Ex Parte Anderson et al

Patent Trial and Appeal Board

Mar 4, 2019

11384231 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/384,231 03/17/2006 David R. Anderson
25763 7590 03/06/2019
DORSEY & WHITNEY LLP - MINNEAPOLIS
ATTENTION: PATENT PROSECUTION DOCKETING DEPARTMENT
INTELLECTUAL PROPERTY PRACTICE GROUP - PT/16TH FL
50 SOUTH SIXTH STREET, SUITE 1500
MINNEAPOLIS, MN 55402-1498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl86386.US.Ol 9533
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
ip.docket@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. ANDERSON, JEAN RAWLINGS, and
JONATHAN B. ARTHUR
Appeal2017-011433
Application 11/384,231
Technology Center 3600
Before STEPHEN C. SIU, JENNIFER L. McKEOWN, and
SCOTT B. HOW ARD, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 4--9, and 12-16. We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Optuminsight, Inc.
App. Br. 3.
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Application 11/384,231
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention "relates, in general, to
data processing techniques, and more specifically to analyzing healthcare
data." Spec. 1, 11. 5-6. More specifically, the claimed invention is directed
to "a system and method for identifying aberrations in treatment pattern for a
medical condition." Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. In a computerized system for identifying aberrations in
treatment pattern for a medical condition so that fraud or over
utilization may be identified, a method comprising:
receiving healthcare claim data into an analysis engine,
wherein the healthcare claim data represents medical procedures
received by a plurality of patients for treatment of one or more
medical conditions;
receiving into the analysis engine medical condition
selection data transmitted from an electronic user interface,
wherein the medical condition selection data identifies a selected
medical condition to be analyzed by the analysis engine;
using the analysis engine to identify a group of healthcare
claim data to be analyzed, wherein the group of healthcare claim
data to be analyzed comprises claim data representing
substantially all medical procedures received by the plurality of
patients for treatment of the selected medical condition;
using the analysis engine to generate actual treatment
pattern data representing the medical procedures received for
treatment of the selected medical condition using the identified
group of healthcare claim data and displaying the actual
treatment pattern data as points plotted on a graph, wherein one
axis provides treatment dates in chronological order and another
axis provides relevant healthcare services for the medical
condition;
receiving into the analysis engine provider selection data
transmitted from the electronic user interface, wherein the
provider selection data identifies a selected healthcare provider
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treating one or more patients having the selected medical
condition;
using the analysis engine to identify healthcare claim data
for the one or more patients having the selected medical
condition and treated by the selected healthcare provider;
using the analysis engine to generate provider treatment
pattern data representing substantially all medical procedures
received by the one or more patients of the selected healthcare
provider for treatment of the selected medical condition using the
identified healthcare claim data for the one or more patients and
displaying the provider treatment pattern data as data points
plotted on a graph, wherein one axis provides treatment dates in
chronological order,
wherein the treatment dates have been normalized around
an anchor date, and another axis provides relevant healthcare
services for the medical condition;
using the analysis engine to compare the provider
treatment pattern data and the actual treatment pattern data;
generating comparison data representing the results of the
comparison;
displaying a comparison overlay graph that shows the
actual treatment pattern data graph and the provider treatment
pattern data graph; and
using the analysis engine to generate a notification
responsive to the comparison overlay graph indicating potential
fraud or over utilization.
THE REJECTION
The Examiner rejected claims 1, 4--9, and 12-16 under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter. Final Act. 2-5.
ANALYSIS
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 4--9, and 12-16 as directed to patent ineligible
subject matter.
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An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 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. Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216
(2014).
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. Kappas, 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 (Gottschalkv. 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, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267---68 (1853))); 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
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("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 tum 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.
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The PTO recently published revised guidance on the application of
section 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, we first look to whether the claim
recites:
(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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF p ATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)-(c), (e)-(h) (9th Ed., Rev. 08.2017, Jan. 2018)).
See Memorandum at 52, 55-56. 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 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 Memorandum at 56.
Under the first step of the eligibility analysis, the Examiner
determines that the claimed invention is directed to an abstract idea. For
example, the Examiner explains that:
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The limitations of receiving healthcare claim data and analyzing
the data then using the analyzed data to generate a treatment plan
is similar to that of collecting and analyzing information and
notifying a user, and also similar to collecting, analyzing and
displaying certain results of the collection and analysis.
