Ex Parte Brown

Patent Trial and Appeal Board

Mar 23, 2018

10818879 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
10/818,879
60683 7590
Robert Bosch LLC
FILING DATE
0410512004
03/23/2018
1800 W. Central Road
Mount Prospect, IL 60056
FIRST NAMED INVENTOR
Stephen J. Brown
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.
7553.00105 I 04-0400 4924
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3686
MAILDATE DELIVERY MODE
03/23/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN J. BROWN
Appeal2016-006469 1
Application 10/818,8792
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-17 and 19-23. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Br.," filed July 22,
2015) and the Examiner's Answer ("Ans.," mailed March 30, 2016) and
Non-Final Office Action ("Non-Final Act.," mailed January 22, 2015).
2 Appellant identifies Robert Bosch Healthcare, Inc. as the real party in
interest. Br. 2.
Appeal 2016-006469
Application 10/818,879
CLAIMED INVENTION
Appellant's claimed invention "relates to healthcare and, in particular,
to an improved method and system of monitoring a patient's condition"
(Spec. 1, 11. 16-1 7).
Claims 1, 12, and 19 are the independent claims on appeal. Claims 1
and 12, reproduced below, are illustrative of the claimed subject matter:
1. A system for processing personal health
information associated with at least one individual, the system
compnsmg:
a plurality of remote devices, each remote device being
associated with an individual; and
at least one server configured to (i) store content for
communication to the plurality of remote devices, the content
comprising general health-related information or general non-
health-related information, and said plurality of remote devices
and said at least one server communicate via a communications
network, (ii) communicate the content requested by the
individual to the associated remote device via the communication
network, (iii) determine personalized health-related information
by correlating the content communicated to the individual with a
known health condition of the individual and (iv) automatically
deliver the personalized health-related information to the
individual via the communications network, wherein the
personalized health-related information comprises information
related to the known health condition of said individual.
12. A method for processing personal health
information associated with at least one individual, the method
compnsmg:
(A) storing content on at least one server for
communication to at least one of a plurality of remote devices,
each remote device being associated with an individual, the
content comprising general health-related information or general
non-health-related information;
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(B) communicating the content requested by the
individual to the remote device associated with the individual via
a communication network,
(C) determining personalized health-related
information by correlating the content communicated to the
individual with a known health condition of the individual in the
at least one server; and
(D) automatically delivering the personalized health-
related information from the at least one server to the individual
via the communication network wherein the personalized health-
related information comprises information related to the known
health condition of said individual.
REJECTIONS
Claims 1-17 and 19-23 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 1-5, 12-16, and 19-21 are rejected under 35 U.S.C. § 102(b)
as anticipated by Olson et al. (US 7,447,643 Bl, iss. Nov. 4, 2008)
(hereinafter "O Ison").
Claims 6, 7, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Olson and Iliff (US 6,022,315, iss. Feb. 8, 2000).
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Olson, Iliff, and Detjen et al. (US 5,970,466, iss. Oct. 19, 1999)
(hereinafter "Detjen").
Claims 11, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Olson and Ilsen et al. (US 6,757,898 Bl, iss. June 29,
2004) (hereinafter "Ilsen").
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Olson and Detjen.
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Application 10/818,879
Claims 1-5, 12-16, and 19-22 are also rejected under 35 U.S.C.
§ 102(b) as anticipated by Goldman et al. (US 5,542,420, iss. Aug. 6, 1996)
(hereinafter "Goldman").
Claims 6, 7, and 10 are also rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldman and Iliff.
Claims 8 and 9 are also rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldman, Iliff, and Detjen.
Claims 11 and 23 are also rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldman and Ilsen.
Claim 17 is also rejected under 35 U.S.C. § 103(a) as unpatentable
over Goldman and Detjen.
ANALYSIS
Non-Statutory Subject Matter
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: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 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., 566 U.S. 66 (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
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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, 566 U.S. at 79, 78).
