Hanz, Ezra et al.

Patent Trials and Appeals Board

Oct 1, 2020

13198103 - (R) (P.T.A.B. Oct. 1, 2020)

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.
13/198,103 08/04/2011 Ezra Hanz 9797.001US1-SD 7118
39564 7590 10/01/2020
FisherBroyles, LLP - MAIN CN
945 East Paces Ferry Road NE
Suite 2000
Atlanta, GA 30326
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
docketing@fisherbroyles.com
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EZRA HANZ, JEFFREY ARTHUR STAHL,
and LEWIS ARNOLD STAHL
____________

Appeal 2018-008212
Application 13/198,103
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh’g”), pursuant to
37 C.F.R. § 41.52, on July 1, 2020, seeking reconsideration of our Decision
on Appeal mailed March 20, 2020 (“Decision”), in which we affirmed the
Examiner’s rejection of claims 1 and 15 under 35 U.S.C. § 101 as directed to

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42.
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a judicial exception without significantly more.2 We have jurisdiction over
the Request for Rehearing under 35 U.S.C. § 6(b).
DISCUSSION
Appellant argues that in affirming the Examiner’s rejection under 35
U.S.C. § 101 in the framework of the Revised Guidance, the Board found
that the claims were abstract because they related to mental steps and/or
organizing human activity. Req. Reh’g 2. Appellant argues that the
Examiner did not rely on the claims being drawn to mental steps or
organized activity. Id. at 3. Rather, the Examiner determined that:
Claims 1, 15 are directed to an abstract idea because an abstract
idea is recited in the claims. The abstract idea is identified as:
receiving the electronic prescription information including
patient/prescriber’s identities, parsing the prescription
information to extract the patient/prescriber identity, accessing
personal data about prescribing habits of the prescribe,
automatically generating and transmitting a message for
displaying information based on the past prescribing habits of the
prescriber and medicine prescribed specific clinical information
to the medicine being prescribed prior to the prescriber
completing a prescription for the medication, while the clinical
information is displayed on said display, the prescriber is unable
to complete the prescription.
And thus the claims are similar to other concepts that have been
identified as an abstract idea in Electric Power Group in that it
collects information (i.e., receiving and extracting prescription
information including patient and prescriber information),
analyzes the information (i.e., accessing and analyzing

2 We also reversed the Examiner’s rejection of claims 1 and 15 under
35 U.S.C. § 103(a). Appellant seeks reconsideration only of the affirmed
rejection under § 101. See Req. Reh’g 2.
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prescriber’s habit for previous drug), and displays the results (i.e.
displaying prescriber habits and the medicine prescribed).
Id. (quoting Ans. 4). Appellant contends that the Board relies on a new basis
for rejecting the claims, and that Appellant should be given an opportunity to
respond. Id. at 4.
As set forth in the Decision, after Appellant’s briefs were filed, the
U.S. Patent and Trademark Office published 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised
Guidance”) that applies to all applications and patents resulting from
applications filed before, on, or after January 7, 2019. The Office issued
further guidance on October 17, 2019, clarifying the Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (“October 2019
Update”), https://www.uspto.gov/sites/default/files/documents/peg_oct_
2019_update.pdf.
The October 2019 Update at page 7 explains that claims that recite
mental processes include “a claim to ‘collecting information, analyzing it,
and displaying certain results of the collection and analysis,’ where the data
analysis steps are recited at a high level of generality such that they could
practically be performed in the human mind, Electric Power Group, LLC v.
Alstom, S.A.” Therefore, we understand the Examiner’s characterization of
the abstract idea, which analogized the claims to those at issue in Electric
Power, to be a form of mental process, i.e., “concepts performed in the
human mind (including an observation, evaluation, judgment, opinion).”
Revised Guidance, 84 Fed. Reg. at 52 (footnote omitted). For example, the
Examiner found that, like the claims at issue in Electric Power, Appellant’s
claims “collect[ ] information (i.e., receiving and extracting prescription
information . . .), analyze[ ] the information (i.e., accessing and analyzing
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prescriber’s habit for previous drug), and display[ ] the results (i.e.[,]
displaying prescriber habits and the medicine prescribed). Ans. 4 (emphasis
omitted). Therefore, we do not agree that the thrust of our rejection changed
from that set forth by the Examiner.
Appellant further argues that the claims are not directed to mental
steps because a computer is needed. Req. Reh’g 4–5. Appellant contends
that “[n]o one could . . . keep track of years of prescribing history for a drug
and hundreds of different versions of information related to the drugs, and
then display the right version of the information before the prescription is
complete.” Id. at 5. Appellant’s argument is not persuasive, at least because
it is not commensurate in scope with the claim language. Nothing in the
claim language requires years of prescribing history or hundreds of different
versions of information related to drugs. 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 Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“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.”).
Appellant argues that the Board’s further characterization of the
claims as relating to a “commercial interaction,” which is a certain method
of organizing human activity and, thus, an abstract idea, “lacked analysis.”
Req. Reh’g 6. In this regard, Appellant contends:
Applicant is not able to refute the Board’s reasoning because the
reasoning is nonexistent. How do the claims relate to advertising
or marketing, and business relations? Why is a commercial
interaction a method of organizing human activity? Why has the
Board strayed from the guidelines of what constitutes organizing
human activity according to MPEP 2106.04(a) Abstract Ideas
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[R-10.2019] -i.e., “fundamental economic principles or practices
. . . commercial or legal interactions . . . managing personal
behavior . . .”?
Id. (alterations in original).
We disagree that the Board strayed from the guidelines of what
constitutes certain methods of organizing human activity. The Revised
Guidance explains that this category includes “commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; [and]
business relations).” Revised Guidance, 84 Fed. Reg. at 52.
Appellant’s Specification describes that the information delivered to
the prescriber includes “advertising or educational information” in the form
of a message. Spec. ¶ 17. “For instance, when a prescriber has chosen to
prescribe a specific drug, the system has the capability to offer an alternative
drug (possibly comprising a paid-for advertisement by a pharmaceutical
company).” Id. The message is “useful or beneficial to the patient and/or
the prescriber in addition to being beneficial to the advertising entity (e.g., a
pharmaceutical company).” Id. ¶ 19. Because messages include
“advertising, the system also provides mechanisms for tracking the efficacy
of such advertising and generating and delivering reports to the advertisers
disclosing the efficacy of the advertising.” Id. ¶ 20. Messages can include
advertisements concerning alternative drugs to the one being
considered by the prescriber for prescription, available generic
alternatives to name-brand drugs, a suitable alternative medicine
based on Formulary data, coupons for discounts on the medicine
being prescribed or an alternative medicine, a recall notice, a
health warning, or a recommend medication(s) based on current
disease state.
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Id. ¶ 25. Put simply, the Specification describes the claimed invention in the
context of advertising, and marketing or sales activities or behaviors, i.e., a
commercial interaction. See also, e.g., id. ¶¶ 47–49 (describing querying a
data collection module for information about the effectiveness of the
advertising and other messaging, and allowing advertisers and other entities
determining the efficacy of the advertising/messaging).
The Specification also describes the claimed invention in terms of
compliance with legal obligations, i.e., a commercial interaction. For
example, the “relevant laws and regulations of the pertinent countries, such
as the HIPPAA medical privacy laws of the United States.” Spec. ¶ 27.
“Other data points an [sic] be used to comply with local laws and regulations
. . . .” Id. “[W]ithin the Untied [sic] States, all advertising messages should
comply with FDA guidelines, such as including any required regulatory
statements.” Id. In this regard, the Specification provides that the message
may contain “an interface, such as a hyperlink to additional sources of
information, such as regulatory web pages.” Id. ¶ 24. Therefore, the
Specification describes the claimed invention in the context of advertising,
and marketing or sales activities or behaviors, i.e., a commercial interaction.
Nonetheless, on the facts of this case, we deem it reasonable to
designate our affirmance of the rejection of claims 1 and 15 under 35 U.S.C.
§ 101 as a new ground of rejection.
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CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C.
§
Basis Denied Granted
1, 15 101 Eligibility 1, 15
Final Outcome of Appeal After Rehearing:
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed New
Ground
1, 15 101 Eligibility 1, 15 1, 15

37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
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Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

GRANTED; 37 C.F.R. § 41.50(b)