or overlooked in our Decision. See 37 C.F.R. § 41.52(a)(1) (2011). Outcome of Decision on Rehearing: Final Outcome of Appeal after Rehearing: 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). DENIED Claims Rejected 35 U.S.C. § Reference(s)/ Basis Denied Granted 51–56 101 Eligibility 51–56 Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 51–56 112 Indefiniteness 51–56 51–56 101 Eligibility 51–56 Overall Outcome 51–56 51–56