Ex Parte Hsiao et al

Patent Trial and Appeal Board

Jul 17, 2018

13614189 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/614,189 09/13/2012
48062 7590 07/19/2018
RYAN, MASON & LEWIS, LLP
2425 Post Road
Suite 204
Southport, CT 06890
FIRST NAMED INVENTOR
Mark J.H. Hsiao
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.
YOR920110159US2 4554
EXAMINER
GISHNOCK, NIKOLAI A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/19/2018 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):
ctoffice@rml-law.com
kmm@rml-law.com
mjc@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK J.H. HSIAO, PEI-YUN S. HSUEH,
SREERAM RAMAKRISHNAN, and LIANGZHAO ZENG
Appeal2017-005126
Application 13/614,189 1
Technology Center 3700
Before KEN B. BARRETT, WILLIAM V. SAINDON, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
10 and 13-162 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machine. Appeal Br. 1.
2 Claims 11 and 12 are canceled. Appeal Br. 12, Claims App'x.
Appeal2017-005126
Application 13/614,189
CLAIMED SUBJECT MATTER
The disclosure is directed to a computer implemented method for a
wellness decision support system that uses a risk assessment model to select
an action plan for a user. Spec. 2:3-10. Claim 1, reproduced below, is the
sole independent claim and is illustrative of the claimed subject matter:
1. A method for providing one or more user-centric
wellness decision support services, wherein the method
comprises:
providing an interface that facilitates identification of a
risk assessment model of interest for a user, wherein the interface
is communicatively linked to at least one computing device;
identifying, based on user input via the interface, (i) a risk
assessment model, (ii) one or more risk factors, and (iii) a user-
specified level of importance associated with intervention on
each of the one or more risk factors, wherein said identifying
comprises processing, executed by the at least one computing
device, the user input provided via the interface against a
wellness knowledge repository communicatively linked to (i) the
interface and (ii) the at least one computing device;
applying the risk assessment model to one or more user
wellness records to assess the user's wellness risk level, wherein
said applying is executed by the at least one computing device in
communication with a stored personal wellness record associated
with the user; and
ranking a set of multiple action plans (ap) based on the
assessed user wellness risk level and the one or more user
wellness records (u), wherein said ranking is executed by the at
least one computing device in communication with the stored
personal wellness record associated with the user and comprises
(i) matching a description of each of the multiple action plans
(ap) to the one or more user wellness records (u), (ii) aggregating
the level of importance (imp) for each of the one or more risk
factors (f) under each of the multiple action plans, and (iii)
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Application 13/614,189
determining an importance level of each of the multiple action
plans by computing a weighted average (w) of factor importance
within each of the multiple action plans via:
n
imp (ua, api) = I Wfi 'imp (ua,J;), wherein wjz'= Wfi~ I Wfi, and
fi E api i=l
wherein each of the multiple action plans comprises one
or more relevant disease management and lifestyle interventions.
OPINION
Appellants presents arguments for independent claim 1, but do not
present separate arguments for the remaining claims subject to this rejection.
See Appeal Br. 5-8. The claims will be treated as a group, with claim 1
being representative, in accordance with 37 C.F.R. § 4I.37(c)(l)(iv) (2014).
Claims 2-10 and 13-16 stand or fall with claim 1.
Section 101 of the patent law provides that one may obtain a patent
for "any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The
Supreme Court has held that this provision includes important exceptions,
notably those that prohibit one from patenting abstract ideas, laws of nature,
or natural phenomena. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014). Although a law of nature or an abstract idea is not
patentable, the application of these concepts may be patentable. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94
(2012).
In deciding this Appeal, we apply the framework as set forth by the
Supreme Court in Mayo and Alice. According to the Mayo and Alice
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framework, to determine whether claims are directed to ineligible subject
matter, we apply the two-step test of Mayo, id. at 1296-97, which has been
further explained in Alice, 134 S. Ct. at 2355. First, we determine whether
the claims at issue are directed to a patent-ineligible concept such as an
abstract idea. Id. Second, we "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." Id.
at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298). Although the second step
in the Mayo/Alice 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).
