Gregg D. Givens et al.Download PDFPatent Trials and Appeals BoardMay 11, 202013124280 - (D) (P.T.A.B. May. 11, 2020) Copy Citation 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. 13/124,280 07/07/2011 Gregg D. Givens 5218-178 5031 20792 7590 05/11/2020 MYERS BIGEL, P.A. PO BOX 37428 RALEIGH, NC 27627 EXAMINER COLEMAN, CHARLES P. ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 05/11/2020 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): uspto@myersbigel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GREGG D. GIVENS and JIANCHU YAO ____________________ Appeal 2018-005723 Application 13/124,280 Technology Center 3600 ____________________ Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–3, 5–23, 25–30, 32, and 36, which are all of the claims pending in the application. Claims 4, 24, 31, and 33–35 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as East Carolina University. Appeal Br. 3. Appeal 2018-005723 Application 13/124,280 2 STATEMENT OF THE CASE Introduction Appellant generally describes the disclosed and claimed invention as follows: The systems, methods and associated devices performing diagnostic hearing tests which use a distributed, client-server architecture and the Internet to allow interaction between a test administration site and one or a plurality of remote patient sites. The test can be administered by an audiologist or clinician at a site remote from the patient, in a manner, which can allow interaction between the user and the clinician during at least a portion of the administration of the test. The diagnostic hearing tests can be performed such that they meet standardized guidelines such as ANSI requirements or certification standards and can include distortion product emission level measurements or middle ear compliance measurements. Abstract.2 Claims 1, 16, and 36 are independent. Claim 1 is a method claim, and claims 16 and 36 are systems claims. Claim 16 is representative of the subject matter on appeal and is reproduced below (with paragraph notations added): 16. A telehearing system comprising: (i) at least one web server in communication with a global computer network configured to provide a web-based service that hosts a telehearing diagnostic testing system, wherein the at least one web server comprises a web server with web 2 Our Decision refers to the Final Office Action mailed Jan. 31, 2017 (“Final Act.”), Appellant’s Appeal Brief filed Sept. 27, 2017 (“Appeal Br.”) and Reply Brief filed May 7, 2018 (“Reply Br.”), the Examiner’s Answer mailed Mar. 7, 2018 (“Ans.”), and the original Specification filed Apr. 14, 2011 (“Spec.”). Appeal 2018-005723 Application 13/124,280 3 application functions that appear at portal sites of web clients associated with different users; (ii) a plurality of web clients in different physical locations in communication with the at least one server, the plurality of clients including different users with different access levels including a plurality of audiologists at different geographical locations, wherein the at least one web server with the web application functions can display a different web portal configuration with associated permissible actions and/or different web pages depending on a specific user and/or user type; and (iii) a plurality of portable test adapters, each configured to (a) connect a respective patient user to the global computer network at a patient site, (b) convert data from an audiometer at the patient site and transmit the converted data over the global computer network to the web server then to a web client associated with a remote audiologist, and (c) receive operational command data from the web client associated with the remote audiologist via the web server to control operation of the respective audiometer at the patient site, (iv) wherein the system is configured to electronically select one of a plurality of registered audiologists to perform a hearing test for a patient based on patient geographic location and/or requested test times, and wherein the web-based service is configured to electronically select an audiologist only if the system confirms that a registered audiologist has a current medical license for a state and/or country location where the patient is located. Appeal Br. 35–36 (Claims App.). Rejection on Appeal Claims 1–3, 5–23, 25–30, 32, and 36 stand rejected under 35 U.S.C. § 101 as being directed to unpatentable subject matter, i.e., to a judicial exception without significantly more. Final Act. 2–5. Appeal 2018-005723 Application 13/124,280 4 ANALYSIS A. Examiner’s Findings and Conclusions, and Appellant’s Contentions The Examiner finds that claims 1–3, 5–23, 25–30, 32, and 36 are directed generally to the “abstract idea of ‘methods for internet based diagnostic hearing assessment.’” Ans. 3; see also Final Act. 2. In particular, the Examiner finds that claims 1, 16, and 36 are directed to information processing, which is “a fundamental building block of human ingenuity” and, therefore, an abstract idea. Ans. 4. The Examiner also finds that the steps of “allowing patient and audiologist to communicate, accepting electronic input, allowing multiple concurrent tests to be carried out, selecting a proper test communication[,] . . . control protocol based on known information, and electronically selecting a licensed audiologist” correspond to an abstract idea, such as “an idea of itself” in Alice,3 and are similar to the concepts of “collecting information, analyzing it, and displaying certain results of the collection and analysis,” which were found to be an abstract idea in Electric Power Group.4 Id. at 4, 6. The Examiner further finds that the claims “do not include additional elements that are sufficient to amount to significantly more” than the abstract idea and that the additional elements amount to no more than “generic computer components that serve to merely link the abstract idea to a particular technological environment . . . performing routine and conventional activities that are well understood in the healthcare industry.” Id. at 5; Final Act. 3. Moreover, the Examiner finds that Appellant has not provided sufficient evidence that the 3 Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). 