Michael Preston. Borom et al.Download PDFPatent Trials and Appeals BoardJul 18, 201913327832 - (D) (P.T.A.B. Jul. 18, 2019) 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. 13/327,832 12/16/2011 Michael Preston Borom 006994 4892 23456 7590 07/18/2019 PATTERSON Intellectual Property Law, P.C. 1600 DIVISION STREET, SUITE 500 NASHVILLE, TN 37203 EXAMINER GILLIGAN, CHRISTOPHER L ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 07/18/2019 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): ckr@iplawgroup.com docket@IPLAWGROUP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte MICHAEL PRESTON BOROM, JOHN PARK and DANIEL JONES1 _____________ Appeal 2018-006229 Application 13/327,832 Technology Center 3600 ______________ Before ROBERT E. NAPPI, JOHN A. EVANS, and JASON M. REPKO, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1 through 5, 7, 23 through 25, and 29 through 37. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. INVENTION The invention is directed to a system for a computer-implemented healthcare management system for dynamically providing incentives to 1 According to Appellants, the real party in interest is Michael Preston Borom. App. Br. 1. Appeal 2018-006229 Application 13/327,832 2 participants based on compliance with healthcare plans. Abstract. Claim 1 is illustrative of the invention and is reproduced below: 1. A computer program product for incentivizing user compliance with employer healthcare plans, the computer program product comprising a non- transitory computer-readable medium including program instructions executable by a processor to: generate a profile for a user based at least in part on predictive analytics regarding future behavior of the user; calculate a likelihood of the user performing one or more activities required by an associated healthcare plan; for each of the respective one or more activities, determine one or more preferred incentives based on a predicted level of impact on the likelihood of the user performing said activities; generate one or more healthcare plans for selection by the user, the healthcare plans respectively comprising one or more required activities from the one or more activities for which a likelihood of performance has been calculated, a first benefit level associated with providing or maintaining one or more of the incentives and a second level associated with removing or failing to provide the one or more incentives; store details of one of the one or more healthcare plans in association with the user in a central database, the details including the first benefit level as being associated with plan compliance and the second benefit level as being associated with plan non-compliance; establish via a communications network a first set of links between a hosted server and one or more healthcare management platforms associated with the one or more activities required of the user in association with a selected healthcare plan, and a second set of links between the hosted server and one or more employer platforms associated with the user; continuously obtain claims and prescription information regarding actual activities by the user with Appeal 2018-006229 Application 13/327,832 3 respect to the required activities associated with the selected healthcare plan from the one or more healthcare management platforms; enable the determination of compliance or non- compliance of the user by comparing the continuously obtained information to one or more compliance criteria included within the plan details, the criteria including performance of the one or more required activities associated with the selected healthcare plan; in a substantially coincident time frame upon determining non-compliance by the user with the plan details while the user is associated with the first benefit level, to automatically direct one or more of the employer platforms to modify the user benefit level from the first level to the second level; and in a substantially coincident time frame upon determining compliance by the user with the plan details while the user is associated with the second benefit level, to automatically direct one or more of the employer platforms to modify the user benefit level from the second level to the first level. REJECTION AT ISSUE The Examiner has rejected claims 1 through 5, 7, 23 through 25, and 29 through 37 under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final Act. 2–3.2 ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the 2 Throughout this Opinion, we refer to the Appeal Brief, filed January 30, 2018 (“App. Br.”), the Examiner’s Answer, mailed March 27, 2018 (“Answer”), and the Final Office Action, mailed August 8, 2017 (“Final Act.”). Appeal 2018-006229 Application 13/327,832 4 Examiner’s rejections, and the Examiner’s response to Appellants’ arguments. Appellants’ arguments have not persuaded us of error in the Examiner’s rejections of claims 1 through 5, 7, 23 through 25, and 29 through 37 under 35 U.S.C. § 101. PRINCIPLES OF LAW Rejection 35 U.S.C. § 101 Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the Patent Act, which recites: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. There are, however, three judicially created exceptions to the broad categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. 