Ex Parte Cohen et al

Patent Trial and Appeal Board

Nov 5, 2018

13398457 (P.T.A.B. Nov. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/398,457 02/16/2012
20995 7590 11/07/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Jeff Cohen
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.
WTOK.OOlA 6994
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/07/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF COHEN and KENDALL THIESSEN
Appeal2017-009513 1
Application 13/398,457
Technology Center 3600
Before ERIC B. CHEN, ADAM J. PYONIN, and JOHN R. KENNY,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject all pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 "The real party in interest in the present application is Welltok, Inc." App.
Br. 1.
Appeal2017-009513
Application 13/398,457
STATEMENT OF THE CASE
Introduction
The Application is directed to a "system and method for using social
tools, such as social media, to engage one or more members of a healthcare
ecosystem." Abstract. Claims 25, 27-36, and 38--46 are pending; of these,
claims 25 and 36 are independent. See App. Br. 17-21. Claim 25 is
reproduced below for reference (emphasis added):
25. A computer-implemented process of establishing a
connection, in an online platform, between an individual user of
the platform and a healthcare entity, the process comprising:
storing verification data associated with the healthcare
entity, the verification data comprising unique attributes of
individuals having relationships outside the online platform
with the healthcare entity;
receiving a submission from the user of user attribute
information that does not identify the user, the user attribute
information specifying a personal attribute of the user and being
suitable for verifying an existence of a relationship, outside the
online platform, between the user and the healthcare entity;
receiving, from the user, a request to establish a
connection for communicating anonymously with the
healthcare entity;
validating the request to establish the connection,
wherein validating the request comprises verifying that the
submitted user attribute information matches user attribute
information included in the verification data associated with
the healthcare entity, to thereby verify that the user has a
relationship outside the online plaiform with the healthcare
entity;
at least partly in response to validating the request,
creating an anonymous connection between the user and the
healthcare entity on the online platform, said anonymous
connection enabling the user to communicate via the online
platform with the healthcare entity while remaining anonymous
to the healthcare entity;
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Application 13/398,457
executing, in association with the anonymous connection,
a privacy filter that anonymizes communications from the user
to the healthcare entity;
controlling access by the user to content and services on
the online platform based on the existence of the anonymous
connection;
said process performed programmatically by a computing
system that comprises a server that hosts content of the online
platform.
References and Re} ections
Claims 25, 27-36, and 38--46 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2.
Claims 25, 27-34, and 38--45 stand rejected under 35 U.S.C. § I02(b)
as being anticipated by Holtzman (US 2006/0155999 Al; July 13, 2006).
Final Act. 4.
Claims 35 and 46 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Holtzman and Heckerman (US 2007/0112598 Al; May
17, 2007). Final Act. 14.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Arguments Appellants could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential).
A. 35 US.C. § 101
Appellants do not separately argue the claims. See App. Br. 4. We
select claim 25 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Appellants do not persuade us the Examiner errs in determining the
claims are patent ineligible pursuant to the two part test enumerated in Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347 (2014)). See Final Act. 2-
3, 16-22; Ans. 3-7. We adopt the Examiner's reasoning with respect to this
rejection, to the extent consistent with our analysis; we add the following for
emphasis.
Step One
Appellants argue the Examiner errs in determining the claims are
directed to an abstract concept, because "the claimed subject matter is not
similar to anything found by the courts to represent an abstract idea." App.
Br. 5. Particularly, Appellants contend the present claims "involve a privacy
filter or anonymized communications" and are, thus, different from claims
previously found to be abstract. App. Br. 5.
The Examiner determines claim 25 is "directed to an online platform
that establishes a privacy filter to help users communicate anonymously with
a healthcare entity." Final Act. 2-3. Therefore, the Examiner determines
the claim is directed to "the abstract idea of using categories to organize,
store and transmit information," because "the current invention uses
categories to organize information (user information that has been filtered
through a privacy filter); store information (verification of user data), and
transmit information (anonymous communication to the healthcare entity)."
Final Act. 17.
