Ex Parte Watson

Patent Trial and Appeal Board

Sep 25, 2018

13106766 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/106,766 05/12/2011
20995 7590 09/27/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
James Victor Watson
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.
ONICS.OOlA 6006
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES VICTOR WATSON
Appeal2017-007516
Application 13/106, 7 66
Technology Center 3600
Before ST. JOHN COURTENAY III, MARC HOFF, and
BETH Z. SHAW, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1, 22-24, and 26-40. Claims 2-21, and 25 are cancelled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We Affirm.
STATEMENT OF THE CASE
Introduction
Appellant's invention generally relates to "[a] dynamic decision forest
[that] may be used to guide clinical or other decision queries such that
multiple decision trees are followed in sequence and jumps occur between
1 According to Appellant, the real party in interest is OnICS, Ltd., which is
the assignee of the present application. App. Br. 1.
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decision trees based on previously received query responses and the system's
determination of what useful data has not been gathered." Abstract.
Exemplary Claim
1. A method for generating a natural language clinical note
with a treatment prescription, the method comprising:
retrieving on a tablet computing device, from a separate
clinical data acquisition server accessed by the tablet computing
device over a computer network, query data corresponding to a
set of possible clinical queries, each clinical query comprising a
clinical inquiry and a plurality of associated response options;
storing, in the tablet computing device, a copy of said
query data;
providing, via a touch-screen user interface of the tablet
computing device, a physician user with a series of initial
clinical queries from the set of possible clinical queries;
receiving responses to the series of initial clinical queries,
said responses entered into the user interface of the tablet
computing device by the physician user of that device;
storing the responses to the series of initial clinical
queries;
determining additional clinical queries, from the set of
possible clinical queries, to provide to the user based upon the
responses to the series of initial clinical queries, where
predefined relationships between responses and the set of
possible clinical queries are used in determining the additional
clinical queries;
providing the physician user with the additional clinical
queries via the user interface;
receiving responses to the additional clinical queries;
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storing the responses to the additional clinical queries;
determining a think-ahead clinical query to provide to the
physician user based at least in part on at least one of the
received responses to the additional clinical queries,
wherein the think-ahead clinical query is determined
without use of predefined relationships between responses and
the set of possible clinical queries, and
wherein determining the think-ahead clinical query at this
time provides efficient decisional operation compared to
determining the think-ahead clinical query closer in time to
when that query will be provided to the physician user, said
decisional operation reflected by the fact that the current time
for determining the think-ahead clinical query is closer in
time to when the responses to the additional queries, used in
making that think-ahead determination, were received;
providing the physician user, via the user interface, with
an intervening clinical query after the think-ahead clinical query
has been determined, the intervening clinical query different
than the think-ahead clinical query;
receiving a response to the intervening clinical query via
the user interface,
wherein the response to the intervening clinical query
does not affect the previously-made determination to provide
the physician user with the think-ahead clinical query;
storing the response to the intervening clinical query;
providing the physician user, via the user interface, with
the think-ahead clinical query without requiring, after the
providing of the intervening clinical query, memory
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retrieval of the responses to the additional clinical queries upon
at least one of which the think-ahead clinical query was based
at least in part upon;
receiving a response to the think-ahead clinical query via
the user interface;
storing the response to the think-ahead clinical query;
determining a treatment prescription based at least in part
on the responses to the series of initial clinical queries, the
responses to the additional clinical queries, the response to the
intervening clinical query, and the response to the think-ahead
clinical query;
accessing lexicographic and grammatical data from a
lexicographic data store, said lexicographic data identifying
one or more grammatical structures for a natural language
including rule sets for the natural language,
wherein at least one grammatical structure includes a
rule set identifying grammatical relationships between different
word types;
generating a natural language clinical medical note
reflecting the responses to the series of initial clinical queries,
the responses to the additional clinical queries, the
response to the intervening clinical query, the response to the
think-ahead clinical query, and the treatment prescription, and
reflecting at least one of the grammatical structures
identified in the lexicographic data;
providing the natural language clinical medical note to
