Ex Parte Bousamra

Patent Trial and Appeal Board

Dec 19, 2018

13107301 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/107,301 05/13/2011
98067 7590 12/21/2018
Harness Dickey & Pierce (Roche)
5445 Corporate Drive, Suite 200
Troy, MI 48098-2683
FIRST NAMED INVENTOR
Steven A. Bousamra
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.
27466 US (15878A-32) 7122
EXAMINER
RIGGS II, LARRY D
ART UNIT PAPER NUMBER
1631
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):
rmills@hdp.com
pair_roche@firsttofile.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEVEN A. BOUSAMRA 1
Appeal 2017-011215
Application 13/107,301
Technology Center 1600
Before JOHN G. NEW, TA WEN CHANG, and RACHEL H. TOWNSEND,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party-in-interest as Roche Diabetes Care, Inc.
App. Br. 3.
Appeal 2017-011215
Application 13/107,301
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-9 and 20-26 as unpatentable under
35 U.S.C. § 101 as being directed to nonstatutory subject matter.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant's invention is directed to a method for constructing a
structured test having user-defined adherence criteria. Abstr.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method for measuring glucose levels of a patient,
compnsmg:
receiving, by a diabetes management device, from the
patient an objective for a structured test;
identifying, by the diabetes management device, a test
template that corresponds to the objective from a plurality of
predefined test templates, where the identification of a test
template is in response to receiving an objective for the
structured test from the patient and the identified test template
specifies one or more collection events for obtaining blood
glucose measurements;
presenting, by the diabetes management device, the patient
with a plurality of contextual criterion for the identified test
template, where the presenting the patient with the plurality of
contextual criterion is in response to receiving an objective for
the structured test from the patient and the plurality of contextual
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criterion are associated with the identified test template and the
plurality of contextual criterion differ amongst the test templates
in the plurality of predefined test templates;
receiving, by the diabetes management device, one or
more contextual criterion selected by the patient from the
plurality of contextual criterion;
constructing, by the diabetes management device, a
structured test in accordance with the selected contextual
criterion and the identified test template, where the construction
of the structured test is in response to receiving one or more
contextual criterion and the structured test includes one or more
collection events and a prompt of the patient to input information
pertaining to the selected contextual criterion; and
administering, by the diabetes management device, the
structured test to the patient, including prompting the patient to
provide a sample of blood to a glucose meter, such that the steps
of the method are implemented by a computer processor of the
diabetes management device.
App. Br. 16-17.
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings,
reasoning, and conclusion that Appellant's claims are directed to
nonstatutory subject matter. We address the arguments raised by Appellant
below.
Issue
Appellant argues the Examiner erred because the claims are directed
to a process and do not recite a basic concept that is similar to any abstract
idea previously identified by the courts. App. Br. 10, 13.
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Analysis
The Examiner finds Appellant's claims are drawn to an abstract
process of information management. Final Act. 4. The Examiner finds that
the claims recite a method of receiving a patient objective, identifying a test
template corresponding to the input objective, presenting the patient with a
plurality of criteria, receiving a selection of criteria, constructing a test based
on the selected criteria and the identified test template, and administering the
structured test. Id. The Examiner finds that identifying a test template based
on an inputted objective, and constructing a test based on the template and
criterion presented to and selected by the user, amount to information
management, and the claims are therefore directed to an abstract idea. Id.
The Examiner notes that although the claimed method may be
implemented on a computer system or embedded in a computer-readable
medium comprising instructions for carrying out the method, it is the
underlying invention that is analyzed to determine subject matter eligibility,
and not just the use of a computer system or computer program product.
Final Act. 4--5. The Examiner finds that the method steps themselves are
therefore directed to an abstract idea, because they do not purport to improve
the functioning of the computer itself, nor is there any recitation of improved
computer technology or an improvement in any other technology or
technical field. Id. at 5.
The Examiner next finds that the receiving of an objective, and the
administration of a structured test, are merely input and output of data,
which the Examiner finds are insignificant extra-solution activities. Final
Act. 5. The Examiner notes that no additional steps are recited in the claims
invention that would amount to significantly more than the judicial
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exception and that, without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible. Id. The Examiner further finds
that, "if a claim is directed essentially to a method of calculat[ion] using a
mathematical formula, even if the solution is for a specific purpose, the
claimed method is non-statutory." Id.