The Federal Circuit has described the first step as a determination of
the "basic character of the [claimed] subject matter." Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (citing
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266,
1273-74 (Fed. Cir. 2012)). The Federal Circuit has also indicated that this
step should determine whether a claimed method "recites an abstraction -
an idea, having no particular concrete or tangible form." Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also Alice, 134 S. Ct.
at 2355 ("The 'abstract ideas' category embodies 'the longstanding rule that
'[a]n idea of itself is not patentable."" (quoting Gottschalkv. Benson, 93
S. Ct. 253, 255 (1972) (further quotations and citations omitted)).
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The Examiner's Step One Analysis
The Examiner determines that the claims are directed to the abstract
idea of insurance and risk analysis in that the claimed inventive concept is an
"effort of pure thought." Final Act. 4--5; Ans. 8-11. Analyzing the claims as
a whole, the claims recite nothing more than a method of using an algorithm
to rank a set of multiple action plans using a weighted average of factor of
importance. Appeal Br. 10 (Claims App'x.). As the Examiner determined,
all the steps could be performed by a human. See Final Act. 5. ("The claim
can be understood to merely require a human being, such as an analyst, to
operate a computer in an ordinary way, for the benefits of speed, long-
distance communication, and retrieval of data, which are well-known
benefits of using computers for many applications."). The present claims
fall into the computer-as-a-tool category. See Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Contrasting claims directed to "an
improvement to computer functionality itself' from claims directed to
"economic or other tasks for which a computer is used in its ordinary
capacity."). See also Bilski v. Kappas, 130 S. Ct. 3218, 3230 (Explaining
that claims containing an algorithm are unpatentable not because they
contained the algorithm but, because once that algorithm was assumed to be
within the prior art, the application, considered as a whole, contained no
patentable invention.)." Thus, the Examiner correctly determined that the
claims are directed to an abstract idea.
The Examiner's Step Two Analysis
In the Final action, the Examiner further determines that the claim
limitations when considered individually or as an ordered combination did
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not amount to significantly more than the judicial exception. Final Act. 5---6;
Ans. 11-14. The Examiner bases these determinations on the fact that a
generic computer may be used to perform the invention and generic
computers performing their intended function have been held by the
Supreme Court to be routine and conventional. Final Act. 5---6.
Claim 1 explicitly recites a method of using an algorithm to rank a set
of multiple action plans using a weighted average of factor of importance.
The claim itself, however, does not describe any particular way for the
computer to go about such ranking. Appellants' Specification does not
describe any new or unique computer hardware or software to perform these
features. See Spec 19:20-22 ("These computer program instructions may be
provided to a processor of a general purpose computer, special purpose
computer, or other programmable data processing apparatus"), see also id. at
21 : 6-10 (" [I]t should be understood that the components illustrated herein
may be implemented in various forms of hardware, software, or
combinations thereof; for example, application specific integrated circuit( s)
(ASICS), functional circuitry, one or more appropriately programmed
general purpose digital computers with associated memory."). As such, we
agree with the Examiner's finding that claim 1 requires only routine
computer hardware. Consistent with the Supreme Court's decision in
Benson, we conclude that simply reciting the use of a generic computer
functionality in claim 1 to lend speed or efficiency to the performance of the
abstract idea (ranking action plans) does not meaningfully limit claim scope
for purposes of patent eligibility. See Benson, 93 S. Ct. at 255 (invalidating
as patent-ineligible claimed processes that "can be carried out in existing
computers long in use, no new machinery being necessary"). The Examiner
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is also correct in the determination that the claimed invention did not amount
to significantly more than the judicial exception because Appellants'
Specification and claims do not require unique hardware or software but
conventional computer components and conventional software.
Appellants' Arguments
Appellants argue that "the specific requirements of the independent
claims include multiple discrete, narrowing implementation limitation []
have largely been ignored in the Examiner's written analysis." Reply Br. 4.
The Examiner finds that the claims are directed to a method of organizing
human activity and more pertinently, "insurance and risk analysis." Final
Act. 4--5. Citing cases showing similar concepts that were previously found
abstract by the courts is one way to show that the claims of an application
are abstract. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) ("[T]he decisional mechanism courts now apply
is to examine earlier cases in which a similar or parallel descriptive nature
can be seen-what prior cases were about, and which way they were
decided.").
Further, in this regard, the Examiner cites the decision in Cyberfone
Systems v. CNN Interactive Group, Inc. 558 Fed. App'x. 988 (Fed. Cir.
2014) (non-precedential), see Ans. 3. The Examiner determines that
Appellants' use of categories to organize, store and transmit information is
similar to the concept of categorical data storage found to be patent
ineligible in Cyberfone. Id. The Examiner further states that "Alice []
provides an example of computer functions and components that have been
treated as conventional." Id. at 4. We are not apprised of error in the
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Examiner's determination that the claims contain a patent ineligible abstract
idea.
