Ex Parte Backhaus

Patent Trial and Appeal Board

Dec 19, 2018

13966594 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/966,594 08/14/2013
21186 7590 12/21/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Brent Backhaus
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.
3403.0l 1US3 7114
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENT BACKHAUS
Appeal2017-005057
Application 13/966,594
Technology Center 3600
Before ELENI MANTIS MERCADER, LINZY T. MCCARTNEY, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 24--30, 32-38, 40-44, and 46-48. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Virtual Radiologic Corporation as the real party in
interest. App. Br. 2. Virtual Radiologic Corporation identifies that it is
wholly owned by American Radiology, LLC, which is wholly owned by
MEDNAX Services, Inc., which is wholly owned by MEDNAX, Inc. Id.
Appeal2017-005057
Application 13/966,594
STATEMENT OF THE CASE
Introduction
Appellant describes the disclosed and claimed invention as follows:
A teleradiology image processing system configured to
receive, process, and transmit radiology read requests and
digital radiology image data is disclosed herein. In one
embodiment, a radiology processing system includes a series of
processing components configured to receive digital radiology
data from a medical provider, extract relevant information and
radiology scan images from the digital radiology data, and
initiate and control a workflow with a qualified remote
radiologist who ultimately performs a read of the radiology
scan images. Further embodiments also facilitate data
processing within the image processing system in response to
medical facility rules and preferences; translation or conversion
of digital images to other formats; compilation of patient and
medical facility data obtained from the digital radiology data
into medical records or data stores; assignment of radiology
studies within a teleradiology workflow in response to licensing
and credentialing rules; and billing functions in response to
completed reads by the remote radiologist.
Abstract. 2
Claim 40 is representative and reproduced below:
40. A method for processing medical images in a workflow
through use of an image processing system, the image
processing system comprising at least one hardware processor
configured to perform operations, the operations including:
2 Our Decision refers to the Final Office Action mailed May 13, 2016
("Final Act."); Appellant's Appeal Brief filed Oct. 17, 2016 ("App. Br.")
and Reply Brief filed Feb. 1, 2017 ("Reply Br."); the Examiner's Answer
mailed Dec. 1, 2016 ("Ans."); and the original Specification filed Aug. 14,
2013 ("Spec.").
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processing electronic imaging data, wherein the electronic
imaging data includes a plurality of digital medical images that
originate from a medical imaging procedure performed by a
medical imaging modality;
processing medical information included in the electronic
imaging data, the processing including performing a
determination of at least one requirement for a diagnostic
evaluation of the plurality of digital medical images generated
from the medical imaging modality based on the medical
information included in the electronic imaging data;
maintaining electronic worklists associated with respective
evaluators of a plurality of evaluators, the electronic worklists
for the respective evaluators being maintained at the image
processing system, and the electronic worklists for the
respective evaluators providing a listing of one or more pending
diagnostic evaluations designated for performance by the
respective evaluators, wherein the electronic worklists for the
respective evaluators include an electronic worklist for a
particular evaluator from the plurality of evaluators;
designating the particular evaluator for performance of the
diagnostic evaluation of the plurality of digital medical images
generated from the medical imaging modality, the particular
evaluator designated from among the plurality of evaluators,
wherein the particular evaluator is designated based on a
corresponding match of at least one qualification of the
particular evaluator with the at least one requirement for the
diagnostic evaluation; and
updating the electronic worklist for the particular evaluator in
response to designating the particular evaluator, wherein the
electronic worklist for the particular evaluator is updated to
include a pending evaluation for the performance of the
diagnostic evaluation of the plurality of digital medical images
in the listing of the one or more pending diagnostic evaluations
designated for performance by the particular evaluator; and
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transmitting the electronic imaging data for the plurality of
digital medical images to a computing device associated with
the particular evaluator, wherein the plurality of digital medical
images are viewable at the computing device associated with
the particular evaluator in response to acceptance of the
diagnostic evaluation of the plurality of digital medical images
from the electronic worklist for the particular evaluator.
