Ex Parte Antony et al

Patent Trial and Appeal Board

Jul 31, 2017

14142625 (P.T.A.B. Jul. 31, 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.
14/142,625 12/27/2013 Sandeep Antony 3.0001.2 8442
103968 7590
Ryan Alley IP
(General Docket)
P.O. Box 87
Alexandria, VA 22313
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
office @ alleylegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDEEP ANTONY, SCOTT AFZAL, and
DAVID HORROCKS
Appeal 2016-007143
Application 14/142,625
Technology Center 3600
Before ELENI MANTIS MERCADER, SCOTT B. HOWARD, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—22 and 26—28. App. Br. 13.2 Claims 23—25 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Audacious Inquiry LLC.
App. Br. 1.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed May 14, 2015, (2) the Appeal Brief (“App. Br.”) filed November 9,
2015, (3) the Examiner’s Answer (“Ans.”) mailed May 3, 2016, and (4) the
Reply Brief (“Reply Br.”) filed July 5, 2016.
Appeal 2016-007143
Application 14/142,625
THE INVENTION
Appellants’ invention manages healthcare information in a healthcare
network. Spec. 1 6.
Claim 1 is reproduced below:
1. A method of managing healthcare information in a healthcare
network, the method comprising:
receiving, at the healthcare network, subscriber parameters
identifying a plurality of patients from a subscriber;
electronically receiving, at the healthcare network, a plurality of
ADT messages in the HL7 standard from a computerized
healthcare information source;
determining, with a computer processor in the healthcare
network, which of the ADT messages match patients from
the parameters; and
for each ADT message that matches a patient based on the
determining, providing, with the computer processor in the
healthcare network, a healthcare notification to the
subscriber, wherein the healthcare notification identifies
the matching patient and indicates the matching patient
matches an ADT message, wherein the providing is
executed in a manner indicated by the parameters, and
wherein the providing is not executed for ADT messages
that do not match patients based on the determining.
THE REJECTIONS
The Examiner relies on the following as evidence:
Bormann
Achan
Ordille
Halsted
Nearman
Phillips
US 2005/0071194 A1 Mar. 31, 2005
US 2005/0203771 A1 Sept. 15, 2005
US 2005/0208941 A1 Sept. 22, 2005
US 2008/0046286 A1 Feb. 21, 2008
US 2010/0223073 A1 Sept. 2, 2010
US 2014/0136223 A1 May 15, 2014
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Claims 1—22 and 26—28 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 2—3.
Claims 1, 3, 5, 6, 8, 9, 11, 12, 14, 16, 17, 19, 20, 26, and 28 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Nearman and Achan.
Final Act. 3—10.
Claims 2, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nearman, Achan, and Ordille. Final Act. 10—12.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Nearman, Achan, and Phillips. Final Act. 12—13.
Claims 7, 13, 15, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nearman, Achan, and Bormann. Final Act. 13—15.
Claims 10 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nearman, Achan, and Halsted. Final Act. 15—16.
THE § 101 REJECTION
The Examiner has rejected claims 1, 16, 21, and 28 under 35 U.S.C.
§ 101 because the claims as a whole (1) are directed to an abstract idea and
(2) do not contain an inventive concept sufficient to transform the claimed
abstract idea into patent-eligible subject matter. Final Act. 2—3. For the
reasons discussed below, Appellants have not persuaded us of error.
I
The Supreme Court’s two-step framework guides our analysis. See
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
According to step one, “[w]e must first determine whether the claims at
issue are directed to a patent-ineligible concept,” such as an abstract idea.
Id.
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Appellants argue that the claims are not directed to an abstract idea.
App. Br. 13—17; Reply Br. 2—8. According to Appellants, the claims require
a patient physically presenting for medical treatment and further require
electronically notifying a subscriber about the patient’s admission, transfer,
or discharge. App. Br. 13—14. In Appellants’ view, the claims involve more
than bare data manipulation that a human mind alone could perform. Id. at
15; Reply Br. 7—8. Appellants argue that the Examiner generalizes the
claims and in doing so the Examiner ignores the “unique and selective
physical ‘healthcare notification’” that the claim recites. App. Br. 16—17.
