Edward Burke et al.

Patent Trials and Appeals Board

Jul 18, 2019

13826063 - (D) (P.T.A.B. Jul. 18, 2019)

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.
13/826,063 03/14/2013 Edward Burke 09075P01092 6519
140538 7590 07/18/2019
WOMBLE BOND DICKINSON (US) LLP / THORATEC
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
EXAMINER
COLEMAN, CHARLES P.
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):
ASJM_Patents@abbott.com
FIP_Group@bstz.com
PTO.MAIL@BSTZ.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDWARD BURKE, SUSAN CLAIRE HOPKINS,
CHRISTOPHER DAVIS PARKER, JAMES RENTERIA,
EDWARD LEWIS RIEFLIN,
and GILBERT RIVAS
____________________

Appeal 2018-005183
Application 13/826,0631
Technology Center 3600
____________________

Before JOSEPH L. DIXON, MICHAEL J. STRAUSS, and HUNG H. BUI,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge,
HUNG H. BUI.
Opinion dissenting filed by Administrative Patent Judge,
MICHAEL J. STRAUSS.
BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1–36, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 Appellants identify Thoratec LLC, as the real party in interest.
(App. Br. 3.)
2 Our Decision refers to the Specification (“Spec.”) filed March 14, 2013,
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CLAIMED INVENTION
The claims are directed to systems and methods for “providing and
maintaining a web portal for customers and patients of medical equipment”
by maintaining “equipment records corresponding to medical equipment that
are shipped from a medical equipment manufacturer to a medical center”
and “patient records corresponding to patients of the medical center,”
“associat[ing] the patient records with the equipment records when the
patients are equipped with the medical equipment,” and “provid[ing]
locations of medical facilities capable of providing support for the medical
equipment for patients that have been discharged from the medical center.”
(Spec. ¶ 2; Abstract.)
Claims 1, 10, 15, 18, 20, and 29 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for managing medical equipment, the system
comprising:
one or more web servers;
an equipment tracking module, implemented on the one or
more web servers, to maintain equipment records including a
plurality of fields corresponding to medical equipment that are
shipped from a medical equipment manufacturer to a medical
center, wherein the equipment tracking module is configured to
allow only the medical equipment manufacturer to create each
equipment record about the medical equipment in the equipment
tracking module;
an authentication system, implemented on the one or more
web servers, to authenticate a user at the medical center;
a patient information tracking module, implemented on
the one or more web servers, to maintain patient records

the Final Office Action (“Final Act.”) mailed May 11, 2017, the Appeal
Brief (“App. Br.”) filed September 21, 2017, the Examiner’s Answer
(“Ans.”) mailed February 26, 2018, and the Reply Brief (“Reply Br.”) filed
April 19, 2018.
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including a plurality of fields corresponding to patients of the
medical center and to associate the patient records with the
equipment records when the patients are equipped with the
medical equipment, wherein each equipment record is associated
with a patient record for a particular patient by way of at least
one field and at least one field in the patient record is associated
with at least one equipment record; and
a mapping module, provided through the one or more web
servers, to provide locations of medical facilities capable of
providing support for the medical equipment for those of the
patients that have been discharged from the medical center.

(App. Br. 34–46 (Claims App.).)

REJECTIONS
(1) Claims 20–24, 26, and 28 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for being of mixed statutory types. (Final
Act. 7–9.)
(2) Claims 1–36 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., an abstract idea)
without significant more. (Final Act. 3–7.)

