Chaudhri, Imran N. et al.Download PDFPatent Trials and Appeals BoardDec 13, 201913798031 - (D) (P.T.A.B. Dec. 13, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/798,031 03/12/2013 Imran N. Chaudhri APX-1301-US 9893 36088 7590 12/13/2019 KANG LIM 3494 Camino Tassajara #444 Danville, CA 94506 EXAMINER RAPILLO, KRISTINE K ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 12/13/2019 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 IMRAN N. CHAUDHRI, SHAHRAM SHAWN DASTMALCHI, ROBERT DERWARD ROGERS, VISHNUVYAS DERWARD SETHUMADHAVAN, and SHAMSHAD ALAM ANSARI Appeal 2019-000278 Application 13/798,031 Technology Center 3600 Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS, and NABEEL U. KHAN, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. Appeal 2019-000278 Application 13/798,031 2 DECISION ON APPEAL STATEMENT OF THE CASE1,2 Pursuant to 35 U.S.C. § 134(a), Appellant3 appeals from the Examiner’s decision to reject claims 1–16, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). 1 We refer to the Specification, filed March 12, 2013 (“Spec.”); Final Office Action, mailed October 17, 2017 (“Non-Final Act.”); Appeal Brief, filed April 17, 2018 (“Appeal Br.”); and Examiner’s Answer, mailed August 9, 2018 (“Ans.”). 2 Appellant indicates “there are no appeals or interferences that could directly affect or be directly affected by or having a bearing on the decision by the Board of Patent Appeals and Interferences in the pending appeal.” Appeal Br. 3, Related Appeals and Interferences. We initially note Appellant erroneously names the predecessor to this tribunal (i.e., BPAI) which was replaced by this Board (i.e., PTAB) effective September 16, 2012. Substantively, Appellant omits mention of appeals filed in applications related to the instant application before this Board by virtue of claiming priority to a common earlier filed application, serial number 13/223,228, including an appeal filed in connection with that earlier application. Thus, the following appeals are considered related to the current appeal and should have been identified by Appellant: 1. Appeal No. 2017-010346 in connection with serial number 13/223,228 decided on July 27, 2018, in which the Board reversed the Examiner’s 35 U.S.C. § 103(a) rejections of all of the claims then pending. 2. Appeal No. 2018-001790 decided on March 1, 2019 in connection with serial number 13/769,261, in which, in connection with all pending claims, the Board reversed a rejection under 35 U.S.C. § 101 and affirmed a rejection under 35 U.S.C. § 103(a). 3. Appeal No. 2020-000377, notice of appeal filed on November 27, 2018 in connection with serial number 13/801,947, now pending before the Board and awaiting decision. In connection with the omission, Appellant and Appellant’s counsel are reminded of their duty to inform the Board of related appeals. See 37 C.F.R. 41.37(c)(l)(ii). Appeal 2019-000278 Application 13/798,031 3 We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a patient retention network using referral analytics. Spec., Title. Claim 1 is representative of the claimed subject matter: 1. In a medical information navigation engine (“MINE”), a method for referral analysis, the method comprising: inferring referral activity not reported into a referral workflow system for a plurality of physicians utilizing intent- based clustering of medical information; calculating compliance to preferred referral reporting for each physician by dividing a number of in-network referrals reported by the given physician by total number of in-network referrals inferred; calculating an opportunity metric for each physician by dividing a number of out-of-network referrals reported by the given physician by total number of out-of-network referrals inferred; and training physicians on referral practices based on the calculated compliance to preferred referral reporting and opportunity metric. REJECTION4 Claims 1–16 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 2–3. 3 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Apixio, Inc. Appeal Br. 3. 4 Rejections of claims 1–16 under 35 U.S.C. § 103(a) have been withdrawn. Ans. 3. Appeal 2019-000278 Application 13/798,031 4 ANALYSIS Except as noted, we adopt as our own the findings and reasons set forth by the Examiner in (1) the action from which this appeal is taken (Final Act. 2–3) and (2) the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 3–6) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. Section 101 defines patentable subject matter: “Whoever 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. The U.S. Supreme Court, however, has “long held that this provision contains an important implicit exception” that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law, based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). To determine patentable subject matter, we undertake a two part test. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts” of “laws of nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). “The inquiry often is whether the claims are directed to ‘a specific means or method’ for improving technology or whether they are simply directed to an abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (citation omitted). A court must be cognizant that “all inventions at some level embody, use, reflect, rest upon, or apply laws of Appeal 2019-000278 Application 13/798,031 5 nature, natural phenomena, or abstract ideas” (Mayo, 566 U.S. at 71), and “describing the claims at . . . a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). If the claims are directed to an abstract idea or other ineligible concept, then we continue to the second step and “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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). The Court