Ex Parte Godwin et al

Patent Trials and Appeals Board

Oct 11, 2018

13102570 - (D) (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/102,570 05/06/2011
20792 7590
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
10/12/2018
FIRST NAMED INVENTOR
Sharen Ann Godwin
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.
9392-9IP 7395
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
10/12/2018 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 SHAREN ANN GODWIN and FRANK PHILLIP SHEPPARD 1
Appeal2017-007906
Application 13/102,570
Technology Center 3600
Before CAROLYN D. THOMAS, JON M. JURGOV AN, and
NABEEL U. KHAN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-52, all the pending claims in the
present application. (See Claims Appendix). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to displaying a targeted
message based on a prescription number (see Spec., Abstract).
1Appellants name Ateb, Inc. as the real party in interest (App. Br. 1).
Appeal2017-007906
Application 13/102,570
Claim 1 is illustrative:
1. A method of operating a pharmacy comprising:
accepting identification of a pharmaceutical prescription
during a pharmacy transaction;
accepting a signature on a signature capture system at the
pharmacy during the pharmacy transaction;
querying at least one database with a processor using
predefined criteria based on the identification of a pharmaceutical
prescription to identify a targeted message;
and
displaying the targeted message on the signature capture
system at the pharmacy during the pharmacy transaction.
Appellants appeal the following rejections:
RI. Claims 1-52 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter (Final Act. 2-
3); and
R2. Claims 1-52 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Dahlin (US 2004/0172295 Al, Sept. 2, 2004), Moura (US
2007/0124172 Al, May 31, 2007), and Uecker (US 6,240,394 Bl, May 29,
2001) (Final Act. 4--13).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
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ANALYSIS
Re} ection under § 101
Issue 1: Did the Examiner err in finding that the claims are directed
to non-statutory subject matter?
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially excepted from patent eligibility under § 101. According
to Alice step one, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 23 5 5. If the claims are not directed to an abstract idea [ or other
patent-ineligible concept], the inquiry ends. If the claims are 'directed to' an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016). In analyzing whether a claims is directed to an
abstract idea, we look to other decisions where similar concepts were
previously found abstract by the courts. See Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
In this regard, with respect to independent method claims 1 and 27,
and similarly, non-transitory computer-readable medium claims 26 and 52
and system claims 25 and 51, the Examiner finds that the claims are directed
to the abstract idea of "(i) comparing new and stored information and using
rules to identify options, and (ii) using categories to organize, store, and
transmit information" (Final Act. 3).
Appellants challenge said findings on the ground that "the Office
Action appears to have generically re-categorized the specific recitations of
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the claims at an unacceptable high level" (App. Br. 8) and "the pending
claims are clearly directed to more than simply the abstract idea" (id. at 9).
It is evident that the Examiner considered all the limitations in the
claims because the analysis is tethered to actual claim language (see Final
Act. 3; Ans. 7). Further, the Examiner properly and reasonably found that
representative claim 1 is at least directed to "comparing new and stored
information and using rules to identify options" (Final Act. 3) which is an
abstract idea that can be described at different levels of abstraction. Cf
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016)
("An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.")
Here, the Examiner highlighted some known abstract concepts, i.e.,
comparing new and stored information and using rules to identify options;
and using categories to organize, store and transmit information (see Ans. 7-
8). We find that the Examiner's cogent analysis relying on judicial
examples (id.), albeit without specifically citing the particular cases, shows
the Examiner provided adequate basis for making the rejection.
We note that claim 1 recites four steps: (1) accepting identification of
a pharmaceutical prescription; (2) accepting a signature; (3) querying at least
one database based on the pharmaceutical prescription; and ( 4) displaying
the targeted message. These four steps present a scheme for operating a
pharmacy.
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Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that "collecting information, analyzing it, and displaying certain
results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016); Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011). Because the claims are directed to collecting
information, analyzing it, and providing information based thereon to users,
we agree with the Examiner that claim 1 is directed to a known abstract idea.
Appellants further contend that the claims "[do] not preempt the entire
field of comparing new and stored information" (App. Br. 10), "[i]nstead the
claims are directed to a practical application of technology ... [and] has a
real world use and benefit" (id.).
Although pre-emption "might tend to impede innovation more than it
would tend to promote it, 'thereby thwarting the primary object of the patent
laws"' (Alice, 134 S. Ct. at 2354 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012))), "the absence of complete
preemption does not demonstrate patent eligibility" (Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). Moreover,
because we find the claimed subject matter covers patent-ineligible subject
matter, the pre-emption concern is necessarily addressed. "Where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
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Mayo framework, [] preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, 788 F.3d at 1379.
We now tum to the second step of the Alice framework: "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."' Alice, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo, 566 U.S. 66, 72-73 (2012)).
Appellants contend that "[ t ]he current claims improve an existing
technological process because signature capture devices ... are used to
display a targeted message ... which may facilitate improved
communications with pharmacy customers and patients" (App. Br. 9). We
find this argument unpersuasive.
For example, in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1259 (Fed. Cir. 2014), the subject claim was held patent-eligible
because it encompassed "an inventive concept" for resolving a "particular
Internet-centric problem." In contrast, we find Appellants' method
performed by a processor ( claim 1) does not provide a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." Id. at 1257. Because we find
all claims on appeal merely use a generic computer or processor as a tool
which is used in the way a computer normally functions, we conclude that
the claims fail to impart any discernible improvement upon the computer or
processor; nor do Appellants' claims solve "a challenge particular to the
Internet" as considered by the court in DDR, 773 F.3d at 1256-57.
Appellants also contend that "[ s ]imply identifying that conventional
computers can be used to implement the recitation does not render the claim
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abstract" (App. Br. 11 ), and "because the claims are patentable over the cited
art ... and thus meet the requirements of novelty and non-obviousness of
35 U.S.C. 102/103, the claims include unconventional limitations and
unconventional steps" (id.).
Appellants are reminded 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, 134 S. Ct. at 2359 ("use ofa computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions" is not an inventive concept)). As recognized by the Supreme
Court, "the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at
23 5 8-59 ( concluding claims "simply instruct[ ing] the practitioner to
implement the abstract idea of intermediated settlement on a generic
computer" not patent eligible).
Also, although the second step in the Alice/Mayo framework is termed
a search for an "inventive concept," the analysis is not an evaluation of
novelty or non-obviousness, 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. A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 1304. Our reviewing court guides that "[e]ligibility and
novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable
Commc'ns., LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
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(holding that "[ e ]ven assuming" that a particular claimed feature was novel
does not "avoid the problem of abstractness").
For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
Rejection under§ 103(a)
Claims 1-20, 23-41, 43-46, and 49-52
Issue 2: Did the Examiner err in finding that Dahlin, Moura, and
Uecker collectively teach or suggest displaying a targeted message on a
signature capture system at the pharmacy, as set forth in claim 1?
Appellants contend that "[ a ]lthough Dahlin provides messages on a
message pad ... Dahlin does not disclose or render obvious displaying
targeted messages on a signature capture system at a pharmacy ... [ and]
Dahlin does not disclose querying at least one database" (App. Br. 5).
Appellants further contend that "Moura does not relate to prescription[ s] ...
[t]herefore, Moura does not disclose or render obvious displaying targeted
messages on a signature capture system at a pharmacy during a pharmacy
transaction" (id. at 5---6). Appellants also contend that "the system [ of]
Uecker relies on data in a print stream and printed messages to the customer,
and Uecker provides no apparent reason or motivation to use a signature
capture system and does not describe or suggest how its data capture
techniques could even be used in such a signature capture system" (App. Br.
6). We disagree with Appellants.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
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In essence, as identified by the Examiner (see Ans. 5), Appellants are
arguing the references individually. For instance, the Examiner finds that
Dahlin teaches "accepting a signature on a signature capture system ...
[and] displaying the targeted message on the signature capture system during
the pharmacy transaction" (Final Act. 4; Ans. 4); Moura teaches "querying
at least one database ... based on the identification of a pharmaceutical
prescription" (Final Act. 4; Ans. 5); and Uecker teaches "at the pharmacy"
(Final Act. 5; Ans. 5). Therefore, as noted by the Examiner "it is the
combination of Dahlin et al., Moura et al., and Uecker et al. that renders
obvious Appellants' claimed invention" (Ans. 5).
Stated differently, Appellants' arguments do not take into account
what the collective teachings of the prior art would have suggested to one of
ordinary skill in the art and is therefore ineffective to rebut the Examiner's
prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) ("The test for obviousness is not whether ... the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.") ( citations omitted). This reasoning is
applicable here.
For example, Appellants' argument against Dahlin separately from
Moura and Uecker does not persuasively rebut the combination made by the
Examiner. One cannot show non-obviousness by attacking references
individually, where the rejections are based on combinations of references.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellants' arguments regarding the Examiner's rejection of independent
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claims 25-27, 51, and 52 rely on the same arguments as for claim 1, and
Appellants do not argue separate patentability for the dependent claims,
except as noted below. We, therefore, also sustain the Examiner's rejection
of claims 2-20, 23--41, 43--46, and 49-52.
Claims 21, 22, 42, 47, and 48
Issue 3: Did the Examiner err in finding that Dahlin teaches or
suggests a targeted message that solicits participation of the patient in a
survey, as set forth in claim 21?
Appellants contend that they "cannot find any portion of Dahlin that
proposes or suggests targeted messages that solicit participation of the
patient in a survey" (App. Br. 7). Although the Examiner cites numerous
paragraphs for allegedly teaching the aforementioned feature (see Final Act.
12), we agree with Appellants that it is not readily clear where this feature is
taught/suggested in Dahlin. Furthermore, the Examiner fails to specifically
address this argument in the Answer.
Therefore, we are constrained by the record before us to find that the
Examiner erred in rejecting dependent claim 21, and dependent claims 22,
42, 47, and 48 for similar reasons.
DECISION
We affirm the Examiner's§ 101 rejection of claims 1-52 and the
§ 103(a) rejections of claims 1-20, 23--41, 43--46, and 49-52.
We reverse the Examiner's§ 103(a) rejection of claims 21, 22, 42, 47,
and 48.
Because at least one rejection encompassing all claims on appeal is
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affirmed, the decision of the Examiner is affirmed.
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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