Ex Parte KELLEGREW et al

Patent Trial and Appeal Board

Oct 30, 2018

13706542 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/706,542 12/06/2012 John Andrew KELLEGREW
74739 7590 11/01/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
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.
2011-009 lUSO 1 2508
EXAMINER
GILLIGAN, CHRISTOPHER L
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN ANDREW KELLEGREW, MICHAEL ROBERT ATLAS,
JEFFREY FRANCISCO, and MARK RAYMOND RINKER
Appeal2017-007822
Application 13/706,542
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
JOHN R. KENNY, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-3 and 5-20. Claim 4 has been
canceled. See App. Br. 17 (Claims App'x). We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants state the real party in interest is Oracle International
Corporation. App. Br. 2.
Appeal2017-007822
Application 13/706,542
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to managing clinical data.
Spec. ,r 1. Claim 1, which is illustrative, reads as follows:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to send data changes to a safety compliance
management system associated with a regulatory agency, the
sending comprising:
defining at least one data field of a plurality of data fields
as a significant data field;
sending safety data stored within a first data object to the
safety compliance management system within a first data packet,
wherein the safety data is defined as a subset of data stored within
an electronic data capture system, and wherein the safety data is
associated with an adverse event of a clinical trial;
monitoring the safety data that is stored within the
electronic data capture system;
identifying a plurality of changes to the safety data that has
been sent to the safety compliance management system;
determining whether to report one of the plurality of
changes,
in response to a first change to the safety data comprising
a change to at least one data value associated with the significant
data field, sending the changed safety data stored within a second
data object to the safety compliance management system within
a second data packet; and
in response to a second change to the safety data not
comprising the change to at least one data value associated with
the significant data field, not sending the changed safety data to
the safety compliance management system.
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Rejection
Claims 1-3 and 5-20 stand rejected under 35 U.S.C. § 101 because
the claimed subject matter is judicially-excepted from patent eligibility
under§ 101. Final Act. 2--4.
Issue on Appeal
Did the Examiner err in finding that claims 1-3 and 5-20 are directed
to subject matter that is judicially-excepted from patent eligibility under
§ 101?
PRINCIPLES OF LAW
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. The inquiry often is whether the claims are directed to "a
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specific means or method" for improving technology or whether they are
simply directed to an abstract end-result. McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Circ. 2016). If the claims are
not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step, where the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78-79). We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that is the abstract idea
and merely invoke generic processes and machinery. See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Step 1
CONTENTIONS AND ANALYSIS
The Examiner finds the claims are directed to
[D ]efining a data field as a significant data field, sending safety
data associated with an adverse event of a clinical trial to a
regulatory agency, monitoring the safety data, identifying
changes to the sent safety data, determining whether to report the
changes, and only sending the changed safety data to the
regulatory agency when the change is to a data value associated
with the significant data field. This is similar to comparing new
and stored information and using rules to identify options
(SmartGene[, Inc. v. Advanced Biological Laboratories, SA, 555
Fed. Appx. 950 (Fed. Cir. 2014)]) because the above identified
functions are directed to comparing new changes in safety data
to stored information regarding a significant data field and using
significant data rules to identify options of reporting and not
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reporting changes to the safety data. The abstract idea is also
similar to using categories to organize, store, and transmit
information ( Cyberfone [ Systems, LLC v. CNN Interactive
Group, Inc., 558 Fed. Appx. 988 (2014)]) because the above
identified functions are directed to organizing and transmitting
safety data stored within a first data object within a first data
packet, wherein the safety data is defined as a subset of stored
data, and subsequently transmitting changes in significant data
categories of information.