the physician user via the user interface,
wherein the natural language clinical medical note
reflects at least some of the responses to the clinical queries in a
different order and context than they were presented to the
physician user;
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storing redundant copies of record data reflecting the
responses in two computing systems separate from the tablet
computing device where those two computing systems
are also physically separate from one another; and
generating and storing audit trail data, wherein the audit
trail data is stored separately from all other data generated by
and relied upon by the method, and wherein the audit trail data
reflects the received responses from the user in a manner
sufficient to reconstruct the clinical note, for example in the
event of a disaster;
said method performed in its entirety by a computer
system that comprises the computing device;
wherein said tablet computing device stores data
corresponding to the clinical queries in an array of flag bits
utilizing single-bit logic to record which clinical queries
from the set of possible clinical queries have been provided to
the physician user, thereby improving computing efficiency
through minimizing the memory utilization for the
representation of each query to a single data bit; and
wherein the method generates a natural language clinical
note with a treatment prescription through gathering a greater
volume of information than can be maintained in human
memory and
wherein the tablet computing device accordingly
provides the gathered clinical note information to the physician
user in smaller, iterative verification quantities based on a
volume of information that can be maintained in human
memory.
App. Br. 19--21, Claims Appendix ( emphasis added regarding selected
limitations).
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Application 13/106,766
Rejection
Claims 1, 22-24, and 26-40 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more. 2 Final
Act. 4---6.
Issue on Appeal
Did the Examiner err in rejecting claims 1, 22-24, and 26-40 under
35 U.S.C. § 101, as being directed a judicial exception, without significantly
more?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Mayo/Alice Analysis under 35 USC§ 101
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. Pty.
Ltd. 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.,
2 See MPEP § 706.03(a), form paragraph 7.05.015.
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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. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work." In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Benson, 409 U.S.
at 67). Moreover, if a method can be performed by human thought alone, or
by a human using pen and paper, it is merely an abstract idea and is not
patent-eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which 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
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2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection under 35 US.C. § 101
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes that claims 1, 22-24, and 26-40 are directed to a judicial
exception, without significantly more. Final Act. 2. The Examiner
concludes:
The abstract idea is identified as: patient management and
processing medical information. Patient management (i.e.,
providing healthcare by generating and providing a natural
language clinical note with a treatment prescription) is an
abstract idea because it is a method of organizing human
activity and is a fundamental economic practice. Processing
medical information is an abstract idea because it uses
categories to organize, store, and transmit information, etc.;
collects and compares known information; and obtains and
compares intangible data; etc.
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Final Act. 2 ( emphasis added). 3
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that amount to
significantly more than the judicial exception, because:
the additional elements or combination of elements
in the claims, other than the abstract idea per se, amount to no
more than a recitation of (A) a generic computer structure(s)
( e.g., a computing system, a user computing device, a network,
a server, etc.) that serves to perform generic computer functions
that serve to merely link the abstract idea to a particular
technological environment; and/or (B) functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry (e.g., storing query data,
providing queries, receiving query responses, storing query
responses, generating clinical medical notes, providing clinical
medical notes, etc.). For example, paragraph [0021] of
applicant's specification recites that [the] system/method can
be implemented using a tablet computing device, a laptop, a
desktop computer, a smartphone, etc. which are all generic type
computers.
Final Act. 2-3 (emphasis added). 4
3 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013).
4 The patent eligibility inquiry may contain underlying issues of fact Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed.
Cir. 2016). In particular, "[ t ]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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For the aforementioned reasons, the Examiner concludes that all
claims 1, 22-24, and 26-40 on appeal are not patent eligible under 35 U.S.C.
§ 101.
Mayo/Alice Analysis - Step 1
Appellant cites to the holdings of Enfzsh, DDR Holdings, 5 LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), and
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (2016).
