Ex Parte Kidd et al

Patent Trial and Appeal Board

Aug 21, 2017

13335162 (P.T.A.B. Aug. 21, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/335,162 12/22/2011 Randy Kidd S69143 1010US.1 3034
26158 7590 08/23/2017
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
GILLIGAN, CHRISTOPHER L
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDY KIDD and JOHN J. BRADY
Appeal 2016-006801
Application 13/335,1621
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-11, which are all the claims pending in this application.
Claims 12—19 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Stratice Healthcare,
LLC. Br. 1.
Appeal 2016-006801
Application 13/335,162
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to an electronic ordering system for
medical equipment and other durable goods for patients. Spec. 12. Claim 1
is illustrative of the appealed subject matter and reads as follows:
1. A computer implemented method of providing patients’
medical equipment, supplies or services, comprising:
receiving data elements from an electronic healthcare
system the data elements including patient data elements, health
care provider data elements, order data elements, and insurance
and billing data elements, wherein the patient data elements
collected from the electronic healthcare system are from one of
a patient or a patient’s healthcare provider after electing to
provide the patient data elements, heath care provider identifies
the medical equipment, supplies or services to be provided to
the patient, and wherein the order data elements include
International Classification of Diseases (ICD) codes, Healthcare
Common Procedure Coding System (HCPC) codes, Certificates
of Medical Necessity (CMN) fields, a healthcare provider’s
documented notes, and documented plan of care or needs
assessment evaluation as required face to face (F2F)
documentation for Medicare Beneficiaries;
validating a portion of the data elements through one of
schema validation and database logic to determine if an order
can be fulfilled through a third party supplier;
creating an order from the data elements;
executing a third party supplier selection routine to select
a third party supplier of medical equipment, supplies or services
based on a patient’s geographic location, patient’s health
insurance or payor information, a patient’s specific medical
equipment, supply or service prescribed , and third party
suppliers’ quality score, the executing validating the third party
supplier has an acceptable quality score;
executing including an option to select the third party
supplier, when multiple third party suppliers are available in the
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system for selection, based upon a healthcare provider’s
preference and a third party supplier score; wherein the third
party supplier of medical equipment, supplies or services
provides the medical equipment, supplies or services to the
patient, and wherein each third party supplier has an executed
service level agreement stored;
obtaining payment from the third party supplier for
transmitting the order for the medical equipment, supplies or
services;
the order to the third party supplier of medical
equipment, supplies or services that is chosen by the third party
selection routine; and
updating a status of the order, the updating triggering
recalculation of the third party supplier’s score, wherein each
method operation is performed by a processor.
The Examiner’s Rejections
Claims 1-11 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
The Supreme Court in Alice identifies a two-step framework for
determining whether claimed subject matter is judicially-excepted from
patent eligibility under § 101. Assuming that a claim nominally falls within
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one of the statutory categories of machine, manufacture, process, or
composition of matter, the first step in the analysis is to determine if the
claim is directed to a law of nature, a natural phenomenon, or an abstract
idea (judicial exceptions). Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S.Ct.
2347, 2355 (2014). If so, the second step is to determine whether any
element or combination of elements in the claim is sufficient to transform
the nature of the claim into a patent eligible application, that is, to ensure
that the claim amounts to significantly more than the judicial exception. Id.
Regarding A lice step one, Appellants argue the Examiner’s rejection
is in error because it lacks proper reliance on factual findings. Br. 4-5. We
disagree. Consideration of evidence in making a determination under the
fi rst step of the Alice frame work has merit. See, Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229 (Fed. Cir. 2016). But there is no requirement that
examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
para. IV “July 2015 Update: Subject Matter Eligibility” to 2014 Interim
Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618
(Dec. 16, 2014) (“The courts consider the determination of whether a claim
is eligible (which involves identifying whether an exception such as an
abstract idea is being claimed) to be a question of law. Accordingly, courts
do not rely on evidence that a claimed concept is a judicial exception, and in
most cases resolve the ultimate legal conclusion on eligibility without
