Ex Parte CANNON et al

Patent Trial and Appeal Board

Dec 18, 2018

14266352 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/266,352 04/30/2014
46169 7590 12/20/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
PAUL CANNON
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.205668 4917
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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 PAUL CANNON, CHARLES DONNICI, TANNER MARVIN,
and JOSHUA BRASEL
Appeal2017-010519
Application 14/266,352 1
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Cemer Innovation,
Inc. App. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed March
31, 2017; the Reply Brief ("Reply Br.") filed August 10, 2017; Examiner's
Answer ("Ans.") mailed June 23, 2017; Final Office Action ("Final Act.")
mailed October 3, 2016; and original Specification ("Spec."), filed April 30,
2014.
Appeal2017-010519
Application 14/266,352
STATEMENT OF THE CASE
Appellants' invention relates to a method and system that "facilitate
patient searches by providing a search quality indicator for presentation to a
user entering a patient search input" to indicate to the user a likelihood that
"the search input will return search results that will allow the user to identify
a search result corresponding with a desired patient." Abstract. Appellants'
invention provides "a common name data store ... that lists common names
appearing in a patient database," and "[ w ]hen a user enters search input, the
common names data store is queried to determine if the search input matches
a common name in the common names data store." Spec. ,r,r 23-24. If a
match is determined, a notification may be provided to the user indicating
"that the search input includes a common name, the search will return too
many results, and/or additional search criteria should be entered." Spec.
Claims 1, 12, and 19 are independent. Claim 1 illustrates Appellants'
invention, as reproduced below:
1. One or more computer storage media storing computer-
useable instructions that, when used by one or more computing
devices, cause the one or more computing devices to perform
operations comprising:
receiving user input via at least one of a plurality of input
fields in a patient search user interface, each input field
corresponding with a different type of search criteria;
determining a search quality score without querying a
patient database, the search quality score being determined based
on the user input using an algorithm that includes a weighting for
each type of search criteria; and
providing a search quality indicator based on the search
quality score for presentation in conjunction with the patient
search user interface.
2
Appeal2017-010519
Application 14/266,352
App. Br. 23-27 (Claims App.).
EXAMINER'S REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 2---6.
ANALYSIS
In Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Labs., 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. See Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); see also
Enfish, 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 "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 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
3
Appeal2017-010519
Application 14/266,352
[ineligible concept] itself."' Id. ( citing Mayo, 566 U.S. at 72) (alterations in
original).
In rejecting independent claims 1, 12, and 19, and dependent claims
2-11, 13-18, and 20 under 35 U.S.C. § 101, the Examiner finds these claims
are directed to the abstract idea of"[ c ]ollecting known information and
using rules to compare within a patient database to determine a search
quality score" based on received inputs, which is similar to data collection
and manipulation techniques previously identified by the courts. Final Act.
3 (citing Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057
(Fed. Cir. 2011)); Ans. 6-7 (citing Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353-54 (Fed. Cir. 2016)).
The Examiner also finds the claims do not include additional elements
sufficient to amount to significantly more than the abstract idea, as the
claims merely require a "generic computer structure that serves to perform
generic computer functions." Final Act. 4--5. The Examiner finds that
determining a "search quality score ... without querying the patient
database does not show significantly more since it uses a general purpose
computer to calculate a score." Final Act. 8.
Alice/Mayo-Step 1
Turning now to the first step of the Alice inquiry, Appellants contend
independent claims 1, 12, and 19 are not directed to an abstract idea because
the claims are similar to the claims in McRO. App. Br. 10-12 (citing McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016));
Reply Br. 4--5. Particularly, Appellants argue the claims "recite a specific
combination of steps" that improve over "existing patient search systems'
failure to handle ambiguous search queries through the use of specific rules
4
Appeal2017-010519
Application 14/266,352
to generate a patient search score without querying the patient database."
Reply Br. 4; App. Br. 12. Appellants argue the claimed search quality score
advantageously "indicate[ s] the likelihood the search input will return search
results that will allow the user to identify a search result corresponding with
a desired patient." App. Br. 11.
