Ex Parte Luce

Patent Trial and Appeal Board

Oct 4, 2017

13229263 (P.T.A.B. Oct. 4, 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.
13/229,263 09/09/2011 Gennaro Luce 208777.00002 9233
21324 7590 10/06/2017
HAHN LOESER & PARKS, LLP
200 Public Square, Suite 2800
Cleveland, OH 44114
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/06/2017 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):
patents@hahnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GENNARO LUCE
Appeal 2016-0005291
Application 13/229,2632
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4—17, and 47—50. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
March 30, 2015) and Reply Brief (“Reply Br.,” filed September 21, 2015),
and the Examiner’s Answer (“Ans.,” mailed July 24, 2015) and Final Office
Action (“Final Act.,” mailed December 11, 2014).
2 Appellant identifies Sequentia, 151 Innovation Dr., Ste. 260, Elyria, Ohio
as the real party in interest. App. Br. 3.
Appeal 2016-000529
Application 13/229,263
CLAIMED INVENTION
Appellant’s claimed invention “relate[s] to on-line systems and
methods to facilitate extended care planning and management” (Spec. 11).
Claims 1, 47, and 48 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An internet-accessible system for facilitating
extended care planning and management for patients, said
system comprising:
at least one server computer;
an interactive website hosted on said at least one server
computer, wherein said interactive website includes:
a shared section being accessible to customers,
hospitals, and extended care providers, without the
hospitals or extended care providers having to have
privileged access granted by a customer,
a hospital section dedicated to hospitals and being
accessible to hospitals registered to said system, and not
being accessible to customers or extended care providers,
and
an extended care provider (ECP) section dedicated
to extended care providers and being accessible to
extended care providers (ECPs) registered to said system,
and not being accessible to customers or hospitals; and
at least one searchable database operatively
connected to said at least one server computer and storing
searchable listings of hospitals and extended care
providers (ECPs).
2
Appeal 2016-000529
Application 13/229,263
REJECTIONS
Claims 1, 2, 4—17, and 47—50 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 2, 4—8, and 10-17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Turner et al. (US 2002/0099568 Al, pub. July 25, 2002)
(hereinafter “Turner”).
Claims 9 and 47—50 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Turner and Green Jr. et al. (US 7,716,072 Bl, iss. May 11,
2010) (hereinafter “Green”).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CIS
BankInt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories., Inc., 132 S. Ct. 1289, 1300 (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 Corp.,
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,”
id., e.g., to an abstract idea. If the claims are not directed to a patent-
ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the
3
Appeal 2016-000529
Application 13/229,263
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. Therefore, the Federal Circuit
has instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting claims 1, 2, 4—17, and 47—50 under 35 U.S.C. § 101,
the Examiner finds that the claims 1, 2, 4—17, and 47—50 are directed to “a
website access based on roles,” i.e., to an abstract idea; and that the claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception “because the additional
elements or combination of elements in the claims amount to no more than a
recitation of a generic computer structure that serves to perform generic
computer functions that serve to merely link the abstract idea to a particular
technological environment” (Ans. 8).
Appellant asserts that the rejection under § 101 is three sentences
long, cites no authority, and provides no reasoning supporting its
conclusions that the claims are directed to an abstract idea and lack
significantly more than a judicial exception (Reply Br. 3). Appellant
4
Appeal 2016-000529
Application 13/229,263
maintains that the Examiner has, thus, failed to establish “a prima facie case
of rejection” and that the § 101 rejection should be reversed on that basis
alone {id.). We disagree.
The Federal Circuit has repeatedly noted that “the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.; see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.”).
Appellant does not contend that the Examiner’s new ground of
rejection was not understood or that the Examiner’s rejection under § 101,
otherwise, fails to satisfy the notice requirements of § 132. Indeed,
Appellant’s understanding of the rejection is clearly manifested by
Appellant’s response as set forth in the Reply Brief.
We also are not persuaded by Appellant’s argument that the claims
are not directed to an abstract idea because “as with DDR [Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)], the claims ... are
5
Appeal 2016-000529
Application 13/229,263
directed toward practices not relevant in the pre-Internet world” (Reply
Br. 3). Appellant notes that the claims require a server that hosts the
claimed “shared section,” “hospital section,” and “extended care provider
(ECP) section,” and that at least one independent claim, e.g., claim 47, also
requires “a pre-certification and eligibility (PCE) module that pre-certifies
patient medical conditions and insurance eligibility with one or more
extended care providers”; “determining the availability of services and
facilities at one or more extended care providers via the internet”; and
“scheduling services and reserving facilities at a selected extended care
provider via the internet” (id. at 3 4). Appellant asserts that this is more
than a simple Internet-equivalent of exchanging hard-copy medical records
or inquiring about accepted insurance carriers and that “[u]se for the claimed
sections does not even arise in the context of routine business practices”
because “the different types of information, sensitivity levels, and parties
interested only recently became understood, and have changed dramatically
in recent years due to the rapidly evolving laws, regulations, and technology
impacting healthcare” (id. at 4).