4 Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1355–56 (Fed. Cir. 2016). Appeal 2018-005723 Application 13/124,280 5 additional claim elements “are an improvement to the functioning of the computer itself” or provide a technical solution to a problem rooted in computer technology. Ans. 7–10. Appellant contends that the Examiner’s rejection under § 101 is erroneous and argues that claim 16 is not directed to an abstract idea because it recites an improvement to a technological process and solutions particular to a networked environment, and that in any event, claim 16 recites significantly more than an abstract idea because the claimed “test adapters” and “audiometers” are not generic computer components. Appeal Br. 14–22; Reply Br. 3–13. Appellant asserts that its arguments presented with respect to claim 16 apply similarly to claims 1 and 36. Appeal Br. 22–28. Appellant further argues that dependent claims 2, 5, 11, 13, 17–20, and 25 recite significantly more than an abstract idea. Appeal Br. 28–30. In particular, Appellant argues that claim 16 is not directed to an abstract idea (including “methods for internet based diagnostic hearing assessment,” “an idea of itself,” and “information processing,” as found by the Examiner) because it recites a portable test adapter (at the patient site) “configured to receive operational command data from the web client associated with the remote audiologist via the web server to control operation of the respective audiometer at the patient site” “to facilitate [] conducting [] concurrent hearing tests.” Reply Br. 5–7; see also Appeal Br. 14–19. Citing Enfish5 and McRO,6 Appellant also argues that claim 16 is not directed to an abstract idea because it recites an improvement to a 5 Enfish, LLC, v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). 6 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016). Appeal 2018-005723 Application 13/124,280 6 technological process in which a portable test adapter controls operation of an audiometer. Appeal Br. 17–18. Citing DDR Holdings,7 Appellant argues that claim 16 recites “specific network-related infrastructure” to permit remote hearing testing and multiple hearing tests concurrently. Appeal Br. 18–19; Reply Br. 9–10. Appellant further argues that claim 16 recites significantly more than an abstract idea because it recites a portable test adapter, which is “a specifically designed piece of equipment,” and the Examiner’s finding that it is a “generic computer” is unsupported. Appeal Br. 19–22 (citing Spec. ¶ 49 describing two configurations of portable test adapter); Reply Br. 10–13 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)). Moreover, Appellant argues that paragraph 25 of the Specification does not describe conventional computer hardware, including a conventional processor, for performing the claimed functions, as the Examiner finds, and that even if the elements pointed to by the Examiner existed in the Specification, “the fact that conventional technology is used to perform a solution[] does not make the solution conventional.” Appeal Br. 21–22 (citing BASCOM Glob. Internet Servs. Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)). B. Applicable Law “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and 7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Appeal 2018-005723 Application 13/124,280 7 useful improvement thereof” is patent eligible. 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice, 573 U.S. at 216 (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is “directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of [the] claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claim for an “inventive concept,” “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72– 73). In January 2019, the Patent Office issued guidance about this framework. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).8 Under the Revised Guidance, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the 8 See also USPTO, October 2019 Patent Eligibility Guidance Update (Oct. 17, 2019), https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf. Appeal 2018-005723 Application 13/124,280 8 Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”). See Revised Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we then determine whether the claim has an inventive concept. The Revised Guidance explains that when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not well- understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56. With these principles in mind, we first analyze whether claim 16 is directed to an abstract idea.9 C. Abstract Idea 1. USPTO Step 2A, Prong One Beginning with Step 2A, Prong One, of the Revised Guidance,10 we must determine “whether the claims at issue are directed to one of those patent-ineligible concepts,” including the abstract ideas enumerated in the 9 Although Appellant argues claim 1 in section III, and claim 36 in section IV, of the Appeal Brief, Appellant states that most of the arguments presented with respect to claim 16 “apply similarly” with respect to claims 1 and 36 and that the reasons for which claims 1 and 36 are not abstract are presented with reference to the arguments presented with respect to claim 16. See Appeal Br. 22, 25. Thus, we decide the appeal based on representative claim 16. See 37 C.F.R. § 41.37(c)(1)(iv). 