We agree with the Examiner's determination. The claimed process is
used to establish an anonymized connection between a user and an entity,
and our reviewing court has held claims directed to similar processes are
abstract. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
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1314, 1324 (Fed. Cir. 2016) (holding the claims are directed to the abstract
concept of "facilitate[ing] anonymous loan shopping"); Intellectual Ventures
I LLC v. Symantec Corp., 838 F.3d 1307, 1313-14 (Fed. Cir. 2016)
("filtering files/e-mail-is an abstract idea," and "[ c ]haracterizing e-mail
based on a known list of identifiers is no less abstract"); Voter Verified, Inc.
v. Election Sys. & Software LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) ("the
claims as a whole are drawn to the concept of voting, verifying the vote, and
submitting the vote for tabulation ... [which] are therefore nothing more
than abstract ideas."); In re Salwan, 681 F. App'x 938, 941 (Fed. Cir. 2017)
(affirming the rejection under§ 101 of claims directed to "storing,
communicating, transferring, and reporting patient health information,"
noting that "while these concepts may be directed to practical concepts, they
are fundamental economic and conventional business practices"); Smartflash
LLC v. Apple Inc., 680 F. App'x 977, 983 (Fed. Cir. 2017) (holding the
"claims are directed to the abstract idea of conditioning and controlling
access to data based on payment").
Regarding Appellants' arguments that claim 25 does not preempt all
"online platform[ s] that establishes a privacy filter to help users
communicate anonymously with a healthcare entity," this argument is not
persuasive. App. Br. 5. Any questions on preemption in the instant case
have been resolved by the analysis herein. As our reviewing court has
explained: "questions on preemption are inherent in and resolved by the
§ 101 analysis," and, although "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); cf OIP Techs., Inc. v. Amazon.com, Inc., 788
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F.3d 1359, 1362---63 (Fed. Cir. 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.").
Thus, we agree with the Examiner that claim 25 is directed to an
abstract concept pursuant to step one of the Alice framework. See Final
Act. 3.
Step Two
Appellants argue that "[ e ]ven if, arguendo, the present claims involve
an abstract idea at some level, they are directed to 'significantly more' than
an abstract idea, and thus comply with section 101 under Part 2 of the [Alice]
two-part test." App. Br. 6. Particularly, Appellants contend "[t]he Office
Action ... fails to properly consider all of the limitations" including the
required "specific process by which the system validates the existence of a
relationship between the user and the healthcare entity. (Note that this
validation process is separate from, and occurs prior to, the use of the
privacy filter to anonymize communications.)." App. Br. 7.
We are not persuaded of error, as Appellants have not identified an
inventive concept that transforms the claim into patent eligible subject
matter. The validation limitations of claim 25 are performed in order to
create the anonymous communications and are part of the abstract idea,
itself; thus, these limitations were properly considered under part one of the
Alice test, above. See Ans. 17, 20; see also Mortg. Grader, Inc., 811 F.3d at
1324 (holding the recited "credit grading" to be part of the abstract idea of
facilitating anonymous loan shopping); Voter Verified, Inc., 887 F.3d at
13 86 (limitations that are part of the abstract idea are addressed under part
one of the analysis). Further, the process of claim 25 may be implemented
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on a conventional computer system (see Spec. 7-8), and the claimed privacy
"features are well understood in the art" (Spec. 11 ). Thus, Appellants have
not shown the Examiner errs in determining the "claim is nothing more than
a purely conventional computerized implementation of the Applicant's
abstract idea" (Final Act. 20), which require only "generic, routine and
conventional operations of a computer system" (Ans. 5).
We also do not find reversible error in the Examiner's determination
that "[ n Jone of the claims (independent or dependent) effects an
improvement to another technology or technical field (besides electronic
communication); nor do any of the claims amount to an improvement to the
function of a client device configured to communicate." Ans. 5. Although
Appellants contend "[ t ]his statement appears to acknowledge that the claims
effect an improvement to the technical field of electronic communication,"
we do not read the Examiner's analysis to be such an acknowledgement.
Contra Reply Br. 4. Rather, the Examiner determines that the claims are
directed to improvements in communication, and recite electronic means to
do so. See Ans. 7 ("Appellant[ s] ha[ ve] failed to provide evidence on how
the instant claims, and particularly the combination of the instant claimed
elements, provide an improvement or solution to an existing technological
process"); Spec. ,r 3 ( describing a goal of the invention is to engage with
consumers). We agree with the Examiner, and note that "relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible." OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice Corp.,
134 S. Ct. at 2359 ("use of a computer to create electronic records, track
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multiple transactions, and issue simultaneous instructions" is not an
inventive concept)).