We are unpersuaded.
We do agree with Appellants’ characterization of the problem and
solution—i.e., filtering numerous messages. See, e.g., App. Br. 19-21. We,
however, disagree that this feature distinguishes Appellants’ concept from
the abstract ideas identified by the courts. Similarly, the Federal Circuit has
explained that “filtering content is an abstract idea because it is a
longstanding, well-known method of organizing human behavior, similar to
concepts previously found to be abstract.” BASCOM Global Internet Servs.
v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). Unlike the
invention held patent eligible in BASCOM (827 F.3d at 1350-52), claims 1,
16, 21, and 28 do not recite an improvement to a computer’s capabilities to
perform the filtering.
Appellants contend that the claims recite a unique technological
solution to a specific network problem. Reply Br. 2—7. According to
Appellants, the claimed invention solves a problem in computerized
healthcare networks. Id. In Appellants’ view, the claimed invention
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receives electronic healthcare information, which is not a mere field-of-use
limitation. Id. at 5—6.
The claims, however, are broadly functional and focused on the
results, rather than the computer implementation. In particular, claim 1
recites a method that filters ADT messages based on parameters. The
method’s first two steps receive the subscriber parameters and the messages.
The method then determines which messages match the parameters. Finally,
the method notifies the subscriber of the match. Claim 21 recites a similar
process where a computer determines if a message matches a patient’s
information.
That is, the focus is not on improvements to a computer’s capabilities
in matching. Rather, the claims are focused on gathering and analyzing
information of a specified content—i.e., ADT messages in a healthcare
network. But “[information as such is an intangible” and collecting
information limited to particular content is within the realm of abstract ideas.
See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed.
Cir. 2016); see also Content Extraction & Transmission LLC v. Wells Fargo
Bank, Natl Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (identifying “the
abstract idea of 1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory”).
Apart from limiting the filtered content, the claims broadly recite
determining a match (claims 1 and 16) or determining whether the message
corresponds to patient information (claims 21 and 28) without reciting an
improvement to a computer’s capabilities to perform that matching.
Because the claim’s character as a whole is filtering content, we agree with
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the Examiner that independent claims 1, 16, 21, and 28 are directed to an
abstract idea of organizing human activity. Final Act. 2.
II
Because the claims are “directed to an abstract idea,” we analyze the
claims to determine if the limitations, when considered both “individually
and ‘as an ordered combination’” contain an inventive concept sufficient to
transform the claimed abstract idea into patent-eligible subject matter. Alice,
134 S. Ct. at 2355-58.
Appellants argue that the claimed methods and systems use (1)
healthcare information exchanges, (2) specifically configured networked
computers, and (3) specific data types. App. Br. 18. Appellants further
argue that the claims require specific machines. Id. at 21—23. In Appellants’
view, the claims require hardware connected between healthcare information
sources providing a specific type of information—ADT messages in the
HL7 standard. Id. at 21—22. We, however, disagree that these features
transform the claimed methods and system into patent-eligible subject
matter.
We begin by considering the limitations individually. The receiving
and notifying steps are merely limited to sending and receiving data of a
particular type. As such, the receiving steps are well understood, routine,
conventional data-gathering steps, which do not make the claims patent
eligible. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363—64
(Fed. Cir. 2015). Fikewise, the computer’s role in providing notifications—
i.e., sending data of a particular type—does not add an inventive concept
under step two of the Alice framework. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (explaining that “computers in Alice
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were receiving and sending information over networks connecting the
intermediary to the other institutions involved, and the Court found the
claimed role of the computers insufficient.”).
The determining step does not even require a new type or source of
information. For example, health-care providers typically use ADT
messages to exchange patient information. Spec. 13. Given the information
source is known, the “[ijnquiry therefore must turn to any requirements for
how the desired result is achieved.” Elec. Power, 830 F.3d at 1355; see also
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed.