10 The Guidance refers to “Step One” as determining whether the claimed subject matter falls within the four statutory categories identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. This step is not at issue in this case. Appeal 2018-005723 Application 13/124,280 9 Revised Guidance. Alice, 573 U.S. at 217. One of the subject matter groupings identified as an abstract idea in the Revised Guidance is “[c]ertain methods of organizing human activity— . . . managing personal behavior or relationships or interactions between people (including . . . following rules or instructions).” Revised Guidance, 84 Fed. Reg. at 52. For our prong one analysis, we set aside, for consideration below, the technological elements recited in claim 16: “at least one web server in communication with a global computer network,” as recited in limitation (i); “the at least one web server comprises a web server with web application functions that appear at portal sites of web clients associated with different users,” as recited in limitation (i); “a plurality of web clients in different physical locations in communication with the at least one server,” as recited in limitation (ii); and, “portable test adapters” and “audiometer,” as recited in limitation (iii). The preamble of claim 16 recites a “telehearing system,” and limitation (i) recites “a telehearing diagnostic testing system.” Limitation (ii) recites “a plurality of audiologists at different geographical locations.” Limitation (iii) recites (a) “connect a respective patient user . . . at a patient site,” (b) “convert data . . . at the patient site” and “transmit the converted data . . . to . . . a remote audiologist,” and (c) “receive operational command data . . . to control operation . . . at the patient site.” Limitation (iv) recites that “the system is configured to electronically select one of a plurality of registered audiologists to perform a hearing test for a patient based on patient geographic location and/or requested test times, and . . . electronically select an audiologist only if the system confirms that a Appeal 2018-005723 Application 13/124,280 10 registered audiologist has a current medical license for a state and/or country location where the patient is located.” We determine that claim 16 focuses on performing diagnostic hearing tests on a patient by an audiologist located at a remote location from the patient, which constitutes managing interactions between people (including . . . following rules or instructions), and is, therefore, a method of organizing human activity. See Revised Guidance, 84 Fed. Reg. at 52. In that regard, the operations of “connect” a patient at a patient site, “convert data from an audiometer at the patient site and transmit the converted data . . . to . . . a remote audiologist,” and “receive operational command data . . . to control operation . . . at the patient site,” as set forth in limitations (iii)(a), (b), and (c), respectively, are merely receiving, analyzing, manipulating, and conveying data. Federal Circuit cases have found limitations that simply retrieve, store, manipulate, and convey data, like those in claim 16, are abstract. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (collection, manipulation, and display of data); Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting data, . . . recognizing certain data within the collected data set, and . . . storing that recognized data in a memory.”); see also Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d at 1266 (explaining that “storing, retrieving, and providing data . . . are inconsequential data gathering and insignificant post solution activity”). Limitation (iv) focuses on the system being configured to “electronically select one of a plurality of registered audiologists to perform a hearing test for a patient based on patient geographic location and/or Appeal 2018-005723 Application 13/124,280 11 requested test times, and . . . electronically select an audiologist only if the system confirms that a registered audiologist has a current medical license for a state and/or country location where the patient is located.” We determine that limitation (iv) describes a concept that can be performed in the human mind or practicably with pen and paper, and, therefore, falls into the mental processes category of abstract ideas. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Knowing the patient’s geographic location and requested test time, a person could mentally select an audiologist to perform the test from an identified group of audiologists licensed in the geographic location of the patient. Although limitation (iv) recites the system is configured to “electronically” select an audiologist, we determine this limitation is nevertheless in the mental processes category. The Revised Guidance explains that “[m]ental processes” include acts that people can perform in their minds or using pen and paper, even if the claim recites that a generic computer component performs the acts. See Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”) (emphasis omitted); see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information, analyzing information by steps people go through in their minds, or by mathematical algorithms, and Appeal 2018-005723 Application 13/124,280 12 presenting the results of collecting and analyzing information, without more, as matters within the realm of abstract ideas); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375–76 (Fed. Cir. 2011) (holding that the incidental use of “computer” or “computer readable medium” does not make a claim otherwise directed to process that “can be performed in the human mind, or by a human using a pen and paper” patent eligible, explaining that “purely mental processes can be unpatentable, even when performed by a computer”). We note that merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). Accordingly, we conclude that claim 16 recites the abstract idea of organizing human activity by performing diagnostic hearing tests on a patient by an audiologist located at a remote location from the patient and mental processes. 2. USPTO Step 2A, Prong Two Because we determine that claim 16 recites an abstract idea, we turn to prong two of the first step of the Alice analysis and consider whether claim 1 integrates this abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are any additional elements beyond the abstract idea that, individually or in combination, “integrate the [abstract idea] into a practical application, using Appeal 2018-005723 Application 13/124,280 13 one or more of the considerations laid out by the Supreme Court and the Federal Circuit.”11 Revised Guidance, 84 Fed. Reg. at 54–55. As discussed supra, the Examiner finds that the claims “do not include additional elements that are sufficient to amount to significantly more” than the abstract idea and that the additional elements amount to no more than generic computer components linking the abstract idea to a particular technological environment and performing routine and conventional activities that are well understood in the healthcare industry. Ans. 5; Final Act. 3. The Examiner also finds that Appellant has not provided sufficient evidence that the additional claim elements “are an improvement to the functioning of the computer itself” or provide a technical solution to a problem rooted in computer technology. Ans. 7–10. As also discussed supra, Appellant argues that claim 16 is not directed to an abstract idea because it recites “an improvement to a technological process” in which a portable test adapter controls operation of an audiometer. Appeal Br. 17–18. Appellant also argues that claim 16 recites “specific network-related infrastructure” to permit remote hearing testing and multiple hearing tests concurrently. Appeal Br. 18–19; Reply Br. 9–10. In particular, Appellant asserts that “[a]t least the test adapter recited in [c]laim 16 provides the translation necessary to convert an operational command received over a global computer network from a remote operator into a control operation for an audiometer.” Reply Br. 10. 11 We acknowledge that some of these considerations may be properly evaluated under step 2 of Alice (step 2B of the Revised Guidance). Solely for purposes of maintaining consistent treatment within the Office, we evaluate it under step 1 of Alice (step 2A, prong two, of the Revised Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55. Appeal 2018-005723 Application 13/124,280 14 We are not persuaded by Appellant’s arguments. First, we are not persuaded by Appellant’s arguments that claim 1 recites a technological improvement. Appellant’s arguments are conclusory and fail to specify how claim 16 allegedly provides any specific improvement to the technological elements recited in claim 16. In particular, Appellant has failed to demonstrate that claim 16 requires any specialized computer hardware or other inventive computer components, i.e., a particular machine, that the claimed invention is performed using other than generic computer components, or that the claim results in the improvement of a computer or the functioning of a computer or its components. Although Appellant argues that claim 16 recites a portable test adapter that controls operation of an audiometer, the portable test adapter and audiometer are recited at a high level of generality without any particular or specialized features or modifications. As discussed, limitation (iii) of claim 16 broadly recites a portable test adapter that is “configured to” (a) “connect” a patient at a patient site, (b) “convert data from an audiometer at the patient site and transmit the converted data . . . to . . . a remote audiologist,” and (c) “receive operational command data . . . to control operation . . . at the patient site,” and does not recite any technological improvements to the portable test adapter or the audiometer. Appellant has also not identified or described any technological improvement to the Internet or network-related infrastructure required by claim 16 or to any hardware or software components of the portable test adapter “to convert an operational command received over a global computer network from a remote operator into a control operation for an audiometer.” See Reply Br. 9–10. Nor has Appellant identified any Appeal 2018-005723 Application 13/124,280 15 disclosure in the Specification, as discussed infra, of any inventive techniques or specialized computer components or software