Jason M. Bush et al.

Patent Trials and Appeals Board

Mar 10, 2020

13792995 - (D) (P.T.A.B. Mar. 10, 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.
13/792,995 03/11/2013 Jason M. Bush 31429US (15878A-85) 4582
98067 7590 03/10/2020
Harness Dickey (Roche)
5445 Corporate Drive, Suite 200
Troy, MI 48098-2683
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/10/2020 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):
pair_roche@firsttofile.com
rmills@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JASON M. BUSH, CHRISTOPHER R. HALVORSON,
TROY L. KING, JAMES R. LONG, DAVID B. MARKISOHN,
LEON R. ORGAN III, ADAM R. SCROGGIN, KAITLIN R. STINSON,
and KRISTIN M. WESTERFIELD
____________________

Appeal 2018-005583
Application 13/792,995
Technology Center 3600
____________________

Before ROBERT E. NAPPI, KRISTEN L. DROESCH, and
JASON M. REPKO, Administrative Patent Judges.

NAPPI, 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 through 9, and 11 through 14. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Roche Diabetes Care, Inc. is the real
party in interest. Appeal Br. 3.
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INVENTION
The invention is directed to insulin pump configuration software and,
more particularly, to customizing names of insulin delivery profiles using
the pump configuration software. Spec. Abstract ¶¶ 1, 2, 7. Claim 1 is
illustrative of the invention and is reproduced below.
1. A computer-implemented method for customizing names
of insulin delivery profiles for improved patient safety,
comprising:
receiving, by a configuration device, a string of
characters to serve as a name for a given insulin delivery
profile, where the insulin delivery profile includes at least one
parameter pertaining to insulin delivery by an insulin pump and
is one of a plurality of insulin delivery profiles associated with
a given patient;
normalizing, by the configuration device, the string of
characters by changing one or more of the characters in the
string of characters in accordance with a rule set;
comparing, by the configuration device, the normalized
string of characters with names for each of the plurality of
insulin delivery profiles;
prompting, by the configuration device, a user to change
the normalized string of characters by displaying a message on
the display of the configuration device, the prompting being
performed in response to a match between the normalized string
of characters and at least one of the names of the plurality of
insulin delivery profiles;
updating, by the configuration device, the name of the
given insulin delivery profile in a pump configuration file
residing on the configuration device with the normalized string
of characters, wherein the name of the given insulin delivery
profile differs from name of the pump configuration file and
updating occurs when the normalized string of characters is
unique in relation to the names of the plurality of insulin
delivery profiles and in response to the comparison step, the
steps of normalizing, comparing, prompting and updating being
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performed solely by computer executable instructions being
executed by a computer processor in the configuration device;
downloading the pump configuration file from the
configuration device to an insulin pump; and
delivering insulin, by the insulin pump, to the given
patient in accordance with a parameter from a selected one of
the plurality of insulin delivery profiles in the pump
configuration file.

EXAMINER’S REJECTION2
The Examiner rejected claims 1, 3 through 9, and 11 through 14 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final
Act. 3–6.
PRINCIPLES OF LAW
A. Section 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.
However, the U.S. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,

2 Throughout this Decision we refer to the Arguments presented in Appeal
Brief filed December 26, 2017 (“Appeal Br.”); the claims Appendix
presented on February 7, 2018; Reply Brief (“Reply Br.”) filed May 11,
2018; Final Office Action mailed May 24, 2017 (“Final Act.”); and the
Examiner’s Answer mailed March 13, 2018 (“Ans.”).
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we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“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.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
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formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception. 2019 Revised Guidance, 84 Fed.
Reg. at 52–56.

