Ex Parte YOUNG et al

Patent Trial and Appeal Board

Oct 31, 2018

14817171 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/817,171 08/03/2015
909 7590 11/02/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
JEFFREY A. YOUNG
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.
016982-0440941 5987
EXAMINER
BRIDGES, CHRISTOPHER
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY A. YOUNG and
AMY ELIZABETH BERESKY
Appeal2017-007293 1
Application 14/817, 171
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 2, 4--10, and 12-
16. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to "determining healthcare savings
opportunities for individuals and the likelihood of achieving those savings
via alternative engagement channels ( or modalities) to optimize clinical
(outreach) coaching opportunities." Spec. ,r 8.
1 The Appellants identify CIGNA, Inc. as the real party in interest. Appeal
Br. 2.
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Application 14/817, 171
Claim 1 is illustrative:
1. A method of automatically generating, on a web interface,
actionable areas related to specific modalities for targeted
customer changes, the method being implemented on a computer
system that includes one or more physical processors which,
when executed, perform the method, the method comprising:
determining, by the computer system, a first potential cost
savings associated with a first targeted change of a customer;
determining, by the computer system, a first probability of
achieving a first goal that corresponds to the first targeted change
when a first modality is used to engage the customer to assist the
customer in achieving the first goal;
determining, by the computer system, a first score
associated with the first modality and the first goal based on the
first potential cost savings and the first probability;
determining, by the computer system, a second probability
of achieving the first goal that corresponds to the first targeted
change when a second modality is used to engage the customer
to assist the customer in achieving the first goal, wherein the
second modality is different than the first modality;
determining, by the computer system, a second score
associated with the second modality and the first goal based on
the first potential cost savings and the second probability;
selecting, by the computer system, based on a comparison
of the first score, the second score, and one or more other scores
associated with one or more other modalities, modalities for use
in engaging the customer to assist the customer in achieving the
first goal; and
generating, by the computer system, on a web interface,
actionable areas related to the selected modalities for facilitating
the first targeted change such that, responsive to the selected
modalities comprising the first modality and the second
modality, the actionable area related to the first modality and the
actionable area related to the second modality are arranged on
the web interface based on the first score and the second score,
wherein an automated interactive session is caused to be
activated for the customer upon detection of user interaction with
at least a portion of one of the actionable areas.
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Application 14/817, 171
The Examiner rejects claims 1, 2, 4--10, and 12-16 under 35 U.S.C.
§ 101 as directed to ineligible subject matter in the form of abstract ideas.
The Examiner rejects claims 1, 2, 4--10, and 12-16 under 35 U.S.C.
§ I03(a) as unpatentable over Kachnowski et al. (US 2012/0004924 Al,
pub. Jan. 5, 2012) ("Kachnowski"), Morris et al. (US 8,694,300 B2, iss.
Apr. 8, 2014) ("Morris"), and O'Shaughnessy et al. (US 8,223,940 B2, iss.
July 17, 2012) ("O'Shaughnessy").
We AFFIRM.
ANALYSIS
Principles of Law
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 implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014) (internal quotations and citation omitted).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
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Application 14/817, 171
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
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In addition, the Federal Circuit has held that 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, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( determining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
Patentable subiect matter
We are unpersuaded by the Appellants' arguments of error in the
Examiner's rejection because the rejection is conclusory, and without "any
evidence with regard to how the claimed invention as a whole is a well-
understood, routine, conventional activity." Appeal Br. 11-12; see also
Reply Br. 4--5.
The Examiner states:
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the claims are directed to a process for optimizing healthcare
savings opportunities based on alternate communication
channels to achieve a behavior change which is considered to be
an abstract idea inasmuch as such activity is considered a method
of organizing human behavior and an abstract idea of itself such
as comparing new and stored information and using rules to
identify options (SmartGene), collecting and comparing known
information (Classen) and comparing data to determine a risk
level (Perkin-Elmer) and organizing information through
mathematical correlations.
Final Act. 3. The next paragraph explains how each limitation corresponds
to one of the three cited cases. Id.; see also Answer 3-5. The rejection
clearly articulates the analysis the Examiner applied.
We are unpersuaded by the Appellants' argument that the Examiner
failed to consider each claim as a whole when determining each is directed
to an abstract idea. Appeal Br. 12-14; see also Reply Br. 5. Instead, the
Examiner finds each claim as a whole can be performed mentally.
Answer 3. Even without evidence, thinking is recognized as a well-
understood, routine, and conventional activity. Versata Dev. Group, Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir.
2015) (mentally arranging a hierarchy of groups, sorting information,
eliminating less restrictive pricing information, and determining the price is
a well-understood, routine, conventional activity).
We also are unpersuaded by the Appellants' argument that the
Examiner failed to consider each claim as a whole when determining each
fails to recite "something more" that transforms each abstract idea into