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, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Appellant maintains here that the § 101 rejection cannot be sustained,
because the Examiner "offers no analysis or evidence" to support the
Examiner's finding that the claims are directed to an abstract idea (Br. 6).
However, there is no requirement that an examiner provide evidentiary
support in every case before a determination can be made that a claim is
directed to an abstract idea. Evidence may be helpful, e.g., where facts are
in dispute. But, it is not always needed. See Mortgage Grader, Inc. v. First
Choice Loan Servs. Inc., 811F.3d1314, 1325-26 (Fed. Cir. 2016) ("[I]t is
also possible, as numerous cases have recognized, that a§ 101 analysis may
sometimes be undertaken without resolving fact issues."). Appellant's bare
assertion that evidence is needed here, without any supporting reasoning as
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to why, is insufficient to require the Examiner to provide evidentiary
support. 3
The Federal Circuit, moreover, has repeatedly observed that "the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The court has, thus, held that the USPTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for the rejection,
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original).
Thus, all that is required of the Office is that it sets forth the statutory basis
of the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) ("Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Mayo/Alice two-step framework, consistent
with the guidance set forth in the US PTO' s "2014 Interim Guidance on
Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the Non-Final Office Action was mailed. Specifically, the
Examiner notified Appellant that the claims are directed to "providing
3 We note that the Appellant has put forward no rebuttal evidence showing
the claims are not directed to an abstract idea.
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healthcare by processing, correlating, and communicating data," i.e., to a
method of organizing human activity, and, therefore, to an abstract idea;
applying the second step of the Mayo/Alice framework, the Examiner further
found that the additional elements or combination of elements in the claims,
other than the abstract idea, amounts to "no more than: (i) mere instructions
to implement the idea on a computer, and/or (ii) recitation of generic
computer structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities previously known
to the pertinent industry" (Non-Final Act. 3). The Examiner, thus, notified
Appellant of the reasons for the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. And we find
that, in doing so, the Examiner set forth a proper rejection under § 101 such
that the burden shifted to Appellant to demonstrate that the claims are
patent-eligible.
Independent Claim 1
Focusing specifically on independent claim 1, Appellant argues that
claim 1 is patent-eligible because the claim does not monopolize an abstract
idea (Br. 8-9). That argument is unpersuasive.
Although the Supreme Court has described "the concern that drives
[the exclusion of abstract ideas from patent eligible subject matter] as one of
pre-emption," Alice Corp., 134 S. Ct. at 2354, characterizing preemption as
a driving concern for patent eligibility is not the same as characterizing
preemption 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.
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v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp.,
134 S. Ct. at 2354). Although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Id.
Appellant further argues that the rejection cannot be sustained because
the "delivering of personalized health related information in addition to
content requested by an individual[, as called for in claim 1,] is inventive"
(Br. 10). In this regard, Appellant asserts that "no known process looks to
content delivered in response to a request for the content and the health of
the individual making the request for content to determine and communicate
both the requested content and personalized health-related content" (id.).
Yet, to the extent Appellant maintains that the claimed invention is patent-
eligible, i.e., that claim 1 amount to "significantly more" than an abstract
idea, because the claim is allegedly novel, Appellant misapprehends the
controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice
Corp., 134 S. Ct. at 2355 (citation omitted). "Groundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the § 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,
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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 § 101
categories of possibly patentable subject matter.").
We also cannot agree with Appellant that claim 1 is patent-eligible
because the claimed method involves a transformation, i.e., that the claim
satisfies the transformation prong of the Bilski machine-or-transformation
test (Br. 11).4 Appellant argues that claim 1 requires delivery of content that
was not requested, in addition to delivery of the requested data and that
"[t]he original content request, which may or not be health-related, is thus
transformed into a provision of personalized health-related information
which is further related to the content of the initial request" (id.). But this
alleged "transformation" is, at best, merely a manipulation of data, which is
not sufficient to meet the transformation prong under 35 U.S.C. § 101. See
Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972) (a computer based
algorithm that merely transforms data from one form to another is not
patent-eligible).