App. Br. 32-33 (Claims Appx.).
Rejections on Appea/3
Claims 24--30, 32-38, 40-44, and 46-48 stand rejected under 35
U.S.C. § 101 because the claimed invention is directed to patent-ineligible
subject matter.
Claims 24--30, 32-38, 40-44, and 46-48 stand rejected on the ground
ofnonstatutory double patenting over claims 1-24 of US 8,515,778 B2. 4
ANALYSIS
We have reviewed the Examiner's rejection of claims 24--30, 32-38,
40-44, and 46-48 under 35 U.S.C. § 101, in light of Appellant's arguments
in the Briefs. For the reasons discussed infra, we are not persuaded by
3 The rejection of claims 24--30, 32-38, 40-44, and 46-48 under 35 U.S.C.
§ 112, first paragraph, has been withdrawn by the Examiner. Ans. 9.
4 Appellant states that the Examiner's nonstatutory double patenting
rejection of claims 2-9, 12-17, 19-24, and 26-28 "is not being appealed."
App. Br. 11. In the Reply Brief, Appellant confirms that "the nonstatutory
double patenting rejection that is outstanding for claims 24--30, 32-3 8, 40-
44, and 46-48 is not being appealed." Reply Br. 1. Because Appellant is
required to present arguments with respect to each ground of rejection, but
does not do so with respect to the nonstatutory double patenting rejection,
we summarily sustain the rejection of claims 24--30, 32-38, 40-44, and 46-
48 on the ground of nonstatutory double patenting over claims 1-24 of US
8,515,778 B2. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Appellant's arguments that the Examiner erred in rejecting these claims
under 35 U.S.C. § 101.
Applicable Law
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 35
U.S.C. § 101 to include an implicit exception: "Laws of nature, natural
phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp.
Pty. Ltd. v. CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014) (citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75-77 (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, 134 S.Ct. at
2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355-57. The
"directed to" inquiry asks not whether "the claims involve a patent-ineligible
concept," but instead whether, "considered in light of the [S]pecification,[]
'their character as a whole is directed to excluded subject matter."' Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citations
omitted). In that regard, we determine whether the claims "focus on a
specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
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generic processes and machinery." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (citation omitted).
If, at the first stage of the Alice analysis, we conclude that the claim is
not directed to a patent-ineligible concept, it is considered patent eligible
under 35 U.S.C. § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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." Alice, 134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "search for an 'inventive concept'-i.e.,
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."' Id. ( quoting Mayo, 566 U.S. at 72-73). The
prohibition against patenting an abstract idea "'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
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Appellant's Arguments 5
Appellant argues the Examiner failed to establish a prima facie case of
subject matter ineligibility because the Examiner: (1) did not fully articulate
the abstract idea; (2) did not establish that the respective elements of the
claims are directed to an abstract idea; and (3) "failed to provide proper
evidence that the claims do not amount to significantly more than an abstract
idea." App. Br. 17-18. According to Appellant, even assuming arguendo
that the claims are directed to an abstract idea, the elements of the claims
"amount to significantly more" than an abstract idea under the principles
confirmed by the Enfzsh, BASCOM, and McRO cases. Id. at 18.
In particular, Appellant argues the Examiner failed to articulate how
the claimed invention is directed to a judicial exception by identifying
certain claim elements or concepts individually and not in the context in
which these operations are conducted in the claims. Id. Appellant also
argues the Examiner erred in finding the claims recite the abstract idea of
"organizing human activity (i.e., managing human behavior-managing
tasks by assigning them to qualified radiologists as well as maintaining and
updating worklists)" because this ignores recited computer-implemented
claim elements and actions. Id. at 19 ( emphasis omitted). Appellant further
argues that the combination of elements in the claims are not directed to an
ineligible concept and "[ s ]imply because the claims have a relationship to
5 Appellant argues claims 24--30, 32-38, 40-44, and 46-48 as a group. See
App. Br. 17-25; see also Reply Br. 2-8. We consider method claim 40 to be
representative of the claimed subject matter on appeal and, therefore, we
decide the 35 U.S.C. § 101 rejection of claims 24--30, 32-38, 40-44, and
46-48 on the basis of representative claim 40. See 37 C.F.R. §
4I.37(c)(l)(iv).
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information, rules and tasks" does not prove the claims are directed to
abstract concepts. Id. In the Reply Brief, Appellant further argues the
Examiner failed to consider the claims as a whole and that the Examiner's
finding that the claim steps are an "abstract method of organizing human
activity" assumes the claims can be rewritten and recharacterized "to remove
the actual technical context and limitations." Reply Br. 2-3. Appellant also
argues the Examiner's oversimplification and comparison of the claims to
those in SmartGene, Cyberfone, In re Meyer, and Accenture "might be
relevant if the appealed claims actually recited any of these concepts[]," but
"[t]hey do not." Id. at 3.
Regarding Appellant's contention that the Examiner failed to establish
that the claimed subject matter is abstract, Appellant argues "[t]he
involvement of specific computer elements and data processing,
transmission, and actions in the claims calls the entire premise of
abstractness into question." App. Br. 20. Appellant argues that, like Enfzsh,
the "claims are directed to an improvement in computer technology; the
claims result in an improvement to the functioning of the computer network
and computer system itself even before a diagnostic evaluation ( e.g., a
radiological read of the image data) is performed." Id. at 21. In that regard,
Appellant argues that the claims solve "an Internet-centric problem
( determining which computer system to send data to) that is necessarily
rooted in computer technology." Id. Appellant further argues "[t]he recited
operations are performed electronically and in a computer, excluding any
possibility that the claims are directed to human activities or mental ideas by
themselves." Id. at 21. Appellant also argues that, based on Amdocs, in
which the claims were found patent eligible where "generic components
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operate in an unconventional manner to achieve an improvement in
computer functionality," and the computer operations directly recited in the
claims, "the Examiner's findings of abstractness cannot be sustained as a
matter of law." Reply Br. 4--5.
Regarding Appellant's contention that the Examiner failed to establish
the claimed subject matter is not "significantly more" than a judicial
exception, Appellant argues this prong of the analysis need not be performed
because of "the Examiner's own concession that at least some of the claims
include novel features over the prior art of record." App. Br. 22. Appellant
asserts it is not understood how the claims can be considered novel and
nonobvious, and yet still be "characterized as abstract and 'well understood,
routine, and conventional' in light of the same art." Id. at 23. Appellant also
argues that, "[ e ]ven so, the remaining claims are significantly more than the
alleged judicial exception, and invoke elements that are not well-understood,
routine, or conventional in the art." Id. Citing McRO, Appellant argues that
"the use of a computer-driven mechanism to automatically transfer data in a
network, manage an electronic worklist, and process medical data
characteristics cannot be excluded from subject matter eligibility even if
they are simplified down to 'tasks."' Id. Appellant further argues BASCOM
held that "a claim can ... recite 'known, conventional pieces"' but still
result in "'significantly more' than an abstract idea" and that the claims here
"provide meaningful limits, with anything but a conventional or generic
arrangement." Id. at 24. In the Reply Brief, Appellant argues the Examiner
erred by not considering "all claim elements as a whole for significantly
more." Reply Br. 6. Appellants also argue that "the Examiner's reading of
an 'unconventional feature' requirement in DDR Holdings is quite narrow
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and suggests that there was a new protocol involved in the invention." Id. at
6-7.
