1910852 Ontario Inc.

Patent Trials and Appeals Board

Apr 17, 2020

14169391 - (D) (P.T.A.B. Apr. 17, 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.
14/169,391 01/31/2014 Bastian Friedrich Noffer DWW0099/US (80490002) 9329
33072 7590 04/17/2020
KAGAN BINDER, PLLC
SUITE 200, MAPLE ISLAND BUILDING
221 MAIN STREET NORTH
STILLWATER, MN 55082
EXAMINER
REICHERT, RACHELLE LEIGH
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
04/17/2020 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@kaganbinder.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BASTIAN FRIEDRICH NOFFER,
HENDRIK HERMANN ERICH STAPEL, DAVID FABIAN KAUP, and
TIMOTHY PETROU
Appeal 2019-001855
Application 14/169,391
Technology Center 3600
Before BRADLEY W. BAUMEISTER, SCOTT RAEVSKY, and
RUSSELL E. CASS, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, 9, 16, and 18–22, all the
pending claims in this application. 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(a). Appellant identifies the real party in interest as
AffectMD Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims relate to systems and methods for scheduling and
processing house calls between patients and practitioners. Abstr. Claim 1,
reproduced below, illustrates the claimed subject matter:
1. A method for scheduling house calls, each house call
being a visit by one of a plurality of practitioners to one of a
plurality of patients, the method comprising:
[r]eceiving, by a server, via a communications network, a
first appointment request for a house call by a practitioner for
validation by the server from a patient using a patient
communication device, the first appointment request including
an indication of the geographical location of the patient, the
geographical location of the patient being derived from
information provided by the patient communication device;
validating, by the server, the first appointment request to
generate a first validated request;
storing, by the server, the first validated request in a pool
comprising a plurality of validated requests;
transmitting by the server, via the communications
network, the first validated request to a practitioner
communication device used by a practitioner;
receiving, by the server, via the communications
network, a selected request corresponding to one of the plurality
of validated requests from one of the practitioner
communication devices;
after the server receives the selected request,
transmitting, by the server, via the communications network, an
appointment indication to the patient communication device,
the appointment indication comprising an indication of the
estimated time of arrival of the practitioner at the geographical
location of the patient;
removing, by the server, the selected request from the
plurality of validated requests; and
scheduling, by the server, the house call on a schedule of
the practitioner for the selected request,
wherein the practitioner visits the patient at the
geographical location of the patient as scheduled.
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REJECTIONS
Claims 1–6, 8, 9, 16, and 18–22 stand rejected under 35 U.S.C. § 101
as being directed to a judicial exception to patent-eligible subject matter
without reciting significantly more. Final Act. 2.
Claims 1, 3, 9, 16, 19, 20, and 22 stand rejected under 35 U.S.C. § 103
as being unpatentable over Schoenberg (US 2014/0108022 Al, Apr. 17,
2014), Vis (US 2013/0151272 Al, June 13, 2013), Fox (US 2011/0161097
Al, June 30, 2011), and Massenzio (US 2005/0131740 Al, June 16, 2005).
Id. at 5.
Claims 2, 4–6, and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schoenberg, Vis, Fox, Massenzio, and Martinez
(US 2009/0177489 Al, July 9, 2009). Id. at 11.
Claims 18 and 21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schoenberg, Vis, Fox, Massenzio, and Kaboff
(US 2011/0307272 Al, Dec. 15, 2011). Id. at 14.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv).

REJECTION UNDER SECTION 101
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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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 Supreme Court’s two-step framework, described
in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed
to.” See id. 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, 67–68 (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 183 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))).
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
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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. “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.
After the docketing of this Appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See, e.g., 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”), updated by USPTO, October 2019 Update: Subject
Matter Eligibility (Oct. 17, 2019), available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf (“Update”), 84 Fed. Reg.
55942 (Oct. 18, 2019) (notice).
Under the Guidance, 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 activities such as a fundamental economic practice,
or mental processes); 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)).
Revised Guidance, 84 Fed. Reg. at 52–55.
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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:
(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.
Revised Guidance, 84 Fed. Reg. at 56.

Step 2A, Prong One (Judicial Exception)
The Examiner determines that claim 12 is directed to an abstract idea.
Final Act. 3. The Examiner finds claim 1 “corresponds to cases identified as
abstract ideas such as obtaining and comparing intangible data (e.g.,
patient’s location, scheduling request with available openings) in
CyberSource.”3 Id. (emphasis omitted). The Examiner further finds that
“the applicant is taking the well-known process of scheduling an
appointment for a patient and implementing it on a computer.” Id. We
agree.