ANALYSIS
§ 112, Second Paragraph Rejection

In support of the rejection of claims 20–24, 26, and 28 under
35 U.S.C. § 112, second paragraph, the Examiner asserts:
Claims 20 and 24 are directed to a method and computer
readable medium for using said method. Claims 20 and 24 are
of mixed statutory type. It has been held that a claim that recites
both a method and computer readable medium for using said
method (mixed statutory type) is indefinite under section 112,
paragraph 2. . . .
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Claims 20–21 and 26 are directed to a method and
computer readable medium for using said method. Claims 20–
21 and 26 are of mixed statutory type. . . . a claim that recites
both a method and computer readable medium for using said
method (mixed statutory type) is indefinite under section 112,
paragraph 2. . . .
Claims 20–23 and 28 are directed to a method and
computer readable medium for using said method. Claims 20–
23 and 28 are of mixed statutory type. . . . a claim that recites
both a method and computer readable medium for using said
method (mixed statutory type) is indefinite under section 112,
paragraph 2.
(Final Act. 8–9 (emphasis added).)
Appellants argue the Examiner’s § 112, second paragraph rejection of
claims 20–24, 26, and 28 is in error because none of these claims is of mixed
statutory types. (App. Br. 28–32.) We agree with Appellants. Particularly,
claim 20—that recites “[a] method of providing a web portal for use by
customers, including a plurality of medical centers, of a medical equipment
provider”—is directed to a method comprising six method steps. (App. Br.
40–42 (Claims App.).) Claims 21–23, depending from claim 20, are
similarly directed to a method. (App. Br. 28–29, 31.) Thus, claims 20–23
do not mix classes of statutory subject matter (as Examiner asserts), and are
not indefinite.
Claim 24 recites “[a] machine readable non-transitory storage medium
containing executable program instructions which when executed cause a
system to perform a method as in claim 20.” (App. Br. 43 (Claims App.).)
Thus, claim 24 is directed to an article of manufacture, namely, a machine
readable non-transitory storage medium. (App. Br. 29.) Although the
medium of claim 24 has stored executable program instructions that, when
executed, cause a system to perform the method of claim 20, claim 24 does
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not require that the method steps of claim 20 be actually performed, and
thus claim 24 is not also a method claim, as the Examiner asserts. (See Final
Act. 8.) One of ordinary skill in the art would reasonably be able to
determine what is required of the machine readable non-transitory storage
medium to meet claim 24. Thus, claim 24 does not mix classes of statutory
subject matter (as the Examiner asserts), and is not indefinite.
Claim 26 recites “[a] machine readable non-transitory storage medium
containing executable program instructions which when executed cause a
system to perform a method as in claim 21,” and claim 28 recites “[a]
machine readable non-transitory storage medium containing executable
program instructions which when executed cause a system to perform a
method as in claim 23.” (App. Br. 43 (Claims App.).) Similar to claim 24,
claims 26 and 28 do not require that method steps (of claims 21 and 23) be
actually performed, and thus claims 26 and 28 are only directed to an article
of manufacture (machine readable non-transitory storage media) and are not
also method claims, as the Examiner contends. (See Final Act. 8–9.) One of
ordinary skill in the art would reasonably be able to determine what is
required of the machine readable non-transitory storage media to meet
claims 26 and 28. Thus, claims 26 and 28 do not mix classes of statutory
subject matter (as the Examiner asserts), and are not indefinite.
Accordingly, we do not sustain the Examiner’s rejection of claims 20–
24, 26, and 28 under 35 U.S.C. § 112, second paragraph.3

3 Although we agree with Appellants that claims 24, 26, and 28 are not
unclear and indefinite, we disagree with Appellants that claims 24, 26, and
28 are “independent claims.” (See App. Br. 29–31.) Rather, we note claims
24, 26, and 28 are improper dependent claims because (i) they contain a
reference to a claim previously set forth (claim 20, 21, and 23, respectively)
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§ 101 Rejection
In support of the rejection of claims 1–36 under 35 U.S.C. § 101, the
Examiner determines the claims are directed to “providing patient records
and equipment records, and tracking and management of medical
equipment,” which is “information processing. . . . [that] is a fundamental
building block of human ingenuity. . . . [and] an abstract idea.” (Final Act.
4.) The Examiner takes the position that limitations recited in Appellants’
claim 1 (and the other independent claims) are similar to limitations in the
claims of Electric Power Group because the claimed steps of “authenticating
a user, maintaining patient records, associating patient records with
equipment records, [and] providing locations of medical facilities”
correspond to “collecting information, analyzing it, and displaying certain
results of the collection and analysis.” (Id. (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding that “a process
of gathering and analyzing information of a specified content, then
displaying the results” is not patent-eligible)).) The Examiner also
determines additional elements in the claims, whether taken separately or in
an ordered combination, do not amount to significantly more than an