App. Br. 10-13. Regarding Alice Step 1, Appellant contends:
The Final Office Action addresses only the preamble of
claim 1 in inaccurately describing the [ c ]laim as "a method of
generating a natural language clinical note with a treatment
prescription." By simply reciting the claim's preamble as
supposedly reflecting the entire claim, the Final Office Action
fails to credit the numerous, significant, technical limitations
required by the lengthy claim beyond its preamble.
App. Br. 13.
Contrary to Appellant's arguments (id.), in reviewing the record, it is
our view that the Examiner has set forth sufficient analysis to establish a
prima facie case for all claims under 35 U.S.C. § 101, pursuant to the notice
requirement of 35 U.S.C. § 132(a). See also the Examiner's detailed
"Response to Arguments" in the Answer (2-7), which further explains the
basis for the rejection.
Appellant further contends:
Contrary to the characterization within the Final Office Action,
claim 1 is directed to a method for generating a natural
5 We address DDR Holdings, infra, under Alice, step 2.
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language clinical note using lexicographic data, a think-ahead
query for efficient decisional operation, and an array of flag bits
for efficient computing and memory minimization, where the
method also generates separate audit trail data sufficient for
note recreation in the event of disaster recovery.
The method relies on a specific set of computer
components, including a tablet computing device and a separate
data acquisition server. When the elements of the claim are
properly considered, rather than only the preamble, the claim
does not resemble anything that has been found by the courts to
represent an abstract idea (such as hedging in Bilski).
App. Br. 13.
In response, the Examiner further explains the basis for the rejection:
The abstract ideas recited in the claims include patient
management by generating a clinical note with a treatment
prescription and processing medical information, by for
example, organizing human activity; using fundamental
economic practice; using categories to organize, store, and
transmit information, etc.; collecting and comparing known
information; obtaining and comparing intangible data;
comparing new and stored information and using rules to
identify options; comparing data to determine a risk level;
and/or organizing information through mathematical
correlations.
Ans. 3 ( emphasis added).
Appellant additionally contends that no preemption concern exists
regarding claim 1.
the Alice analysis asks whether the claims, if upheld, would
pre-empt the use of the approach in all fields and effectively
grant a monopoly over the abstract idea. Alice, slip op. 5---6. In
the present case, no such preemption concern exists, as the
issuance of the claim 1 clearly would not grant a monopoly
over the generation of natural language clinical notes with
clinical treatment prescriptions. In this regard, natural language
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clinical notes can be, and commonly are, generated without
using a system that uses lexicographic data, a think-ahead query
for efficient decisional operation, an array of flag bits for
efficient computing and memory minimization, and separate
audit trail data sufficient for note recreation in the event of
disaster recovery.
App. Br. 14 (emphasis added).
Regarding Appellant's contention that no preemption concern exists
regarding claim 1 (id.), our reviewing court provides applicable guidance:
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013).
Therefore, we are not persuaded by Appellant's argument regarding
the absence of complete preemption.
Regarding Appellant's additional arguments pertaining to Alice Step
1, we agree with Appellant that there is nothing positively recited in claims
1, 22-24, and 26-40 that is directed to afundamental economic practice
per se (e.g., hedging, arbitrage, sales, advertising, sales contracts,
transactions, and/or investment management, loans, and credit, inter alia), as
asserted by the Examiner. Final Act. 2. Nevertheless, we recognize that
providing medical services is a nationwide business that inherently involves
billing, overhead expenses, physician's salaries, and the administrative cost
of processing health insurance claims.
However, we agree with the Examiner that all claims on appeal are at
least directed to the abstract ideas of "organizing human activity; [and] using
categories to organize, store, and transmit information, etc.; collecting and
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comparing known information; obtaining and comparing intangible data;
comparing new and stored information and using rules to identify options;
comparing data to determine a risk level; and/or organizing information
through mathematical correlations," in accordance with the guidance of the
various Federal Circuit cases cited infra. Ans. 2 (emphasis added).