required by claim 16. We also are not persuaded by Appellant’s arguments that the Federal Circuit’s holdings in DDR, Enfish, BASCOM, and McRO support a conclusion that claim 16 is patent eligible. We agree with Appellant that for the findings in these cases to be applicable here with respect to patent eligibility, it is not necessary for the present claims to “mirror exactly both the format and technology area” of these cases.12 See Reply Br. 13. However, these cases are distinguishable because unlike claim 16 here, the claims in these cases were directed to specific technological improvements or were rooted in computer technology. For example, in DDR, instead of a computer network operating in its normal, expected manner by sending a website visitor to a third-party website apparently connected with a clicked advertisement, the claimed invention generated and directed the visitor to a hybrid page that presented (1) product information from the third party, and (2) visual “look and feel” elements from the host website. DDR, 773 F.3d at 1258–59. Given this particular Internet-based solution, the court held that the claimed invention did not merely use the Internet to perform a business practice known from the pre-Internet world, but rather was necessarily rooted in computer technology to overcome a problem specifically arising in computer networks. Id. at 1257. That is not the case here. As noted previously, claim 12 We note Appellant does not state the Examiner takes this position, but argues the point “to the extent” the Examiner is making this assertion. Reply Br. 13. However, we do not interpret the Examiner’s findings in this manner to any extent. See Ans. 8–10. Appeal 2018-005723 Application 13/124,280 16 16 merely uses the existing Internet and inter-related infrastructure, as well as portable test adapters and audiometers without any recited technological improvements, to perform hearing tests controlled by an audiologist located at a remote location from the patient. In short, this operation is not rooted in computer technology to overcome a problem arising in computer networks, but is directed to organizing human activity by performing diagnostic hearing tests remotely—an abstract idea. In Enfish, the claims were “specifically directed to a self-referential table for a computer database.” Enfish, 822 F.3d at 1337. The claims were, therefore, “directed to a specific improvement to the way computers operate,” rather than an abstract idea implemented on a computer. Id. at 1336. In contrast, claim 16 here is not directed to an improvement in the way computers operate, nor has Appellant identified any technical advance or improvement to or specialized computer components. In McRO, the Federal Circuit concluded that the claim, when considered as a whole, was directed to a “technological improvement over the existing, manual 3-D animation techniques” and “uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.” McRO, 837 F.3d at 1316 (citation omitted). Specifically, the Federal Circuit found that the claimed rules allow computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators; and the rules are limiting because they define morph weight sets as a function of phoneme sub-sequences. Id. at 1313. Here, Appellant has not identified any technical improvement that is attributable to the claimed invention. Although claim 16 may permit remote hearing Appeal 2018-005723 Application 13/124,280 17 testing and multiple hearing tests concurrently, it does not achieve an improved technological result. We see no parallel between the limiting rules described in McRO and a portable test adapter configured to (a) “connect” a patient at a patient site, (b) “convert data from an audiometer at the patient site and transmit the converted data . . . to . . . a remote audiologist,” and (c) “receive operational command data . . . to control operation . . . at the patient site,” as recited in claim 16. In regard to BASCOM, we note initially the claims were not found patent eligible based on the substance, but rather because Appellant did not provide sufficient evidence to support a Rule 12(b)(6) motion to dismiss in which facts are presumed in the non-movant’s favor. The key fact in BASCOM was the presence of a structural change in “installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350. Unlike the claims in BASCOM, claim 16 does not recite a non-conventional or non- generic arrangement of components that provide such a structural change and benefit as in BASCOM. Thus, claim 16 does not recite a technological improvement to computers, computer components or software, network-related infrastructure (including web servers and interfaces), portable test adapters, or audiometers. Rather, the computers, network-related infrastructure, test adapters, and audiometers are readily available computing and networking elements performing their available basic functions as tools in implementing the abstract idea of performing hearing tests remotely. Accordingly, we Appeal 2018-005723 Application 13/124,280 18 determine that the additional elements recited in claim 16 do not integrate the recited abstract idea into a practical application. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1169–70 (Fed. Cir. 2018); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“In this case, the claims are directed not to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea. That is not enough to constitute patentable subject matter.”); Revised Guidance, 84 Fed. Reg. at 55 (explaining that courts have identified “merely us[ing] a computer as a tool to perform an abstract idea” as an example of when a judicial exception may not have been integrated into a practical application). Further, consistent with the Examiner’s findings (see Ans. 6–7), and in view of Appellant’s Specification (see e.g., paragraphs 38, 39–40, 43–44, 47–49, 52–53, 56–57, 66, 75), we conclude that claim 16 does not integrate the judicial exception into a practical application, and thus is directed to the judicial exception itself. In particular, we determine claim 16 does not recite: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; (iii) an application of the abstract idea with, or by use of, a particular machine; (iv) a transformation or reduction of a particular article to a different state or thing; or (v) other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. See MPEP § 2106.05(a)–(c), (e)–(h). 3. USPTO Step 2B — Inventive Concept Finally, we consider whether claim 16 has an inventive concept, that is, whether any additional claim elements “‘transform the nature of the Appeal 2018-005723 Application 13/124,280 19 claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56. As stated supra, the Examiner finds that the claims “do not include additional elements that are sufficient to amount to significantly more” than the abstract idea and that the additional elements amount to no more than “generic computer components that serve to merely link the abstract idea to a particular technological environment . . . performing routine and conventional activities that are well understood in the healthcare industry.” Ans. 5; Final Act. 3. The Examiner also finds that viewing the additional elements as an ordered combination “adds nothing that is not already present when looking at the elements taken individually.” Ans. 5–6. The Examiner further finds that each step of the “claimed system/method does no more than require a generic computer to [per]form a generic computer function.” Id. at 6–7. Appellant argues that claim 16 recites significantly more than an abstract idea because it recites a portable test adapter, which is “a specifically designed piece of equipment,” and the Examiner’s finding that it is a “generic computer” is unsupported. Appeal Br. 19–22 (citing Spec. ¶ 49 describing two configurations of portable test adapter); Reply Br. 10–13 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)). Moreover, Appellant argues that paragraph 25 of the Specification does not describe Appeal 2018-005723 Application 13/124,280 20 conventional computer hardware, including a conventional processor, for performing the claimed functions, as the Examiner finds, and that even if the elements pointed to by the Examiner existed in the Specification, “the fact that conventional technology is used to perform a solution[] does not make the solution conventional.” Appeal Br. 21–22 (citing BASCOM). We are not persuaded by Appellant’s arguments. As discussed supra, Appellant has failed to demonstrate that claim 16 requires any specialized computer hardware, devices, network-related infrastructure, or other inventive computer components, i.e., a particular machine, or that the claimed invention is performed using other than readily available components. Specifically, we are not persuaded by Appellant’s argument that claim 16 recites significantly more than an abstract idea because it recites a portable test adapter. We agree with Appellant that the Specification describes two configurations of the portable test adapter: the first is “a standard audiometer that can be connected to a portable test adapter that controls the standard audiometer”; and, the second is “a portable test adapter which contains an integrated audiometer.” See Reply Br. 11 (citing Spec. ¶ 49); see also Spec. ¶ 48 (stating that “either way so as to connect the audiometer to . . . the Internet.”). According to Appellant, the test adapter is “a specifically designed piece of equipment configured to ‘convert data from an audiometer [] to TCP/IP packets (which are in turn sent to the audiologist over the Internet []) and also convert operational commands from an audiologist (in TCP/IP packets) into a format that can be accepted by the audiometer.’” Appeal Br. 20–22. We are not persuaded by this argument for three reasons. Appeal 2018-005723 Application 13/124,280 21 First, although Appellant asserts the test adapter is “a specifically designed piece of equipment,” claim 16 does not recite any specialized structure or components of the test adapter, or internet-related infrastructure, to perform the recited functions of “convert data . . . and transmit the converted data” over the Internet to a web client associated with a remote audiologist and “receive operational command data” from the web client over the Internet. We also note that paragraph 49 of the Specification does not describe any specialized structure or components of the test adapter, including the adapter configured with an “on-board” or integrated audiometer, or internet-related infrastructure. Moreover, paragraph 49 states that the connection between the test adapter or integrated adapter and the audiometer “can be hardwired (e.g., RS-232 or USB) and/or wireless (e.g., using a wireless protocol such as Bluetooth or Zigbee),” all of which are well-known and conventional. Thus, we find that the “portable test adapter” of claim 16, including a test adapter with an integrated audiometer, does not require any specialized structure, features