(ii) without including all the limitations of claims 20, 21, and 23,
respectively, because claims 24, 26, and 28 do not require the method steps
(of method claims 20, 21, and 23) to be actually performed. Thus, in the
event of further prosecution, the Examiner should consider rejecting claims
24, 26, and 28 under 35 U.S.C. § 112, fourth paragraph, as improper
dependent claims. We further note Appellants are not precluded from
declaring claims 24, 26, and 28 to be independent claims upon payment of
the appropriate additional independent claim fees. We find no indication
that Appellants have paid such additional independent claim fees for claims
24, 26, and 28.
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abstract idea, because the “additional elements amount to no more than
generic computer components that serve to merely link the abstract idea to a
particular technological environment.” (Final Act. 5.)
Legal Framework
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever 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.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the [p]rogress of [s]cience” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not
patent-eligible subject matter. Thales Visionix Inc. v. U.S., 850 F.3d 1343,
1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U.S. at 217–18). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
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Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “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 (quoting Mayo, 566 U.S. at 72, 79). There is no need
to proceed to the second step, however, if the first step of the Alice/Mayo
test yields a determination that the claim is directed to patent-eligible subject
matter.
The Patent Office has recently revised its guidance for how to apply
the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“Revised Guidance”).
Applying Step 1 of the Revised Guidance (which is unchanged from the
prior guidance) to the present case, we determine: (i) independent claims 1
and 18 recite a “system,” which is a “machine” falling within one of the
categories enumerated under § 101, thus satisfying Step 1 of the Revised
Guidance; (ii) independent claim 10 recites a “computer-implemented
method” and independent claims 20 and 29 recite a “method,” which are
“processes” falling within one of the categories enumerated under § 101,
thus satisfying Step 1 of the Revised Guidance; and (iii) independent claim
15 recites a “non-transitory computer-readable storage medium,” which is an
article of “manufacture” falling within one of the categories enumerated
under § 101, thus satisfying Step 1 of the Revised Guidance.
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
We then proceed to analyze the claims under Step 2A of the Revised
Guidance to determine if the claims are “directed to” a judicial exception.
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Step 2A of the Revised Guidance corresponds to the 1st step of the
Alice/Mayo two-step framework but is in part changed from the 2014
Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618–
74633 (December 16, 2014). Under the Revised Guidance, we look under
Alice step 1 or “Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes, or [iii] certain methods of organizing
human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions
between people); and
(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).4
See Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A, Prong
One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See Revised Guidance at 56; Alice, 573 U.S. at 217–18. For
example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.