Cir. 2015) (considering how the result is accomplished in determining
patent-eligibility).
To be sure, the claims recite a “healthcare notification delivery
network” and a “processor.” But, unlike the filtering in BASCOM, the
claimed matching does not involve an inventive distribution of function
between the network and processor. 827 F.3d at 1341. The claims here
broadly and abstractly recite “determining” and “matching” with generic
computing components. Instead of claiming some specific way of enabling
a computer to filter the messages, the limitations are result-oriented and
broadly functional. See Internet Patents, 790 F.3d at 1348 (concluding
claim 1 is not directed to patent-eligible subject matter and stating that the
claim “describes the effect or result dissociated from any method” for
accomplishing the task).
In sum, the claimed steps, considered individually, do not contain an
inventive concept.
Considering the limitations as an ordered combination, the recited
method and system use a computer to filter numerous messages with
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conventional technology. Appellants argue that the system solves problems
unique to HIE computer networks by filtering and matching these numerous
incoming messages. App. Br. 19—21. But “the fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012); see also OIP Techs., 788 F.3d at 1363 (“relying
on a computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”). Thus, the recited method
and system merely use a computer to quickly and accurately filter numerous
messages with conventional technology. See Final Act. 2.
Therefore, we agree with the Examiner (id. at 2—3) that the claims
lack an inventive concept sufficient to transform the claimed abstract idea
into patent-eligible subject matter.
We disagree with Appellants’ argument that there are no pre-emption
issues here. App. Br. 23—24; Reply Br. 9. According to Appellants, the
claims do not cover all aspects of comparing new and stored information
because other types of healthcare information are not covered. App. Br. 23—
24; Reply Br. 9. But apart from limiting the method to a particular data set,
the claims here are result-focused and functional, and as such, effectively
cover any solution to filtering this type of content. Moreover, although the
extent of preemption is a consideration, the absence of complete preemption
is not dispositive. See, e.g.,Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.”).
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Therefore, Appellants have not persuaded us of error in the rejection
of representative claims 1, 16, 21, and 28 under 35 U.S.C. § 101, and
dependent claims 2—15, 17—20, 22, 26, and 27, which are not argued
separately (see App. Br. 13).
THE OBVIOUSNESS REJECTION OVER NEARMAN AND ACHAN
The Rejection
The Examiner finds that Nearman teaches every limitation recited in
independent claim 1 except for ADT messages in the HL7 standard.
Final Act. 3^4. In concluding that claim 1 would have been obvious, the
Examiner cites Achan as teaching this feature. Id. at 4. In particular, the
Examiner finds that it would have been obvious to include Achan’s
messages in Nearman to reduce patient-care errors. Id.
Appellants ’ Contentions
Appellants argue that Achan’s ADT module does not send messages
in the HL7 format. App. Br. 25—27; Reply Br. 10—12. Appellants argue that
Achan’s health-care middleware operating system (HMOS) uses the HL7
format, but the HMOS is separate from the ADT subsystem. App. Br. 26
(citing Achan 1251, Fig. 2); Reply Br. 10-12.
Appellants further contend that Nearman cannot be modified to use an
ADT message in HL7 format. App. Br. 25, 27—29; Reply Br. 12—14.
According to Appellants, Nearman’s messages are human-readable, but
ADT messages in the HL7 standard are not. App. Br. 27—28; Reply Br. 13.
In Appellants’ view, the Examiner’s proposed modification would destroy
Nearman’s operating principle of replicating human, face-to-face clinical
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information exchanges. App. Br. 28—29. Appellants argue that
incorporating Achan would make Nearman’s system more complex and
would not reduce patient-care errors. Reply Br. 12—14.
Appellants further argue that secondary considerations rebut any
prima facie case of obviousness. App. Br. 29-31. In Appellants’view, the
filed declarations from a co-inventor and the assignee’s managing partner
demonstrate non-obviousness. Id. According to Appellants, the submitted
declarations contain evidence of licensing, commercial success, copying,
industry praise, long-felt need, and failure of others to solve problems of
computerized HIEs. Id.
