Ex Parte Camacho et al

Patent Trial and Appeal Board

Sep 26, 2017

13745542 (P.T.A.B. Sep. 26, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/745,542 01/18/2013 Godofredo T. Camacho P224348.US.02 2125
25763 7590 09/28/2017
DORSEY & WHITNEY LLP - MINNEAPOLIS
ATTENTION: PATENT PROSECUTION DOCKETING DEPARTMENT
INTELLECTUAL PROPERTY PRACTICE GROUP - PT/16TH EL
50 SOUTH SIXTH STREET, SUITE 1500
MINNEAPOLIS, MN 55402-1498
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/28/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip. docket @ dorsey .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GODOFREDO T. CAMACHO, KARL J. ULFERS,
IMAD AHMED, and LAURI R. MIDDLETON
Appeal 2016-002195
Application 13/745,5421
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3—8, 10, and 15—26. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify UnitedHealth Group Incorporated as the real party
in interest. Appeal Br. 4.
Appeal 2016-002195
Application 13/745,542
ILLUSTRATIVE CLAIM
1. A computer-implemented method for providing
customized healthcare path recommendations, the method
comprising:
using a computer processor programmed to:
receive consumer-reported information comprising
at least one of symptoms, conditions, or past medical
procedures during a consumer engagement with a
consumer interface communicatively coupled to the
computer processor;
generate a plurality of healthcare path
recommendations using the consumer-reported
information and using consumer medical information
stored in a database coupled to the computer processor;
transmit and display the plurality of healthcare
path recommendations to the consumer interface;
receive from the consumer interface personalized
information for the consumer based on the displayed
recommendations;
generate a plurality of customized healthcare path
recommendations using the received personalized
information and the plurality of healthcare path
recommendations, the plurality of customized healthcare
path recommendations comprising treatment options
from a plurality of providers, each with a plurality of
steps over a time range for addressing the health of the
consumer and estimated cost savings for the treatment
options under a health plan of the consumer, the
estimated cost savings for the treatment options
determined based on a cost difference between an
estimated cost of receiving a treatment option from a
provider and a reference cost, the reference cost at least
based on a past cost for receiving the same treatment
option;
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transmit and display the plurality of customized
healthcare path recommendations to the consumer
interface;
determine an estimated cumulative total cost for at
least one of the plurality of customized healthcare path
recommendations displayed, the estimated cumulative
total cost comprising an estimated cost to the consumer
for receiving the treatment option under the health plan
of the consumer;
determine estimated consumer costs for individual
steps in the plurality of steps within the at least one of the
plurality of customized healthcare path
recommendations;
identify where within the time range the estimated
consumer costs for the individual steps will be incurred
within the at least one of the plurality of customized
healthcare path recommendations; and
provide an indication of where the estimated
consumer costs will be incurred within the time range.
REJECTION2
Claims 1, 3—8, 10, and 15—26 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
ANALYSIS
Applying the first step of the two-step subject-matter-eligibility
analysis articulated in Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S. Ct. 2347, 2355 (2014), the Final Office Action states that the claims
are directed to the abstract idea of providing care path recommendations and
the associated costs, which is characterized as a form of organizing human
2 In addition to identified rejection, the Final Office Action (pages 2—4)
rejected claims 1, 3—8, 10, and 15—26 on the ground of non-statutory double
patenting over claims 1—26 of U.S. Patent No. 8,805,701. This rejection is
withdrawn. See Answer 2.
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Application 13/745,542
activity. Final Action 4—5. Further, under the second Alice step, the Final
Office Action states that the claimed features do not contain significantly
more than the abstract idea itself, but simply implement the abstract idea on
a computer. Id. at 6.
The Appellants contend that the Examiner has not sufficiently shown
that the claims are directed to an abstract idea, because the rejection lacks
record evidence. Appeal Br. 20.
Yet, as the Answer acknowledges, subject-matter eligibility is a
question of law that does not require supplemental evidence. Answer 5.
The Appellants further argue the claims may not be considered as
directed to an ineligible method of organizing human activity because they
are “not directed to a fundamental or long prevalent system.” Appeal
Br. 21-22.
However, the Examiner points out that the characterization does not
depend upon the subject matter being long-prevalent. See Answer 7—10.
Further, claim 1, for example, essentially concerns proposed contractual
relationships, which typify the category of organizing human activities. In
Alice, the Supreme Court explained that similar contractual arrangements
(involved in risk hedging) amounted to a “method of organizing human