4 All references to the MPEP are to the Ninth Edition, Revision 08–2017
(rev. Jan. 2018).
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Turning to the first step of the Alice inquiry, Appellants argue the
claims are not directed to an abstract idea because the “claimed subject
matter includes an equipment tracking module and patient information
tracking modules, configured as claimed, and a mapping module and an
authentication/method system” that together “improv[e] the maintenance of
medical equipment associated with particular patients,” effecting “an
improvement in the continued operation of a particular patient’s
particular medical device because the device is properly maintained by
allowing the patient to find medical facilities that are capable of
supporting the patient’s device.” (App. Br. 21, 24.) Appellants argue their
claims are similar to McRO’s claims in that the “limitations of [Appellants’]
claims confine the claims to a particular useful application. . . . of a specific
technique for improving the maintenance of medical equipment associated
with particular patients.” (App. Br. 24–25 (citing McRO, Inc. v. Bandai
Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016).)
In response, the Examiner takes the position that (1) “there is no
nexus to [Appellants’] claims to ‘improving the maintenance of medical
equipment associated with particular patients,’” and (2) McRO is
inapplicable to Appellants’ claims because “[Appellants’] claims are not
directed to computer animation at all or functions that are particular to
computer animation as is the case in the claims of McRo.” (Ans. 3, 5.)
We agree with the Examiner’s positions only in part. Particularly, we
agree with the Examiner’s finding in the Final Action that claim 1 (and
similarly, independent claims 10, 15, 18, 20, and 29) recites an abstract idea;
however, we disagree with the Examiner’s finding that the claims are
directed to that abstract idea. (See Final Act. 3–4; Ans. 3, 5.)
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More particularly, under the first prong of Step 2A under the Revised
Guidance, we determine whether the claims recite a judicial exception
including (a) mathematical concepts; (b) certain methods of organizing
human activity; and (c) mental processes. Reviewing independent claims 1,
10, 15, 18, 20, and 29, we note the claims recite managing medical
equipment and providing support to patients using such medical equipment
(e.g., pacemakers and implantable insulin pumps, see Spec. ¶ 22), which is a
method of managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions) thereby reciting a judicial exception of a method of organizing
human activity. In particular, the claims help manage a patient’s medical
equipment without requiring ongoing help from a medical center or hospital
that provided/fitted the equipment to the patient. (See Spec. ¶¶ 2, 23, 52.)
Accordingly, we proceed to the second prong of Step 2A of the
Revised Guidance, where we inquire whether an additional element of the
claims integrates the judicial exception into a practical application. See
Revised Guidance at 54–55. Such an additional element may reflect a
technical solution to a technical problem, or an improvement to another
technology or technical field. Id. at 55.
Under the second prong of Step 2A of the Revised Guidance, we are
persuaded by Appellants’ arguments that the claims integrate the abstract
idea into a practical application. (App. Br. 21, 24–26; Reply Br. 4–5.)
At the outset, we note the Federal Circuit has interpreted Alice step 1
as asking “whether the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). The Federal Circuit
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has also “emphasized that the key question is ‘whether the focus of the
claims is on the specific asserted improvement in computer capabilities.’”
Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253, 1258 (Fed. Cir. 2017).
The Federal Circuit has further explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims” considered in their entirety, in light of
the Specification, to ascertain whether the claims’ character as a whole is
directed to excluded subject matter. Enfish, 822 F.3d at 1335 (citing Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)).
Further, in McRO, the Federal Circuit has indicated the improvement
need not be in the functioning of the computer itself; rather, the
improvement can also be subjective in terms of computer tools (e.g.,
computer animation, user interface), user experiences, and results. For
example, McRO’s invention does not make the computer operate faster, use
less memory, or improve any other parameter of the computer. Instead,
McRO’s invention aids in the technological goal of generating computer
animation, i.e., enables human animators to animate 3-D characters more
quickly and easily. McRO, 837 F.3d at 1303. Accordingly, the Federal
Circuit concluded McRO’s claims, albeit a pure software-based invention,
i.e., an “algorithm” using a specific set of rules that define “output morph
weight set stream as a function of phoneme sequence and time of said
phoneme sequence” to achieve lip synchronization and facial expressions in
animated characters, are patent eligible under § 101 and, as such, are not
“directed to” an abstract idea because these claims are directed to a
“technological improvement over the existing, manual 3–D animation
techniques” that uses “limited rules in a process specifically designed to
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achieve an improved technological result in conventional industry practice.”
Id. at 1310, 1316.
Contrary to the Examiner’s characterization, Appellants’ claims are
more than mere “collecting information, analyzing it, and displaying certain
results of the collection and analysis” as discussed in Electric Power Group.
(See Final Act. 4.) Instead, Appellants’ Specification and claims seek to
address an existing problem of how to manage and keep track of medical
equipment used by (e.g., implanted in) patients, and how to help those
patients maintain their medical equipment. Appellants’ Specification
explains that prior, conventional techniques used by hospitals to keep track
of medical equipment and their patients are inefficient and unreliable
because:
[c]ustomers [e.g., medical centers] have traditionally used paper
and electronic spreadsheets to keep track of the medical
equipment and their patients. Some medical equipment such as
implantable medical devices (e.g., implantable heart pumps) may
be retained by a patient for many years. As the number of new
patients and ongoing patients grow, managing the paper and
electronic spreadsheets to keep track of the medical equipment
and their patients becomes a cumbersome task for clinicians. It
is also difficult to accurately track, fulfill, and report equipment
maintenance on required schedules. Furthermore, when product
incidents occur, the logistics of returning the medical equipment
to the manufacturer for evaluation and complying with
government regulations for mandatory reporting to government
agencies can be complicated. Together, these administrative
tasks are taking away valuable clinician time that can otherwise
be spent on improving the standard of care for their patients.
(Spec. ¶ 3 (emphases added).) The above-mentioned tracking and
maintenance problems are compounded by patients’ travel (or location far
away from the patient’s dedicated medical center), posing difficulties to both
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patients (wearing the medical equipment) and medical centers (that installed
the patients’ equipment). As Appellants’ Specification explains:
A patient of a medical center may not always live close by to the
medical center that equipped or implanted the patient with the
medical equipment. When a patient is discharged from the
medical center, the patient often requests information of medical
facilities that are closer to the patient’s home such that the patient
can have quicker access from the patient’s home to a medical
staff that can service or provide support for the medical
equipment. Furthermore, with technological advances in
medical equipment such as implantable medical devices, patients
are becoming more mobile and often travel on long trips with the