2 Appellant argues claims 1–6, 8, 9, 16, and 18–22 as a group. Appeal
Br. 11–13. We select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).

3 Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011).
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Appellant contends claim 1 is not directed to an abstract idea. Appeal
Br. 11. Appellant contends the “claims are ultimately directed to causing a
practitioner to visit a patient at a scheduled time.” Id. Appellant further
contends that “[t]he physical location of the patient is a key part input to the
claimed invention. The scheduling mechanism that forms part of the
claimed invention causes the practitioner to actually go from one location to
another.” Id. Appellant contends “[t]hese[] bona fide physical claim steps
cannot be considered as ‘abstract ideas.’” Id. at 12.
Appellant views the claims as directed to causing a practitioner to
visit a patient at a scheduled time, but this is a certain method of organizing
human activity. More specifically, claim 1 recites a commercial interaction
because the following limitations of claim 1 broadly relate to scheduling a
patient appointment:
[r]eceiving . . ., a first appointment request for a house
call by a practitioner for validation . . . from a patient . . ., the
first appointment request including an indication of the
geographical location of the patient, the geographical location
of the patient being derived from information provided . . .;
validating . . . the first appointment request to generate a
first validated request;
storing . . . the first validated request in a pool
comprising a plurality of validated requests;
transmitting . . ., the first validated request to . . . a
practitioner;
receiving . . ., a selected request corresponding to one of
the plurality of validated requests . . .;
after . . . receiv[ing] the selected request, transmitting . . .,
an appointment indication . . ., the appointment indication
comprising an indication of the estimated time of arrival of the
practitioner at the geographical location of the patient;
removing . . . the selected request from the plurality of
validated requests; and
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scheduling . . . the house call on a schedule of the
practitioner for the selected request,
wherein the practitioner visits the patient at the
geographical location of the patient as scheduled.

These limitations of Appellant’s claim 1, under their broadest
reasonable interpretation, recite operations that would ordinarily take place
in the process of scheduling an appointment for a patient, which is a known
business activity and commercial interaction—one of certain methods of
organizing human activity identified in the Revised Guidance, and,
therefore, an abstract idea. See Revised Guidance (Revised Step 2A, Prong
One), 84 Fed. Reg. at 52 (describing an abstract idea category of “[c]ertain
methods of organizing human activity— . . . commercial or legal
interactions (including . . . advertising, marketing or sales activities or
behaviors; business relations)”), 54. Such activities are squarely within the
realm of abstract ideas. See, e.g., In re Salwan, 681 Fed. Appx. 938 (Fed.
Cir. 2017) (nonprecedential) (transferring patient health information in a
physician-to-patient network represents organizing human activity).
For these reasons, we determine that claim 1 recites a certain method
of organizing human activity, as recognized in the Revised Guidance, and
thus, an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52.

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Step 2A, Prong 2 (Integration into a Practical Application)
Under the Guidance, we next must determine if additional elements in
the claims integrate the judicial exception into a practical application
(see MPEP §§ 2106.05(a)–(c), (e)–(h)).4
We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 1 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements
(e.g., a communications network, server, and communication devices) (1) do
not improve the functioning of a computer or other technology; (2) are not
applied with any particular machine (except for generic computer systems,
see, e.g., Spec. ¶¶ 28, 35, 38, 50); (3) do not effect a transformation of a
particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP §§ 2106.05(a)–(c), (e)–(h).
Instead, these limitations merely serve to narrow the recited abstract
idea by using generic computer components, which cannot impart patent-
eligibility. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017) (“Our prior cases have made clear that mere
automation of manual processes using generic computers does not constitute