Pima Facie Case
Before substantively analyzing claim 40 under the two-step Alice test,
we address Appellant's contention that the Examiner failed to establish a
prima facie case of subject matter ineligibility. See App. Br. 17-18. Here,
the Examiner stated the statutory basis for the rejection, namely, "under 35
U.S.C. [§] 101 because the claimed invention is directed to a judicial
exception ... without significantly more." Final Act. 3. The Examiner also
performed the two-step Alice test. Id. at 3---6; see also Ans. 3-9. Thus, we
conclude the Examiner provided an adequate explanation of the rejection
under 35 U.S.C. § 101 and met the notice requirement of 35 U.S.C. § 132.
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
In view of the Examiner's findings and conclusions in the Answer and
Final Office Action, we also are not persuaded by Appellant's argument that
the Examiner did not fully articulate the abstract idea (see App. Br. 17-18),
particularly in view of the Examiner's finding that the claims recite the
abstract idea of "organizing human activity (i.e. managing human behavior -
managing tasks by assigning them to qualified radiologists as well as
maintaining and updating worklists)." Final Act. 4 (emphasis omitted).
Furthermore, we are not persuaded by Appellant's argument the Examiner
failed to establish a prima facie case of ineligibility because the Examiner
"failed to provide proper evidence" that the claims do not amount to
significantly more than an abstract idea. See App. Br. 17-18. We disagree
that the Examiner failed to provide evidence because the Examiner cited to
the claims and the Specification in finding that the claims amount to no more
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than a recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities. See Final Act. 4---6; see also Ans. 4--9 (citing Spec. ,r,r 3, 26-30,
33, 51-55, 136, 145-149, and 182). We also find that Appellant's argument
is conclusory and fails to identify any device, component, system or process
recited in the claims that Appellant contends is not well-understood, routine,
and conventional in the art, much less present any arguments in support of
such contention. Thus, although our reviewing court recently held that
"[t ]he patent eligibility inquiry may contain underlying issues of fact" (see
Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)), we determine
that Appellant's argument is insufficient to raise an issue of fact requiring
the Examiner to present additional evidence showing that any aspect of the
claims is well-understood, routine, and conventional in the art.
Step One of Alice
Regarding claim 40, the preamble recites "[a] method for processing
medical images in a workflow through use of an image processing system,"
comprising at least one hardware processor configured to perform 6
operations or steps. Claim 40 then recites the following 6 steps ( which the
Examiner finds are described in the cited portions of the Specification): (1)
processing image data that originate from an imaging modality (see Spec.
,r,r 33, and 51-55); (2) processing medical information in the images to
determine a requirement for a diagnostic evaluation based on the medical
information (see Spec. ,r,r 27-29, and 33); (3) maintaining worklists
associated with evaluators, wherein the worklists include a worklist for a
particular evaluator (see Spec. i-fi-fl36, 149, and 182); (4) designating an
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evaluator for performance of the evaluation based on a match between an
evaluator qualification and a diagnostic evaluation requirement (see Spec.
,r,r 145-146); (5) updating the worklist for the evaluator in response to
designating the particular evaluator (see Spec. ,r 149); and ( 6) transmitting
the image data to a computing device associated with the particular
evaluator, wherein the images are viewable in response to acceptance of the
diagnostic evaluation from the worklist for the particular evaluator (see
Spec. ,r,r 30, and 147-148).
Considering the focus of claim 40 as a whole, in view of Appellant's
Specification, we agree with the Examiner that claim 40 is directed to an
abstract idea-a method of organizing human activity, i.e., managing the
performance of diagnostic evaluations by assigning them to qualified
evaluators, as well as maintaining and updating worklists. Final Act. 4. As
discussed infra, claim 40 is directed to a combination of features that we
conclude are similar or analogous to claims in other cases that courts have
found are directed to an abstract idea. See Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) ("The concept of data collection, recognition, and storage is
undisputedly well-known."); Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353-54 (Fed. Cir. 2016) (claims focus on the abstract idea of
collecting information, analyzing it, and displaying certain results of the
collection and analysis); Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (holding that the claimed
invention is directed "to the abstract idea of collecting, displaying, and
manipulating data of particular documents"); SmartGene, Inc. v. Advanced
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Biological Labs., SA, 555 F.Appx. 950, 954 (Fed. Cir. 2014) (claims recite
comparing new and stored information and using rules to identify options).