implanted medical device. When a patient plans a trip, the
patient often requests information of medical facilities that are
along the route of the trip or near the travel destination such that
the patient would have knowledge of the locations of nearby
medical facilities that can assist the patient with the medical
equipment, if necessary, while the patient is away from home. In
order to provide a patient with the locations of such medical
facilities that are nearby a target location, a clinician at a
medical center has been required to contact the medical
equipment manufacturer directly to obtain such information or
use the web to identify other centers and call them to confirm
qualifications and contact information. Such information has
not been readily available because the medical equipment
manufacturer has to first access its internal LMS [(learning
management system)] 116 to determine if a particular facility is
trained and certified to provide the service and support for the
particular piece of medical equipment that the patient is equipped
or implanted with.
(Spec. ¶ 52 (emphases added).)
Appellants’ claimed invention in claim 1 (and similarly, claims 10,
15, 18, 20, and 29) provides a solution to the above-mentioned patient
tracking and equipment tracking (and maintenance) problems. Particularly,
claim 1 (and similarly, claims 10, 15, 18, 20, and 29) recites a combination
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of additional elements including: (i) an equipment tracking module to
maintain equipment records for medical equipment shipped from a medical
equipment manufacturer to a medical center, the equipment tracking module
configured to allow only the medical equipment manufacturer to create each
equipment record about the medical equipment in the equipment tracking
module; (ii) a patient information tracking module to maintain patient
records for patients of the medical center and to associate the patient records
with the equipment records when the patients are equipped with the medical
equipment; and (iii) a mapping module to provide locations of medical
facilities capable of providing support for the medical equipment for those of
the patients that have been discharged from the medical center. The claimed
combination of an equipment tracking module, patient tracking module, and
mapping module advantageously allows (1) the medical equipment
manufacturer and medical center to track such medical devices (i.e.,
implantable pacemakers or insulin pumps attached to or implanted in a
patient, see Spec. ¶ 22) and track the patients wearing them, and (2) a patient
to keep track of his or her medical device(s) and gain access to the best
available medical facilities to service those medical devices when the patient
is travelling, away from home. Thus, the combination of additional claimed
elements including the equipment tracking module, patient tracking module,
and mapping module integrates the method of organizing human activity
into a practical application that provides a specific improvement over
conventional techniques by which patients and medical centers manage
medical equipment worn/used by the patients. (See Spec. ¶ 3.)
More particularly, as Appellants explain, the claimed mapping
module, tracking modules, and association of patient and equipment records
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in claim 1 (and the similar limitations in claims 10, 15, 18, 20, and 29)
improve “[e]quipment maintenance . . . by directing the patient (with a
particular patient record associated with an equipment record), through a
map, to a medical facility that has both a desired location and has the
capability of supporting the patient’s particular device.” (Reply Br. 4.) The
claimed system for managing medical equipment thus provides “an
improvement in the continued operation of a particular patient’s
particular medical device because the device is properly maintained by
allowing the patient to find medical facilities that are capable of
supporting the patient’s device.” (App. Br. 21.) That is because the
claimed “mapping module . . . provide[s] locations of medical facilities
capable of providing support for the medical equipment for those of the
patients that have been discharged from the medical center.” (Reply Br.
4.) Appellants’ arguments are supported by Appellants’ Specification,
which explains:
The mapping module 140 provides users with locations of
medical facilities such as medical centers and/or community
centers that have the medical staff, training, and/or capability to
provide medical equipment support for equipment provided by
the medical equipment manufacturer 110 that are nearby one or
more target locations. A patient of a medical center may not
always live close by to the medical center that equipped or
implanted the patient with the medical equipment. . . .
Furthermore, with technological advances in medical equipment
such as implantable medical devices, patients are becoming more
mobile and often travel on long trips with the implanted medical
device. . . . In order to provide a patient with the locations of
such medical facilities that are nearby a target location, a
clinician at a medical center has been required to contact the
medical equipment manufacturer directly to obtain such
information or use the web to identify other centers and call them
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to confirm qualifications and contact information. Such
information has not been readily available because the medical
equipment manufacturer has to first access its internal LMS
[(learning management system)] 116 to determine if a particular
facility is trained and certified to provide the service and support
for the particular piece of medical equipment that the patient is
equipped or implanted with. The mapping module 140 allows a
user to obtain such information through the customer web portal
122 without having to contact the medical equipment
manufacturer directly.
(Spec. ¶ 52 (emphases added); see also Spec. ¶¶ 6, 23, 26, 53.) Thus, the
“mapping module . . . can provide a map to a patient showing on one or
more maps all of the medical centers in an area that can provide support or
treatment for the patient’s medical equipment provided by the medical
equipment provider” and these “maps can be used to plan a trip by the
patient or when the patient moves or relocates to another geographic area.”
(See Spec. ¶ 6.) Additionally, “[t]he equipment tracking module . . . allows
users to view a particular medical equipment’s detailed history including
which patients have used the particular medical equipment,” and the patient
tracking module associating patient records with patients’ equipment allows
“an integration of patient information and equipment information at a single
point of access such that the equipment being used . . . and the patients using
the equipment can be tracked and managed at the single point of access.”
(See Spec. ¶¶ 4, 28.)
Thus, Appellants’ independent claims recite “a particular useful
application” for “improving the maintenance of medical equipment
associated with particular patients” and “allow[ing] a patient to find
medical facilities that are capable of supporting the patient’s device.”
(App. Br. 24–25, 27.) We therefore find Appellants’ claimed combination
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of the mapping module and equipment and patient tracking modules
sufficiently transform the abstract idea into “a particular, practical
application of that abstract idea,” as discussed by the Federal Circuit in
Bascom. See Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1352 (Fed. Cir. 2016).
Consequently, independent claims 1, 10, 15, 18, 20, and 29 integrate
the judicial exception into a practical application. Claims 2–9, 11–14, 16,
17, 19, 21–28, and 30–36 depend from one of claims 1, 10, 15, 18, 20, and
29, thereby incorporating the additional elements.
Thus, we determine claims 1–36 are not directed to a judicial
exception (abstract idea); rather, these claims are directed to patent-eligible
subject matter. Because Alice step 1 is dispositive, we need not reach Alice
step 2 (inventive concept). As such, we do not sustain the Examiner’s
rejection of claims 1–36 under 35 U.S.C. § 101.