4 We acknowledge that some of the considerations at Step 2A, Prong 2 may
be evaluated under Step 2 of Alice (Step 2B of the Guidance). For purposes
of maintaining consistent treatment within the Office, we evaluate them
under Step 1 of Alice (Step 2A of the Guidance). See Revised Guidance,
84 Fed. Reg. at 55 n.25, 27–32.
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a patentable improvement in computer technology.”); Bancorp Services,
L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012) (A computer “employed only for its most basic function . . .
does not impose meaningful limits on the scope of those claims.”).
Appellant’s arguments focus on limitations that we determine are part
of the judicial exception as discussed above; thus, these limitations are not
“additional elements” that can impart patent eligibility to the claim. See,
e.g., Appeal Br. 12–13 (arguing that the claims are directed to “causing a
practitioner to visit a patient at a scheduled time arranged by the selection of
a request by the practitioner”); see also Revised Guidance, 84 Fed. Reg. at
55 n.24 (“USPTO guidance uses the term ‘additional elements’ to refer to
claim features, limitations, and/or steps that are recited in the claim beyond
the identified judicial exception.”).
Even assuming the limitations that Appellant focuses on could be
considered additional elements, we are not persuaded the Examiner’s
rejection is in error. For example, Appellant contends, “the actual visit by
the practitioner to the patient’s geographic location is [not] post-solution
activity,” arguing that “the actual visit is a fundamental part of the solution.”
Appeal Br. 12. We disagree. The claim preamble recites “[a] method for
scheduling house calls,” and the Specification’s field of the invention
“relate[s] to . . . systems and methods for scheduling a house call and
generating claim and diagnostic information corresponding to a house call.”
Spec. ¶ 1 (emphasis added). The actual visit by the practitioner is
quintessential post-solution activity because it is incidental to scheduling the
house call. See MPEP § 2106.05(g).
Appellant also contends,
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[the claims] provide[] a very efficient approach for matching
practitioners with patients, using computer technology, so that
practitioners can intelligently select patients to visit, for
example based on geographical proximity of the practitioner to
the patient location in the request (see paragraph [70] of the
[S]pecification as filed). Determination of the geographic
location of the patient can be done very effectively and
automatically, for example, using GPS technology to determine
the location of the patient communication device.
Appeal Br. 12.
Appellant’s argument is unpersuasive because “merely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.” Intellectual
Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015).
Accordingly, we determine that claim 1 does not integrate the judicial
exception into a practical application and, therefore, is directed to the recited
abstract idea (e.g., organizing human activity).

Step 2B (Inventive Concept)
Because we find that the claims are directed to an abstract idea, we
next consider whether the claims include additional limitations such that the
claims amount to significantly more than the abstract idea.
The Examiner finds, and we agree, that the additional elements are
well-understood, routine, and conventional in the field. Final Act. 3–5.
Specifically, the Examiner finds the claims recite “[g]eneric computer
structure that serves to perform generic computer functions that serve to
merely link the abstract idea to a particular technological environment.” Id.
at 4 (citing Spec. ¶¶ 28, 38, 35, 50).
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As we explained above, the additional limitations, individually and as
an ordered combination, merely narrow the recited abstract ideas by using
generic computer components. Moreover, Appellant’s Specification
provides evidence that the recited server, communication network, and
patient communication device, were all well-understood, routine, and
conventional computer components:
The embodiments of the systems and methods described
herein may be implemented in hardware or software, or a
combination of both. However, preferably, these embodiments
are implemented in computer programs executing on
programmable computers each comprising at least one module
component which comprises at least one processor (e.g. a
microprocessor), a data storage system (including volatile and
non-volatile memory and/or storage elements), at least one
input device, and at least one output device. For example and
without limitation, the programmable computers (referred to
below as computing devices) may be a computer server,
personal computer, laptop, personal data assistant, cellular
telephone, smartphone device, tablet computer, and/or wireless
device. Program code is applied to input data to perform the
functions described herein and generate output information.
The output information is applied to one or more output
devices, in known fashion.
Spec. ¶ 28.
Accordingly, we determine that there are no additional limitations
that, when considered individually or as an ordered combination, cause the
claims to amount to significantly more than the abstract idea. Thus, we
determine no element or combination of elements recited in claim 1 contains
any “inventive concept” or adds anything “significantly more” to transform
the abstract concept into a patent-eligible application. Accordingly, we
sustain the Examiner’s rejection of claims 1–6, 8, 9, 16, 18–22, which
Appellant argues as a group, under 35 U.S.C. § 101 as being directed to a
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judicial exception to statutory subject matter without reciting significantly
more, pursuant to Alice, its progeny, and the Guidance. See Appeal Br. 11–
13; supra n.2.