Therefore the examiner identified the abstract idea.
Ans. 2-3; see also Ans. 2-3 (discussing that the claims are similar to the
abstract ideas of Cyberfone, SmartGene, Fair Warning, and Electric Power
Grp ). The Examiner further identifies that the claimed system is a system
for performing medical research. Final Act. 4.
Appellants, on the other hand, assert that the claimed invention is not
directed to an abstract idea. App. 8-9. Specifically, Appellants argue that
the Examiner oversimplifies the claims and "the alleged abstract idea is a
broad, generic statement that is completely detached from the claimed
language." App. Br. 8-9; see also Ans. 2-3. For example, Appellants
contend that
the alleged abstract idea fails to take into account specifically
recited steps and components in the claims, such as healthcare
claim data detailing medical procedures, medical condition
selection data detailing medical conditions, and provider
selection data which are used to create actual treatment pattern
data and provider treatment data and "using the analysis engine
to generate a notification responsive to the comparison overlay
graph indicating potential fraud or over utilization."
App. Br. 9. Further, Appellants assert that the claimed invention is "directed
to a particular implementation of a particular method implemented with
particular data and operations." App. Br. 9.
We find Appellants' arguments unpersuasive. The Examiner
correctly identifies that the claims are directed to the abstract idea of
collecting various medical treatment data, including, for example, data
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representing medical procedures for one or more medical conditions and
provider selection data, and using the collected data to compare or analyze
patterns between actual treatment and treatment by a selected healthcare
provider to identify potential fraud or over utilization. See, e.g., Ans. 3. In
other words, the claimed invention broadly recites a computerized method
for collecting and comparing medical treatment data to identify fraud or over
utilization, which is a mental process. See, e.g., SmartGene, Inc. v.
Advanced Biological Laboratories, SA, 555 Fed. Appx. 950, 955 (Fed. Cir.
2014) (finding that "the claim at issue here involves a mental process
excluded from section 101: the mental steps of comparing new and stored
information and using rules to identify medical options.").
As the Examiner points out, the claimed abstract idea here is similar
to those of SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555
Fed. Appx. 950 (Fed. Cir. 2014), Fair Warning IP, LLC v. Iatric Systems,
Inc., 839 F.3d 1089 (Fed. Cir. 2016), and Elec. Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016). For example, the Federal Circuit in
SmartGene explained that the claimed invention did "no more than call on a
'computing device,' with basic functionality for comparing stored and input
data and rules, to do what doctors do routinely." SmartGene, 555 Fed.Appx
at 954. The claims here similarly perform a comparison of collected medical
treatment data, a mental process, to identify potential fraud or over
utilization. See Memorandum at 52.
FairWarning is likewise applicable. The Federal Circuit in
Fair Warning found ineligible claims directed to "the concept of analyzing
records of human activity to detect suspicious behavior." Fair Warning, 839
F.3d at 1092. There, the Court explained that the claimed method
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collects information regarding accesses of a patient's personal
health information, analyzes the information according to one of
several rules (i.e., related to accesses in excess of a specific
volume, accesses during a pre-determined time interval, or
accesses by a specific user) to determine if the activity indicates
improper access, and provides notification if it determines that
improper access has occurred.
Id. at 1093. The claims here are similar- collecting data representing
human behavior, analyzing it including presenting the data as a pattern of
data points plotted on a graph, and comparing the data to determine if there
was fraudulent activity.
Similarly unpersuasive is Appellants' argument that generating
treatment pattern data and generating comparison data "do not fall into a
category of 'collecting and analyzing information and notifying a user' or
'collecting, analyzing, and displaying certain results of the collection and
analysis."' See Reply Br. 3. As the Specification identifies, the generated
treatment pattern data and comparison data are merely a presentation of
plotted data points. See, e.g., Figs. 4, 5, and 14. As such, we are not
persuaded that the Examiner erred in determining that the claimed invention
is directed to an abstract idea.
We next determine that the claimed invention does not integrate the
abstract idea into a practical application. The claimed invention is not
directed to a technological improvement nor do they improve the
functioning of a computer. Instead, the claims merely implement the
abstract idea on a computer. As the Examiner explains, "[t]hough the claims
arguably improve the process of generating a treatment plan and generating
comparison data, it still just an improvement to the process of generating
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treatment pattern using a generic processor. It does not improve the
computer technology itself." Ans. 4; see also MPEP § 2106.05(±).