Final Act. 2-3; see also Ans. 3--4 (additionally citing Electric Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
Initially, Appellants argue the Examiner's findings regarding the
claims being directed to an abstract idea are improper because the Examiner
"generaliz[es] the alleged abstract idea at such a high level (i.e., comparing
new and stored information) that it no longer has ANY relationship to the
recited limitations" (App. Br. 6; see also Reply Br. 2) and because the
Examiner relies on non-precedential opinions (Reply Br. 2). Appellants
continue, arguing that contrary to the Examiner's findings, there are no
similarities between Appellants' claim and the claims in Cyberfone or the
claims in SmartGene. App. Br. 6-7. Appellants argue the claims, instead,
are similar to the claims in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) because the claims provide improvements to the
functioning of a computer. App. Br. 8-9.
According to Appellants:
The claimed embodiments solve problems of conventional safety
management systems. The reduction of a lengthy process of
reconciling changes to data stored within the system to data that
has already been reported to a safety group is a significant
technical challenge. As a result, efficiency gains resulting from
only reporting the changed safety data are achieved.
App. Br. 9 ( citing Spec. ,r 68); see also Reply Br. 3.
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Appellants also argue the claims are similar to the claims in McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)
because "the present claims are allowable over the prior art, so there is no
evidence that the claimed process was previously used either manually, or
using a computer." App. Br. 9--10.
Appellants' arguments are unpersuasive. We agree with the Examiner
that the claims are directed to an abstract concept of "collecting information,
analyzing the information, and reporting certain results of the collection and
analysis." Ans. 3--4.
All the functions recited in Appellants' claim 1, including, for
example: (1) "defining at least one data field ... as a significant data field;"
(2) "sending safety data stored within a first data object to the safety
compliance management system within a first data packet;" (3) "monitoring
the safety data;" ( 4) "identifying a plurality of changes to the safety data that
has been sent to the safety compliance management system;" ( 5)
"determining whether to report one of the plurality of changes;" (6) "in
response to a first change to the safety data comprising a change to at least
one data value associated with the significant data field, sending the changed
safety data stored within a second data object to the safety compliance
management system within a second data packet;" and (7) "in response to a
second change to the safety data not comprising the change to at least one
data value associated with the significant data field, not sending the changed
safety data to the safety compliance management system" are abstract
processes of collecting, storing, and analyzing information of a specific
content (i.e., safety data) based on categories associated with such safety
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data (e.g., a data value associated with a significant data field) and
transmitting a result of the analysis.
Information as such is intangible, and data analysis and categorization
are abstract ideas. See, e.g., Microsoft Corp. v. AT & T Corp., 550 U.S. 437,
451 n.12 (2007). Information collection and analysis, including when
limited to particular content, is within the realm of abstract ideas. See, e.g.,
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed.
Cir. 2015); Digitech, 758 F.3d at 1351; CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353, 1354 (Fed. Cir. 2016)
("collecting information, analyzing it, and displaying certain results of the
collection and analysis" are "abstract-idea processes"); Digitech Image
Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir.
2014) ("organizing information through mathematical correlations");
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) ("1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing that recognized data
in a memory" are abstract ideas).
We disagree that the claims are similar to the claims in Enfzsh. In
Enfzsh, the self-referential table recited in the claims of Enfzsh was found to
be "a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory." Enfzsh, 822 F.3d at 1329. There, the
specification disparaged conventional data structures and included language
describing the "present invention" as including the features that made up the
self-referential table. Id. In other words, the claims in Enfzsh were "directed
to an improvement in the functioning of a computer. Id. at 1338.
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By contrast, here, as discussed above, the claims are essentially
directed to collecting, storing, and analyzing information and transmitting a
result of the analysis - generalized steps to be performed on a computer
using conventional computer activity. See, e.g., Spec. ,r,r 15-19, 45; Fig. 1;
see also Enfish at 1338; Electric Power Grp, 830 F.3d at 1354 (explaining
that claims directed to computerized collecting, analyzing, and displaying
information were different from the claims in Enfzsh: "the focus of the
claims is not on such an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools."). Appellants'
claims thus fit into the familiar class of claims that do not "focus ... on [] an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools." Electric Power, 830 F.3d at 1354.
We also disagree that the claims are similar to the claims in McRO.