Regarding Appellant's arguments analogizing Enfzsh to the claims
before us on appeal, we note that the court in Enfish (822 F.3d at 1336)
concluded that there was no abstract idea under Alice step 1 ("Accordingly,
we find that the claims at issue in this appeal are not directed to an abstract
idea within the meaning of Alice. Rather, they are directed to a specific
improvement to the way computers operate, embodied in the self-referential
table.").
Thus, the court concluded the claimed self-referential database table
in Enfzsh was a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339.
Because the analysis stops if there is no abstract idea under Alice step 1, the
court in Enfish concluded the claims were patent eligible.
Here, Appellant has not persuasively shown that any features of the
claimed invention improve the way the recited "lexicographic data store"
( claim 1) stores and retrieve data, in a manner analogous to that found by the
court in Enfish. See claims 1 and 29. 6
Therefore, we are not persuaded that Appellant's claimed invention
improves the recited tablet computer system or processor functionality or
efficiency, or otherwise changes the way the claimed generic computer
6 See also our discussion of the recited "array of flag bits utilizing single-bit
logic" ( claim 1 ), considered under Alice, step 2.
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components function, at least in the sense contemplated by the Federal
Circuit in Enfzsh.
Further, McRO (837 F.3d at 1312) guides: "The abstract idea
exception prevents patenting a result where 'it matters not by what process
or machinery the result is accomplished."' ( quoting O'Reilly v. Morse, 56
U.S. 62, 113 (1854)) (Emphasis added.).
Here, we find each of Appellant's independent claims 1 and 29 is
directed to the result of:
generat[ing] a natural language clinical note with a treatment
prescription through gathering a greater volume of information
than can be maintained in human memory and wherein the
tablet computing device accordingly provides the gathered
clinical note information to the physician user in smaller,
iterative verification quantities based on a volume of
information that can be maintained in human memory.
Independent claim 1 ( emphasis added); see also independent claim 29 which
recites similar limitations having commensurate scope.
We particularly emphasize that the steps, acts, or functions of all
claims 1, 22-24, and 26-40 on appeal are executed by a generic tablet
computing device, computer network, server, or other generic computer
component. We tum to the Specification for context, and find exemplary,
non-limiting descriptions of such generic computer components:
The system, such as the FIG. 2 embodiment, may be
implemented as a computing system that is programmed or
configured to perform the various functions described herein.
The computing system may include multiple distinct computers
or computing devices ( e.g., physical servers, workstations,
storage arrays, etc.) that communicate and interoperate over a
network to perform the described functions. Each such
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computing device typically includes a processor ( or multiple
processors) that executes program instructions or modules
stored in a memory or other non-transitory computer-readable
storage medium.
Spec. ,r 71.
Appellant cites Amdocs and further contends:
In particular, the Federal Circuit relied on the data-enhancing
claim limitation of the Amdocs patents, where a distributed
architecture enhanced data collected from a source to create
meaningful session records for a service provider. The Federal
Circuit explained in Amdocs the importance of using a
"common law" approach in comparing claims at issue to
previous eligibility decisions. Applying such an approach here
confirms that the claims should not be rejected under section
101.
App. Br. 13.
We note the Amdocs court found claim 1 :
entails an unconventional technological solution (enhancing
data in a distributed fashion) to a technological problem
(massive record flows which previously required massive
databases). The solution requires arguably generic components,
including network devices and "gatherers" which "gather"
information. However, the claim's enhancing limitation
necessarily requires that these generic components operate in an
unconventional manner to achieve an improvement in computer
functionality.
Id. at 1300--01 ( emphasis added).
However, in contrast with Amdocs, Appellant does not present, nor do
we find, a specific technical improvement provided by the claims before us
on appeal. Appellant's claims do not operate the recited generic computer
components in an unconventional manner to achieve an improvement in
computer functionality.
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We additionally note the claims considered by the court in Amdocs are
further distinguished from Appellant's claims on appeal, because the
Amdocs court performed significant claim construction of the word
"enhance" regarding the last recited '065 patent claim 1 function "of "using
the accounting information ... to enhance the first network accounting
record." (emphasis added). As noted by the Amdocs court:
In Amdocs I, we construed "enhance" as being dependent
upon the invention's distributed architecture. 761 F.3d
at 1338--40 (quoting '065 patent at 7:51-57, 10:45-50,
7:7-8). We construed "enhance" as meaning "to apply a
number of field enhancements in a distributedfashion."
Id. at 1340. We took care to note how the district
court explained that "[i]n this context, 'distributed' means
that the network usage records are processed close to
their sources before being transmitted to a centralized
manager." Id. at 1338. And we specifically approved of
the district court's "reading the 'in a distributed fashion'
and the 'close to the source' of network information
requirements into the term 'enhance.'" Id. at 1340.
As explained by the patent, this distributed enhancement
was a critical advancement over the prior art:
Importantly, the distributed data gathering, filtering and
enhancements performed in the system 100 enables load
distribution. Granular data can reside in the peripheries of the
system 100, close to the information sources. This helps avoids [
(sic) ] reduce congestion in network bottlenecks but still allows
the data to be accessible from a central location. In previous
systems, all the network information flows to one location,
making it very difficult to keep up with the massive record flows
from the network devices and requiring huge databases. '065
patent at 4:33--42.
In other words, this claim entails an unconventional
technological solution ( enhancing data in a distributed
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fashion) to a technological problem (massive record
flows which previously required massive databases).
The solution requires arguably generic components,
including network devices and "gatherers" which "gather"
information. However, the claim's enhancing limitation
necessarily requires that these generic components operate
in an unconventional *1301 manner to achieve an
improvement in computer functionality.
Amdocs at 1300--01 (emphasis added).
Here, Appellant has not persuasively shown that the instant claims on
appeal entail applying "an unconventional technological solution ( enhancing
data in a distributed fashion) to a technological problem (massive record
flows which previously required massive databases)," as found by the court
in Amdocs at 1300.
We note each of Appellant's independent claims 1 and 11 is directed
to, inter alia, gathering and processing data, for example, see the recited
"receiving" and "determining" steps of claim 1.
Data gathering is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane),
aff'd on other grounds, 561 U.S. 593 (2010). Our reviewing court has
concluded that abstract ideas include the concepts of collecting data,
recognizing certain data within the collected data set, and storing the data in
memory. Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations,
LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017)
( concluding "claims directed to the collection, storage, and recognition of
data are directed to an abstract idea"); Elec. Power Grp., LLC v. Alstom S.A.,
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830 F.3d 1350, 1353 (Fed. Cir. 2016) (the collection of information and
analysis of information are abstract ideas).
Moreover, but for the recitation of generic computer components
(independent claims 1 and 29), we are of the view that the recited steps or
acts, or functions could be performed as mental steps, or with the aid of pen
and paper (to aid human memory recall regarding a large volume of
information). See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1146-47 (Fed. Cir. 2016) ("While the Supreme Court has altered the
§ 101 analysis since CyberSource in cases like Mayo and Alice, we continue
to 'treat[] 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."' (Brackets in original) (quoting
Elec. Power Grp., 830 F.3d at 1354)); see also CyberSource, 654 F.3d at
1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
"[M]erely selecting information, by content or source, for collection
[ and] analysis ... does nothing significant to differentiate a process from
ordinary mental processes .... " Elec. Power Grp., 830 F.3d at 1355. Data
gathering, such as receiving and analyzing ( or identifying data), by itself,
does not transform an otherwise-abstract process or system of information
collection and analysis. See id.