or components, or any specialized interfaces or connections with the audiometer.13 We also find that the Specification describes the components implementing the system of claim 16 as generic and well-understood, routine, and conventional. See, e.g., Spec. ¶¶ 38 13 We are not persuaded by Appellant’s argument that the Examiner’s finding that the claimed “test adapter” is a “generic computer” is unsupported because it is based on an incorrect premise. The Examiner did not find that the test adapter is a “generic computer,” as Appellant asserts. Appeal Br. 20. Instead, the Examiner included “test adapters” in the list of additional elements recited in the claims that “amount to no more than generic computer components that serve to link the abstract idea to a particular technological environment.” Final Act. 5 (emphasis added). Appeal 2018-005723 Application 13/124,280 22 (“web-based”), 39–40, 43 (“user’s computer”), 44 (“computer program instructions may be provided to a processor of a general-purpose computer”), 47 (methods and devices “for performing diagnostic hearing tests which use a computer network with a distributed, client-server architecture”), 48 (“off-the-shelf or standard audiometer”), 49 (“connections” between test adapter and audiometer; “Internet [] can be accessed via any desired device having access to the Internet including . . . desktop or portable computers”), 52–53 (“web server”), 56–57 (“web clients”), 59 (“web-based service system”), 66 (“test adapters” and “audiometers”), 75 (“data processing system”; “components may be conventional”). Accordingly, we further find that the recited components implementing the system of claim 16 are readily available and well- understood, routine, and conventional. See, e.g., Alice, 573 U.S. at 225–26 (holding that “implement[ing] the abstract idea . . . on a generic computer” was not sufficient “to transform an abstract idea into a patent-eligible invention”); Mortg. Grader, Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that components such an “interface,” “network,” and “database” are generic computer components that do not satisfy the inventive concept requirement); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). Second, we are not persuaded by Appellant’s argument that the test adapter is a specifically designed piece of equipment configured to “convert data from an audiometer [] to TCP/IP packets (which are in turn sent to the audiologist over the Internet []) and also convert operational commands Appeal 2018-005723 Application 13/124,280 23 from an audiologist (in TCP/IP packets) into a format that can be accepted by the audiometer.” Appeal Br. 20–21. Claim 16 does not recite a test adapter configured to “convert data from an audiometer to TCP/IP packets,” which are sent to the audiologist, or “convert operational commands from an audiologist (in TCP/IP packets) into a format that can be accepted by the audiometer.” Thus, Appellant’s argument is not convincing because it is not commensurate with the scope of claim 16.14 In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”); see In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not commensurate with the claim scope and are therefore unpersuasive.”). Third, we are not persuaded by Appellant’s argument that the test adapter is a specifically designed piece of equipment because, in essence, Appellant argues that the test adapted is specialized and non-conventional because it performs the recited functions of “convert data” from an audiometer at the patient site and “transmit the converted data” to the web client of an audiologist over the Internet, and “receive operational command data” from the audiologist’s web client. However, this is nothing more than the abstract idea itself. The law is clear that the claim elements to be considered under Alice step 2B cannot be the abstract idea 14 Even if claim 16 recited that the test adapters are configured to “convert audiometer data to TCP/IP packets and transmit the converted data to an audiologist via the web server,” as recited in claim 20, Appellant’s argument would not be persuasive because the TCP/IP protocol is a standard and well- known set of rules for computers to communicate on the Internet. See Spec. ¶ 49. Appeal 2018-005723 Application 13/124,280 24 itself. Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“Berkheimer . . . leave[s] untouched the numerous cases from [the Federal Circuit] which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention “significantly more” than that ineligible concept.”); Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) “[T]he ‘inventive concept’ cannot be the abstract idea itself.”). Lastly, we are not persuaded by Appellant’s argument that paragraph 25 of the Specification does not describe conventional computer hardware, including a conventional processor, for performing the claimed functions, and that even if the elements pointed to by the Examiner existed in the Specification, “the fact that conventional technology is used to perform a solution[] does not make the solution conventional.” Appeal Br. 21–22 (citing BASCOM). Initially, however, we agree with Appellant that paragraph 25 of the Specification does not describe conventional computer hardware, including a conventional processor. We note that paragraph 25 refers to Figure 7A of the application, and that paragraph 75, which describes Figure 7A, refers to a data processing system that includes “a processor.” We also note that paragraph 44 of the Specification