The claims in McRO were directed to the creation of something physical-
namely, the display of "lip synchronization and facial expressions" of
animated characters on screens for viewing by human eyes. Id. at 1313.
The claimed improvement was to how the physical display operated (to
produce better quality images), unlike ( what is present here) a claimed
improvement in a mathematical technique with no improved display
mechanism. The claims in McRO thus were not abstract in the sense that is
dispositive here.
And those claims also avoided being "abstract" in another sense
(based on a contrast not with "physical," but with "concrete"): they had the
specificity required to transform a claim from one claiming only a result to
one claiming a way of achieving it. McRO, 837 F.3d at 1314; see Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305---06 (Fed. Cir. 2018); Apple,
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Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016); Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1265 (Fed. Cir. 2016); see
also Two-Way Media, 874 F.3d at 1337; Secured Mail Solutions LLC v.
Universal Wilde, Inc., 873 F.3d 905, 909 (Fed. Cir. 2017); RecogniCorp,
855 F.3d at 1326; Symantec, 838 F.3d at 1316.
Similarly, in Thales Visionix Inc. v. United States, 850 F.3d 1343,
1348--49 (Fed. Cir. 2017), the improvement was in a physical tracking
system. The use of mathematics to achieve an improvement no more
changed the conclusion that improved physical things and actions were the
subject of the claimed advance than it did in Diamond v. Diehr, 450 U.S.
175 (1981). Here, in contrast, the focus of the claims is not a physical-realm
improvement, but an improvement in wholly abstract ideas-the collection
and analysis of information, followed by a reporting of the results.
Step 2
Turning to the second step of the analysis, the Examiner further finds
that the additional elements recited in the claims are not sufficient to amount
to significantly more than the abstract idea. Final Act. 3--4. We agree with
the Examiner that the claim limitations, when viewed individually and as a
whole, do not transform the claim to something significantly more than an
abstract idea. Final Act. 3--4; Ans. 5---6.
Appellants argue that the pending claims contain elements that in
combination are non-conventional because "[ n Jo prior art is presented that
alleges to anticipate or make obvious of any of the pending claims." App.
Br. 12. Appellants argue the claims are similar to the claims in BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
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Cir. 2016) because they "are indicative of 'an inventive concept [that] can be
found in the ordered combination of claim limitations that transform the
abstract idea of filtering content into a particular, practical application of that
abstract idea."' App. Br. 12 (quoting Bascom, 827 F.3d at xxx) (brackets in
original).
We disagree that the claims are similar to the claims in BASCOM
because they allegedly are directed to computer-related technology and
improve upon existing technological processes. Appellants' claims do not
go beyond generic functions, and Appellants do not adequately identify
technical means for performing the claimed steps that are arguably an
advance over conventional computer technology. See Electric. Power, 830
F.3d at 1351.
Features such as, for example, a non-transitory computer-readable
medium, a processor, a safety compliance management system, and an
electronic data capture system, recited in claim 1, are described and claimed
generically rather than with the specificity necessary to show how those
components provide a concrete solution to a technical problem addressed by
the claims. That is, the claims at issue do not require any non-conventional
computer components, or even a "non-conventional and non-generic
arrangement of known, conventional pieces," rather, they merely call for
performance of the claimed steps "on a set of generic computer
components." Bascom, 827 F.3d at 1349--52. "We have repeatedly held that
such invocations of computers and networks that are not even arguably
inventive are insufficient to pass the test of an inventive concept in the
application of an abstract idea." Elec. Power, 830 F.3d at 1355 (quotation
omitted).
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To the extent Appellants argue the claims are directed to novel and
nonobvious subject matter and, therefore, necessarily entail an inventive
concept that transforms the claims to significantly more than the abstract
idea, we disagree. 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 90.
Conclusion
Because Appellants' claims 1-3 and 5-20 are directed to a patent-
ineligible abstract concept, and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of these claims under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1-3 and 5-20 under 35
U.S.C. § 101.
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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