Ex Parte Angell et al

Patent Trial and Appeal Board

Oct 17, 2017

12135960 (P.T.A.B. Oct. 17, 2017)

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.
12/135,960 06/09/2008 Robert Lee Angell END920080081US3 4707
37945 7590 10/19/2017
DTTKFW YFF
EXAMINER
YEE AND ASSOCIATES, P.C. NGUYEN, TRAN N
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT LEE ANGELL, ROBERT R. FRIEDLANDER,
and JAMES R. KRAEMER
Appeal 2016-0002741
Application 12/135,9602
Technology Center 3600
Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3—17, and 19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
March 5, 2015) and Reply Brief (“Reply Br.,” filed October 2, 2015), and
the Examiner’s Answer (“Ans.,” mailed August 17, 2015), and Final Office
Action (“Final Act.,” mailed December 18, 2014).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal 2016-000274
Application 12/135,960
CLAIMED INVENTION
Appellants’ claimed invention “relates generally to selecting control
cohorts and more particularly, to a computer implemented method,
apparatus, and computer usable program code for automatically selecting a
control cohort or for analyzing individual and group healthcare data in order
to provide real time healthcare recommendations” (Spec. 12).
Claims 1, 11, 17, and 19 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A computer implemented method comprising:
mining, by a computer using a data mining application,
patient data having specified attributes from a set of information
sources;
clustering, by the computer using a clustering algorithm,
the mined patient data based on the specified attributes to form a
set of risk cohorts;
selecting, by the computer using a cohort selection
program, a risk cohort from the set of risk cohorts, wherein the
selected risk cohort comprises first data regarding a set of
patients and second data comprising a relationship of the first
data to at least one additional datum existing in at least one
database, and wherein the relationship is qualified as to
reliability;
generating, by the computer, a numerical risk assessment
associated with the selected risk cohort, wherein the generated
numerical risk assessment reflects a risk associated with a
conclusion regarding an average cost of caring for each patient
in the set of patients of the selected risk cohort;
generating, by the computer, a monetary value for the
selected risk cohort based at least on the generated numerical risk
assessment associated with the selected risk cohort; and
performing, by the computer, a financial transaction based
on the generated monetary value for the selected risk cohort.
2
Appeal 2016-000274
Application 12/135,960
REJECTION3
Claims 1, 3—17, and 19 are rejected under 35U.S.C. § 101 as directed
to non-statutory subject matter.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 132 S. Ct. at 1297).
3 The rejection of claims 1, 3—17 and 19 on the ground of non-statutory
double patenting has been withdrawn. Ans. 2.
3
Appeal 2016-000274
Application 12/135,960
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Addressing the first step of the Mayo!Alice framework, Appellants
note that the Supreme Court, in Bilski v. Kappos, 130 S. Ct. 3218, 3231
(2010), and also in Alice, provided citations to references to support its
holding, in Bilski, that “hedging,” and in Alice, that “intermediated
settlement” is an abstract idea (App. Br. 9; see also Reply Br. 2—3).
Appellants ostensibly maintain that the Examiner is likewise required to cite
authority here in order to establish that the claims are directed to an abstract
idea (App. Br. 9 (“[T]he Examiner neither provides citations to support an
identification of an abstract idea in the claims nor provides an analysis of
citations to provide evidentiary support of an identification of an abstract
idea in the claims.”); see also id. at 10 (“[N]o support exists for the
Examiner’s assertion that the claims appear to be directed toward an abstract
idea. As a result, Appellants respectfully submit that the Examiner has not
established that the claims are directed to patent-ineligible subject matter.”)).
But we are aware of no controlling precedent that requires the Office to
identify specific references to support a finding that a claim is directed to an
abstract idea. Nor, for that matter, do Appellants identify any such
precedent.
4
Appeal 2016-000274
Application 12/135,960
In rejecting the claims under 35 U.S.C. § 101, the Examiner notified
Appellants that claim 1 is directed to processing patient data, i.e., to
organizing human activities and, therefore, to an abstract idea; that the
claim, when viewed as a whole, “appears to be directed towards an
enumerated, patent-ineligible abstract idea deployed on generic hardware”;
and that claims 3—17 and 19 are patent-ineligible “for [a] substantially
similar rationale as applied to claim 1” (Final Act. 4—5). The Examiner,
thus, notified Appellants of the reasons for the rejection “together with such
information ... as may be useful in judging of the propriety of continuing
the prosecution of [the] application.” 35 U.S.C. § 132. And, we find that, in
doing so, the Examiner set forth a proper rejection under § 101 such that the
burden shifted to Appellants to demonstrate that the claims are patent-
eligible.
Turning to the second step of the Mayo!Alice framework, Appellants
argue that, even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because independent claims 1, 11, 17, and 19
recite “an improvement in an existing technological process of patient risk
assessment” (App. Br. 10). Appellants note that claim 1 recites “generating,
by the computer, a numerical risk assessment associated with the selected
risk cohort, wherein the generated numerical risk assessment reflects a risk
associated with a conclusion regarding an average cost of caring for each
patient in the set of patients of the selected risk cohort,” which is similarly
recited in claims 11, 17, and 19 (id.). And Appellants point to the
Examiner’s identification of this feature as “the primary reason for the
indication of allowable subject matter” (id.; see also Reply Br. 3—4).
Appellants argue that the claims, thus, recite limitations other than “‘what is
5
Appeal 2016-000274
Application 12/135,960
well-understood, routine, [and] conventional activity, previously engaged in
by those in the field’” (Reply Br. 4 (citing Mayo, 132 S. Ct. at 1299)). Yet
to the extent, Appellants argue that the claims are patent-eligible based on
their novelty and non-obviousness, Appellants misapprehend the controlling
precedent.
“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), Appellants further argue that the claims are patent-eligible
because the claims are “necessarily rooted in computer technology in order
to overcome a specific problem arising in the realm of patient risk
assessment” (App. Br. 11). But that argument is not persuasive at least
because Appellants do not identify the problem arising in the realm of
patient risk assessment that the claimed invention allegedly overcomes.
It also is immaterial, without more, that the “mining” and “clustering”
steps recited, for example, in claim 1, “require computer technology to
perform” (Reply Br. 5). There is no indication in the Specification that any
specialized hardware or inventive computer components are required.
Instead, it is clear from the Specification that the claimed invention is
implemented using generic computer components (see, e.g., Spec. ]ff[ 52—
58), which the Court made clear in Alice is insufficient to transform an
6
Appeal 2016-000274
Application 12/135,960
otherwise patent-ineligible abstract idea into a patent-eligible subject matter.
See Alice Corp., 134 S. Ct. at 2358.
We also are not persuaded of Examiner error by Appellants’ argument
that ‘“the claims at issue do not attempt to preempt every application of the
idea’” (App. Br. 11; see also Reply Br. 5). Although the Supreme Court has
described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption,” see Alice Corp., 134 S. Ct. at 2354, characterizing pre-emption as
a driving concern for patent eligibility is not the same as characterizing pre­
emption as the sole test for patent eligibility. “The Supreme Court has made
clear that the principle of preemption is the basis for the judicial exceptions
to patentability” and “[f]or this reason, questions on preemption are inherent
in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp.,
134 S. Ct. at 2354). “[Preemption may signal patent ineligible subject
matter, [but] the absence of complete preemption does not demonstrate
patent eligibility.” Id.
We are not persuaded on the present record that the Examiner erred in
rejecting claims 1, 3—17, and 19 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1, 3—17, and 19 under 35 U.S.C.
§ 101 is affirmed.
7
Appeal 2016-000274
Application 12/135,960
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
8