66, 75–77 (2012)). In accordance with that framework, 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’ Appeal 2018-006229 Application 13/327,832 5 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 water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); 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 Supreme 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 176; 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 Supreme 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 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 Appeal 2018-006229 Application 13/327,832 6 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 (citation 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. The PTO recently published revised guidance on the application of § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we first look to whether the claim is directed to a judicial exception because: (1) the claim recites a judicial exception, 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); and (2) the claim as a whole fails to recite additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2106.05(a)– (c), (e)–(h) (9th ed. 2018). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: Appeal 2018-006229 Application 13/327,832 7 (3) adds a specific limitation beyond the judicial exception that are 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. See Memorandum, 84 Fed. Reg. at 56. ANALYSIS Abstract Idea. Appellants argue, on pages 11 through 14 of the Appeal Brief that the Examiner has not shown the claims are directed to an abstract idea. Appellants argue that the Examiner’s rejection, which relies upon Bancorp Services, LLC v. Sun Life Assurance Co. of Canada (US), 687 F.3d 1266 (Fed. Cir. 2012), which “analogize[s] the entire combination of claim limitations . . . with a generally defined abstract idea (managing an insurance policy).” App. Br. 12. Appellants argue this is in error as it fails “to consider the field or character of the invention as a whole” and that the “claimed invention is directed to a specific application within the field of insurance policy management.” App. Br. 13–14 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and Enfish, LLC v Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). The Examiner finds that the claims recite an abstract idea, which while not identical, is similar to those at issue in Bancorp. Answer 3. The Examiner finds that the claimed providing healthcare plans with benefit Appeal 2018-006229 Application 13/327,832 8 levels and incentivizing compliance with user benefits is a method of organizing human activity. Answer 3–4. We have considered the Examiner’s conclusion that the claims are directed to an abstract idea. We concur with the Examiner that representative claim 1 is directed to a method of organizing human activity (an abstract idea) we also consider the claim to include citations directed to collecting/gathering information and analyzing it, which broadly recites an abstract a mental process. Claim 1 recites: “incentivizing user compliance with employer healthcare plans” (directed to managing personal behavior); “determine one or more preferred incentives based on a predicted level of impact on the likely hood of the user performing the activities” and generating healthcare plans for the user comprising activities and providing benefits associated with maintaining the incentive or removing the incentive” (limitations directed to generating agreements); “determining non-compliance by the user with the plan details while the user is associated with the first benefit level, to automatically direct one or more of the employer platforms to modify the user benefit level from the first level to the second level and in a substantially coincident time frame upon determining compliance by the user with the plan details while the user is associated with the second benefit level, to automatically direct one or more of the employer platforms to modify the user benefit level from the second level to the first level: (also a steps directed to managing personal behavior). These limitations are all directed to methods of organizing human activity as they are directed to incentivizing actions of the user (managing human behavior) or adjusting benefits of a healthcare plan (a fundamental economic process of adjusting insurance). We concur with the Examiner that the claims recite Appeal 2018-006229 Application 13/327,832 9 an abstract concept similar to that at issue in Bancorp, 687 F.3d at 1271, 1278, in which the court held claims reciting a method of managing a life insurance policy by generating a policy based on provided data (in the form of a value of underlying securities), calculating values and storing the values, to be directed to an abstract idea. Here, representative claim 1 recites steps of adjusting benefits which is similar to the Bancorp’s generation of a policy and monitoring incentivized behavior, is another form of gathering data from which the generate the policy. Thus, claim 1 recites several steps directed to the abstract methods of organizing activity. Claim 1 also recites steps of: “generating a profile for a user” (a data gathering or observation step); “calculating a likelihood of the user performing one or more activities” (an evaluation or judgement which could be performed in the mind); “continuously obtain claims and prescription information regarding