DECISION
The Examiner’s decision rejecting claims 20–24, 26, and 28 under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner’s decision rejecting claims 1–36 under 35 U.S.C. § 101
is reversed.

REVERSED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDWARD BURKE, SUSAN CLAIRE HOPKINS,
CHRISTOPHER DAVIS PARKER, JAMES RENTERIA,
EDWARD LEWIS RIEFLIN,
and GILBERT RIVAS
____________________

Appeal 2018-005183
Application 13/826,063
Technology Center 3600
____________________

Before JOSEPH L. DIXON, MICHAEL J. STRAUSS, and HUNG H. BUI,
Administrative Patent Judges.

STRAUSS, Administrative Patent Judge..

DISSENTING OPINON
I agree with the majority’s decision reversing the rejection of claims
20–24, 26, and 28 under 35 U.S.C. § 112, second paragraph, as indefinite.
However, I respectfully disagree with the majority’s reversal of the rejection
of claims 1–36 under 35 U.S.C. § 101. The majority concludes that claims
1–36 are not directed to a judicial exception (abstract idea) but to patent-
eligible subject matter. In particular, the majority determines the
independent claims, although reciting an abstract idea under Prong 1 of Step
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2A, are not directed to that abstract idea under Prong 2. I disagree with the
latter.
USPTO Step 2A, Prong 1
The majority determines the claims recite a judicial exception of a
method or organizing human activity, i.e., managing medical equipment and
providing support to patients using such medical equipment.
Claim 1 recites (1) maintaining equipment records corresponding to
medical equipment shipped from a medical equipment manufacturer to a
medical center and only allowing the medical equipment manufacturer to
create each equipment record; (2) authenticating a user at the medical center;
(3) maintaining patient records corresponding to patients of the medical
center and associating the patient records with equipment records when the
patients are equipped with the medical equipment, wherein each equipment
record is associated with a patient record for a particular patient; and
(4) providing locations of medical facilities capable of providing support for
the medical equipment for those of the patients that have been discharged
from the medical center. Record maintaining elements (1) and (3) can be
accomplished in the human mind and/or using pencil and paper, i.e., are no
more that observations of what equipment has been shipped, to which
medical center the equipment was shipped, and which patients received the
equipment. Authentication element (2) is another observation or type of
evaluation or judgment concerning whether a user should have access to the
records and, accordingly, is a mental process. See Final Act. 10. Location
providing element (4) is another observation, evaluation, or judgment
resulting from identifying medical facilities capable of providing support for
a patient’s medical equipment. Accordingly, location providing element (4),
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i.e., the mapping module of claim 1, is also a mental process. Thus, claim 1
recites mental processes that are abstract ideas. E.g., Mayo, 566 U.S. at 71
(“mental processes . . . are not patentable, as they are the basic tools of
scientific and technological work”) (quotation omitted); Elec. Power Grp.,
830 F.3d at 1353–54 (“we have treated analyzing information by steps
people go through in their minds, . . . without more, as essentially mental
processes within the abstract-idea category”); Guidance 52 & nn.14–15
(listing cases).
In addition to being mental processes, the listed activities may also be
characterized as marketing or sales activities or behaviors or, as determined
by the majority, a method of managing personal behavior or relationships or
interactions between people (including social activities, teaching, and
following rules or instructions) that are certain methods of organizing human
behavior. In the case of claim 1, a manufacturer would be expected to keep
records of direct customers (e.g., medical centers) in the product distribution
channel including those customers that provide services to an ultimate
consumer or end-user (a patient) involving their products (medical
equipment) including information about the end-user (i.e., patient). The
business would also provide information to the end-user or ultimate
consumer of the product (i.e., patient) about where their products could be
serviced by providing, for example, a directory of service centers for their
products. Characterizing the claims as reciting a sales activity or managing
personal behavior is supported by Appellants’ Specification describing the
background of the invention as follows:
Medical equipment manufacturers typically have internal
resource planning systems (RPS) to manage the sales and
shipments of medical equipment that the manufacturers sell.
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However, once the medical equipment is shipped from the
manufacturer and reaches the customer (e.g., a medical center),
it has been the customer’s responsibilities to implement a system
to maintain their own records related to the medical equipment
and their patients, and to implement a system to manage their
own inventory. Customers have traditionally used paper and
electronic spreadsheets to keep track of the medical equipment
and their patients.
Spec. ¶ 3. Appellants disclose a problem of such prior art systems is that:
Some medical equipment such as implantable medical devices
(e.g., implantable heart pumps) may be retained by a patient for
many years. As the number of new patients and ongoing patients
grow, managing the paper and electronic spreadsheets to keep