For at least the aforementioned reasons, on this record, we conclude
Appellant's claims 1, 22-24, and 26-40 are directed to an abstract idea,
which is similar to the abstract ideas identified by our reviewing courts as
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discussed above, that could additionally be performed as mental steps, albeit
with the aid of pen and paper.
Mayo/Alice Analysis-Step 2
Because we conclude that the claims are directed to an abstract idea
for essentially the same reasons articulated by the Examiner ("because it is a
method of organizing human activity" - Final Act. 2; Ans. 3), we tum to the
second part of the Alice/ Mayo analysis. We analyze the claims to determine
if there are additional limitations that individually, or as an ordered
combination, ensure the claims amount to "significantly more" than the
abstract idea. Alice, 134 S. Ct. at 2357.
Regarding Alice Step 2, Appellant addresses the purported inventive
concept of the claims. Appellant contends: "Even if, arguendo, claim l
involves an abstract idea at some level, it is directed to significantly more
than an abstract idea, and thus complies with section 101 under Part 2 of the
two-part test ... For example, claim l recites the following steps, among
others, that represent significantly more than the alleged abstract idea of
'generating a natural language clinical note with a treatment prescription:"'
App. Br. 14.
Appellant then recites the following clauses of claim 1: "determining
a think-ahead clinical query to provide to the physician user ... accessing
lexicographic and grammatical data from a lexicographic data store ...
generating a natural language clinical medical note ... generating and
storing audit trail data ... wherein the method generates a natural language
clinical note with a treatment prescription.
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In support, Appellant cites to DDR, and urges: "The solution recited
by claim 1 is necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer networks."
Appellant further contends "claim 1 addresses efficient storage of data in
volumes beyond what the human memory can maintain and [t]he claimed,
flag-bit computer storage architecture scheme is necessarily rooted in
computer technology." App. Br. 10.
We do not find that Appellant's claims are similar to the claimed
solution the court held to be patent-eligible in DDR. In DDR, the Federal
Circuit applied the Supreme Court's Alice two-step framework, and upheld
the validity of DDR's patent on its web-page display technology. DDR, 773
F.3d at 1255.
As discussed above, Appellant's claims are directed to a method of
organizing human activity (see Final Act. 2). However, we find the problem
addressed by Appellant's claims is not similar or otherwise analogous to the
specific technical problem addressed by the subject claims in DDR, which
were directed to retaining a website visitor when the visitor clicked on a
third-party merchant's advertisement on the host website. Instead of taking
the visitor to the third-party merchant's website (and thus losing the visitor
to the third-party merchant), DDR's claimed system generated a hybrid web
page that: (1) displayed product information from the third-party merchant,
but also, (2) retained the host website's "look and feel."
Here, Appellant's claims 1, 22-24, and 26-40 are not directed to a
website that retains the host website's "look and feel" while displaying
product information from the third-party merchant, as was the case in DDR,
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773 F.3d at 1257. Although Appellant's invention is directed to the result
of:
generat[ing] a natural language clinical note with a treatment
prescription through gathering a greater volume of information
than can be maintained in human memory and wherein the
tablet computing device accordingly provides the gathered
clinical note information to the physician user in smaller,
iterative verification quantities based on a volume of
information that can be maintained in human memory
(Independent claim 1 ), we find the generated "natural language clinical
note" is at best merely an improvement in the informational content (i.e.,
data) that is intended to be viewed and evaluated by a person, such as a
physician, as a mental step.
We find the claims on appeal are silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet. Therefore, we find Appellant's claimed invention does
not provide a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as considered by the court in DDR, 773 F.3d at 1257. (Emphasis added.).
Further regarding the use of the recited generic "processor" ( claim 1 ),
the Supreme Court held "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Alice, 134 S. Ct. at 2358; see also Bascom Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract
idea on 'an Internet computer network' or on a generic computer is still an
abstract idea."). On this record, we are of the view that Appellant's claims
do not operate the recited generic computer components in an
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unconventional manner to achieve an improvement in computer
functionality.