activity.” Alice, 134 S. Ct. at 2356 (citing Bilski v. Kappos, 561 U.S. 593,
599 (2010)).
The Appellants also dispute the determination of the claims as an
abstract idea, because the claims in the Appeal purportedly are similar to an
exemplary claim of PTO guidance (concerning “isolating and removing
malicious code from electronic messages”) identified as not directed to an
abstract idea, because they are inextricably tied to computer technology —
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particularly as to the search-logging features of independent claim 17.
Appeal Br. 22—23.
The Appellants appear to refer to Example 1 of Examples: Abstract
Ideas 1—3 (Jan. 27, 2015),
https ://www.uspto .gov/ sites/default/files/ documents/abstract_idea_examples
.pdf. Yet, the Appellants do not explain why the claimed subject matter is
like the referenced exemplary method for removing malicious code from
electronic messages. Moreover, rather than being inextricably tied to
computer technology, claim 17 simply uses a computer as a tool for
collecting, processing, and displaying information. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016); see also Answer 10-
12.
The Appellants also argue that the identified abstract idea does not
include the concept of multiple people, relationships, or transactions (see
Reply Br. 4), but do not explain this position or why it might establish that
the appealed claims would not be directed to an abstract idea.
The Appellants also argue that the claims will not preempt others
from using the identified abstract idea. Appeal Br. 23—24.
However, lack of complete preemption does not establish eligibility.
See Answer 13. “While 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).
As to the second Alice step, the Appellants argue that the claims
provide significantly more than the identified abstract idea because they
recite “unconventional features” and because “the claims as a whole amount
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Application 13/745,542
to something significantly more.” Appeal Br. 25. Specifically, the
Appellants argue that claims 1 and 17 recite two separate “transmit and
display” steps relating to two different paths: a “plurality of healthcare path
recommendations” and a “plurality of customized healthcare path
recommendations.” Appeal Br. 26. Further, the claims require the
generation of specific costs and an indication of where the costs will be
incurred within a time range. Id. at 26—27. In addition, the Appellants point
to “complex calculations” involved in the claims that cannot be performed
mentally, and an alleged “transformation of data” in the claimed subject
matter, as giving rise to something significantly more than the identified
abstract idea. Id. at 29-30.
Yet, as the Examiner determines, these functionalities are all well-
understood, routine, and conventional computer-implemented operations.
See Answer 15, 18—19. In addition, it is not clear how the claims achieve
the alleged “transformation” (the term is not used in the claims), or why this
would be sufficient to provide significantly more than the abstract idea. See
id. at 20—21, 23.
Further, the Appellants contend that the claims should be patent-
eligible, because the claimed invention is novel and non-obvious. Appeal
Br. 29.
Yet, novelty/nonobviousness is not the test for subject-matter
eligibility, as the Examiner acknowledges. Answer 17, 21. Indeed, “[t]he
‘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.” Diamond
v. Diehr, 450 U.S. 175, 188—89 (1981). “Groundbreaking, innovative, or
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Application 13/745,542
even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass ’n
for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117
(2013).
In the Reply Brief, the Appellants contend that the claims of the
Appeal — like those of Ex parte Wegman, Appeal 2013-008168 (PTAB
Sept. 22, 2015) — are concrete, such that they should be outside the realm of
abstract ideas. Reply Br. 6.
Although a different panel’s analysis of different claims in a different
matter is not controlling, the Appellants do not explain why Wegman is
germane to the present case.
Also, in the Reply Brief, the Appellants argue that exemplary patent-
eligible claim 4 of Example 23, in guidance provided by the Office, is
purportedly similar to the present claims. Reply Br. 8—10.
The Appellants do not adequately explain the comparison. The
referenced exemplary claim involves altering the spatial arrangement of
content displayed in a graphical user interface, which is said to improve the
capacity of the computer to display information and interact with the user.
See July 2015 Update Appendix 1: Examples, 7—12,
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-appl.pdf.
By contrast, claim 1 of the Appeal does not describe how the claimed
“interface” operates, and the Appellants do not demonstrate any meaningful
similarity with the identified claim of Example 23.
The Appellants’ arguments are unpersuasive of error in the rejection.
Accordingly, we sustain the rejection of claims 1, 3—8, 10, and 15—26 under
35U.S.C. § 101.
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DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 3—8, 10, and
15-26 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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