Appellant contends that the Examiner's characterization of the claims
as being directed to "information management" is overly broad, and that the
claims are not directed to an abstract concept. App. Br. 10 ( quoting Final
Act. 3). Similarly, Appellant argues, the Examiner's finding that the claims
do not improve computer or glucose meter device technology and instead
merely "receive, identify, request[], construct[] and administer[]
information," is "at a high level of abstraction that is untethered to the claim
language." Id. at 10-11 (citing Office Act, of August 5, 2016 (the "August
5th Office Act.") 7).
According to Appellant, the claims on appeal address the problem of
helping a patient to better understand which factors may impact glucose
measurements. App. Br. 11. Appellant asserts that, by "selecting from the
presented contextual criteria, the patient better understands which factors
may impact their glucose measurements." Id. Furthermore, contends
Appellant, the selected contextual criterion is incorporated into the
structured test administered to the patient and thereby achieves better results.
Id. In other words, Appellant argues, the constructed structured test gathers
data that is more pertinent to the patient's condition and helps to improve
diagnosis by the healthcare provider as explained in the present application.
Id.
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Appellant next points to our reviewing court's holding in Trading
Techs. Int'!, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017). App.
Br. 11. In CQG, the claims were directed to: "A method for displaying
market information relating to and facilitating trading of a commodity being
traded in an electronic exchange having an inside market with a highest bid
price and a lowest ask price on a graphical user interface." App. Br. 11
(quoting Trading Techs., 675 F. App'x at 1003). Appellant contends that, in
finding the claims to be patent eligible, the court reasoned that: "the claims
require a specific, structured graphical user interface paired with a
prescribed functionality directly related to the graphical user interface's
structure that is addressed to and resolves a specifically identified problem in
the prior state of the art." Id. at 12 (quoting Trading Techs., 675 F. App'x at
1004). Appellant notes that the court also stated that: "ineligible claims
generally lack steps or limitations specific to solution of a problem, or
improvements in the functioning of technology." Id. (quoting Trading
Techs., 675 F. App'x at 1005).
Appellant argues that the claims on appeal are more analogous to the
claims in Trading Techs., and to those in McRO, Inc., v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), than to any court decision
identified by the Examiner. App. Br. 13. Appellant asserts that the claims
improve the technical field of measuring glucose levels by enabling patients
to better understand contextual and other factors that impact glucose
measurements. Id. Additionally, argues Appellant, the structured test
administered to the patient gathers data that is more pertinent to the patient's
condition and thereby helps to improve diagnosis of the patient. Id.
Therefore, Appellant argues, by reciting limitations that are specifically
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designed to achieve an improvement, the pending claims are patent eligible.
Id.
We are not persuaded by Appellant's arguments. We agree with
Appellant that the claims are directed to a "process" and therefore fall into
one of the broad statutory categories of patent-eligible subject matter under
35 U.S.C. § 101. See App. Br. 10. We consequently next tum to
determining whether this process is patent eligible or comes under one of the
nonstatutory exceptions to Section 101.
In performing such a patentability analysis under 35 U.S.C. § 101, we
follow the framework set forth by the Supreme Court in Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). As a first step, we
determine whether the claims at issue are directed to a patent-ineligible
concept, i.e., a law of nature, a phenomenon of nature, or an abstract idea.
Mayo, 566 U.S. at 70-71. If the claims are so directed, we next consider the
elements of each claim both individually and "as an ordered combination" to
determine whether additional elements "transform the nature of the claim"
into a patent-eligible application. Id. at 78-79; see also Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). Specifically,
the Supreme Court considered this second step as determining whether the
claims recite 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." Mayo, 566 U.S. at 72-73.
The Examiner has concluded that Appellant's claims are directed to a
method of "information management" that constitutes an abstract idea and
which are consequently patent ineligible. The Supreme Court "has not
established a definitive rule to determine what constitutes an 'abstract idea."'
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct 2347, 2357 (2014)). Our
reviewing court has held that information, as such, is intangible, and the
collecting of information, including when limited to particular content
(which does not change its character as information), 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) (collecting cases); see also In re Grams, 888 F.2d
835, 840 (Fed. Cir. 1989) ("The presence of a physical step in the claim [i.e.,
performing clinical tests on individuals] to derive data for the algorithm will
not render the claim statutory"). The Federal Circuit has similarly treated
the analyzing of information by steps that a person is capable of performing
mentally, or via mathematical algorithms, without more, as essentially
mental processes falling within the abstract idea category. Elec. Power
Grp., 830 F.3d at 1353-54. Furthermore, the court has held that the mere
presentation of the results of abstract processes of collecting and analyzing
information, without more, is abstract, as an ancillary part of such collection
and analysis. Id.