track of the medical equipment and their patients becomes a
cumbersome task for clinicians. It is also difficult to accurately
track, fulfill, and report equipment maintenance on required
schedules. Furthermore, when product incidents occur, the
logistics of returning the medical equipment to the manufacturer
for evaluation and complying with government regulations for
mandatory reporting to government agencies can be
complicated. Together, these administrative tasks are taking
away valuable clinician time that can otherwise be spent on
improving the standard of care for their patients.
Id. Thus, Appellants’ disclosure further supports a determination the claims
recite a sales activity or behavior by automating and integrating prior art
record keeping practices. Still further, again according to Appellants’
Specification, the claims recite record keeping practices required to comply
with government regulations, i.e., legal obligations. Sales activities and
legal obligations are types of commercial or legal interactions which,
together with managing personal behavior or relatoionships or interactions,
are certain methods of organizing human activity which are abstract ideas.
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USPTO Step 2A, Prong 2
I agree with the majority that Appellants’ invention addresses the
problem of how to manage and keep track of and maintain medical
equipment used by patients. In particular, rather than using traditional paper
and electronic spreadsheets to track medical equipment and patients,
Appellants employ patient tracking modules in combination with a mapping
modules to provide locations of medical facilities capable of supporting a
patient’s medical equipment. Claim 1.
Appellants argue the claimed system is an improvement to the
operation of a medical device by including a mapping module allowing a
patient to find medical facilities capable of supporting their medical device.
App. Br. 21. The majority agrees finding, by requiring a mapping module,
the claims require more than merely collecting information, analyzing it, and
displaying results. Decision 15. The majority further refers to the
Specification for capabilities of the tracking modules including integrating
patient and equipment information so that patients can be tracked and
managed at a single point of access. Decision 17 (citing Spec. ¶¶ 4, 28).
The majority concludes “Appellants’ claimed combination of the mapping
module and equipment and patient tracking modules sufficiently transform
the abstract idea into ‘a particular, practical application of that abstract idea,’
as discussed by the Federal Circuit in Bascom.” Decision 18–19.
According to the second prong of Step 2A, a determination is made
concerning whether the additional claim elements integrate the judicial
exception into a practical application. To qualify, the additional elements
must recite:
(i) an improvement to the functioning of a computer;
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(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).
The additional elements of claim 1 include (1) an equipment tracking
module implemented on one or more web servers; (2) a plurality of fields
corresponding to medical equipment; (3) an authentication system
implemented on the one or more web servers; (4) a patient information
tracking module implemented on the one of more web servers; (5) a plurality
of fields corresponding to patients of the medical center; and (6) a mapping
module provided through the one or more web servers. Elements (1), (3),
and (4) merely limit the field of use to an online environment of web servers
and elements (2) and (5) require digital information storage using data fields.
This is the use of technology, not an improvement to technology.
Mapping module (6) does not save claim 1 from being directed to
certain methods of organizing human activity. Instead, mapping module (6)
represents insignificant extra-solution activity that can be accomplished with
paper and pencil to provide locations of medical facilities capable of
providing support for the medical equipment, e.g., providing a directory
including as a map depicting facility locations. Nevertheless, the Federal
Circuit has determined that displaying information is insufficient to render a
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claim patent-eligible. When “the focus of the asserted claims” is “on
collecting information, analyzing it, and displaying certain results of the
collection and analysis,” the claims are patent-ineligible. Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also Move,
Inc. v. Real Estate Alliance Ltd., 221 F.Supp.3d 1149, 954 (C.D. Cal. 2016),
aff'd, 721 F. App'x 950 (Fed. Cir. 2018) (“a method for collecting and
organizing information about available real estate properties and displaying
this information on a digital map that can be manipulated by the user.”);
Peschke Map Techs. LLC v. Rouse Props. Inc., 168 F. Supp. 3d 881, 887
(E.D. Va. 2016) (claims directed to “an electronic map navigation system
that enables a user to ‘locate a particular store through the use of location
and layout information”’ are patent-ineligible). Providing the results of a
database inquiry is a generic computer implementation of a directory that
does not defeat a finding of abstractness. See, e.g., CyberSource, 654 F.3d
at 1372–73, 1375; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1318 (Fed. Cir. 2016).
As found by the majority and discussed above, the invention of claim
1 provides a solution to patient and equipment tracking and maintenance
problems. However, these problems are business problems involved in the
sales of medical equipment and/or other business and legal requirements,