In particular, consistent with the Examiner's conclusions, we conclude
step (1) of "processing image data that originate from an imaging modality,"
and step (2) of "processing medical information in the images to determine a
requirement for a diagnostic evaluation based on the medical information,"
are directed to collecting and analyzing information, which courts have held
are in the realm of abstract ideas. See Electric Power, 830 F.3d at 1353-54.
We also conclude that step (3) of "maintaining worklists associated with
evaluators, wherein the worklists include a worklist for a particular
evaluator," step ( 4) of "designating an evaluator for performance of the
evaluation based on a match between an evaluator qualification and a
diagnostic evaluation requirement," and step ( 5) of "updating the worklist
for the evaluator in response to designating the particular evaluator," could
be performed by a human with pen and paper. In that regard, our reviewing
court has held that "analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category." Electric Power, 830
F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146 (Fed. Cir. 2016). "[T]he 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. (US.), 687 F.3d 1266, 1278 (Fed. Cir.
2012).
We also conclude, as does the Examiner, that step ( 5) of "designating
an evaluator. .. based on a match" of a qualification of the evaluator and a
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diagnostic evaluation requirement is directed to "using rules to identify
options as in SmartGene." Ans. 14 (emphasis omitted). We further
conclude that step ( 6) of "transmitting the image data to a computing device
associated with the particular evaluator" where they are viewable in
response to acceptance of the diagnostic evaluation from the worklist "as an
ancillary part of such collection and analysis" of information as set forth in
steps (1 }-(5) of claim 40. See Electric Power, 830 F.3d at 1354.
Appellant argues the Examiner failed to articulate how the claimed
invention is directed to a judicial exception by identifying certain claim
elements or concepts individually and not in the context in which these
operations are conducted in the claims. See App. Br. 18. We do not agree.
As reflected in the foregoing analysis of claim 40, it is directed to a
combination of features, as set forth in steps (1 }-( 6). Thus, it was necessary
for the Examiner to consider these various features, individually or as
groups, and in doing so, the Examiner properly considered all of the
limitations of claim 40.
As discussed supra, we conclude, as does the Examiner, that the
various features of claim 40 are directed to abstract ideas. In that regard, we
note that merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) ( determining the pending claims were directed to a combination of
abstract ideas). Thus, for these same reasons, we also are not persuaded by
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Appellant's argument that the Examiner did not establish that the respective
elements of claim 40 are directed to an abstract idea. See App. Br. 18-19.
Although Appellant argues that the claims are directed to "an
improvement to the functioning of the computer network and computer
system itself," even before a diagnostic evaluation is performed (see App.
Br. 21 ), this argument is not convincing because it is conclusory and
unsupported by the claim language. See Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013)
( admonishing that "the important inquiry for a § 101 analysis is to look to
the claim[;]" "the complexity of the implementing software or the level of
detail in the specification does not transform a claim reciting only an
abstract concept into a patent-eligible system or method"). Nor has
Appellant identified any portion of the Specification, or provided any
evidence or technical reasoning, demonstrating that claim 40 achieves a
technical advance or improvement to the computer network and computer
system.
Although Appellant argues that the decisions in DDR, 6 Enfzsh,
BASCOM, 7 McRO, and Amdocs8 support Appellant's argument that claim 40
is directed to an improvement in computer technology or the functioning of
a computer, Appellant's arguments are not persuasive because Appellant has
not shown that the claims in the cited cases are similar or analogous to claim
40. In DDR Holdings, the disputed claims solved an Internet-specific
6 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
7 BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016).
8 Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1302
(Fed. Cir. 2016).
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problem with an Internet-based solution that was "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, 773 F.3d at 1257-58.
That is not the case here. Instead, as the Examiner's finds, "[d]etermining
which computer to send data to is not an 'Internet-centric problem[.]' The
[S]pecification discloses that the network (an intranet or the Internet)
operates in a purely conventional manner .... The problem is where to send
the data; once that is decided, the Internet operates in a typical manner. " 9
Ans. 18-19.
Regarding Enfzsh, Appellant has not demonstrated that the claims
"improve the way a computer stores and retrieves data in memory," as the
claims in Enfish did via a "self-referential table for a computer database."
See Enfzsh, 822 F.3d at 1336, 1339. In BASCOM, the court held that an
inventive concept can be found in a non-conventional and non-generic
arrangement of known, conventional pieces. See BASCOM, 827 F.3d at
1350. Here, as the Examiner finds, the claims are distinguishable from those
in BASCOM. Ans. 23-24. In BASCOM, the system claims were directed to
a "content filtering system for filtering content retrieved from an Internet
computer network," which the court held were directed to an abstract idea.
Id. at 13, 48--49. The court further held the claims included an inventive
concept in the ordered combination of system components, including a local
client computer and a remote ISP server connected to the client computer
and Internet computer network providing for "the installation of a filtering
tool at a specific location, remote from the end-users, with customizable
9 Contrary to Appellant's argument, we are not persuaded that the Examiner
read an "unconventional feature" requirement in DDR. See Reply Br. 6-7.
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filtering features specific to each end user." BASCOM, 827 F.3d at 1350.
Appellants have failed to establish that claim 40 includes a similar or
analogous arrangement or "ordered combination" of components. Instead,
Appellant makes only the conclusory statement that Appellant "has referred
to numerous technical advantages that occur in processing and bandwidth
resources of computer networks, data processing, and computer systems as a
result of the claimed invention." Reply Br. 7 (citing App. Br. 21, 23).
In McRO, the court held the claims were patent-eligible because the
claims recited specific computer-implemented rules that allowed a computer
to produce accurate and realistic lip synchronization and facial expressions
in animated characters that previously could only be produced by human
animators. See McRO, 837 F.3d at 1313. Although Appellant argues the
Federal Circuit confirmed in McRO that "processes that automate tasks that
humans are capable of performing are patent eligible if properly claimed"
(see App. Br. 23), claim 40 fails to recite the technical details of "rules" that
allegedly provide an improvement over manual worklist and data
management techniques. At best, as the Examiner finds, claim 40 suggests
the use of "one rule," "matching an evaluator qualification with a diagnostic
evaluation requirement," which is widely known and fails to recite "some
unspecified complexity." 10 Ans. 23. Thus, contrary to Appellant's
assertion, claim 40 fails to recite the improvement to the claimed system that
Appellant argues the claim is directed to.
10 Appellant argues the Examiner erred in finding that claim 40 involves
only "one rule" and that the rule was widely known. Reply Br. 7. We are
not, however, persuaded by Appellant's arguments because they are
conclusory and unsupported by any citation to the Specification or
persuasive technical reasoning or evidence.
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Regarding Amdocs, Appellant's argue that "[a]t least this minimum
level of computer functionality can be found in the unconventional
operations of the recited claims." Reply Br. 5. This argument is not
persuasive, however, because Appellant has not demonstrated that the claims
provide an "unconventional technological solution ... to a technological
problem" that "improve[ s] the performance of the system itself," as
explained in Amdocs. See Amdocs, 841 F.3d at 1300, 1302. Thus, we agree
with the Examiner's finding that "the claims do not recite an asserted
improvement to the functioning of the computer itself, but rather recite using
a computer to lend speed and efficiency to an abstract idea." Ans. 20.
Step Two of Alice
Regarding step two of the Alice analysis, even though the Examiner's
analysis in the Final Office Action is brief, as Appellant notes (see App. Br.