actual activities by the user with respect to the required activities associated with the selected healthcare plan from the one or more healthcare management platforms.” (a data gathering or observation step); and enable the determination of compliance or non-compliance of the user by comparing the continuously obtained information to one or more compliance criteria included within the plan details, the criteria including performance of the one or more required activities associated with the selected healthcare plan; in a substantially coincident time frame upon determining non- compliance by the user with the plan details while the user is associated with the first benefit level, to automatically direct Appeal 2018-006229 Application 13/327,832 10 one or more of the employer platforms to modify the user benefit level from the first level to the second level (evaluation or judgement steps which could be performed in the mind). These limitations, under their broadest reasonable interpretation, recite an abstract mental process of collecting/gathering information and analyzing it. Our reviewing court has concluded that abstract ideas include the concepts of “collecting, displaying, and manipulating data.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). See also Content Extraction, LLC v. Wells Fargo Bank Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2016); Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Further, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). Practical Application/Significantly more than Abstract Idea The Examiner finds that the additional claimed elements do not amount to significantly more than the abstract idea. Final Act. 3. The Examiner states: the additional elements amount to no more than generic computer components that serve to merely link the abstract idea to a particular technological environment (i.e. a non-transitory computer readable medium including program instructions, a Appeal 2018-006229 Application 13/327,832 11 database, a communications network, a server) performing routine and conventional activities that are well-understood in the insurance industry (i.e. storing information, presenting information, communicating information, performing calculations). Furthermore, Applicant's specification describes conventional computer hardware for implementing the above described functions including “a computer system, computer program, signal processor, logic or alternative analog or digital electronic device that may be transformative of signals represented as physical quantities, whether automatically or manually initiated” (see paragraph 0015). Final Act. 3. Appellants argue, that claim 1 recites an improvement in a computer related technology. App Br. 15–16 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Specifically, Appellants argue, “the claimed invention recites a particular solution to problems in conventional insurance policy management, and a particular way to achieve the desired outcome as opposed to merely claiming the solution or outcome itself, and therefore may be characterized as being directed to an improvement in computer-related technology.” App. Br. 16 (citing McRO). Further, Appellants argue that independent claim 1 recites significantly more as it “recite[s] a particular and lengthy arrangement of unconventional operations which collectively arise to the level of an ‘inventive concept’ and serve to confine the claim to a particular useful application.” App. Br. 18. Appellants assert: Office does not dispute that the claimed elements collectively amount to a nonconventional system (i.e., one that is novel and non-obvious in view of the prior art”). Accordingly, Appellant respectfully submits that even “generic computers performing generic computer functions” must nonetheless be considered Appeal 2018-006229 Application 13/327,832 12 further in view of the specific arrangement of said components, and the ordered combination of steps, in determining that the claimed invention amounts to “significantly more” than any properly identified abstract idea to which Claim 1 may be directed. App. Br. 19. In response to Appellants’ arguments the Examiner states: these portions of the specification do not describe a technical challenge with existing computer technology or an improvement in computing technology itself. Rather, the claimed invention exploits existing computer technology as a tool to implement the claimed abstract idea. For example, the various claimed functions are described in the specification as being implemented by “a computer system, computer program, signal processor, logic or alternative analog or digital electronic device that may be transformative of signals represented as physical quantities, whether automatically or manually initiated” (see paragraph 0015). There is no indication that the operations of these computer components is improved. The use of general purpose computing components to tie the abstract idea to a particular technological environment is insufficient to transform the abstract idea into patent eligible subject matter. Answer 4. Further, the Examiner states that the additional limitations merely recite a computer with instructions to carry out the abstract idea with a conventional network and host server. Answer 5–6 (citing Parker v. Flook, and citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), and BASCOM Glob., Internet Servs., Inc. v. AT&T Mobility). We concur with the Examiner’s analysis. With respect to whether the claim is directed to a practical application of the above-identified abstract idea, we are not persuaded of error in the Examiner’s rejection by Appeal 2018-006229 Application 13/327,832 13 Appellants’ arguments. As discussed above, we concur with the Examiner that representative claim 1 recites an abstract idea. Further, we concur with the Examiner that claim 1 is not directed to an improvement in computer- related technology. As stated by Appellants the claims are directed to insurance policy management (App. Br. 16, see also Spec. ¶ 3 “present invention relates generally to healthcare management systems and associated methods for incentivizing participant/insured compliance with physician prescribed protocols and disease management programs.”). Healthcare plans (insurance) and use of incentives are directed an abstract idea of organizing human activity and are not directed a computer or other technological process. Further, we concur with the Examiner that the additional limitations directed to a processor, a database, and establishing communications links between a hosted server and healthcare platform and employer platforms are recited as tools to implement a method of organizing human activity (an abstract idea) and do not draw the claim to patent eligible subject matter. See, e.g., RecogniCorp, 855 F.3d at 1327 (“Unlike Enfish, [the claim] does not claim a software method that improves the functioning of a computer . . . [but] claims a ‘process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’”) (citation omitted)). Thus, Appellants’ arguments have not persuaded us the Examiner erred in not considering the claims as directed an improvement in a computer technology. With respect to Appellants’ contention that the claims recite an ordered combination of steps. App. Br. 19. Our reviewing court addressed this in McRO in which the court reviewed claims which use “a combined order of specific rules that renders information into a specific format that is Appeal 2018-006229 Application 13/327,832 14 then used and applied to create desired results: a sequence of synchronized, animated characters” McRO, 837 F.3d at 1315. The court found that the claims did not “simply use a computer as a tool to automate conventional activity,” but instead used the computer to “perform a distinct process” that is carried out in a different way than the prior non-computer method to improve the technology of (3-D animation techniques). See McRO, 837 F.3d at 1314–16. Here, we do not find that the claims recite such an ordered set of rules carried out in a different way than the non-computer method. The claimed steps, discussed above with respect to the abstract idea analysis, are not steps, which are unique to a use of a computer. Thus, we do not find that the claims recite and improve a technological problem in a manner analogous to that in McRO. Further, Appellants’ arguments based upon novelty and the lack of an art-based rejection are unavailing. A finding of novelty or non-obviousness does not necessarily lead to the conclusion that subject matter is patentable eligible. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). We are not persuaded by Appellants’ additional argument, that the claims do not preempt the abstract idea. App. Br. 16–17. “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less Appeal 2018-006229 Application 13/327,832 15 abstract.”). As such, Appellants’ arguments directed to claims not tying up the abstract idea have not persuaded us of error. In summary, Appellants’ arguments have not persuaded us of error in the Examiner’s determination that representative claim 1 is directed to an abstract idea; both to a method organizing human activity (an abstract idea of organizing human activity) and collecting/gathering information and analyzing it (a mental processes). Further, Appellants’ arguments have not persuaded us that the Examiner erred in finding that the claims are not: directed to an improvement in the functioning of the computer or to other technology or other technical field; directed to a particular machine; directed to performing or affecting a transformation of an article to a different state or thing; directed to using a judicial exception in some meaningful way beyond linking the exception to a particular technological environment such that the claim as a whole is more than a drafting effort to monopolize the judicial exception. For these reasons, we are unpersuaded that the claims recite additional elements that integrate the judicial exception into a practical application. Memorandum, 84 Fed. Reg. at 54. Appellants have not presented separate arguments with respect to claims 2 through 5, 7, 23 through 25, and 29 through 37, and thus these claims are grouped with claim 1. Accordingly, we sustain the Examiner’s rejection of claims 1 through 5, 7, 23 through 25, and 29 through 37 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. Appeal 2018-006229 Application 13/327,832 16 DECISION We affirm the Examiner’s rejection of claims 1 through 5, 7, 23 through 25, and 29 through 37 under 35 U.S.C. § 101. 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 Copy with citationCopy as parenthetical citation