Appellants' arguments are not persuasive. At the outset, we note
these arguments are not commensurate with the scope of claims 1, 12, and
19. Claims 1, 12, and 19 do not recite or require executing "ambiguous
search queries" or "unambiguous searches on patient databases," as
Appellants argue. See Reply Br. 4; App. Br. 11. Claim 1, for example,
merely requires receiving user input via an input field ("at least one of a
plurality of input fields ... each input field corresponding with a different
type of search criteria"), and determining "a search quality score" and
"indicator" based on that user input. The claim does not require the search
quality score to "indicate the likelihood the search input will return search
results that will allow the user to identify a search result corresponding with
a desired patient," as Appellants assert. See App. Br. 11. Performing a
search or identifying search results is not required by the claim. Further, the
claimed without querying a patient database does not evidence an
improvement (e.g., "over existing patient search systems' failure to handle
ambiguous search queries," see Reply Br. 4), because claim 1 is unclear as
to any relationship between (i) a patient database that is not queried and (ii)
the patient search user interface, and the received user input. 3 The claim
3 We also note Appellants' Specification does in fact describe querying a
patient database ("When a user enters search input into the patient search UI
... the common name module 216 queries the common names data store
5
Appeal2017-010519
Application 14/266,352
also does not specify or impose any bounds on the "user input," "algorithm,"
and "weighting" for the search criteria.
We therefore agree with the Examiner that Appellants' claims and
Specification do not demonstrate technological process improvements as
McRO does. Ans. 7. Particularly, the court determined that McRO's claim
was not directed to an abstract idea because it "uses the limited rules in a
process specifically designed to achieve an improved technological result"
over "existing, manual 3-D animation techniques"; in contrast, Appellants'
claimed series of steps in claim 1 determines a "score" and an "indicator"
based on a user's input in an input field, and then presents the "indicator"
using a user interface. See McRO, 837 F.3d 1299, 1316; Ans. 7; Spec.
,r,r 23-25. We are not persuaded that Appellants' generated score and
indicator "improve[] ... [an] existing technological process." See Reply Br.
4.
Additionally, the claims in McRO were drawn to improvements in the
operation of a computer performing a task, rather than applying a computer
system to perform known data collection, processing, and displaying steps
( e.g., receiving user input, determining a search quality score, and providing
a search quality indicator for presentation in conjunction with a patient
search user interface as in Appellants' claim 1). See McRO, 837 F.3d at
210 to determine whether the search input matches a common name"). See
Spec. ,r,r 23, 42. The common names data store 210, which "lists common
names appearing in a patient database," is "generated by querying the patient
database to identify names that occur in the patient database more frequently
than some configurable threshold number." See Spec. ,r 23. That is,
Appellants' score determination queries one patient database (the common
names data store 210) while not querying another patient database (patient
database 208). See Spec. ,r,r 42, 47.
6
Appeal2017-010519
Application 14/266,352
1314. Particularly, McRO's claims and Specification employ "rules that
define output morph weight set stream as a function of phoneme sequence
and time of said phoneme sequence" to "achieve an improved technological
result." See McRO, 837 F.3d at 1310, 1316. McRO's improved
technological result allows "computers 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. Appellants have not demonstrated their claimed method,
including determining a score and providing an indicator, "improves the
relevant technology" rather than being "directed to a result or effect that
itself is the abstract idea and merely invoke[ s] generic processes and
machinery." See McRO, 837 F.3d at 1314 (citing Enfzsh, 822 F.3d at 1327,
1336).
We are also not persuaded by Appellants' arguments that the
Examiner overgeneralized and mischaracterized the claims using dissimilar
court decisions. App. Br. 7; Reply Br. 2. Specifically, Appellants argue the
claimed "features regarding how to provide a search quality indicator based
on a search quality score without querying the patient database" are
dissimilar to Classen's data comparisons. App. Br. 9 ("There is no
comparison of known information [in claims 1, 12, 19]. The search input is
not compared against the patient database"); see Reply Br. 2-3. Appellants'
argument is not persuasive because Appellants' claim 1, for example, does
not exclude comparisons, and the Specification does in fact describe
comparisons against a patient database, as discussed supra. See Spec. ,r,r 23,
42. Appellants also argue the claims are dissimilar to Electric Power Group
because "[ t ]he claimed process can only be performed in the context of a
7
Appeal2017-010519
Application 14/266,352
computer-based database search system .... [and] cannot essentially be a
mental process." Reply Br. 3. This argument is not persuasive because the
claimed data processing steps ( of determining a score and presenting an
indicator based on the user's search input) are capable of being performed
by pen and paper (e.g., by manually searching and estimating based on a
user's selected search criteria) and insignificant data input and output
operations. Ans. 9; see Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of
Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[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."); and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir.