Appellant's claims are directed to the selection and administration of a
structured test based upon a desired result and the selection of various
contextual criteria. See Spec. ,r,r 32-36. By way of example, Appellant's
Specification discloses that:
For instance, a patient that typically enjoys an evening
snack may choose to investigate the effect of their evening snack
on the morning fasting value. The system would then present the
user with a prioritized list of contextual criterion including the
amount of their insulin administration, whether they consumed
alcohol, the size of their snack, and the like. The user may then
select the contextual criteria from the list that they would like to
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evaluate, and deselect those from the list that they would not.
Collectively or individually, the contextual criterion can be
thought of as a "variable under test." In other instances, a patient
may select contextual criteria pertaining to exercising (such as
the duration of exercise) but not snacking, or select contextual
criteria pertaining to both snacking and exercising.
Spec. ,r 35. We agree with the Examiner that Appellant's claims are directed
to the organization and management of information and, as such, are
directed to an intangible, and consequently abstract, idea. See Elec. Power
Grp., 830 F.3d at 1353-54.
We therefore tum to the second portion of the Mayo test to inquire
whether the claims add "significantly more" than the abstract idea itself. We
conclude that they do not. The limitations of claim 1, for example, recite:
(1) identifying a test template that corresponds to an objective for a
structured test; (2) presenting the patient with a plurality of contextual
criteria for the identified test template; (3) receiving the contextual criteria
selected by the patient; ( 4) constructing a structured test in accordance with
the selected contextual criterion and the identified test template; and (5)
administering, by the diabetes management device, the structured test to the
patient, including prompting the patient to provide a sample of blood to a
glucose meter. All of these steps, with the exception of the data collection
step (i.e., administering the test, including prompting the patient to provide a
sample of blood to a glucose meter) constitute no more than the
manipulation of information in order to design an appropriate test. These
information management steps could be carried out in the human mind, or
with the aid of pencil and paper, and therefore are directed to a patent-
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ineligible abstract idea. See, e.g., CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366 (2011).
Furthermore, all of these information management steps can be
carried out in a "module," defined by Appellant's Specification as
compnsmg:
[A]n Application Specific Integrated Circuit (ASIC); an
electronic circuit; a combinational logic circuit; a field
programmable gate array (FPGA); a processor (shared,
dedicated, or group) that executes code; other suitable
components that provide the described functionality; or a
combination of some or all of the above, such as in a system-on-
chip. The term module may include memory (shared, dedicated,
or group) that stores code executed by the processor.
Spec. ,r 66. Appellant's Specification thus discloses that the steps recited in
the claims can be carried out by, inter alia, a generic processor running
software and other similar devices well known in the art.
Appellant analogizes the claims on appeal to those in Trading Techs.
and McRO; however, we find Appellant's reliance upon these cases to be
misplaced. In Trading Techs., the Federal Circuit agreed with the district
court's finding that the claims require a specific, structured graphical user
interface paired with a prescribed functionality directly related to the
graphical user interface's structure that is addressed to and resolves a
specifically identified problem in the prior state of the art. Trading Techs.,
675 F. App'x at 1004. Appellant's claims are tied to no such specific
structure similar to the graphical user interface claimed in Trading Techs.
Moreover, the court in Trading Techs observed that:
Precedent has recognized that specific technologic modifications
to solve a problem or improve the functioning of a known system
generally produce patent-eligible subject matter. In DDR
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Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014), the court upheld the patent eligibility of claims
"necessarily rooted in computer technology" that "overcome a
problem specifically arising in the realm of computer networks."
Id. at 1257. Similarly, "claimed process[ es] us[ing] a combined
order of specific rules" that improved on existing technological
processes were deemed patent-eligible in McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299, 1315 (Fed. Cir.
2016). Claims that were "directed to a specific improvement to
the way computers operate, embodied in [a] self-referential
table," were deemed eligible in Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016).
Id. at 1004---05. We find that, contrary to Appellant's assertions, the claims
on appeal are not directed to an improvement in computer technology of the
kind that the Federal Circuit has held to be patent eligible, not least because
the claims cite no such technology, and because Appellant's Specification
discloses no such improvement to the technology implementing his claimed
method, or even any need for more than a generic processor and
commercially available software. In other words, we find that the claims are
not directed to a method by which computer technology functions may be
improved but, rather, are directed merely to a system of information
management and presentation by a conventional generic processor and
software.
Consequently, we conclude that the claims recite no more than the
abstract idea itself, without adding "significantly more" to the abstract idea.
We therefore conclude that the claims are directed to patent-ineligible
subject matter and we affirm the Examiner's rejection of the claims.
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DECISION
The Examiner's rejections of claims 1-9 and 20-26 under 35 U.S.C.
§ 10 1 is affirmed.
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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