Although Appellant ostensibly argues otherwise, the court did not
conclude in DDR Holdings that the claims were patent-eligible merely
because the claims did not recite the performance of a business practice
known from the pre-Internet world along with the requirement to perform it
on the Internet. Instead, the Federal Circuit held that the claims were
directed to statutory subject matter because they claimed a solution
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks,” i.e., retaining
website visitors who, if adhering to the routine, conventional functioning of
6
Appeal 2016-000529
Application 13/229,263
Internet hyperlink protocol, would be transported instantly away from a
host’s website after “clicking” on an advertisement and activating a
hyperlink. DDR Holdings, 773 F.3d at 1257. The court determined that the
claimed invention did not simply use computers to serve a conventional
business purpose. Id. Rather, there was a change to the routine,
conventional functioning of Internet hyperlink protocol. Id.
Appellant summarily asserts here that the claims improve multiple
technical fields, i.e., healthcare; healthcare administration and management;
and remote communications (Reply Br. 4). But that argument is not
persuasive at least because Appellant does not explain how, or in what way,
these technical fields are allegedly improved.
We also are not persuaded of Examiner error by Appellant’s argument
that the pending claims do not tie up any judicial exception, and would not
“block all others from implementing ‘website access based on roles’ if
granted” {id. at 5). There is no dispute that the Supreme Court has described
“the concern that drives this exclusionary principle [i.e., the exclusion of
abstract ideas from patent eligible subject matter] as one of pre-emption.”
Alice, 134 S. Ct. at 2354. But characterizing pre-emption as a driving
concern for patent eligibility is not the same as characterizing pre-emption as
the sole test for patent eligibility. “The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
“[Preemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility.” Id.
7
Appeal 2016-000529
Application 13/229,263
We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claims 1, 2, 4—17, and 47—50 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection.
Anticipation
Independent Claim 1 and Dependent Claims 2, 4—8, 12—14, and 17
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 102(b) because
Turner does not disclose three different levels of access, i.e., a shared
section, a hospital section, and an extended care provider (“ECP”) section,
as called for in claim 1 (App. Br. 14—16).
Turner is directed to a system and method for facilitating the process
of caring for an individual, e.g., an elder, and discloses that an “e-space” is
created for the elder, which is a set of data files associated with the elder
(Turner, Abstract). The e-space is stored in a central location and can be
accessed via a computer network, e.g., the Internet {id.). The system allows
the elder (or his/her agent) to maintain his or her privacy by controlling
access to the e-space, i.e., by specifying varying levels of access privileges
for each type of data file in the e-space {id.). Turner discloses a server 122,
with reference to Figure 1, including a data storage device which stores
database 124 containing elder e-spaces 126 {id. 132). As shown in Figure 1,
server 122 is connected to a network 100, and in one embodiment,
server 122 is connected to the World Wide Web such that a user accesses the
elder’s e-space by entering a URL associated with server 122 {id. H 33, 34).
Turner discloses that, besides storing elder e-spaces, database 124 can also
store other types of e-spaces; for example, a care provider can create its own
e-space that contains information specific to, and owned by the care
8
Appeal 2016-000529
Application 13/229,263
provider, e.g., billing information, policies/procedures, employee benefit
information, staff schedules; as with the elder e-space, the files in the care
provider e-space are privileged and access privileges are granted by one or
more administrators or officials at the care provider (id. || 38, 87—88).
Database 124 also contains elder care news, articles, tools, information and
other resources 130, which form the “public” portion of the website; anyone
visiting the site can access the public portion of the website, and thereby
access this information (id. Tflf 39, 103—119).
Appellant argues that Turner, at best, discloses only two spaces, i.e.,
spaces for elders and care providers, “negating any suggestion that there is
an arguably comparable type of ‘space’ corresponding to each claimed
section” (App. Br. 15). But Appellant does not adequately explain why, and
we fail to see why, Turner, in teaching that database 124 can also store other
types of e-spaces, i.e., other than elder e-spaces, which are owned by entities
other than the elder, which entities control access to their respective e-
spaces, somehow fails to disclose a “hospital section” and an “extended care
provider” section, as called for in claim 1. We also fail to see why, and
Appellant does not adequately explain why, the “public” portion of the
Turner website does not constitute “a shared section being accessible to
customers, hospitals, and extended care providers, without the hospitals or
extended care providers having to have privileged access granted by a
customer,” as recited in claim 1.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(b). We also sustain the Examiner’s rejection
of dependent claims 2, 4—8, 12—14, and 17, which are not argued separately.