describes the second step 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.’” Id. (quoting Mayo, 566 U.S. at 72–73). The Office recently published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”); see also USPTO, October 2019 Update: Subject Matter Eligibility, available at https://www. uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019) (“Oct. 2019 Guidance”). Under the Revised Guidance, we look to whether the claim recites Appeal 2019-000278 Application 13/798,031 6 (1) a judicial exception, such as a law of nature or any of the following groupings of abstract ideas: (a) mathematical concepts, such as mathematical formulas; (b) certain methods of organizing human activity, such as a fundamental economic practice; or (c) mental processes, such as an observation or evaluation performed in the human mind; (2) any additional limitations that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)); and (3) any additional limitations beyond the judicial exception that, alone or in combination, were not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)). See Revised Guidance, 84 Fed. Reg. at 52, 55, 56. Under the Revised Guidance, if the claim does not recite a judicial exception, then it is eligible under § 101, and no further analysis is necessary. Id. at 54. Similarly, under the guidance, “if the claim as a whole integrates the recited judicial exception into a practical application of that exception,” then no further analysis is necessary. Id. at 53, 54. Step 2A, Prong 1 In connection with Step 2A the Examiner determines “Claims 1–16 are directed to the abstract idea of using a medical information navigation engine for physician referral” including “performing the steps of inferring information, calculating information, and training on the information calculated.” Final Act. 2. According to the Examiner “[t]hese steps correspond[] to concepts identified as abstract ideas by the courts, such as Appeal 2019-000278 Application 13/798,031 7 ‘an idea of itself’ in Digitech[5].” Id. The Examiner addresses each of the limitations, as follows: The limitations are correlated to the concept of []organizing information through mathematical correlations by inferring referral activity not reported in a referral workflow system utilizing intent-based clustering of medical information (collecting information); calculating compliance to preferred referral reporting . . . by dividing . . . referrals reported by the . . . total number of . . . referrals inferred (mathematical calculations); and training physicians on referral practices based on the calculated compliance to preferred referral reporting and opportunity metric (organizing the information). Final Act. 2–3. Appellant argues the step of training is not merely the organization of information but “is an affirmative action, which falls outside of any identified category of ‘abstract’ concept.” Appeal Br. 9. The Examiner responds, finding: [T]he training feature of claims 1 and 9 (“training physicians on referral practices based on the calculated compliance to preferred referral reporting and opportunity metric”) fails to disclose how the training is implemented (for example, is it a computer based training, in-person training). The Appellant’s [S]pecification merely states “ . . . The MINE 112 provides the ability to track patient referrals in a manner which may guide practitioners to refer patients in network, and can provide tools for targeting physician education and training on referral practices” (paragraph 82 of Appellant's specification). Ans. 4–5. 5 Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding claims directed to “a process of organizing information through mathematical correlations” are patent-ineligible under § 101) Appeal 2019-000278 Application 13/798,031 8 Appellant’s contention is unpersuasive of Examiner error. Appellant provides insufficient evidence or argument in support of the assertion that training is not merely the organization of information similar to concepts found to be abstract ideas as asserted by the Examiner. In support of the training step Appellant directs attention to paragraph 82 of the Specification. Appeal Br. 4. The cited portion of the Specification discloses employing patient retention systems that “collect data, generate referral analytics, and otherwise compile and analyze relevant data.” Spec. ¶ 82. We find no mention thereat or elsewhere in the Specification of training. Thus, consistent with Appellant’s disclosure, we agree with the Examiner the training limitation is reasonably interpreted as the organizing of information as recited by the claim, i.e., “training physicians on referral practices based on the calculated compliance to preferred referral reporting and opportunity metric.” Based on this interpretation, the training limitation may be characterized as (i) a certain method or organizing human behavior including managing personal behavior or relationships or interactions including teaching (see Revised Guidance, 84 Fed. Reg. at 52); and (ii) organizing information that can be performed in the human mind, i.e., a mental process and thus corresponds to an abstract idea. We further agree with the Examiner, and Appellant does not dispute, the steps of inferring and calculating involve collecting information and performing mathematical calculations that are mental processes (e.g., making observations, evaluating, and making judgments that can be performed in the human mind and/or with pen and paper) and mathematical concepts, all of which are considered to be abstract ideas. See Final Act. 2– 3. Appeal 2019-000278 Application 13/798,031 9 Furthermore, consistent with Appellant’s Specification, the claims are also directed toward patient retention and marketing activities. Spec. ¶ 81. Marketing