Nor are we persuaded by Appellants' argument that "the present
claims are similar to the Bascom claims in that both involve inventive
processes for controlling user access to content available on a computer
network." Reply Br. 4; see also App. Br. 9--10; Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Unlike
the claims in Bascom-and as discussed above-Appellants' claim 25 does
not provide improvements to the computer system itself. Bascom, 827 F .3d
at 1351 ("the claimed invention represents a 'software-based invention[]
that improve[ s] the performance of the computer system itself."').
Appellants, notably, mention an "improvement recited in the ... claims"
without identifying any particular improvement, technical or otherwise.
Reply Br. 5. Thus, we are not persuaded the Examiner errs in determining
Bascom is inapposite to the determination of patent eligibility of the present
claims. See Ans. 5-7; cf Intellectual Ventures I LLC, 838 F.3d at 1316
("The claims here are also distinguishable from those in BASCOM, which
allegedly improved an existing technological process," because "[t]here is
not, in the [present] patent, any 'specific or limiting recitation of ...
improved computer technology,' . . . as the asserted claims describe only
generic computer elements.").
Thus, we agree with the Examiner that claim 25 does not recite
significantly more than the abstract idea, pursuant to step two of the Alice
framework. See Final Act. 3.
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B. 35 USC§ 103
Appellants argue the Examiner's anticipation rejection of claim 25
is in error, because "nowhere does Holtzman disclose anonymous
communications between a member of an organization and the organization
itself," as claimed. Reply Br. 6. Particularly, Appellants contend the cited
reference "does not seek to establish an anonymous communications channel
between the user and the organization with which the user has an existing
relationship. Rather, Holtzman seeks to enable the user/member to
anonymously post information, as a member or representative of the
organization, to other organizations or entities." App. Br. 11.
We are persuaded by Appellants' argument. Independent claim 25
recites "verifying an existence of a relationship, outside the online platform,
between the user and the healthcare entity" and "creating an anonymous
connection between the user and the healthcare entity on the online
platform." The Examiner finds Holtzman discloses these limitations:
Holtzman discloses a system and method for establishing and
managing relationships between pseudonymous identities in
electronic mediums such as electronic communities and
discussion forums and memberships in organizations [001 OJ.
Holtzman teaches an embodiment of the present invention
allows a member of an organization to establish a
pseudonymous identity that is bonded, i.e., related, to one or
more organizations. Examiner focuses on the "one" of the "one
or more organizations" and found that the reference does in fact
teach anonymous communication with the organization that the
user is a member of.
Ans. 8; see also Final Act. 15. Holtzman, however, does not show that the
communication is with the bonded organization, as the communication in
Holtzman is with other organizations on behalf of the bonded organization.
See Holtzman ,r 18 ("the invention allows an organization member to
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interact with other individuals and/or service providers on electronic
forums") ( emphasis added); see also Ans. 9.
Thus, we are persuaded by Appellants that Holtzman does not
disclose "pseudonymous communication between the user and the
organization with which the user is a member," arranged or combined in the
same way as recited in the claim. App. Br. 12; see also Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) ("[U]nless a reference
discloses within the four comers of the document not only all of the
limitations claimed but also all of the limitations arranged or combined in
the same way as recited in the claim, it cannot be said to prove prior
invention of the thing claimed."). 2 We do not sustain the Examiner's
rejection of independent claim 25, claim 36 which recites similar limitations,
or the claims dependent thereon.
DECISION
The Examiner's decision rejecting claims 25, 27-36, and 38--46 under
35 U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 25, 27-36, and 38--46 under
35 U.S.C. § 102(b) is reversed.
The Examiner's decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See
2 For purposes of this Appeal, we have only reviewed the rejections before
us. In the event of further prosecution, the Examiner may wish to consider
whether the claims are obvious in view of Holtzman, alone or in view of
other cited references. "The Board's primary role is to review the adverse
decision as presented by the Examiner, and not to conduct its own separate
examination of the claims." MPEP § 1213.02.
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37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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