2012) ("Simply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.").
We therefore agree with the Examiner, the claims are abstract because
they are directed to collecting information (user input in an input field), and
providing a score and presenting an indicator based on the received inputs-
an abstract idea similar to data collection and manipulation techniques
previously identified by the courts in Classen, Electric Power Group,
Content Extraction, and Intellectual Ventures cases. Final Act. 3, 6; Ans. 6-
7; see Classen, 659 F.3d at 1067---68; Elec. Power Grp., 830 F.3d at 1353-54
(Holding that the claims were directed to an abstract idea because "[ t ]he
advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.");
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
8
Appeal2017-010519
Application 14/266,352
776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (Finding "[t]he concept of data
collection, recognition, and storage is undisputedly well-known," and
"humans have always performed these functions"); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) (Tailoring information presented to a user based on particular
information); and Intellectual Ventures I LLC v. Erie Indemnity Co., 850
F.3d 1315, 1328 (Fed. Cir. 2017) (Claims directed to creating an index of
descriptive tags and metadata and using the index to search for and retrieve
data is an abstract idea).
Accordingly, we agree with the Examiner that claims 1, 12, and 19 are
directed to an abstract idea.
Alice/ Mayo-Step 2 (Inventive Concept)
Appellants allege the claims amount to significantly more than an
abstract idea because "[ t ]he claims recite an inventive concept that provides
a technology-based solution to a technical problem and affect an
improvement in a technology field," similar to the claims in DDR and
Bascom. App. Br. 13, 15-17 (emphasis omitted). Particularly, Appellants
assert claims 1, 12, and 19 are "necessarily rooted in technology" and
"address problems associated with querying electronic patient databases ....
[t]hese problems don't exist outside of the realm of such patient databases
and search tools." App. Br. 17 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)); see Reply Br. 6-7. Appellants
also assert claims 1, 12, and 19 improve a technological process by not
querying the patient database, instead presenting a search quality indicator
"regarding the quality of the search in the sense of the likelihood a set of
search results would be returned using the received search input that will
9
Appeal2017-010519
Application 14/266,352
allow the user to find a desired patient." App. Br. 15-17 (citing BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)).
Appellants' arguments are not persuasive because claims 1, 12, and 19
do not recite or require indicating a "quality of the search in the sense of the
likelihood a set of search results would be returned ... that will allow the
user to find a desired patient," as Appellants assert. See App. Br. 16. Claim
1, for example, merely requires receiving user input via an input field and
presenting a score and an indicator via a user interface. Appellants' claims
and Specification also do not identify a specific improvement to computer
technology or computer operation effected by the claims, as BASCOM did.
Ans. 9-10. In contrast, BASCOM's patent-eligible ordered combination of
claim limitations contains an "inventive concept [that] harnesses [a]
technical feature of network technology in a filtering system by associating
individual accounts with their own filtering scheme and elements while
locating the filtering system on an ISP [Internet Service Provider] server."
See Bascom, 827 F.3d at 1350-52. BASCOM's patent-eligible ordered
combination of claim limitations "improve[ s] the performance of the
computer system itself' with a "technology-based solution ... to filter
content on the Internet that overcomes existing problems with other Internet
filtering systems." See BASCOM, 827 F.3d at 1351-52.
We are also not persuaded by Appellants' arguments that their claims
are similar to the claims in DDR. App. Br. 15-17; Reply Br. 5-7.
Appellants have not demonstrated their claimed generic computing elements
(i.e., the claimed computing devices and processors, patient search user
interface, and patient database), in combination, are able to perform
10
Appeal2017-010519
Application 14/266,352
functions that are not merely generic, as the claims in DDR. Ans. 8-9; see
DDR Holdings, 773 F.3d at 1257-58 (Holding the claims at issue patent
eligible because "they do not broadly and generically claim 'use of the
Internet' to perform an abstract business practice (with insignificant added
activity)" and "specify how interactions with the Internet are manipulated to
yield a desired result-a result that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a hyperlink. ").