Issues
Appellants’ arguments for independent claims 1,16, and 28 (see
App. Br. 24—31; Reply Br. 10—17) present us with the following issues:
I. Under § 103, has the Examiner erred in rejecting independent
claims 1,16, and 28 by finding that Achan would have taught or suggested
electronically receiving a plurality of ADT messages in the HL7 standard?
II. Would it have been obvious to one of ordinary skill in the art to
modify Nearman with Achan’s messages considering Nearman’s operating
principle and Appellants’ submitted evidence?
Analysis
I
We disagree with Appellants that Achan lacks sending admission-
discharge-transfer (ADT) messages in HL7. App. Br. 25—27; Reply Br. 10-
12.
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In particular, Achan explains the advantages of exchanging data using
open standards instead of proprietary standards. Achan 1250. Achan
teaches that HL7 is a voluntary consensus standard for health-care data
exchange. Id. 1251. Achan expressly states that HL7 “defines standard
message format for sending and receiving data on patient admissions,
registrations, discharge, or transfer.” Id. (emphasis added). This teaching
(id.) undermines Appellants’ argument that Achan’s does not teach sending
messages in HL7 format. App. Br. 25—27; Reply Br. 10—12. Although not
all Achan’s embodiments send ADT messages, as Appellants argue (see,
e.g., App. Br. 26), Achan, nevertheless, teaches at least one that does. See
Achan 1251.
II
Based on Achan’s teachings, the Examiner proposes using the HL7
format for Nearman’s messages. Final Act. 3^4. The Examiner explains,
and we agree, that doing so would reduce errors in patient care. Id. at 4
(citing Achan | 6). In particular, Achan teaches that errors can occur if
patient information is obtained from different sources at different times.
Achan H 4—6. Current systems store medical records in incompatible
formats. Id. 1249. But Achan suggests that using a standard format, like
HL7, is a solution. Id. 1251. So, we agree that Achan’s standardized
format would allow Nearman’s system to communicate with other sources
and thus, receive information in a timely manner. Achan | 6, cited in
Final Act. 4. In this way, the Examiner’s conclusion that the proposed
modification would reduce errors (Final Act. 4) is supported.
We disagree that this would destroy Nearman’s operating principle of
replicating human, face-to-face clinical information exchanges.
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App. Br. 28—29. To the extent this is the operating principle, it would only
be improved by the proposed modification because the modification would
reduce errors (Final Act. 4) as discussed above.
Appellants’ argument against Nearman confuses transmitting
formatted data with displaying that data. See App. Br. 25, 27—29;
Reply Br. 12—14. In particular, Appellants show an ADT message in HL7
and argue that the messages are neither short nor readily understandable.
App. Br. 27—28. But the Examiner is not proposing displaying the HL7-
formatted message itself. Rather, the Examiner relies on Achan’s
standardized message format to exchange data with other HL7-compatible
systems and explains that Nearman’s GUI would render the message’s
contents appropriately. See Ans. 7.
Appellants’ argument is based on bodily incorporation of Achan’s
messages in Nearman’s GUI. See App. Br. 25, 27—29; Reply Br. 12—14.
But the standard for obviousness is not bodily incorporation. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Here, the Examiner proposes using
Achan’s HL7-formatted message for standardizing the information
exchange. See Final Act. 3^4; Ans. 7. Therefore, the Examiner’s
enhancement uses prior art elements according to their established functions,
which weighs in favor of obviousness. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398,417 (2007).
But this does not end the analysis. Rather, “the strength of each of the
Graham factors must be weighed in every case and must be weighted en
route to the final determination of obviousness or non-obviousness.” WBIP,
LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). So, the analysis
now turns to Appellants’ evidence of secondary considerations. “Although
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secondary considerations must be taken into account, they do not necessarily
control the obviousness conclusion.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1372 (Fed. Cir. 2007).
“Evidence of commercial success, or other secondary considerations,
is only significant if there is a nexus between the claimed invention and the
commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1311—12 (Fed. Cir. 2006). “Where the offered secondary consideration
actually results from something other than what is both claimed and novel in
the claim, there is no nexus to the merits of the claimed invention.” In re
Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). “Where the
allegedly obvious patent claim is a combination of prior art elements, [it can
be shown] that it is the claimed combination as a whole that serves as a
nexus for the objective evidence; proof of nexus is not limited to only when
objective evidence is tied to the supposedly ‘new’ feature(s).” WBIP, 829
F.3d at 1330.
Considering these principles, we agree with the Examiner that
Appellants’ evidence is outweighed by the case for obviousness (Ans. 7—8),
for the reasons that we turn to next.
Industry Praise
To show evidence of industry praise, Appellants rely on the
declaration of co-inventor Scott Afzal.3 App. Br. 29—31. The Afzal
Declaration points to “independent reporters praising the capabilities and
3 Declaration of Scott Afzal dated September 8, 2014
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success of’ the system that filters healthcare alerts to subscribers based on
ADT messages. Afzal Decl. 11—14 (citing Ex. 3—5).
Nearman, however, teaches filtering patent-related messages based on
a subscription. Nearman 138. The praise discussed in the Afzal
Declaration is primarily directed to this known feature. See Afzal
Decl. 1111-14.
In particular, the Afzal Declaration points to an article explaining that
timely notifications inform providers of a patient’s condition. Afzal
Decl. ^Hf 11—12 (citing Ex. 3). Although the cited article discusses the HL7
standard, the praise is primarily directed to the notifications. See Ex. 3, p. 1
(identifying information flow as the problem). The article explains that
ADT messages are ubiquitous in hospital information systems. Id. If
anything, this article suggests a lack of alternative message types for
Nearman’s system to filter.
The Exhibits 4 and 5 similarly praise the notification—a known
feature of the prior art. See Ex. 4, 5. Specifically, Exhibit 4 is titled “Event
Notification Becoming Integral to HIEs” (emphasis added). Exhibit 4 goes
on to discuss the importance of patient-provider communication. See Ex. 4.
To be sure, the article mentions that the system must be able to receive
“messages in various formats, including HL7.” Ex. 4, p. 1. But this
statement suggests that compatibility with many formats is desirable, not
using one format specifically. Id. Likewise, Exhibit 5 is focused on the
notifications and alerts, rather than ADTs in HL7. See Ex. 5.
Overall, the industry praise in Exhibits 3, 4, and 5 is primarily
directed to notifications and subscription-based filtering—an element in the
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prior art. And where specific formats are mentioned, the evidence praises
compatibility with multiple formats, not just HL7. See Ex. 4, p. 1.
Lastly, Appellants contend that independent doctor Farzad Mosteshari
called the experimental use of ADT messages “ahead of the game.”
App. Br. 30. But this quotation is not from Farzad Mosteshari. Rather, the
article quotes David Horrocks4 discussing what Farzad Mosteshari
recognized. Ex. 4, p. 1. David Horrocks’s quotation suggests that Farzad
Mosteshari provided encouragement to “think about what [they] could do
with” the ADT messages. Id. Taken in context, we disagree that David
Horrocks’s reflection on Farzad Mosteshari’s encouragement can be
considered as praise of the claim’s novel features. App. Br. 30.
Copying
“Copying may indeed be another form of flattering praise for
inventive features” that tends to show nonobviousness. Crocs, Inc., v. Int 7
Trade Comm’n, 598 F.3d 1294, 1311 (Fed. Cir. 2010). “Copyingrequires
duplication of features of the patentee’s work based on access to that work
. . . .” Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738
F.3d 1337, 1347 (Fed. Cir. 2013).