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. at 54–55.
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DISCUSSION
The Examiner determined claims 8, 9, and 11 through 13 are not
patent eligible because they do not fall within one of the four categories of
patent-eligible subject matter. Final Act. 2–3. Specifically, the Examiner
finds that the broadest reasonable interpretation of a claim drawn to
computer readable media includes a transitory propagating signal. Id.
The Examiner determined the claims 1, 3 through 7, and 14 are not
patent eligible because they are directed to a judicial exception without
reciting significantly more. Final Act. 3–6. Specifically, the Examiner finds
the claims are directed to the abstract idea of collecting, analyzing, and
displaying the results of the collection and analysis. Final Act. 3–4 (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The
Examiner finds that the claims do not include additional elements that
amount to significantly more. Final Act. 4–6.
Appellant argues with respect to claim 1, that the Examiner has
overgeneralized the claim and that it recites particular steps that go beyond,
collecting, analyzing, and displaying and that it does not recite a concept
similar to those held abstract by the courts. Appeal Br. 13. Further,
Appellant argues the claims recite an improvement to diabetes care and as
such are an improvement in technology. Appeal Br. 13–14 (citing Trading
Techs. Int’l Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)
(nonprecedential) (holding that a user interface with a prescribed
functionality directly related the interface’s structure that is addressed to and
resolves a problem in the art is patent eligible) and McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Specifically
Appellant argues the “claims improve diabetes care by ensuring that
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confusingly similar profile names are not assigned to two different insulin
delivery profiles contained on a pump configuration file.” Appeal Br. 16
(emphasis omitted). Similarly, Appellant argues that the recitation of an
insulin pump when considered with the other elements of the claim is
significantly more than the abstract concept. Appeal Br. 16–17 (citing
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
Appellant argues that the rejection of claims 8 and 14 is similarly in
error and that the claims are directed to patent-eligible subject matter for the
same reasons as claim 1. Appeal Br. 18.

-Independent claim 8 and the claims which depend thereupon
At the outset, we note that the Examiner’s rationale for rejecting
independent claim 8 and the claims which depend upon claim 8 is different
that used in the rejection of claim 1. Specifically, as discussed above the
Examiner has rejected claim 8 as being directed to a computer readable
medium, which broadly recites a signal and as such is not one of the four
categories of patent-eligible subject matter (i.e., the Examiner finds that the
claims do not recite a process, machine, manufacture, or composition of
matter). Final Act. 2–3. We concur with the Examiner’s claim
interpretation. Appellant’s Specification provides several examples of a
computer readable medium but does not preclude a propagation medium
(i.e., a signal) as broadly interpreted by the Examiner. See Spec., para. 37.
Further, Appellant has not presented arguments or otherwise shown that the
Examiner’s interpretation is unreasonable. Thus, we do not construe the
claim term “computer readable storage medium” to be limited to only non-
transitory media, and we consider the claim broad enough to encompass a
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transitory signal. A signal is not within one of the four categories of
patentable subject matter as defined under 35 U.S.C. § 101. In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007); see also Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013) (precedential). As such we sustain the
Examiner’s rejection of claims 8, 9, and 11 through 13 under 35 U.S.C.
§ 101.

-Independent claims 1, 14 and the claims which depend thereupon
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1, 3 through 7, and 14 under 35 U.S.C.
§ 101, because the record does not support the Examiner’s determination
that the claims do not recite practical application of the abstract idea.
Each of the independent claims recite limitations directed to receiving
a string of characters and prompting a user to enter a change to a string of
characters (data gathering or observation steps), and comparing normalize
characters with names of profiles (data analysis or evaluation steps). Thus,
the claims include limitations which recite an abstract process which could
be a mental process.
However, independent claims 1 and 14 each recite limitations directed
to downloading a pump configuration file to the insulin pump and delivering
insulin by the insulin pump in accordance with a parameter selected from the
downloaded pump configuration file. With respect to these limitations, the
Examiner states:
The “Insulin Pump” merely serves to receive the medication
administration information and administer medication. These
functions represent insignificant data receiving steps,
medication administration steps and insignificant post-solution
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activities. Applicants’ feature of the “Insulin Pump” does not
disclose an attempt to try to advance the technology, and rather
implement the disclosed “profiles” on said “Insulin Pump”,
wherein such implementations for profiles instructing an
“Insulin Pump” to perform steps “ ... which are known to
persons skilled in the art.

Answer 7 (citing Specification ¶ 48) (emphasis omitted). We disagree with
the Examiner that this recitation of downloading the pump configuration
files and using them to deliver insulin is an insignificant post-solution
activity. Rather, we consider these limitations to recite the operation of the
insulin pump. As such, the claims are directed to an improvement to the
operation of the insulin pump (an improvement to a technology) and claims
recite a practical application of the abstract concept. Thus, we consider
independent claims 1, 14 and the claims which depend thereupon, recite
patent-eligible subject matter. Accordingly, we do not sustain the
Examiner’s rejection of claims 1, 3 through 7, and 14 under 35 U.S.C. § 101
for being directed to patent-ineligible subject matter.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3–9,
11– 14
101 Eligibility 8, 9, 11–13 1, 3–7, 14

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART