Ex Parte BRUSH

Patent Trial and Appeal Board

Jul 16, 2018

13803459 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/803,459 03/14/2013
46169 7590 07/18/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
RYAN ALAN BRUSH
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.
CRNI.181247 4167
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RY AN ALAN BRUSH
Appeal2017-004372
Application 13/803,459 1
Technology Center 3600
Before HUNG H. BUI, DAVID CUTITTA II, and PHILLIP BENNETT,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1, 2, and 5-19, which are
all the claims pending in the application. Claims 3, 4, and 20 are cancelled.
Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellant, Cemer Innovation, Inc. is the real party in interest.
App. Br. 3.
2 Our Decision refers to Appellant's Appeal Brief filed March 4, 2016
("App. Br."); Examiner's Answer mailed October 4, 2016 ("Ans."); Final
Office Action mailed October 8, 2015 ("Final Act."); and original
Specification filed March 14, 2013 ("Spec.").
Appeal2017-004372
Application 13/803,459
STATEMENT OF THE CASE
Appellant's invention relates to "utilizing patient population health
data [including any updates] to identify members of a population who
qualify for one or more health intervention programs." Spec. ,r,r 5---6;
Figures 4--5; and Abstract.
Claims 1, 12, and 18 are independent. Claim 1 is illustrative of the
claimed subject matter, and is reproduced below with disputed limitations in
italics:
1. One or more non-transitory computer storage media
having computer-executable instructions embodied thereon that,
when executed by a computing system comprising at least a
plurality of parallel processors, facilitate a method of
identifying members of a population who qualify for one or
more health intervention programs, the method comprising:
receiving one or more sets of raw patient population
health data, the one or more sets of raw patent population health
data received in a plurality of disparate formats;
automatically mapping the one or more sets of raw
patient population health data to one or more high-level
concepts or concept groupings;
storing the one or more sets of mapped patient population
health data in association with a distributed storage system,
wherein each distributed storage is co-located with at least one
of the plurality of parallel processors;
executing, via the plurality of parallel processors, a first
set of high-level clinical logic against the one or more sets of
mapped patient population health data;
automatically generating an identification of one or more
members of the population who qualify for the one or more
health intervention programs.
App. Br. 32 (Claims App'x).
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Application 13/803,459
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1, 2, and 5-19 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to an abstract idea. Final Act. 2-3.
(2) Claims 1, 2, 5-9, 11, and 18-19 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Mazar et al. (US
2004/0103001 Al; published May 27, 2004) and Sillay et al. (US
2014/0257047 Al; published Sep. 11, 2014). Final Act. 4--8.
(3) Claims 10 and 12-17 stand rejected underpre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Mazar, Sillay, and Clements (US
2013/0144790 Al; published Jun. 6, 2013). Final Act. 8-11.
ANALYSIS
§ 101 Rejection of Claims 1, 2, and 5-19
In Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014 ), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (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," such as an
abstract idea. Id. If the claims are directed to eligible subject matter, the
inquiry ends. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349
(Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (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
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Application 13/803,459
"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 (citing 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. (citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1, 2, and 5-19 under 35 U.S.C. § 101, the
Examiner determines these claims are directed to an abstract idea of
"processing patient population health data" "using categories to organize,
store, and transmit information," akin to the abstract ideas of organizing,
storing, and transmitting information discussed in Cyberfone, and comparing
information and using rules to identify options discussed in SmartGene.
Final Act. 2; see Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F.
App'x 988 (Fed. Cir. 2014); SmartGene, Inc. v. Advanced Biological Labs.,
SA, 852 F. Supp. 2d 42 (D.D.C. 2012), aff'd 555 F. App'x 950 (Fed. Cir.
2014).
The Examiner further determines the additional elements in the claims
do not amount to significantly more than the judicial exception, because ( 1)
the additional elements, whether taken individually or in combination, are
"generic computer structure that serves to perform generic computer
functions" and (2) these generic components "perform functions that are
well-understood, routine, and conventional activities previously known to
the pertinent industry." Final Act. 3; Ans. 3.
At the outset, Appellant argues the Examiner has not established a
prima facie case of patent ineligibility under 35 U.S.C. § 101 because the
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Examiner fails to "identify and explain in the record the reason why a claim
is [directed to] an abstract idea" "based on the evidence 'as a whole."' App.
Br. 13-14. This argument is not persuasive because (1) patent eligibility is a
question of law that is reviewable de nova (see Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012)); and (2) we are aware of no
controlling authority that requires the Office to provide factual evidence to
support a finding that a claim is directed to an abstract idea. 3 The Federal
Circuit has repeatedly noted 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 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 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 ). Thus, all that is required of the Office is that it set 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 [t]he
3 Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) holds that
the question of whether certain claim limitations represent well-understood,
routine, conventional activity under Alice step 2 may raise a disputed factual
issue. That question, however, is not at issue in this case. As in Berkheimer,
in determining that the claims are directed to an abstract idea, the Examiner
compared the claims to claims held to be abstract in prior judicial
decisions. Compare Final Act. 2 with Berkheimer, 881 F.3d at 1366--67.
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rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.").
Appellant does not contend that the Examiner's rejection under§ 101
cannot be understood or that the Examiner's rejection, otherwise, fails to
satisfy the notice requirements of§ 132. Indeed, Appellant's understanding
of the rejection is clearly manifested by their response as set forth in the
briefs.
Alice/Mayo-Step 1
Turning now to the first step of the Alice inquiry, Appellant argues:
(1) "a claim must be 'directed' to the abstract idea on its face" as required
by Alice and (2) their "claims are not directed to the abstract idea of using
categories to organize, store, and transmit information on their face at least
because, as stated in the preamble of claim 1, the claim facilitates
identification of members of a population who qualify for one or more health
interventions programs." App. Br. 17-18. According to Appellant, "Alice
supports the position that a novel and non-obvious solution to a technical
problem is not an abstract idea." App. Br. 19. As such, Appellant argues:
(1) "[t]he claim is directed to a solution of a technological problem or covers
an improvement in a technological process"; and (2) "[t ]he claims ...
provide a solution that is 'necessarily rooted in computer technology' in that
the claims disclose an improvement to the functioning of the computer."
App. Br. 19-21 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014)).
Appellant's arguments are not persuasive. At the outset, we note
Appellant's characterization of Alice is misplaced. "[T]he concept of
inventiveness [ under § 101] is distinct from that of novelty" and "[ t ]he
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inventiveness inquiry of§ 101 should therefore not be confused with the
separate novelty inquiry of§ 102 or the obviousness inquiry of§ 103." See
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1312 (Fed.
Cir. 2016). Furthermore, contrary to Appellant's arguments, Alice does not
require courts or the PTO to determine whether a claim must be "directed"
to the abstract idea "on its face"; instead, we are required under Alice to
review all claims at some level of generalization and determine whether
those claims are directed to an abstract idea. However, there is no "single
universal definition of 'abstract idea."' Amdocs, 841 F.3d at 1288. Because
there is no "single universal definition of 'abstract ideas,"' the Federal
Circuit has required us to "examine earlier cases in which a similar or
parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs, 841 F.3d at 1312 ( citing Elec.
PowerGrp., LLC v. Alstrom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016));
accord USPTO, July 2015 Update: Subject Matter Eligibility (July 30,
2015) (instructing Examiners that "a claimed concept is not identified as an
abstract idea unless it is similar to at least one concept that the courts have
identified as an abstract idea.").
In this case, the Examiner finds, and we agree, that Appellant's claims
are directed to an abstract idea of "processing patient population health data"
"using categories to organize, store, and transmit information," akin to the
abstract ideas of organizing, storing, and transmitting information discussed
in Cyberfone, and comparing information and using rules to identify options
discussed in SmartGene. Final Act. 2.
Information as such is intangible, and data analysis and data
transmission are also abstract ideas. See, e.g., Microsoft Corp. v. AT & T
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Corp., 550 U.S. 437, 451 n.12 (2007); Alice, 134 S. Ct. at 2355; Parker v.
Flook, 437 U.S. 584, 589, 594--95 (1978); Gottschalkv. Benson, 409 U.S.
63, 71-72 (1972). Information collection and analysis, including when
limited to particular content, is within the realm of abstract ideas. See, e.g.,
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed.
Cir. 2015); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1353-54 (Fed. Cir. 2016) ("collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "abstract-idea
processes"); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758
F.3d 1344, 1350 (Fed. Cir. 2014) ("organizing information through
mathematical correlations"); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("1)
collecting data, 2) recognizing certain data within the collected data set, and
3) storing that recognized data in a memory" are abstract ideas).
We are also not persuaded that "[ t ]he claim is directed to a solution of
a technological problem" or "provide[ s] a solution that is 'necessarily rooted
in computer technology' in that the claims disclose an improvement to the
functioning of the computer" as Appellant argues. App. Br. 19-21. None of
the functions/steps recited in Appellant's claims 1, 12, and 18 provide, and
nowhere in Appellant's Specification is there any description or explanation
as to how these data processing steps are intended to provide: (1) a
"solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) "a specific improvement to
the way computers operate," as explained in Enfzsh, LLC v. Microsoft Corp.,
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822 F.3d 1327, 1336 (Fed. Cir. 2016); or (3) an "unconventional
technological solution ... to a technological problem" that "improve[ s] the
performance of the system itself," as explained in Amdocs, 841 F.3d at 1302.
