Ex Parte Hsiao et al

Patent Trial and Appeal Board

Jul 17, 2018

13153673 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/153,673 06/06/2011
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.
YOR920110159US 1 9526
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
Appeal2016-008467
Application 13/153,673 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
17-25 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines. Appeal Br. 1.
2 Claims 1-16 are cancelled. Appeal Br. 11, Claims App 'x.
Appeal2016-008467
Application 13/153,673
CLAIMED SUBJECT MATTER
The disclosure is directed to a computer implemented wellness
decision support system that uses a risk assessment model to assess a user's
risk and select an action plan for that user based on a risk assessment. Spec.
1:4--2:3. Claims 17 and 22 are the sole independent claims pending in the
application. Claim 17, reproduced below, is representative of the claimed
subject matter:
17. A computer program product comprising a tangible
non-transitory computer readable recordable storage medium
including computer useable program code for providing one or
more user-centric wellness decision support services, the
computer program product including:
computer useable program code for 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;
computer useable program code for 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;
computer useable program code for 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
computer useable program code for 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
2
Appeal2016-008467
Application 13/153,673
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 (j) under each of
the multiple action plans, and (iii) 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, apt)= I Wfi 'imp (ua,fi), wherein w/= Wfi--c- I Wfi, and
jiEapt 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 7, but do not
present separate arguments for the remaining claims subject to this rejection.
See Appeal Br. 6-10. The claims will be treated as a group, with claim 17
being representative, in accordance with 37 C.F.R. § 4I.37(c)(l)(iv) (2014).
Claims 18-25 stand or fall with claim 1 7.
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.
3
Appeal2016-008467
Application 13/153,673
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
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.
4
Appeal2016-008467
Application 13/153,673
at 2355 ("The 'abstract ideas' category embodies 'the longstanding rule that
' [ a ]n idea of itself is not patentable.'"' ( quoting Gottschalk v. Benson, 93
S. Ct. 253, 255 (1972) (further quotations and citations omitted)).
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. 3--4; Ans. 3, 6-9. Analyzing the claims
as a whole, the claims recite nothing more than a "computer program
product" using an algorithm to rank a set of multiple action plans using a
weighted average of factor of importance. Appeal Br. 11 (Claims App'x.).
As the Examiner determined, all the program limitations could be performed
by a human. See Final Act. 4. ("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
5
Appeal2016-008467
Application 13/153,673
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
not amount to significantly more than the judicial exception. Final Act. 4;
see also Ans. 10-11. 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. Id. at 4--5.
Claim 17 recites explicitly the use of a computer program product
providing computer code for ranking a set of multiple action plans. 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 17 requires only routine computer hardware
because the Appellants' Specification and Claims do not recite a need for
6
Appeal2016-008467
Application 13/153,673
unique hardware or software to practice the claimed invention. Consistent
with the Supreme Court's decision in Benson, we conclude that simply
reciting the use of a generic computer functionality in claim 17 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 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 Examiner has improperly determined that
the "mathematical concepts [] are expressly claimed [] 'at a high level of
generality."' Reply Br. 3. Appellants point to the equation recited in claim
17 as an example and "Appellant[s] direct[] the Examiner's attention to the
specifically claimed step of 'computing a weighted average ( w) of factor
importance within each of the multiple action plans,"' using the equation
recited in claim 17. Id. We understand Appellants to argue that the
invention recited in claim 17 is not an abstract idea because of the use of a
particular algorithm to compute a weighted average of factor importance for
each action plan suggested to a user. Further, it is our understanding of
7
Appeal2016-008467
Application 13/153,673
Appellants' argument that by using the specific algorithm, action plans are
recommended to the user based upon the factor importance calculation.
We agree with the Examiner that "[ t ]he idea of using an algorithm to
rank a set of action plans according to a risk assessment and a user's
specified level of importance of risk factors is similar to 'ideas standing
alone."' Ans. 3. In other words, a specific algorithm is still an algorithm.
Without something significantly more, the algorithm is still an abstract idea
and thus is not patent eligible subject matter. Appellants' argument is not
persuasive.
Appellants then contend that the Examiner has not considered "the
collection of specific claim limitations as a whole." Reply Br. 4. This is
contrary to the express statement of the Examiner that the limitations of the
claims are considered individually and as a combination. See Final Act 5;
see also Ans. 8-9. The Examiner specifically reviewed the limitations of
claim 17. See Final Act. 2-3. In addition, the Examiner made specific
findings of fact with respect to the claims in the Final Action at pages 4 and
5, in addition to the further explanation provided in the Examiner's Answer.
Appellants do not explain why the Examiner's analysis does not consider the
claim limitations as a whole. Thus, as stated above, the Examiner has
addressed the specific claim limitations individually and as a whole and we
are not apprised of error in the Examiner's rejection.
According to Appellants, "the specific limitations of the independent
claims affirmatively include a specific improvement to the way computers
operate." Reply Br. 4. Appellants contend that they are "adding a specific
limitation other than what is well-understood, routine and conventional in
8
Appeal2016-008467
Application 13/153,673
the field." Appeal Br. 6. Appellants, however, do not identify this
limitation.
Appellants recite two instances in the Specification in which computer
operations are allegedly improved in the Reply Brief namely, "bootstrapping
the processing of personal wellness risk profiling from examples, saving
users from the high entry barrier of manual input," and "develop[ing] a
configurable wellness decision service engine, where service providers, with
permission from the user, can plug-in various wellness evidences to provide
personalized services." Id. Appellants' claims do not recite these features as
limitations. Further, Appellants' Specification does not describe any new or
unique computer hardware or software to perform these features. 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 then 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. 6. Appellants'
argument does not explain how the limitations of the claimed invention
amount to significantly more than the abstract idea. Unlike the claims at
issue in cases such as DDR Holdings LLC v Hotels.com LP, 773 F.3d 1245,
1257 (Fed. Cir. 2014) (finding that the claims at issue are "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks"). Appellants have neither
identified the claim limitations that are directed to solving a problem in the
computer arts, nor stated what problem is being solved. Instead, Appellants'
9
Appeal2016-008467
Application 13/153,673
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 then 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." Id. at 7.
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). Appellants' argument that the claims are novel and
unobvious does not persuade us of error in the Examiner's rejection.
Appellants next 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. 7.
The Examiner cites to Alice for support that a generic computer is routine
and conventional. See Final Act. 5 ("[T]he claims simply instruct the
10
Appeal2016-008467
Application 13/153,673
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
(2014)").
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 because as we
stated previously, the Claims and Specification do not recite unique
hardware or software, only conventional computer components. See "The
Examiner's Step Two Analysis" supra.
Appellants then 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. 8; Reply Br. 7. To the extent that Appellants are
arguing that a claim that includes an abstract idea is patent eligible subject
matter if it 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 as we explained above. See "The Examiner's Step Two Analysis"
supra. 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.
11
Appeal2016-008467
Application 13/153,673
Accordingly, we sustain the rejection of claim 17 based upon the
reasoning discussed supra. We also sustain the rejection of claims 18-25.
Thus, the rejection of claims 17-25 is sustained.
DECISION
For the above reasons, the Examiner's rejection of claims 17-25 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
12