Ex Parte AMLAND et al

Patent Trial and Appeal Board

Jul 30, 2018

14156001 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/156,001 01/15/2014
46169 7590 08/01/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
ROBERT CHARLES AMLAND
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CRNI.201927 1016
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CHARLES AMLAND, HUGH RYAN,
JASON HOWARD, and BHARAT SUTARIYA
Appeal2017-005578
Application 14/156,001
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-5, 7-15, and 20. Claims 6 and
16-19 have been cancelled. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
Appeal2017-005578
Application 14/156,001
BACKGROUND
Appellants' invention is directed to generating readmission risk
prediction models for determining the risk of readmission for patients and
using the patients readmission risk in determining proper inpatient
interventions and/or outpatient activities. Spec. 2
Claim 1 is illustrative:
1. One or more non-transitory computer storage media
storing computer-useable instructions that, when used by one or
more computing devices, cause the one or more computing
devices to perform operations comprising:
identifying one or more patient conditions for a patient
previously discharged from a clinical facility;
selecting, from a plurality of readmission risk prediction
models, a readmission risk prediction model based on the one
or more patient conditions, each readmission risk prediction
model from the plurality of readmission risk prediction models
having been generated for one or more given conditions using
clinically relevant data from patients diagnosed with the one or
more given conditions;
receiving, over a communications network, patient data
for the patient;
computing a readmission risk score for the patient based
on the readmission risk prediction model and the patient data;
determining an outpatient treatment recommendation
based on the readmission risk score; and
providing the outpatient treatment recommendation for
presentation to a clinician.
Appellants appeal the following rejection:
1. Claims 1-5, 7-15, and 20 are rejected under 35 U.S.C. § 101 as
directed to patent- ineligible subject matter.
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Application 14/156,001
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. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("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."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
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Application 14/156,001
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an "inventive concept"-an element
or combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent ineligible concept"); see also In re TL! Commc 'ns LLC
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Application 14/156,001
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
ANALYSIS
Rejection under 35 USC §101
The Examiner holds that the claims are directed to identifying,
selecting, receiving, computing, determining and providing information.
The Examiner determines that these steps can be done mentally and are
similar to the concepts identified as abstract ideas by the courts (e.g.,
comparing new and stored information and using rules to identify options
and using categories to organize, store, and transmit information). Final
Act. 3. The Examiner finds that the additional elements recited in the claims
beyond the abstract idea of one or more models and communication
networks do not provide an inventive concept. The additional elements,
according to the Examiner comprise only a microprocessor and memory to
simply perform generic computer functions of identifying, selecting,
receiving, computing, determining, and providing information. Final Act. 3.
We agree with the Examiner's holding that the claims are directed to
an abstract idea and with the finding that the additional elements do not
provide an inventive concept.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that a claim is not directed to an abstract idea because
it merely involves an ineligible concept. Appellants specifically argue that
the Examiner's characterization describes the claim at too high a level of
abstraction. App. Brief 8. Appellants characterize what the claimed subject
matter is directed to at a leve1 of abstraction lower than what the Examiner
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Application 14/156,001
has characterized it to be directed to. See Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be
described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer."). Appellants argue that rather than being directed to the abstract
idea articulated by the Examiner, i.e., comparing new and stored infonnation
and using rules to identify options or using categories to organize, store and
transmit infonnation. the claims are directed to addressing the readmission , ~
risk of patients previously discharged from the clinical facility. Appellants
further direct our attention to the specific steps recited in claim 1.
Appellants describe the abstract idea of the claims at a lower level of
abstraction, however, the abstract nature remains the same. In this regard,
for example, although the first step of claim l can be described at the level
of abstraction used by the Examiner of comparing new and stored
information or at the lower level of abstraction of identifying patient
conditions, the abstract nature remains the same. In another example, the
claimed receiving steps can be described as receiving information or at a
lower level of abstraction of receiving patient data. However, the abstract
nature remains the same.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are a technology based solution to a
technical problem and are analogous to the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and BASCOM
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Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016). App. Brief 14-15. We agree with the Examiner's response to this
argument found on page 7 of the Answer and adopt the same as our own. In
this regard, we agree that determining readmission scores is not a
technological improvement and does not offer a solution that is necessarily
rooted in computer technology in order to overcome a problem arising
specifically in the realm of computer networks. In addition, we agree that
there is no improvement to the computing device or the way that the
computing device receives, stores, transmits and analyzes data. Still further,
there is no recitation in claim 1, for example, of a specific combination of
elements that is unconventional. All that is recited is a computer storage
media that is used by one or more computing devices that may be general
purpose computing devices.
Appellants argue that the claims do not merely recite generic
computer functions but rather recite a specific combination of limitations
that are not well understood, routine and conventional. App. Brief 15
This argument is not persuasive because the Appellants do not explain
what those specific combinations are. To the extent Appellants are arguing
that the limitations of claim 1 necessarily amount to "significantly more"
than an abstract idea because the claimed apparatus is patentable over the
prior art, Appellants misapprehend the controlling precedent. Although the
second step in the Alice/l14ayo framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for '"an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself"' Alice,
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134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Appellants' argument that the claims pose no risk of preempting an
abstract idea is also not persuasive. App. Brief 16. 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
abstract."). And, '"[w]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Afayo framework as they are in
this case, preemption concerns are fully addressed and made moot" Ariosa,
788 F.3d at 1379.
We are not persuaded by Appellants' argument that the Examiner has
not established a prima facie case of patent ineligibility because the
Examiner has not identified specific claim elements and has provided no
analysis directed to why the claims elements do not add significantly more.
App. Brief 18. The only elements in addition to the abstract idea of
comparing new and stored information and using rules to identify options
and using categories to organize, store, and transmit information recited in
claim 1, for example, is a computer storage media and one or more
computing devices. The Examiner specifically found that these recitations
are recited at a high level of generality and recite generic computer functions
routinely used in computer applications. Final Act. 3. The Examiner also
based this finding on the disclosure in paragraph 22 of Appellants'
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Specification that the computing device can be a general purpose computing
device. Final Act. 3.
Appellants' argument that the Examiner erred because the Examiner
characterized the claims as different abstract ideas and not just one abstract
idea is unpersuasive. Reply 4. Merely combining abstract ideas does not
render the combination any less abstract. Cf Shortridge v. Found. Constr.
Payroll Serv., LLC, No. 14-CV-04850-JCS, 2015 WL 1739256 (N.D. Cal.
Apr. 14, 2015), ajf'd, No. 2015-1898, 2016 WL 3742816 (Fed. Cir. July 13,
2016).
In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will also sustain the rejection as it is directed to the
remaining claims because the Appellants do not argue the separate eligibility
of these claims.
DECISION
We affirm the Examiner's§ 101 rejection.
TIME PERIOD
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)(2009).
ORDER
AFFIRMED
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