i.e., problems involved in the underlying concept of managing medical
equipment and providing support to patients using such medical equipment;
not technical problems with technical solutions. There is insufficient
evidence to support a finding that the claims recite an improvement to the
functioning of a computer or to another technology or technical field. The
additional elements in the claim amount to no more than mere instructions to
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apply the exception using a generic computer. Neither is there sufficient
evidence to support a finding the claims recite an application of the abstract
idea with, or by use of, a particular machine; a transformation or reduction
of a particular article to a different state or thing; or other meaningful
limitations beyond generally linking the use of the abstract idea to a
particular technological environment. See MPEP §§ 2106.05.
I also disagree McRO is relevant to Appellants’ claims. The claims
therein recited a “specific . . . improvement in computer animation” using
“unconventional rules that relate[d] sub-sequences of phonemes, timings,
and morph weight sets.” McRO, 837 F.3d at 1302–03, 1307–08, 1314–15.
Moreover, it was not the mere presence of unconventional rules in McRO
that led to patent eligibility; rather, it was that the rules were used “in a
process specifically designed to achieve an improved technological result.”
Id. at 1316. Here, Appellants have not shown how the claims achieve an
improved technological result.
Bascom is also inapposite. 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.
In that case, the installation of a filtering tool at a specific location, remote
from the end users, with customizable filtering features specific to each end
user, provided an inventive concept in that it gave the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server. Id. I find no analogous achievement of a technical improvement
here. None of the claimed elements have been shown to address a
technological problem. Accordingly, the majority’s reliance on BASCOM is
inapposite and, therefore, unpersuasive of Examiner error.
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Thus, I would determine that claim 1 does not integrate the judicial
exception into a practical application. Accordingly, I would further
determine that claim 1 is directed to mental processes and certain methods of
organizing human activity including sales activities or behaviors and/or legal
interactions, all of which are abstract ideas.
USPTO Step 2B
Finally, I agree with the Examiner the claims do not recite limitations
that amount to significantly more than the abstract idea itself. Final Act. 5.
In particular, the Examiner finds:
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. processors,
computers, displays, networks, medical equipment, ventricle
assist devices, etc.) performing routine and conventional
activities that are well-understood in the healthcare industry (i.e.
authenticating data, maintaining data, associating data, providing
data, etc.). Furthermore at paragraph(s) [0061]-[0062] and
[0066], Applicant’s specification describes conventional
computer hardware for implementing the above described
functions including “microprocessors” to perform the functions
of “authenticating a user, maintaining patient records,
associating patient records with equipment records, providing
locations of medical facilities”, etc. The recited
“microprocessors” does/do not add meaningful limitations to the
idea of beyond generally linking the system to a particular
technological environment, that is, implementation via
computers. Thus, taken alone, the additional elements do not
amount to significantly more than the above-identified judicial
exception (the abstract idea). Looking at the limitations as an
ordered combination adds nothing that is not already present
when looking at the elements taken individually. There is no
indication that the combination of elements improves the
functioning of a computer or improves any other technology.
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Their collective functions merely provide conventional computer
implementation.
Id. As the Federal Circuit has held, “the use of conventional computer
components, such as a database and processors, operating in a conventional
manner” “do[es] not confer patent eligibility.” Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015). This is
because “mere automation of manual processes using generic computers
does not constitute a patentable improvement in computer technology.”
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir.
2017). For the reasons discussed above, under Step 2B of the analysis, I
would determine that the limitations of claim 1 do not add significantly more
to the patent-ineligible abstract idea.
In summary, for the reasons discussed, I would determine the claims
are directed to (i) mental processes and/or (ii) certain methods of organizing
human activity, i.e. sales activities or behaviors or legal obligations. Both
mental processes and certain methods of organizing human activity are
identified in the Memorandum as abstract ideas. I would further determine
the additional claim elements do not integrate the judicial exception into a
practical application. In addition, I would determine the claims do not recite
limitations that amount to significantly more than the abstract idea itself.
Accordingly, I would sustain the rejection of independent claim 1 under 35
U.S.C. § 101 and, for the same reasons, the rejection of independent claims
10, 15, 18, 20, and 29, together with dependent claims 2–9, 11–14, 16, 17,
19, 21–28, and 30–36.