Appellants argue that "the claims do not extend to the use of any type
of categories to organize, store, and transmit any type of information" and
thus "the claimed method is directed to a particular implementation of a
particular method implemented with particular data and operations." App.
Br. 9. We disagree. While the claimed invention is collecting and analyzing
medical treatment pattern data, not just any data, this does not alter that
comparing the collected medical treatment pattern data is a mental process.
See, e.g, Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259
(Fed. Cir. 2016) ("The Supreme Court and this court have repeatedly made
clear that merely limiting the field of use of the abstract idea to a particular
existing technological environment does not render the claims any less
abstract."); MPEP 2106.05(h); see also Ans. 2-3 (noting that the claimed
particular method with particular data and operation is akin to the abstract
ideas of Cyberfone, SmartGene, Fair Warning, and Electric Power).
We further note that certain claimed steps, such as displaying a
comparison overlay graph and generating a notification in response to
potential fraud and over utilization, is insignificant extra-solution activity to
the abstract idea. See, e.g., CyberSource v. Retail Decisions, Inc., 654 F.3d
1366, 1375 (Fed. Cir. 2011); MPEP 2106.05(g). As such, the claimed
invention does not integrate the abstract idea into a practical application.
With respect to step two of the eligibility analysis, the Examiner
determines:
The claimed elements of the recited system do not add
meaningful limitations to the identified abstract idea( s) claimed
beyond generally linking the judicial exception to a particular
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technological environment, that is, implementation via
computers. Thus, taken alone and in combination, the additional
elements do not amount to significantly more than the above-
identified abstract idea.
Final Act. 5. The Examiner further explains that while the claims "arguably
improve the process of generating a treatment plan and generating
comparison data, [ the claimed invention] still just an improvement to the
process of generating treatment pattern using a generic processor. It does
not improve the computer technology itself." Ans. 4.
Appellants argue that the claims amount to significantly more than the
abstract idea. App. Br. 10. Specifically, Appellants assert that:
the Office Action fails to actually consider the elements of the
claim as a whole. Rather, the Office Action attempts to fit a
square peg into a round hole by rephrasing the claim limitations
into terms that better suit the rejection and ignoring those parts
of the claims that are inconvenient to the foregone conclusion of
ineligibility.
App. Br. 10. Appellants particular point to the limitations of using the
analysis engine generating provider treatment pattern data, using the analysis
engine to compare treatment pattern data, and using the analysis engine to
generate a notification to "demonstrate that the claims contain limitations
that amount to significantly more than the abstract idea[]." Reply Br. 3.
We find Appellants' arguments unpersuasive. As discussed above,
the claimed invention collects various data, generates a visual display of that
data, and generates a notification in response to the collected data. See, e.g.,
Spec. Figs. 4, 5, and 14 (demonstrating that generating treatment pattern data
is merely displaying of data points). The Federal Circuit, in considering step
2 of the eligibility analysis, has found similar steps of collecting, analyzing
and displaying of data "does nothing significant to differentiate a process
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from ordinary mental processes, whose implicit exclusion from § 101
undergirds the information-based category of abstract ideas." Electric
Power, 830 F. 3d. at 1355; see also id. ("Merely requiring the selection and
manipulation of information-to provide a "humanly comprehensible"
amount of information useful for users [] by itself does not transform the
otherwise-abstract processes of information collection and analysis.");
SmartGene, 555 Fed.Appx at 955 (finding that a computer comparing stored
and input data using rules does not render the claims eligible under step 2 of
the eligibility analysis).
We are also not persuaded of error by Appellants' argument that the
conclusion that the claims were "novel and nonobvious tends to show that
the claim elements, when considered as an ordered combination, include
significantly more than merely routine, conventional, and well-understood
components." Although the second step in the Alice/ Mayo analysis includes
a search for an inventive concept, the analysis is not an evaluation of novelty
or nonobviousness, but rather, a search for "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."' Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304. Further, "under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature ( or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility." Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). As such, based
on the record before us, we are not persuaded that the Examiner erred in
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determining that the claimed invention is directed to ineligible subject
matter.
Accordingly, we affirm the Examiner's decision to reject claims 1, 4--
9, and 12-16 as directed to patent ineligible subject matter.
DECISION
We affirm the Examiner's decision to reject claims 1, 4--9, and 12-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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