Appellants assert that the invention recited in the claims is much like
the patent eligible invention recited in Trading Technologies International,
Inc. v. CQG, Inc. (Fed. Cir. 2017). Appellants argue that the instant claims
require the following features.
"[A] structured graphical user interface ("a wellness knowledge
repository communicatively linked to (i) the interface and (ii) the
at least one computing device") with a "prescribed functionality
directly related to the user interface's structure that is addressed
to and resolves a specifically identified problem in the prior state
of the art."
Reply Br. 4.
Appellants refer to the Specification page 1, lines 13-24 as an
example in support of their position. Id. Appellants' claims do not recite
these features as limitations. Further, Appellants' Specification does not
describe any new or unique computer hardware or software. See "The
Examiner's Step Two Analysis" supra. Further, the law is clear that simply
programming a computer to perform what would otherwise be an abstract
idea is not sufficient to impart patent eligibility. See Alice, 134 S. Ct. at
2359.
Appellants argue that the claimed invention recites "a combination of
elements sufficient to ensure that the claims are significantly more than the
alleged abstract idea." Reply Br. 5, Appeal Br. 5. Further, Appellants
contend that they are "adding a specific limitation other than what is well-
understood, routine and conventional in the field." Appeal Br. 5.
Appellants, however, do not identify this limitation.
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Appellants' argument does not explain how the features of the
claimed invention amount to significantly more than the abstract idea.
Appellants have neither identified the claim limitations that are directed to
solving a problem in the computer arts, nor stated what problem in the
computer arts is being solved. Instead, Appellants' claims are stated at a
high level of generality and do not provide an inventive concept sufficient to
transform the abstract idea into patent-eligible subject matter. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(quoting Alice Corp. 134 S. Ct. at 2357 (2014)). Accordingly, without more,
Appellants' argument that the claimed invention is an improvement in the
computer art does not apprise us of error in the Examiner's rejection.
Appellants argue that the Examiner acknowledges that the claimed
invention is novel and nonobvious because the Examiner has withdrawn the
rejection based upon prior art. Thus, according to Appellants, the claims
include "a specific limitation other than what is well-understood, routine and
conventional in the field." Appeal Br. 6.
Although the second step in the Mayo/Alice 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
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for the inventive concept necessary for patent eligibility." Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Appellants'
argument that the claims are novel and unobvious does not persuade us of
error in the Examiner's rejection because the determination of novelty and
unobviousness are separate determinations from patent eligible subject
matter.
Appellants argue that the "Examiner's unsupported allegation that the
claims implement the abstract idea 'with routine, conventional activity' is
directly contradicted by the Examiner's subsequent acknowledgement that
the claims are novel and non-obvious." Appeal Br. 6. The Examiner cites to
Alice for support that a generic computer is routine and conventional. See
Final Act. 6 ("[T]he claims simply instruct the practitioner to implement the
abstract idea with routine, conventional activity. See also Alice Corp. Pty.
Ltd. v. CLS Bank Int'l. 134 S. Ct. 2347 (2104)").
The Court stated in Alice that implementing a mathematical algorithm
on a computer is well-understood, routine and conventional. See Alice, 134
S. Ct. 2352 ("We hold that the claims at issue are drawn to the abstract idea
of intermediated settlement, and that merely requiring generic computer
implementation fails to transform that abstract idea into a patent-eligible
invention."). We agree with the Examiner's determination that the computer
of the claim is well-understood, routine and conventional. See "The
Examiner's Step Two Analysis" supra.
Appellants argue that "the Examiner has erred as a matter of law by
alleging that 'a novel abstract idea remains an idea, and cannot be per se
eligible."' Appeal Br. 7. To the extent that Appellants are arguing that a
claim that includes an abstract idea is patent eligible subject matter if it
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includes something that is significantly more than the judicial exception.
This is true; however, the Examiner did not err in determining that the claim
lacks something that is significantly more than the judicial exception.
Without the claim defining something that is significantly more than the
judicial exception, the subject matter of the claim is patent-ineligible.
Accordingly, Appellants' argument is unpersuasive.
Accordingly, we sustain the rejection of claim 1 based upon the
reasoning discussed supra. We also sustain the rejection of claims 2-10 and
13-16. Thus, the rejection of claims 1-10 and 13-16 is sustained.
DECISION
For the above reasons, the Examiner's rejection of claims 1-10 and
13-16 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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