making any factual findings.”) (emphasis added). Evidence may be helpful
in certain situations where, for instance, facts are in dispute, but it is not
always necessary. It is not necessary in this case.
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Claim 1 recites a “computer implemented method of providing
patients’ medical equipment, supplies or services” comprising seven steps,
including receiving data elements, validating data elements, creating an
order from data elements, selecting a third party supplier, obtaining
payment, and updating the order status. These functions amount to nothing
more than standard business practices implemented on a general purpose
computer. We conclude none of Appellants’ claims is “directed to an
improvement in the functioning of a computer,” as was found by the court
regarding the subject claim in Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1338 (Fed. Cir. 2016). To the extent that the recited steps or acts may
be performed faster or more efficiently using a computer, our reviewing
court provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.”).
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphasis added). Moreover, to the extent that Appellants’ claims
collect information, analyze it in some fashion, and present or communicate
the result, the court in Electric Power guides: “we have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350,
1354 (Fed. Cir. 2016) (internal citations omitted).
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Applying this reasoning to Appellants’ claims on appeal, we similarly
find any purported faster or more efficient performance of the claimed steps
or acts merely comes from the capabilities of a general-purpose computer
and/or computer related elements, rather than from Appellants’ claimed
steps or functions.
There is no definitive rule to determine what constitutes an “abstract
idea.” Rather, the Federal Circuit has explained that “both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous cases.”
Enfish, LLC v. Microsoft Corp., 822 F.3d at 1334; see also Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(explaining that, in determining whether claims are patent-eligible under
§101, “the 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”). The Federal
Circuit also noted that “examiners are to continue to determine if the claim
recites (i.e., sets forth or describes) a concept that is similar to concepts
previously found abstract by the courts.” Amdocs, 841 F.3d at 1294 n.2
(citation omitted). The Examiner has compared claim 1 to prior cases (see
Ans. 3) and properly concluded claim 1 is directed to an abstract idea for the
reasons set forth above.
Regarding Alice step two, Appellants argue the Examiner erred in
finding the claims involve routine, conventional activities that are well
known in the healthcare industry. Br. 5-7. In particular, Appellants argue
the Examiner concedes the closest prior art does not anticipate or render
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obvious all limitations of claim 1 and, therefore, claim 1 does not involve
well-known, conventional activities. Br. 6 (citing Final Act. 3).
Appellants have not persuaded us of Examiner error. Appellants’
claims are directed to a “method of providing patients’ medical equipment,
supplies or services.” “The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981).
“It is true that ‘the § 101 patent-eligibility inquiry and, say, the § 102
novelty inquiry might sometimes overlap.’ Mayo, 132 S.Ct. at 1304. But, a
claim for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
Appellants have not set forth any persuasive argument or evidence
that method claims 1—11 involve anything more than steps executed using
conventional generic computer components. (See App. Br. 4—8). Therefore,
after reviewing the record, we find Appellants’ claimed invocation of a
“computer-implemented method” (claim 1) is insufficient to pass as an
inventive set of components. As such, our review of the claims, fully
considering each claim’s elements (both individually and as an ordered
combination), fails to show that the nature of any of Appellants’ claims is
transformed into patent-eligible subject matter. Accordingly, we are not
persuaded the Examiner erred in finding the claims lack an “inventive
concept.”
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Finally, Appellants argue the Examiner erred because the claims do
not risk preemption because they recite additional, distinguishing elements
whereby a computer performs activities that are not routine, not
conventional, and not well understood in the healthcare industry. Br. 7.
Appellants have not persuaded us of Examiner error because lack of
preemption does not make the claims any less abstract. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases);
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility”).
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 1 as directed to patent-ineligible subject matter. We,
therefore, sustain the rejection of claim 1. We also sustain the rejection of
claims 2-11, for which Appellants have not offered separate argument. See
Br. 4-8.
DECISION
We affirm the decision of the Examiner to reject claims 1-11.
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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