Independent Claims 12 and 19 and Dependent Claims 2-11, 13-17,
and 20-23
Turning to claims 2-17 and 19-23, Appellant argues that the rejection
of these claims cannot be sustained because the Examiner failed to provide
any analysis of the claim limitations (Br. 11-12). Ostensibly referring
specifically to dependent claims 2-11, 13-17, and 20-23, Appellant asserts
that a proper rejection under § 101 "must consider each of the limitations
4 Bilski v. Kappas, 561 U.S. 593 (2010).
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which are added by the dependent claims in determining if the limitations
recited in the dependent claim are 'sufficient to 'transform' the claimed
abstract idea into a patent-eligible application"' (id. (citation omitted)).
We are not persuaded, on the present record, that claims 2-17 and 19-
23 have been improperly rejected without individually considering their
claimed features. In rejecting the claims under § 101, the Examiner
explained that claims 1-17 and 19-23 are directed to "providing healthcare
by processing, correlating, and communicating data," i.e., to a method of
organizing human activity, and, therefore, to an abstract idea; and that the
additional elements or combination of elements in the claims, other than the
abstract idea, does not amount to significantly more than the abstract idea
itself (Non-Final Act. 3). The Examiner further explained that the additional
recited limitations in dependent claims 2-11, 13-17, and 20-23 "merely add
further details of the invention recited in [independent claims 1, 12 and 19],
without including statutory subject matter and fail to establish that the claims
are not directed to an abstract idea" (id.).
We decline to find error here in the Examiner's decision not to
address the patent-eligibility of each of claims 2-17 and 19-23 separately
inasmuch as the claims are all directed to the same abstract idea.
See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.
Ass 'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that when all claims
are directed to the same abstract idea) "addressing each claim of the asse1ied
patents [is J unnecessary~'),
Independent claims 12 and 19 are substantially similar to independent
claim 1, and respectively recite a method and computer-readable medium,
which correspond to the system recited in claim 1. The dependent claims
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merely further detail how the health-related information is selected,
customized to an individual user, and delivered. Aside from asserting that
the Examiner failed to consider the limitations of claims 2-17 and 19-23
individually, Appellant offers no separate arguments for the patent-eligibility
of these claims.
We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting claims 1-17 and 19-23 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
Rejections Based on Olson
Anticipation
Independent Claim 12 and Dependent Claims 13-16
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claim 12 under 35 U.S.C. § 102(b) because Olson
does not disclose that personalized health-related information is determined
by correlating content previously delivered to a requester, in response to a
request for content, with a known health condition of the requestor, i.e.,
limitation (C), as recited in claim 12 (Br. 12-15).
Olson is directed to a decision-support system comprising one or more
decision-support modules in communication with one or more user modules
via a network; Olson discloses that through this configuration, as shown in
Figure 2, a patient or clinician may input data regarding the patient's health,
medical conditions, billing information, and past and current medical care,
i.e., "patient data" (Olson, col. 7, 11. 7-20). This patient data are stored and
analyzed, e.g., together with other stored patient data (id. at col. 6, 11. 62-
65), to generate decision-supported patient data, i.e., data that assist the
clinician in making a medical diagnosis or medical care decision (id.
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at col. 7, 11. 20-24). The decision-supported patient data then are provided
to the clinician in real-time or perceived real-time (id. at col 6, 1. 65 - col. 7,
1. 2; see also col. 8, 11. 15-30; col. 9, 11. 28--49).
Olson further details, at column 8, lines 15-30 and column 9,
lines 28--49, cited by the Examiner (Non-Final Act. 5), that patient data are
collected and analyzed by decision-support module 210a-210n, and that
decision-supported patient data, e.g., recommended treatments, procedures,
tests, therapeutic drugs, are subsequently transmitted to user module 214a-
214 n. Olson, thus, plainly discloses that information specific, i.e.,
personalized, to a particular patient is delivered to a clinician and patient
(see, e.g., Olson, col. 9, 11. 28-30 ("Generally, the configuration of system
200 facilitates the gathering of patient data and delivery of decision-
supported patient data to a clinician and patient.")). But we find nothing in
the cited portions of Olson that discloses that this personalized information,
i.e., the decision-supported patient data, is determined by correlating
content, previously delivered to the patient, in response to a request for
content, with a known health condition of the patient, as claim 12 requires.