To show evidence of copying, Appellants rely on the declaration of
co-inventor Scott Afzal. App. Br. 29—31. The Afzal Declaration explains
that Medicity—a competitor of Audacious Inquiry—copied the feature of
“providing filtered healthcare alerts to subscribers based on ADT messages
matching the subscribers’ clients.” Afzal Deck ^fl[ 7—10. The Afzal
4 David Horrocks is a named co-inventor of this application.
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Declaration further explains that Medicity had access to specific technical
drawings and flow diagrams. Id. 1 8.
We agree that Exhibits 1 and 2 describe a system that filters and
provides healthcare notifications to subscribers based on ADT messages.
More than the mere fact of copying, however, is necessary to make this
action significant because the copying may be attributable to other factors.
See Cable Elec. Prod., Inc. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir.
1985), overruled on other grounds in Midwest Indus., Inc. v. Karavan
Trailers, Inc., 175 F.3d 1356, 1358 (Fed. Cir. 1999).
Licenses and Commercial Success
To show evidence of commercial success, Appellants rely on the
declaration of Christopher Brandt,5 Managing Partner of Audacious Inquiry.
App. Br. 29-31. Citing multiple licenses and negotiations, the Brandt
Declaration explains that the “licenses yield approximately $800,000 with []
additional yearly service fees.” Brandt Decl. Tflf 7—9. The Brandt
Declaration further explains that “[t]he aggregate profits from all ENS
activity since 2012 is roughly $200,000.” Id. 110.
But Appellants do not indicate whether these sales and licenses
represents a substantial quantity in the relevant market. See In re Huang,
100 F.3d 135, 40 (Fed. Cir. 1996) (“Although Huang’s affidavit certainly
indicates that many units have been sold, it provides no indication of
whether this represents a substantial quantity in this market.”); In re Baxter
TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[Information solely
5 Declaration of Christopher Brandt dated Sept. 16, 2014.
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on numbers of units sold is insufficient to establish commercial success.”).
So, although Appellants state that the success should be measured against a
baseline of zero (Brandt Decl. 16), the lack of evidence about the share of
Appellants’ activity within a broader market reflects a weak showing of
commercial success.
Nor have Appellants provided objective evidence that the claimed
features were responsible for the commercial success. Ans. 7—8. Here,
Appellants offer only opinion evidence from the Managing Partner of
Audacious Inquiry (see Brandt Decl. Ill), which Appellants have identified
as the real party at interest in this appeal. See App. Br. 1, 29-31. Although
we do not disregard opinion evidence like this, it does not weigh heavily
toward the case for commercial success.
Failure / Skepticism of Others
To show evidence of failure and skepticism of others, Appellants rely
on the declaration of co-inventor Scott Afzal. App. Br. 29—31. The Afzal
Declaration cites an article as describing problems with existing systems for
ADT-based alerts: matching alert recipients with incoming messages and
avoiding too many notifications. Afzal Decl. 15—17. According to the
Afzal Declaration, the invention eliminates the problems associated with
ADT messages. Id.
But for the same reasons discussed above, this evidence is relevant to
features already in the prior art—Nearman’s filtering of patient-related
messages based on a subscription. Nearman 138. Apart from the data type,
Appellants have not distinguished the subscription-based filtering solution,
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described in the Afzal Declaration and Exhibit 6, from Nearman’s method.
See App. Br. 29-31.
Furthermore, we disagree that the cited articles reflect skepticism or
failure. To be sure, the cited evidence discusses problems related to the
large number of ADT messages and the difficultly matching the messages.
Afzal Decl. 15, 16. But instead of expressing disbelief or skepticism in a
solution, the cited evidence merely identifies the desired functionality of
future systems.
Conclusion
Overall, weighting strength of each of the Graham factors, we agree
with the Examiner that it would have been obvious to apply Nearman’s
filtering method to a known data type. See Final Act. 3^4; Ans. 7—8. The
Examiner has presented a strong case of obviousness by showing that the
proposed combination would reduce errors in patient care by using prior art
elements according to their established functions. See Final Act. 3^4. In
light of all the evidence, Appellants’ evidence of copying is not sufficient,
and Appellants have made a weak showing of the other objective indicia of
nonobviousness. Based on all the evidence, we agree with the Examiner that
the subject matter of the claims would have been obvious to a person having
ordinary skill in the art. See id.
Therefore, Appellants have not persuaded us of error in the
obviousness rejection of representative claims 1,16, and 28 and dependent
claims 3, 5, 6, 8, 9, 11, 12, 14, 17, 19, 20, and 26, which are not argued
separately with particularity (see App. Br. 24).
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THE OBVIOUSNESS REJECTION OVER NEARMAN, ACHAN and
ORDILLE
Claim 21 recites, in part, “compiling, with the computer processor in
the healthcare notification delivery network, additional healthcare
information for the one corresponding patient.”
The Examiner rejects claim 21 in view of Nearman, Achan, and
Ordille. Final Act. 10—12. In the proposed combination, the Examiner finds
that the recited healthcare notification corresponds to the message stream
and past messages rendered by Nearman’s GUI. Ans. 8.
Appellants disagree and argue that Nearman lacks a healthcare
notification including the recited “additional healthcare information.”
App. Br. 31—32; Reply Br. 17—18. In Appellants’ view, Nearman’s GUI
cannot be reasonably interpreted to be a notification because (1) it is not part
of any message and (2) it is not compiled and proved with any message
receipt in response to a match. Reply Br. 17.
We, however, agree with the Examiner’s finding that Nearman
compiles additional information shown in the message stream. See Ans. 8
(citing Nearman Fig. 6). Contrary to Appellants’ argument (Reply Br. 17),
Nearman’s additional information are part of the messages, namely the past
messages. Ans. 8 (citing Nearman 145). Furthermore, Nearman’s
messages are in response to a match recognized by the subscription
component. See Nearman 138; see also Nearman 146. In particular, server
202 recognizes the patient corresponding the message. Id. The messages
are compiled for the subscriber in the GUI. Id. Tflf 51—54.
According to Appellants, Nearman’s messages (218, 316, 318, 320)
do not include a name, “MR#,” and age, which are fields in Nearman’s
Figures 6 and 9. App. Br. 31. Appellants further argue that Nearman would
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not compile and provide this information in a message because the
information is provided separately by the subscriber during enrollment. Id.
at 32—33.
But Appellants’ arguments (id. at 31—33; see also Reply Br. 18) do
not squarely address the Examiner’s rationale. Here, the Examiner finds that
the recited healthcare notification corresponds to the message stream
rendered by Nearman’s GUI (Ans. 8), not the individual messages to be re­
compiled and re-supplied, as argued (App. Br. 31—33). Appellants have not
pointed to a definition for the recited “notification” to exclude Nearman’s
message stream. App. Br. 31—33; Reply Br. 17—18. Because Nearman’s
message stream provides information as a visual on-screen notice (see, e.g.,
Nearman || 51—54), the Examiner’s interpretation of a “notification”
(Ans. 8) is reasonable.
Appellants’ arguments for claims 1,16, and 28 also apply to claim 21.
See App. Br. 24—31; Reply Br. 19. We find these arguments unpersuasive
for the reasons discussed above.
Therefore, Appellants have not persuaded us of error in the
obviousness rejection of claim 21, or dependent claim 22 not argued
separately with particularity.
THE REMAINING OBVIOUSNESS REJECTIONS
Claims 2, 4, 7, 10, 13, 15, 18, and 27 depend from claims 1 and 16,
directly or indirectly. In arguing against the rejections for claims 2, 4, 7, 10,
13, 15, 18, and 27, Appellants rely on the arguments presented for the
independent claims 1 and 16. See App. Br. 24—30, 33; Reply Br. 10-17, 20.
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Therefore, for the reasons discussed in connection with claims 1 and 16, we
also sustain the rejections of claims 2, 4, 7, 10, 13, 15, 18, and 27.
CONCLUSION
We sustain the Examiner’s rejections of claims 1—22 and 26—28 under
§§ 101 and 103.
DECISION
We affirm the Examiner’s rejection of claims 1—22 and 26—28.
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
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