explains that the claimed method and systems can be implemented by computer program instructions provided to “a processor of a general-purpose computer, special purpose computer, or other programmable data processing apparatus.” Thus, although we find that the Examiner mistakenly referred to Appeal 2018-005723 Application 13/124,280 25 paragraph 25 as describing conventional hardware, including “a conventional processor,” we also find that this error is harmless because a conventional processor is described in paragraphs 44 and 75 of the Specification. And, as discussed supra, we also find that other portions of the Specification describe the components implementing the system of claim 16 as generic or well-understood, routine, and conventional. See, e.g., Spec. ¶¶ 38–40, 43–44, 47–49, 52–53, 56–57, 59, 66, 75. We are also not persuaded by Appellant’s argument that even if the elements pointed to by the Examiner existed in the Specification, “the fact that conventional technology is used to perform a solution[] does not make the solution conventional.” Appeal Br. 21–22 (citing BASCOM). Claim 16 is not analogous to the claims in BASCOM. In BASCOM, the court determined that “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” BASCOM, 827 F.3d at 1350. Here, claim 16 does not specify that the test adapter or the test adapter and audiometer, whether integrated or not, or any internet- related infrastructure, must be arranged in a non-conventional manner. To the contrary, claim 16 simply recites a web server in communication with the Internet, web clients in communication with the server, portable test adapters “configured to” perform the functions of (a) “connect” a patient at a patient site, (b) “convert data from an audiometer at the patient site and transmit the converted data . . . to . . . a remote audiologist,” and (c) “receive operational command data . . . to control operation of the respective audiometer at the patient site,” wherein the web-based system is configured to select a registered audiologist who is licensed where the patent is located to perform a hearing test. Appeal 2018-005723 Application 13/124,280 26 Accordingly, considering claim 16 as a whole, we determine that the additional elements recited in claim 16 are readily available computing and networking elements performing their available basic functions and do not provide “a specific limitation or combination of limitations that are not well- understood, routine, conventional activity in the field.” Revised Guidance, 84 Fed. Reg. at 56. Rather, these elements “simply append[] well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Id. Accordingly, we find that claim 16 does not have an inventive concept. 4. Claims 2, 5, 11, 13, 17–20, and 25 Appellant also argues that dependent claims 2, 5, 11, 13, 17–20, and 25 are patent-eligible under § 101 because of their “dependence from an independent claim that is patent-eligible” and because they recite significantly more than an abstract idea. Appeal Br. 28–30. We are not persuaded by these arguments for several reasons. First, claims 17–20 depend from independent claim 16, and claims 2, 5, 11, and 13 depend from independent claim 1. For the reasons discussed above, we have determined that representative claim 16, and thus grouped claimed 1, are not patent- eligible. Thus, the identified dependent claims are also not patent-eligible based on their dependence from claims 1 and 16. Second, we note that Appellant identifies certain limitations from each of these dependent claims and then states they are significantly more than an abstract idea. The mere reference to claim limitations accompanied with a conclusory statement that they “recite significantly more than an abstract idea” amounts to no more than reciting the claim language and asserting the rejection is improper, which does not constitute a separate argument for Appeal 2018-005723 Application 13/124,280 27 patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Third, our step 2A, prong one, and step 2A, prong two, analysis of claim 16 is equally applicable to these dependent claims because the recited limitations of these claims do not change our determination that the character of the claim, as a whole, is directed to an abstract idea. And, our step 2B analysis is equally applicable because “‘well-understood, routine, conventional activities’ previously known to the industry” cannot provide an inventive concept. Alice, 573 at 221 (quoting Mayo, 566 U.S. at 79). 5. Conclusion Because we determine that claim 16 is directed to an abstract idea and does not contain an inventive concept, we sustain the Examiner’s rejection of claim 16 under 35 U.S.C. § 101. For the same reasons, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of independent claims 1 and 36, and dependent claims 3, 6–10, 12, 14–16, 21–23, 26–30, and 32, which are not argued separately. We also determine, for the reasons discussed above, that claims 2, 5, 11, 13, 17–20, and 25 are directed to an abstract idea and do not contain an inventive concept, and therefore we sustain the Examiner’s rejection of claims 2, 5, 11, 13, 17–20, and 25 under § 101. DECISION We affirm the Examiner’s rejection of claims 1–3, 5–23, 25–30, 32, and 36 under 35 U.S.C. § 101. SUMMARY Appeal 2018-005723 Application 13/124,280 28 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–23, 25–30, 32, 36 101 Eligibility 1–3, 5–23, 25–30, 32, 36 TIME PERIOD FOR RESPONSE No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation