Ex Parte Yasnoff

Patent Trial and Appeal Board

Apr 16, 2018

11533209 (P.T.A.B. Apr. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111533,209 09/19/2006
22242 7590 04/17/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
William A. Y asnoff
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.
20435-88818-us 4079
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
MAILDATE DELIVERY MODE
04/17/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM A. Y ASNOFF
Appeal2016-006270 1
Application 11/533,2092
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
NINA L. MEDLOCK, 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
rejection of claims 2--4 and 6-19. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
November 20, 2015) and Reply Brief ("Reply Br.," filed June 6, 2016), and
the Examiner's Answer ("Ans.," mailed April 7, 2016) and Final Office
Action ("Final Act.," mailed April 15, 2015).
2 Appellant identifies Arxviva, Inc. as the real party in interest. App. Br. 3.
Appeal 2016-006270
Application 11/533,209
CLAIMED INVENTION
Appellant's claimed invention "relates generally to information and
more particularly to medically-related information" (Spec. i-f 2).
Claim 17, reproduced below, is the sole independent claim, and
representative of the subject matter on appeal:
1 7. An apparatus comprising:
a compensation-provision interface;
an information-provider interface;
a processor operably coupled to the compensation-
provision interface and the information-provider interface and
being configured and arranged, at least in part, to:
provide an opportunity via the information-provider
interface for an information-possessing entity other than a
first individual and comprising a doctor for the first
individual to submit patient-specific medically-related
information regarding the first individual;
receive, via the information-provider interface, the
patient-specific medically-related information regarding
the first individual from the information-possessing entity
to provide received patient-specific medically-related
information regarding the first individual;
arrange for digital storage of the received patient-
specific medically-related information regarding the first
individual such that the received patient-specific
medically-related information regarding the first
individual can be later specifically accessed with respect
to medically treating and assisting the first individual;
arrange, using the compensation-provision
interface, for the information-possessing entity to receive
compensation in direct exchange for the information-
possessing entity having provided the patient-specific
medically-related information regarding the first
individual.
2
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REJECTIONS
Claims 2--4 and 6-19 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 2--4 and 6-19 are rejected under 35 U.S.C. § 102(b) as
anticipated by Felsher (US 2002/0010679 Al, pub. Jan. 24, 2002).
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: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 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., 566 U.S. 66 (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. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
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 there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
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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, 566 U.S. at 71. 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 Am., 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)).
Addressing the first step of the Mayol Alice framework, Appellant
argues that the § 101 rejection cannot be sustained because the Examiner has
provided no evidence to support the Examiner's determination that the
claims are directed to an abstract idea (App. Br. 7-8; see also Reply Br. 2-
3). Appellant, thus, ostensibly maintains that because there is no evidentiary
support of record for the Examiner's determination, the Examiner has failed
to establish a prima facie case of patent-ineligibility (App. Br. 7).
Appellant's argument is not persuasive at least because there is no
requirement that an examiner provide evidentiary support in every case
before a conclusion can be made that a claim is directed to an abstract idea. 3
Nor, contrary to Appellant's suggestion (see id.), did this Board hold in
Ex parte Renald Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015), that
3 See, e.g., para. IV "July 2015 Update: Subject Matter Eligibility,"
available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf ("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.").
4
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there is any such requirement. 4 Although evidence may be helpful, e.g.,
where facts are in dispute, it is not always needed. See Mortgage Grader,
Inc. v. First Choice Loan Servs. Inc., 811F.3d1314, 1325-26 (Fed. Cir.
2016) ("[I]t is also possible, as numerous cases have recognized, that a § 101
analysis may sometimes be undertaken without resolving fact issues.").
We are not persuaded here, from our review of the Examiner's
analysis, that evidence is needed to support the Examiner's determination
that "providing an opportunity to submit patient information" is an abstract
idea. We also are not persuaded that Appellant's bare assertion that
evidence is needed, without any supporting reasoning as to why, is sufficient
to require the Examiner to provide evidentiary support. 5
The Federal Circuit, moreover, has repeatedly observed 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 the 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 sets forth the statutory basis of the rejection
4 We would not be bound, in any event, by a non-precedential decision of
another panel of the Board.
5 We note that Appellant has put forward no rebuttal evidence showing the
claims are not directed to an abstract idea.
5
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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.").
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner notified Appellant that the claims are directed to "providing an
opportunity to submit patient information," i.e., to an abstract idea; and that
the additional elements or combination of elements, other than the abstract
idea, does not provide meaningful limitations to transform the abstract idea
into a patent-eligible application of the abstract idea such that the claims
amount to significantly more than the abstract idea itself (Final Act. 2)
(emphasis omitted). Appellant does not contend that the Examiner's
rejection under§ 101 was not understood or that the Examiner's rejection,
otherwise, fails to satisfy the notice requirements of§ 132. Instead,
Appellant's understanding of the rejection is clearly manifested by
Appellant's response as set forth in the briefs.
Claim 17 is directed to an apparatus comprising: (1) a compensation-
provision interface; (2) an information-provider interface; and
(3) a processor operably coupled to the compensation-provision interface
and the information-provider interface, and recites that the processor is
configured and arranged to receive information (i.e., "patient-specific
medically-related information regarding [a] first individual from [a]
information-possessing entity"); store the information (i.e., "arrange for
digital storage of the received patient-specific medically-related
information"); and compensate the supplier for providing the information
6
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(i.e., "arrange ... for the information-possessing entity to receive
compensation in direct exchange for ... having provided the patient-specific
medically-related information)." Claim 17 is, thus, similar to claims that the
court, in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014),
determined were directed to an abstract idea.
The Ultramercial claims were "directed to a specific method of
advertising and content distribution that was previously unknown and never
employed on the Internet before," i.e., displaying advertisement in exchange
for access to copyrighted media. Ultramercial, 772 F.3d at 714.
Nevertheless, those claims were patent-ineligible because they merely
recited the abstract idea of offering media content in exchange for viewing
an advertisement, i.e., using advertising as an exchange or currency, along
with "routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet." Id. at 715-16. Similarly here, claim 17 merely recites
receiving information from an information-possessing entity; storing the
information, and providing compensation in exchange for the information,
without any particular inventive technology - an abstract idea.
It also is significant here, as the Examiner observes (Ans. 2), that
although claim 17 recites that the claimed steps (i.e., "provide an
opportunity ... for an information-possessing entity ... to submit ...
information"; "receive the ... information"; "arrange for digital storage of
the received ... information"; and "arrange ... for the information-
possessing entity to receive compensation in direct exchange for ... the ...
information") are performed via user interfaces and a processor operably
coupled to the interfaces, these steps all involve acts that can be performed
7
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by a human, either mentally or manually, using pen and paper, without the
use of any machine. 6
The law is clear that "a method that can be performed by human
thought alone 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); see also Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
("[p ]henomena of nature ... , mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work."). Moreover, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. 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.").
Turning to the second step of the Mayo/Alice framework, the
Examiner determined, and we agree, that the claims do not include
additional elements or a combination of elements sufficient to transform the
abstract idea into patent-eligible subject matter (Final Act. 2; see also
6 For example, an announcement alerting information-possessing entities of
the opportunity to submit information could be communicated via written
correspondence. The sending, receiving, and storing of information also can
be performed through the use of pen and paper, as can the "arrang[ing] ...
for the information-possessing entity to receive compensation," e.g., by
providing instructions to a third party directing that such compensation be
paid (see Spec. i-f 32 (describing that the processor "could provide
compensation information (such as the identity of the entity to be
compensated and a specific amount by which such entity is to be
compensated) to a given financial institution 306 which in tum then effects
the actual compensation step.")).
8
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Ans. 3--4). For example, we find no indication, in the record, that the
particular operations recited in the claims require any specialized computer
hardware or other inventive computer components, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. 7 See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.").
Appellant does not contend otherwise; nor does Appellant otherwise
address the second step of the Mayo/Alice test in either its Appeal Brief or
Reply Brief. Instead, Appellant focuses solely on step one of the
Mayol Alice test.
We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting claims 2-19 under 35 U.S.C. § 101. Therefore,
we sustain the Examiner's rejection.
Anticipation
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting independent claim 17 under 35 U.S.C. § 102(b) because
"Felsher does not disclose providing compensation directly to an original
holder of information for providing that information," i.e., "arrang[ing] ...
for the information-possessing entity to receive compensation in direct
exchange for ... having provided the patient-specific medically-related
information," as recited in claim 17 (App. Br. 9; see also id. at 10-11 and
7 The Specification expressly discloses that "the above-described processes
are readily enabled using any of a wide variety of available and/or readily
configured platforms." See Spec. i-f 27.
9
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Reply Br. 3-7). Appellant notes that "per Felsher's approach, a submitting
party only receives compensation if and when the submitted data is actually
used by someone" (App. Br. 9). And Appellant argues that because Felsher
only discloses providing compensation when and if submitted information is
ever used and "specifically does not disclose the idea of providing
compensation in direct exchange for information being submitted," Felsher
"cannot be fairly relied upon as an anticipatory reference" (id. at 10).
Focusing particularly on the phrase "in direct exchange," as used in
claim 17, Appellant argues that "the word ['direct'] in context in the
[claim's] statement 'receive compensation in direct exchange for the
information-possessing entity having provided the patient-specific
medically-related information regarding the first individual' works to
exclude the prior art practice of providing compensation upon making use of
previously-stored information" (Reply Br. 5). Appellant, thus, ostensibly
maintains that claim 17, by its use of the word "direct," requires that the
submission of information, without more, automatically trigger the payment
of compensation (id. at 4 ("Our argument is that the word in context helps to
provide a clear distinction with respect to the prior art by making clear that
the compensation is provided in response to when the information is
provided ... and at a time that is clearly other than when the information has
already been gathered and is then being made available to an interested party
at a cost at a time of use"); see also App. Br. 9 ("We describe something
quite different [from Felsher]. In particular, we describe and claim
providing compensation in direct response to the information being provided
and accordingly 'use' is not required.")).
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We find nothing in the claim language, including the phrase "in direct
exchange," that requires the original holder of the information, i.e., the
claimed "information-possessing entity," to be compensated in every
instance in which information is provided, i.e., that the only prerequisite to
the payment of compensation is the submission of information. Instead, in
our view, the term "direct," as used in claim 17, does no more than establish
a causal relationship between the provision of information and the receipt of
compensation. In other words, the claimed "information-possessing entity"
receives compensation because he or she provided the information, i.e.,
compensation is provided "in direct exchange" for the provision of
information.
This interpretation is fully consistent with the ordinary and customary
meaning of the term "direct," which is generally understood to mean
"characterized by close logical, causal, or consequential relationship."
See MERRIAM-WEBSTER DICTIONARY, https://www.merriam-
webster.com/dictionary/direct (last visited on April 11, 2018). We find no
indication in the Specification that Appellant has given the term a meaning
different from its ordinary and customary meaning. 8
8 The only appearance of the word "direct" in Appellant's Specification is in
paragraph 32. There, the Specification states, in pertinent part, "by one
approach, the information facilitator 302 can arrange, if desired, for direct
compensation of the information providers as per these teachings. By
another approach, however, it would also be possible for the information
facilitator 302 to cooperate instead with one or more financial
institutions 306 in this regard." (Spec. i-f 32) (emphasis added). "Direct" is,
thus, used in paragraph 32 in a different context, i.e., to describe the
facilitator's payment of compensation to the information provider directly
rather than via a third party.
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Felsher is directed to a method of maintaining information records,
e.g., electronic medical records, and discloses a trustee model for the
collection, maintenance, and distribution of entrusted information content
(see, e.g., Felsher i-f 189, Abstract). Felsher discloses that the economic
model for the trustee allows compensation from a number of sources; an
accounting, thus, first occurs when a content owner supplies content to the
trustee for inclusion in the virtual trust (id. i-f 211 ). The trustee also is
compensated when trust content is accessed and used by a third party and, in
that instance, Felsher discloses that the trustee, in tum, compensates the
content owner, whose content resulted in the acquisition of the data (id.
i-f 215). In other words, when trust content is accessed and used, Felsher
discloses that the content owner who supplied the content is compensated.
Felsher, thus, discloses a causal, consequential relationship between the
provision of information and the receipt of compensation, i.e., the content
owner "receive[ s] compensation in direct exchange for ... having provided
the ... information," which meets the claim language.
Appellant has not shown error in the Examiner's rejection of claim 17
as anticipated by Felsher. Therefore, we sustain the rejection of claim 17
under 35 U.S.C. § 102(b). We also sustain the rejection of dependent
claims 2--4, 6-16, 18, and 19, which are not argued separately except by
reference to Appellant's arguments with respect to claim 1 7 (App. Br. 11).
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DECISION
The Examiner's rejection of claims 2--4 and 6-19 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 2--4 and 6-19 under 35 U.S.C.
§ 102(b) is affirmed.
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