Therefore, we do not sustain the Examiner's rejection of independent
claim 12 under 35 U.S.C. § 102(b) as anticipated by Olson. For the same
reasons, we also do not sustain the rejection of dependent claims 13-16.
Independent Claims 1and19 and Dependent Claims 2-5, 20, and 21
Independent claims 1 and 19 include language substantially similar to
the language or independent claim 12. Therefore, we do not sustain the
Examiner's rejection of 1-5 and 19-21under35 U.S.C. § 102(b) as
anticipated by Olson for the same reasons set forth above with respect to
claim 12.
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Obviousness
Dependent Claims 6-11, 17, 22, and 23
Each of dependent claims 6-11, 17, 22, and 23 depends from one of
independent claims 1, 12, and 19. The Examiner's rejections of these
dependent claims under 35 U.S.C. § 103(a) are based on the same rationale
with respect to Olson applied in the anticipation rejection of independent
claims 1, 12, and 19. Therefore, we do not sustain the rejections of
dependent claims 6-11, 17, 22, and 23 under§ 103(a) for substantially the
same reasons set forth above with respect to the independent claims.
Rejections Based on Goldman
Anticipation
Independent Claim 12 and Dependent Claims 13-16
For reasons substantially similar to those set forth above, we are
persuaded by Appellant's argument that the Examiner erred in rejecting
independent claim 12 under 35 U.S.C. § 102(b) because Goldman does not
disclose that personalized health-related information is determined by
correlating content previously delivered to a requester, in response to a
request for content, with a known health condition of the requestor, i.e.,
limitation (C), as recited in claim 12 (Br. 40-45).
Goldman is directed to a health care system for specifying edibles to
individual subjects, and discloses that data (e.g., personal, physical, and
health, information) are collected for an individual (e.g., from the individual
himself/herself, doctor's offices, hospitals, etc.) and evaluated to, thus,
provide the individual with a personalized prescription (e.g., comprising one
or more drugs, food products, or other combinations) designed to address the
individual's needs and compensate for any deficiencies.
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We have carefully reviewed the portions of Goldman cited by the
Examiner (Non-Final Act. 15). But, as with Olson, we find nothing in the
cited portions of Goldman that discloses that personalized information, i.e., a
personalized prescription, is determined by correlating content, previously
delivered to an individual, in response to a request for content, with a known
health condition of that individual, as claim 12 requires.
Therefore, we do not sustain the Examiner's rejection of independent
claim 12 under 35 U.S.C. § 102(b) as anticipated by Goldman. For the same
reasons, we also do not sustain the rejection of dependent claims 13-16.
Independent Claims 1and19 and Dependent Claims 2-5 and 20-22
Independent claims 1 and 19 include language substantially similar to
the language or independent claim 12. Therefore, we do not sustain the
Examiner's rejection of 1-5 and 19-22 under 35 U.S.C. § 102(b) as
anticipated by Goldman for the same reasons set forth above with respect to
claim 12.
Obviousness
Dependent Claims 6-11, 17, and 23
The Examiner's rejections of dependent claims 6-11, 17, and 23
under 35 U.S.C. § 103(a) are based on the same rationale with respect to
Goldman applied in the anticipation rejection of independent claims 1, 12,
and 19. Therefore, we do not sustain the rejections of dependent claims 6-
11, 17, and 23 under§ 103(a) for substantially the same reasons set forth
above with respect to the independent claims.
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DECISION
The Examiner's rejection of claims 1-17 and 19-23 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejections of claims 1-5, 12-16, and 19-22 under
35 U.S.C. § 102(b) are reversed.
The Examiner's rejections of claims 6-11, 17, 22, and 23 under
35 U.S.C. § 103(a) are reversed.
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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