is a type of commercial activity that, like teaching, is a certain method of organizing human activity corresponding to an abstract idea. For the reasons discussed above, the claims recite mental processes and certain methods of organizing human activity (i.e., teaching and/or marketing) that are considered to be abstract ideas under the Revised Guidance. Step 2A, Prong 2 The Examiner determines “[t]he claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea.” Final Act. 3. The Examiner further finds “[t]here is no indication that the combination of elements improves the functioning of a computer or improves any other technology.” Id. Appellant contends the claims amount to significantly more than the abstract concepts identified by the Examiner because, rather than just reciting using mathematical equations in the abstract, the claims recite “using mathematical equations to analyze for referral opportunities and using this information to train physicians.” Appeal Br. 9. The Examiner responds, finding “the claims simply instruct the additional elements to implement the concept described in the abstract idea with routine, conventional activity specified at a high level of generality in a particular technological environment.” Ans. 4. Appeal 2019-000278 Application 13/798,031 10 We are unpersuaded the claims integrate the judicial exception into a practical application. Appellant’s emphasis on the training of physicians is unavailing because, as discussed above, the training step is interpreted as the organizing of information that can be performed in the human mind and, as such, a mental process. In addition, the training step is also considered to be a certain method or organizing human activity by managing personal behavior, i.e., teaching and/or commercial or legal interactions, i.e., marketing. Certain methods of organizing human activity and mental processes are identified in the Revised Guidance as abstract ideas. In contrast, we find no features of the recited training that involve some improvement to a technology such as improved operation of the inference engine of claim 9 or any of the underlying technology such as any processor supporting indexing and searching operations. For the reasons discussed and in the absence of sufficient evidence or argument to the contrary, we determine the claims do not include additional elements that integrate the judicial exception into a practical application because the additional elements: (1) do not improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05(a)–(c), (e)–(h). Instead, any improvement is to the underlying idea of using a medical information navigation engine for physician referral requiring only the collection, manipulation, and Appeal 2019-000278 Application 13/798,031 11 organizing of information. Thus, claim 1 does not integrate the judicial exception into a practical application. Step 2B Because claim 1 recites a judicial exception and does not integrate that exception into a practical application, we must then reach the issue of whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. Revised Guidance, 84 Fed. Reg. at 56. We analyze the claim elements, that are well-understood, routine, conventional both individually and as an ordered combination. See Alice, 573 U.S. at 217-18, 221-22 (“we consider the elements of each claim both individually and ‘as an ordered combination’” to determine whether the claim includes “significantly more” than the ineligible concept) (quoting Mayo, 566 U.S. at 78-79); see also Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (“an inventive concept can be found in the non- conventional and non-generic arrangement of known, conventional pieces.”). The Examiner finds: The claims are merely generic components that perform functions well-understood, routine, and conventional activities that amount to no more than implementing the abstract idea with a computerized system. The Applicant’s published application recites “The interface 113, in some embodiments, is a software program that executes on one or more servers 232, which can be a server of any kind of suitable computing engine, such as personal computer (PC). The servers 232 receive secure information through the link 342 from the sources 114. The processor 116, in some embodiments, includes the module 236 Appeal 2019-000278 Application 13/798,031 12 and one or more servers 234, which may be any suitable computing engine, similar to the servers 232, including but not limited to PCs or servers.” (paragraph 49). Final Act. 3. We agree with the Examiner. Appellant has not identified any limitation or combination of limitations of claim 1 or claim 9 that is not “well-understood, routine, conventional” in the field as per MPEP § 2106.05(d). Therefore, we conclude claims 1 and 9, each viewed “both individually and as an ordered combination,” do not recite significantly more than the judicial exception to transform the claim into patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting Mayo, 566 U.S. at 79). Accordingly, for the reasons discussed, independent claims 1 and 9 are directed to certain methods of organizing human activity and mental processes identified as abstract ideas. Furthermore, the claims do not recite limitations that amount to significantly more than the abstract idea itself. Therefore, we sustain the rejection of independent claims 1 and 9 under 35 U.S.C. § 101, together with the rejection of dependent claims 2–8 and 10–16 which are not argued separately with particularity. DECISION We affirm the Examiner’s rejection under 35 U.S.C. § 101. Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–12 101 Eligibility 1–16 Appeal 2019-000278 Application 13/798,031 13 FINALITY AND 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation