Ex Parte Henderson et al

Patent Trials and Appeals Board

Jun 11, 2019

13246060 - (D) (P.T.A.B. Jun. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/246,060 09/27/2011
23460 7590 06/13/2019
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Christopher Henderson
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.
283191 4238
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/13/2019 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER HENDERSON, STEPHEN BAINES,
and ROBERT GRAYBILL
Appeal2017-002725
Application 13/246,060
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges
SHAH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING 1
STATEMENT OF THE CASE
The Appellants have filed a request for rehearing under 37 C.F.R.
§ 41.52 (hereinafter "Request"), dated April 8, 2019. The Request seeks
reconsideration of our Decision (hereinafter "Decision"), mailed February 8,
2019, affirming the Examiner's rejection of claims 1-3, 6-13, and 15-20
under 35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed June 20, 2016, as amended Aug. 22, 2016).
Appeal2017-002725
Application 13/246,060
We have jurisdiction over the Request under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, to responses to a
new ground of rejection designated pursuant to § 41.50(b ), or presentations
of new arguments based upon recent decisions of the Federal Circuit.
37 C.F.R. § 41.52.
ISSUE ON REHEARING
The Appellants argue that the Board
does not provide a basis for its conclusion that Appellant's claims
do not recite additional elements that "integrate the judicial
exception into a practical application" under the second prong of
the two-prong first step of the analytical framework (for initially
determining whether an invention is directed to an "abstract
idea") set forth in the USPTO's 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Revised Guidance") that provides a revised framework for
determining patent eligible subject-matter under Section 101.
Request 1. Thus, the
Appellant [sic] seeks clarification of the previous conclusion set
forth at pages 9-10 of the Decision regarding the analytical basis
for concluding the combination of elements recited in the three
closing "wherein" clauses of Appellant's claim 1 do not
constitute a "practical application" in light of prong 2 ( of the
two-pronged first step) of the Revised Guidance.
Id. at 2 ( emphases omitted).
DISCUSSION
On January 7, 2019, the USPTO issued revised guidance regarding
patent eligibility under 35 U.S.C. § 101. 2019 Revised Patent Subject
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Application 13/246,060
Matter Eligibility Guidance, 84 Fed. Reg. 50 ("2019 Revised Guidance").
The 2019 Revised Guidance "applies to all applications, and to all patents
resulting from applications, filed before, on, or after January 7, 2019." Id.
However, the 2019 Revised Guidance "does not constitute substantive
rulemaking and does not have the force and effect of law." Id. at 51. In
particular, the Guidance "does not create any right or benefit, substantive or
procedural, enforceable by any party against the USPTO" and although
USPTO personnel are "expected to follow the guidance," failure to do so "is
not, in itself, a proper basis for either an appeal or a petition." Id. Thus, to
the extent the Appellants contend that there is "an error" in the Decision
because the Board failed to follow the guidelines (see Request 1 ), we
disagree. The Board applied the Supreme Court's two-step framework,
described in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 75-77 (2012) and Alice Corp. v. CLS Bank, 573 U.S. 208, 216-18
(2014), and considered the guidelines in that application. Furthermore, any
alleged failure to follow the guidelines is not a proper basis for rehearing.
The 2019 Revised Guidance provides, in relevant part, that "in revised
Step 2A examiners should ensure that they give weight to all additional
elements, whether or not they are conventional, when evaluating whether a
judicial exception has been integrated into a practical application."
2019 Revised Guidance, 84 Fed. Reg. at 55. The Guidance provides
"exemplary considerations [that] are indicative that an additional element ( or
combination of elements) may have integrated the exception into a practical
application" and notes that some of these considerations were previously
discussed in the context of Step 2B (step two of the Alice/Mayo framework).
Id. (footnote omitted). Relevant among those examples are whether "[a]n
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Application 13/246,060
additional element reflects an improvement in the functioning of a computer,
or an improvement to other technology or technical field" (id. citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir.
2015), whether "an additional element implements a judicial exception with,
or uses a judicial exception in conjunction with, a particular machine or
manufacture that is integral to the claim" (id.), and whether "an additional
element applies or uses the judicial exception in some other 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" (id. citing Diamond v.
Diehr, 450 U.S. 175, 192 (1981)). "[E]xamples in which a judicial
exception has not been integrated into a practical application" include
whether "[a]n additional element merely recites the words "apply it" (or an
equivalent) with the judicial exception, or merely includes instructions to
implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea" (id. citing Alice), whether "an additional
element adds insignificant extra-solution activity to the judicial exception"
(id. citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75-77 (2012) and Parker v. Flook, 437 U.S. 584, 594--95 (1978)),
and whether "an additional element does no more than generally link the use
of a judicial exception to a particular technological environment or field of
use" (id. citing Flook and Bilski v. Kappas, 561 U.S. 593, 611 (2010)).
The Decision specifically states "the claim does not 'integrate the
judicial exception into a practical application.'" Decision 9 ( quoting 2019
Revised Guidance, 84 Fed. Reg. at 55)). The Decision provides reasoning
that the claim uses generic or conventional technology to apply the abstract
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Application 13/246,060
idea (id. at 10), that the claim does not address "problems 'necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks' (id. quoting DDR Holdings,
773 F.3d at 1257), and that there is no "improvement to computer
technology and/or functionality" (id. at 11 ). The Decision also specifically
addresses the "'wherein' clauses" in determining that the purported
improvement of generating a ranking using a weighted average
reimbursement and for a particular procedure associated with codes merely
elaborates on the abstract idea without providing any technological benefits
or improvements. Id. Thus, to the extent the Appellants contend that there
is "an error" in the Decision because the Board did not provide analysis why
"the three closing 'wherein' clauses of Appellants' claim 1 do not constitute
a 'practical application' in light of prong 2" (Request 2), we disagree.
In the Request at pages 2 and 5, the Appellants repeat the arguments
presented in the Appeal Brief at pages 8 and 10 regarding the claimed
invention reciting a particular solution to remedy a problem. The Decision
addresses this argument at pages 7 through 11.
The Appellants' argument that the
claims recite an invention that can only be implemented in a
meaningful way using a networked computer system including a
database and various querying modules that retrieve and process
specifically identified information to render the ranking of
providers for a particular medical procedure that is in tum used
to generate a particular incentive that is provided to the medical
services consumer.
(Request 5) is a new argument not presented in the Appeal or Reply Briefs.
Even so, the Appellants do not provide reasoning how such an
implementation provides "an additional element that applies or uses the
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Application 13/246,060
judicial exception in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment"
of a networked computer system with a database and modules, "such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception." 2019 Revised Guidance, 84 Fed. Reg. at 55.
DECISION
The Appellants' Request has been granted to the extent that we have
reconsidered our Decision in light of the Appellants' Request, but is denied
in all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
DENIED
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