Therefore, on this record we agree with the Examiner that Appellant's
claims, other than the abstract idea per se, amount to no more than a
recitation of:
(A) a generic computer structure(s) (e.g., a computing device, a
network, a server, a processor, etc.) that serves to perform
generic computer functions that serve to merely link the
abstract idea to a particular technological environment (i.e.,
computers); and/or [line break inserted]
(B) functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry ( e.g., receiving data, storing data, transmitting data,
etc.). For example,paragraph [0021] of appellant's published
application recites that the invention can be implemented using
a tablet computing device, a laptop, a desktop computer, a
smartphone, etc. which are all general purpose or generic-type
computers. Moreover, the focus of appellant's claims is not on
an improvement in computers as tools, but on certain abstract
ideas that use computers as tools.
Final Act. 4 ( emphasis added).
See Spec. ,r 21, as cited (Final Act. 4) by the Examiner:
A dynamic decision forest may be implemented in a number of
different embodiments, which could make use of different
hardware ( e.g., local servers, web servers, desktop computers,
laptops, tablet devices, smart phones, etc.) and/or different
software, such as different programming languages, interface
styles and/or network protocols.
Spec. ,r 21.
Under Alice step two, we particularly agree with the Examiner that the
claimed "array of flag bits utilizing single-bit logic" ( claim 1) does not
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improve the computer ( or memory) itself, but instead merely affects how the
clinical queries data is most efficiently stored in memory in a manner that
promotes rapid recall. Claim 1.
Our reviewing court provides additional guidance: See Fair Warning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use
of generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter"); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) ( claims reciting, inter alia, sending messages over a network,
gathering statistics, using a computerized system to automatically determine
an estimated outcome, and presenting offers to potential customers found to
merely recite "'well-understood, routine conventional activities'" by either
requiring conventional computer activities or routine data-gathering steps)
(internal citation omitted). See also Elec. Power Grp., 830 F.3d at 1355
("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." (quoting buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1353, 1355 (Fed. Cir. 2014)));
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332,
1341 (Fed. Cir. 2017) ("Rather, the claims recite both a generic computer
element-a processor-and a series of generic computer 'components' that
merely restate their individual functions . . . . That is to say, they merely
describe the functions of the abstract idea itself, without particularity. This
is simply not enough under step two.").
The Supreme Court additionally guides that the "prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
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use of the formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-
11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
We additionally note Appellant's untimely citation, on page 2 of the
Reply Brief, to Rapid Litigation Management Ltd v.CellzDirect, Inc., 827
F.3d 1042 (Fed. Cir. 2016). Rapid Litigation was decided by the Federal
Circuit on July 5, 2016. Appellant could have fully addressed Rapid
Litigation in the Appeal Brief, filed on November 28, 2016, but did not do
so. Therefore, we find Appellant's citation to Rapid Litigation in the Reply
Brief (2) is untimely, because it is not an intervening authority.
Because Appellant: ( 1) did not raise Rapid Litigation in the opening
brief, and, (2) good cause has not been shown why it should be considered,
we will not consider this argument. See 37 C.F.R. § 4I.41(b)(2); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) ("[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's rejections, but
were not.").
Because we find Appellant has not established that claims 1, 22-24,
and 26-40 are directed to an improvement in the recited generic computer
system, we conclude that none of the claim limitations, viewed both
individually and as an ordered combination, amount to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellant's claims 1, 22-24, and 26-40, considered as a whole,
is directed to a patent-ineligible abstract idea (under step one), and under
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step two, does not recite something "significantly more" to transform the
nature of the claim into a patent-eligible application.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1, 22-24, and 26-40,
as being directed to a judicial exception without significantly more. 7
CONCLUSION
The Examiner did not err in rejecting claims 1, 22-24, and 26-40
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
DECISION
We affirm the Examiner's decision rejecting claims 1, 22-24, and
26-40 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
7 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
25