Accordingly, we agree with the Examiner that Appellant's claims are
directed to the abstract idea of "processing patient population health data"
"using categories to organize, store, and transmit information," akin to the
abstract ideas of organizing, storing, and transmitting information discussed
in Cyberfone, and comparing information and using rules to identify options
discussed in SmartGene. Final Act. 2.
Alice/Mayo-Step 2
In the second step of the Alice inquiry, Appellant argues: (1) their
"claims recite additional features that are not routine, conventional, or well-
known to the industry" and (2) the claims "show an improvement in the
functioning of the computer system" because "by co-locating the distributed
storage with the parallel processing nodes, processing times are improved
thereby improving the functioning of the computer system." App. Br. 22-
25.
Appellant's arguments are not persuasive. At the outset, we note that
the second step of Alice requires a "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."' Alice, 134 S. Ct. at 2355 ( citing Mayo, 566 U.S.
at 72-73). Under current Federal Circuit precedent, an "inventive concept"
under Alice step 2 can be established by showing, for example, that the
patent claims:
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(1) provide a technical solution to a technical problem
unique, e.g., a "solution [] necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of
computer networks" (see DDR Holdings, 773 F.3d at 1257;
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a filtering tool
at a specific location, remote from the end-users, with customizable
filtering features specific to each end user" (see Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016)); or
(3) "entail[] an unconventional solution ([ e.g.,] enhancing
data in a distributed fashion) to a technological problem ([ e.g.,]
massive record flows which previously required massive databases)"
and "improve the performance of the system itself' (see Amdocs, 841
F.3d at 1302).
In this case, however, we find no element or combination of elements
recited in Appellant's claims 1, 12, and 18 that contains any "inventive
concept" or that adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 134 S. Ct. at 2357. As
discussed supra, we are not persuaded the added computer elements such as
computers, processing nodes, or parallel processors can transform the
abstract idea into a patent eligible invention. As our reviewing court has
observed: "[ A ]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible." DDR Holdings, 773 F.3d at 1256 ( citing Alice Corp., 134 S. Ct. at
2358)).
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Additional Argument
Appellant argues that the claims do not seek to tie up or preempt the
abstract idea of "storing and retrieving [electronic] receipts and
automatically identifying a retailer." App. Br. 26-27. However, this
argument is not persuasive because, although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter" under the Alice/Mayo
framework, "preemption concerns are fully addressed and made moot." Id.
Because Appellant's claims 1, 2, and 5-19 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of these claims under 35 U.S.C. § 101.
35 USC§ 103(a): Claims 1, 2, and 5-19
In support of the obviousness rejection of claim 1 and similarly,
claims 12 and 18, the Examiner finds Mazar teaches most aspects of
Appellant's claimed "method of identifying members of a population who
qualify for one or more health intervention programs," including:
( 1) "receiving one or more sets of raw patient population health data,
the one or more sets of raw patent population health data received
in a plurality of disparate formats" (Final Act. 4 ( citing Mazar ,r,r
16, 18, 22, 41--42)); and
(2) "automatically generating an identification of one or more
members of the population who qualify for the one or more
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health intervention programs" (Final Act. 4 (citing Mazar ,r,r 12,
41,46).
To support the conclusion of obviousness, the Examiner relies on
Sillay for teaching several missing features, including the disputed
limitation: "automatically mapping the one or more sets of raw patient
population health data to one or more high-level concepts or concept
groupings." Final Act. 4--5 (citing Sillay ,r,r 175, 233).
Appellant does not dispute the Examiner's factual findings regarding
Mazar. Nor does Appellant challenge the Examiner's rationale for
combining Mazar and Sillay. Instead, Appellant argues the Examiner's
combination of Mazar and Sillay does not teach or suggest "automatically
mapping the one or more sets of raw patient population health data into one
or more high-level concepts or concept groupings" recited in claim 1 and
similarly recited in claims 12 and 18. App. Br. 27-30.
We disagree. Paragraph 17 5 of Sillay describes that: ( 1) raw patient
healthcare data, including individual with disease data, can be aggregated,
processed, and mapped with a group of individuals diagnosed with a disease;
and (2) such a map, graph, or report may be made accessible to researchers,
to a group such as individuals or organizations within a government, a
company, or an association. Sillay ,r 175.
For this reason, we sustain the Examiner's obviousness rejection of
independent claims 1, 12, and 18 and claims 2, 5-11, 13-18, and 19
dependent therefrom.
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DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1, 2,
and 5-19 under 35 U.S.C. § 101 and 35 U.S.C. § 103(a).
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) (2011 ).
AFFIRMED
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