REJECTIONS UNDER SECTION 103
Issue 1: Did the Examiner err in finding that the combination of
Schoenberg, Vis, Fox, and Massenzio teaches or suggests “[r]eceiving, by a
server, via a communications network, a first appointment request for a
house call by a practitioner for validation by the server from a patient using
a patient communication device, the first appointment request including an
indication of the geographical location of the patient,” as recited in claim 1?
Appeal Br. 13–14.
Appellant first contends that no “house call appointment requests are
disclosed in Schoenberg.” Id. at 14. But the Examiner finds Massenzio, not
Schoenberg, discloses house calls. Final Act. 8–9. Appellant’s arguments
attacking the references in isolation do not persuasively rebut the underlying
factual findings made by the Examiner, which are based upon the combined
teachings and suggestions of the cited references. One cannot show non-
obviousness by attacking references individually, where the rejections are
based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Issue 2: Did the Examiner err in finding that the combination of
Schoenberg, Vis, Fox, and Massenzio teaches or suggests “a pool
comprising a plurality of validated requests,” as recited in claim 1? Appeal
Br. 14.
Appellant contends,
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Schoenberg, as is evident for example from the claims,
discloses an approach where after a consumer makes a request,
the system selects the provider based on how many consumers
are in the queue (the “virtual waiting room”) for each suitable
provider, and places the request in one of those queues.
Providers do not select consumers, and there is no pool of
validated requests from which the system sends requests that
are in the pool to providers to allow the providers to select a
request, as in Appellant’s claim 1, so that after a request has
been selected, the system removes it from the pool.
Id. at 14.
The Examiner finds that Schoenberg paragraph [43] “discusses that
after patients access the system and complete the required intake forms, the
entries are queued, which is being construed as placing the request in a pool
comprising a plurality of validated requests.” Final Act. 6. The Examiner
applies Fox for the limitation related to receiving a selected request from a
practitioner device, not Schoenberg. Id. at 8. Further, Appellant concedes
that Shoenberg “places the request in one of those queues,” but does not
explain why the Examiner’s finding that this “is being construed as placing
the request in a pool comprising a plurality of validated requests” is
incorrect. Accordingly, Appellant does not persuade us the Examiner erred.
Issue 3: Did the Examiner err in determining that the combination of
Schoenberg, Vis, Fox, and Massenzio teaches or suggests “a selected request
corresponding to one of the plurality of validated requests from one of the
practitioner communication devices,” as recited in claim 1? Appeal Br. 14–
15.
First, Appellant contends that “it does not make sense to modify
Schoenberg [with Fox] because the requests in Schoenberg are placed in a
queue for a single practitioner (and the practitioner does not select them).”
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Appeal Br. 14. Apart from being conclusory, this argument is also
unpersuasive because the Examiner applies Fox for the very reason that Fox
cures Schoenberg’s defect of not teaching receiving a request from a
practitioner communication device. See Final Act. 8; Ans. 9–10. Arguing
there is no motivation to combine because a reference does not disclose the
limitation for which a secondary reference is applied is unpersuasive. Here,
the claimed subject matter exemplifies the principle that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007).
Second, Appellant contends, “the portion of Fox cited by the
[E]xaminer does not relate to a practitioner selecting a request from a patient
that has been transmitted to the practitioner’s device by the system. Rather,
it simply refers to the patient or the practitioner selecting an available time
slot. In this context, it would make no sense to remove the request from a
pool (which does not exist in Fox).” Appeal Br. 14. Appellant again argues
the references individually, as the Examiner applies Schoenberg for
“transmitting . . . the first validated request to a practitioner” and for
“removing . . . the selected request from the plurality of validated requests.”
Final Act. 6.
Appellant additionally contends Fox “has nothing to do with selecting
a validated request for a house call including an indication of the
geographical location of the patient.” Id. Appellant further contends “Fox is
unrelated to house calls.” Id. at 15. But the Examiner applies Vis for
geographical location and Massenzio for house calls. Id. at 7–9.
Accordingly, Appellant does not persuade us of Examiner error.
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Issue 4: Did the Examiner err in finding that the combination of
Schoenberg, Vis, Fox, and Massenzio teaches or suggests “removing, by the
server, the selected request from the plurality of validated requests,” as
recited in claim 1? Appeal Br. 15.
Appellant contends,
Against the removing step, the [E]xaminer cites
paragraph [0047] of Schoenberg. However, this simply
discusses removing an entry in the physician’s queue after the
physician services the patient—it does not relate to removing a
pending request for a house call after a particular practitioner
has selected that request, which is before the house call is made.
Id.
Appellant again argues the references individually because the
Examiner relies on Massenzio for the house call and the “after the server
receives the selected request” limitation. The Examiner also relies on Fox
for “receiving . . . a selected request . . . from one of the practitioner
communication devices.” Final Act. 8–9. Accordingly, Appellant does not
persuade us of Examiner error.
Issue 5: Did the Examiner err in concluding that one of ordinary skill
in the art would have combined Massenzio and Vis with Schoenberg?
Appeal Br. 15.
Appellant contends that “[a]lthough Massenzio and Vis refer to house
calls, it does not make sense to combine these references related exclusively
to house calls with a reference such as Schoenberg related to patients
visiting doctors, where the system manages each physician’s schedule.” Id.
Appellant further contends, “[i]n Schoenberg, . . ., the doctor is in a fixed
location and the patients come to the doctor, which results in a much simpler
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and very different scheduling problem compared to scheduling house calls
where a doctor must go to different locations.” Id.
The Examiner finds that “Schoenberg is used to teach most of
scheduling limitations, however, [the] modifying references [are] used to
teach [the] remaining limitations. Additionally, the motivation to combine
the references was taken directly from the modifying references.” Ans. 11;
see Final Act. 8 (“it would have been obvious . . . to modify the scheduling
of a visit of Schoenberg to have the patient communication device determine
the geolocation of the patient’s device, as taught by Vis, in order to
determine the location of each client from the mobile devices.”), 9 (“it
would have been obvious . . . to modify the scheduling method of
Schoenberg to allow the practitioner to select a request, as taught by
Massenzio, in order to track home health care services while improving the
consistency and reliability of such services.”).
Appellant’s argument is unpersuasive. Appellant does not point to
any evidence of record that the combination would be “uniquely challenging
or difficult for one of ordinary skill in the art” or “represent[] an unobvious
step over the prior art.” Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418–19 (2007)).
Modifying Schoenberg to change from patients visiting doctors to
doctors visiting patients is not a uniquely challenging problem. Nor has
Appellant provided objective evidence of secondary considerations, which
our reviewing court states “operates as a beneficial check on hindsight.”
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013). The Examiner’s conclusions are reasonable because the
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skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420–21. The claimed
subject matter exemplifies the principle that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 416.
Appellant further contends, “[i]t makes no sense . . . to modify the
approach of Schoenberg to send an indication of the geographical location of
the patient, as this is irrelevant to the problem being addressed in
Schoenberg.” Appeal Br. 15. We disagree.
Schoenberg teaches providing a “pre-intake questionnaire” to patients.
Schoenberg ¶ 9. Anyone who has been to a doctor’s office, and certainly
one of ordinary skill in the art, would have known that patient intake forms
typically ask for a patient’s address, which is a geographic location. And
again, Appellant does not point to any evidence of record that the
combination would be “uniquely challenging or difficult for one of ordinary
skill in the art.” See Leapfrog, 485 F.3d at 1162. Thus, we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to have combined Vis’s geographic location information with Schoenberg.
Issue 6: Did the Examiner err in finding that the combination of
Schoenberg, Vis, Fox, and Massenzio teaches or suggests “after the server
receives the selected request, transmitting, by the server, via the
communications network, an appointment indication to the patient
communication device, the appointment indication comprising an indication
of the estimated time of arrival of the practitioner at the geographical
location of the patient,” as recited in claim 1? Appeal Br. 15–16.
Appeal 2019-001855
Application 14/169,391