22), based on the Examiner's findings and reasons, we agree with the
Examiner's determination that the elements of the claims do not provide
"significantly more" than the abstract idea. See Final Act. 4--6; see also Ans.
2-9, 20-24. We also are not persuaded by Appellant's arguments that the
Examiner erred.
First, we not persuaded by Appellant's argument that Appellant does
not understand how the Examiner can find some of the claims are novel and
non-obvious, and still be characterized as abstract and well-understood,
routine, and conventional in light of the same art. App. Br. 23. As Appellant
acknowledges in the Reply Brief, a finding of novelty or non-obviousness
does not automatically lead to the conclusion that the claimed subject matter
is patent-eligible. See Reply Br. 6. Although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
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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 Corp., 134 S.Ct. at 2355
( quoting Mayo, 566 U.S. at 72-73). "Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the [section] 101 inquiry." Ass 'n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981) ("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 [section]
101 categories of possibly patentable subject matter.").
Second, we are not persuaded by Appellant's argument that the
remaining claims are "significantly more" and "invoke elements that are not
well-understood, routine, or conventional in the art" because it is conclusory
and unsupported by any citation to the Specification, claims or other
evidence. App. Br. 23. Third, Appellant's arguments that BASCOM held a
claim can recite known, conventional pieces and still result in "significantly
more" and that the claims here provide meaningful limits, with anything but
a conventional or generic arrangement are unpersuasive. Id. at 24. As
discussed supra, we agree with Appellant that the court in Bascom noted that
an inventive concept can be found in a non-conventional and non-generic
arrangement of known, conventional pieces, but the claims here are
distinguishable from those in Bascom because they do not include a similar
or analogous arrangement or "ordered combination" of components.
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Fourth, Appellant's arguments that McRO, and other Federal Circuit
precedent, show that the use of a computer-driven performance of a process
performed with rules or simplified down to tasks cannot be excluded from
subject matter eligibility are unpersuasive because, although the process of
claim 40 may be novel and non-obvious, Appellant has failed to show that
claim 40 recites a "technological improvement" as Appellant asserts. App.
Br. 23; see also Reply Br. 8. Unlike the claims in McRO, claim 40 does not
"focus on a specific means or method that improves the relevant
technology," but is "directed to a result or effect that itself is the abstract
idea and merely invoke[s] generic processes and machinery." McRO, 837
F.3d at 1314 ( citation omitted). This is not enough to transform an abstract
idea into patent-eligible subject matter. See, e.g., Alice, 134 S.Ct. at 2360
( explaining that claims that "amount to 'nothing significantly more' than an
instruction to apply the abstract idea ... using some unspecified, generic
computer" "is not 'enough' to transform an abstract idea into a patent-
eligible invention" (quoting Mayo, 566 U.S. at 77, 79)); Intellectual
Ventures, 850 F.3d at 1342 ("[T]he claim language here provides only a
result-oriented solution, with insufficient detail for how a computer
accomplishes it. Our law demands more.").
Thus, we see nothing in the limitations of claim 40, considered both
"individually and 'as an ordered combination,"' that transforms the claimed
abstract idea into patent-eligible subject matter.
Accordingly, we sustain the Examiner's rejection of claim 40 under
35 U.S.C. § 101. For the same reasons, we sustain the rejection of
independent claims 24 and 34, and dependent claims 25-30, 32, 33, 35-38,
41--44, and 46--48, which are not separately argued, under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner's decision rejecting claims 24--30, 32-38,
40-44, and 46-48 under 35 U.S.C. § 101.
We summarily sustain the rejection of claims 24--30, 32-38, 40-44,
and 46-48 on the ground of nonstatutory double patenting over claims 1-24
of US 8,515,778 B2.
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 ). See 37 C.F.R.
§ 1.136(a)(l)(iv)(2016).
AFFIRMED
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