eligible subject matter. Appeal Br. 14--15; see also Reply Br. 5-7. Instead,
the Examiner finds
[ t ]he elements of the instant process, when taken in
ordered combination, together do not offer substantially more
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than the sum of the functions of the elements when each is taken
alone. That is, the elements involved in the recited process
undertake their roles in performance of their activities according
to their generic functionalities which are well-understood,
routine and conventional. The elements together execute in
routinely and conventionally accepted coordinated manners and
interact with their partner elements to achieve an overall outcome
which, similarly, is merely the combined and coordinated
execution of generic computer functionalities which are well-
understood, routine and conventional activities previously
known to the industry.
Final Act. 6; see also Answer 7. The Examiner has clearly considered the
claim as a whole.
We are not persuaded by the Appellants' arguments that the claims
are "necessarily rooted in computer technology," because the claims
generate a web interface. Appeal Br. 1 7; see also id. 18-20 ("an
improvement to prior computer-generated web interfaces and computer
systems (that facilitates targeted changes of a customer) by automatically
generating, on a web interface, actionable areas (related to specific
modalities for targeted customer changes) in a particular manner"), Reply
Br. 8-11.
Instead, the Examiner finds the generating of the web interface with
the determined information, is merely "displaying information/data from the
previous analysis steps and is a post solution activity." Final Act. 4--5.
Indeed, the claims merely take a purely mental process of getting
information and making determinations, and instructs one to implement each
mental step "by the computer system." The Federal Circuit has held that 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, 1373 (Fed. Cir.
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2011) ("[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101.").
Additionally, mental processes, e.g., making determinations, as recited in
independent claims 1 and 9, remain unpatentable even when automated to
reduce the burden on the user of what once could have been done with pen
and paper. Id. at 1375 ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalkv. Benson, [409 U.S. 63 (1972)].").
The Appellants argue the "claims address a business challenge that is
particular to the Internet." Appeal Br. 18; see also Reply Br. 10. We
disagree, the invention is directed to "clinical outreach" programs to
patients, in which "[h ]ealth insurance providers are incentivized to conduct
these types of outreach campaigns at least in part because keeping their
customers healthy can help reduce claims and curb premium hikes, among
other benefits." Spec. ,r,r 4--5. These are issues that pre-date, and do not
depend upon, the Internet.
The Appellants argue the claimed invention relates to generating a
web interface that improves user experience. Appeal Br. 18; see also Reply
Br. 10. Yet, the claimed method and system merely display determined
information, and do not alter the manner of displaying data on a web
interface. See, e.g., Spec. ,r 89 ( cited at Appeal Br. 3--4) ("a display that
conveys the selected modality for facilitating the targeted change may be
generated").
The Appellants thus have not shown error in the rejection. For this
reason, we sustain the rejection of claims 1, 2, 4--10, and 12-16 under
35 U.S.C. § 101.
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Obviousness Reiection of Claims 1. 2. 5-10. and 13-16
The Appellants argue independent claims 1 and 9 together, so we
select claim 1 as representative. Appeal Br. 20-21. See 37 C.F .R.
§ 4I.37(c)(l)(iv).
We are not persuaded by the Appellants' argument that Kachnowski
fails to disclose the claimed determining of probabilities of achieving a
particular goal, because, according to the Appellants, Kachnowski is silent
with regard to considering "particular goals." Appeal Br. 21. Kachnowski
discloses "patient response to specific types of contact may be measured so
that modes of communication that provide an increased likelihood of
impacting the behavior of a particular patient may be selected."
Kachnowski ,r 5. The behavior of the patient is the "particular goal," as
claimed.
We are not persuaded by the Appellants' argument that
O'Shaughnessy discloses displaying an ordered list of selectable
communication modes for communication with a particular party, but does
not generate the claimed actionable areas based on the modalities' scores.
Appeal Br. 21; see also Reply Br. 14. According to the Examiner,
Kachnowski discloses selecting modalities to assist the patient with a goal
(Final Act. 13), and O'Shaughnessy merely displays these results in an
ordered, selectable list, essentially as claimed (id. 17-18).
Because the Appellants have failed to demonstrate error in the
Examiner's obviousness rejection of independent claims 1 and 9, we sustain
the rejection of these claims, as well as of dependent claims 2, 5-10, and 13-
16 that were not argued separately. Appeal Br. 22.
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Obviousness Reiection of Claims 4 and 12
We are unpersuaded by the Appellants' argument that Kachnowski
fails to consider "multiple particular goals with respect to the same
customer." Appeal Br. 22; see also Reply Br. 12-15. Kachnowski, however
discloses "a mechanism by which to improve the intended behaviors
expected of the recipient." Kachnowski ,r 4. The plural behaviors are the
multiple particular goals for the same customer. In addition, in rejecting
claims 4 and 12, the Examiner relies on the "plurality of interventions"
disclosed by Morris to meet this claim language. Final Act. 19-20
( emphasis omitted). Morris is thus a cumulative reference.
Because the Appellants have not shown error in the Examiner's
rejection, we sustain the obviousness rejection of claims 4 and 12.
DECISION
We affirm the rejection of claims 1, 2, 4--10, and 12-16 under
35 U.S.C. § 101.
We affirm the rejections of claims 1, 2, 4--10, and 12-16 under
35 U.S.C. § 103(a).
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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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