19
Appellant’s argument consists entirely in stating that Massenzio “does
not provide an indication of the estimated time of arrival of the practitioner
selecting a patient to visit based on validated requests sent to the practitioner
by the system.” Id. at 16. But Appellant’s assertion does not constitute an
argument on the merits, because “[a] statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(iv).
We, therefore, sustain the rejection, along with the rejection of
independent claims 16 and 20 argued collectively with claim 1, and the
rejection of the dependent claims, which Appellant does not argue
separately. Appeal Br. 13–17; see 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION

In summary:
Claims
Rejected
35
U.S.C. § 
Reference(s)/Basis Affirmed Reversed
1–6, 8, 9,
16, 18–22
101 Eligibility 1–6, 8, 9,
16, 18–22

1, 3, 9, 16,
19, 20, 22
103 Schoenberg, Vis, Fox,
Massenzio
1, 3, 9,
16, 19,
20, 22

2, 4–6, 8 103 Schoenberg, Vis, Fox,
Massenzio, Martinez
2, 4–6, 8
18, 21 103 Schoenberg, Vis, Fox,
Massenzio, Kaboff
18, 21
Overall
Outcome
1–6, 8, 9,
16, 18–22

Appeal 2019-001855
Application 14/169,391

20
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).
AFFIRMED