9
Appeal 2016-000529
Application 13/229,263
Dependent Claims 10, 11, 15, and 16
Appellant argues that the Examiner erred in rejecting claims 10, 11,
15, and 16 for the same reasons set forth with respect to claim 1, from which
they depend, and further because Turner does not disclose real-time
communication of medical records, as called for in claims 10 and 15, or
secure, exclusive, real-time, two-way communication, as called for in
claims 11 and 16 (App. Br. 16—17).
Claim 10 recites that the system of claim 1 further comprises “an
electronic medical record module . . . that assembles and edits patient
electronic medical record (EMR) information from hospital sources to
facilitate secure, real-time transmission of the patient EMR information
between a hospital computer and an ECP computer via the internet.”
Claim 15 is substantially similar to claim 10 except that it recites that the
electronic medical record module assembles and edits patient EMR
information from ECP sources to “facilitate secure, real-time transmission of
the patient EMR information between an ECP computer and a hospital
computer via the internet.”
Claim 11 recites that the system of claim 1 further comprises a “two-
way communications module in communication with said hospital section
that securely provides exclusive, real-time two-way communication of
electronic notifications and information between a hospital computer and an
ECP computer via the internet.” And claim 16 similarly recites that the
system of claim 1 further comprises a two-way communications module in
communication with said ECP section that “securely provides exclusive,
real-time two-way communication of electronic notifications and
10
Appeal 2016-000529
Application 13/229,263
information between an ECP computer and a hospital computer via the
internet.”
In rejecting claims 10, 11, 15, and 16 under 35 U.S.C. § 102(b), the
Examiner cites paragraph 60 and Figures 1, 7A, and 7B of Turner as
disclosing the claimed features (Final Act. 4—5). However, we find nothing
in the cited portion of Turner that discloses the real-time transmission of
information between an ECP computer and a hospital computer via the
internet, as called for in claims 10, 11, 15, and 16. Instead, Turner merely
discloses in paragraph 60 that chat room capabilities are available to the
elder, care provider, and/or support group members, and that members of the
elder’s support group can post messages in the chat room and communicate
with each other. Figure 1 is block diagram of the system architecture, and
Figures 7A and 7B merely show exemplary default privilege settings for
permitting e-space access.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 10, 11, 15, and 16 under 35 U.S.C. § 102(b).
Obviousness
Dependent Claim 9
Claim 9 depends from claim 1, and recites that the system of claim 1
further comprises:
a pre-certification and eligibility (PCE) module in
communication with the hospital section that pre-certifies patient
medical conditions and insurance eligibility with one or more
ECPs, wherein said hospital section includes computer-
executable instructions configured to facilitate:
determining the availability of services and facilities at
one or more ECPs via the internet in real-time; and
11
Appeal 2016-000529
Application 13/229,263
scheduling services and reserving facilities at a selected
ECP via the internet in real-time.
In rejecting claim 9 under 35 U.S.C. § 103(a), the Examiner
acknowledges that Turner fails to disclose or suggest the features of claim 9,
and cites Green to cure the deficiencies of Turner (Final Act. 6—7 (citing
Green, col. 12,11. 19—29)). However, we agree with Appellant that there is
nothing in the cited portion of Green that discloses or suggests the
limitations recited in claim 9 (App. Br. 17—18). Instead, the best that Green
discloses is that a user of the Green system may input pre-certification
information from an insurance company or from a patient at check-in for an
office visit.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 9 under 35 U.S.C. § 103(a).
Independent Claims 47 and 48 and Dependent Claims 49 and 50
Independent claims 47 and 48 include language substantially similar
to the language of claim 9, and stand rejected based on the same rationale
applied with respect to claim 9 (Final Act. 6—7). Therefore, we do not
sustain the rejection under 35 U.S.C. § 103(a) of independent claims 47 and
48, and claims 49 and 50, which depend from claim 48, for the same reasons
set forth above with respect to claim 9.
12
Appeal 2016-000529
Application 13/229,263
DECISION
The Examiner’s rejection of claims 1, 2, 4—17, and 47—50 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 2, 4—8, 12—14, and 17 under
35 U.S.C. § 102(b) is affirmed.
The Examiner’s rejection of claims 10, 11, 15, and 16 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner’s rejection of claims 9 and 47—50 under 35 U.S.C.
§ 103(a) is reversed.
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
13