Additionally, Appellants' claims focus on the problem of finding medical
records in patient data repositories-a problem that is not a technical
problem or one rooted in computer technology or particular only to the
Internet. See Spec. ,r 2; see also Ans. 7-9. Although this problem may be
pertinent to electronic databases, the problem is equally pertinent to searches
in paper-based data repositories. Correctly identifying records of patients
having common or popular names is "a problem that existed and continues
to exist outside of the realm of the technology." Ans. 9.
In fact, none of the steps and elements recited in Appellants' claims
provide, and nowhere in Appellants' Specification can we find, any
description or explanation as to how the claimed determination of a search
quality score and indicator are intended to provide a patent-eligible
invention such as: (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, 773 F.3d at 1257; (2) "a specific improvement to the way
computers operate," as explained in Enfzsh, 822 F.3d at 1336; or (3) an
"unconventional technological solution ... to a technological problem" that
"improve[ s] the performance of the system itself," as explained in Amdocs
11
Appeal2017-010519
Application 14/266,352
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, and 1302 (Fed.
Cir. 2016). See Ans. 9--10.
Appellants next argue "the absence of any explanation by the
Examiner showing that the claimed features are well-understood, routine,
and conventional" shows the Examiner has failed to establish a prima facie
case of patent ineligibility. Reply Br. 5, 8; see App. Br. 20-21. Appellants
argue "the rejection completely ignores features of the claims" reciting how
the search quality indicator is generated, and does not show "why such
features do not provide significantly more than the Examiner-asserted
abstract idea." Reply Br. 8-9; see App. Br. 21. The claims, Appellants
assert, "include elements that are not well-understood, routine and
conventional in the field, as evidenced by the absence of any prior art
rejections." App. Br. 17-18.
Appellants' arguments are not persuasive. First, we note the
Examiner did not ignore the limitations reciting how the search quality
indicator is generated. As discussed supra, the Examiner finds, and we
agree, the claimed "determining a search quality score without querying a
patient database" and "providing a search quality indicator" perform generic
data processing previously identified by the courts as an abstract idea. Final
Act. 3, 6; Ans. 6-7. The Examiner further notes claims 1, 12, and 19
perform this generic data processing using generically claimed computing
devices and user interface. Ans. 7-8, 11 (citing Spec. ,r,r 27-30); Final Act.
5 (citing Spec. ,r,r 32-33). We find the Examiner's referencing the generic
nature of the computing elements as discussed in Appellants' Specification
and recited in Appellants' claims provides sufficient evidence of generic
processor and user interface used to implement the abstract idea recited in
12
Appeal2017-010519
Application 14/266,352
the claims. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed.
Cir. 2014) ("Adding routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on public
access, and use of the Internet does not transform an otherwise abstract idea
into patent-eligible subject matter."); SiRF Tech., Inc. v. Int 'l Trade
Comm 'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) ("In order for the addition of
a machine to impose a meaningful limit on the scope of a claim, it must play
a significant part in permitting the claimed method to be performed, rather
than function solely as an obvious mechanism for permitting a solution to be
achieved more quickly, i.e., through the utilization of a computer for
performing calculations.").
Thus, we agree with the Examiner that Appellants have not identified
an inventive concept that would be "significantly more" than the abstract
idea of collecting and providing information recited in Appellants' claims.
We are also unpersuaded by Appellants' argument regarding the
absence of prior art rejections (see App. Br. 17-18), and we note the
Supreme Court emphasizes: "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." Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981) ( emphasis added). Our reviewing court further guides that
"[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that "[ e ]ven assuming" that a particular claimed
feature was novel does not "avoid the problem of abstractness").
13
Appeal2017-010519
Application 14/266,352
Further, with respect to Appellants' preemption argument (App. Br.
19-20; Reply Br. 8), we note the McRO court explicitly "recognized that
'the absence of complete preemption does not demonstrate patent
eligibility."' See McRO, 83 7 F .3d at 1315 ( quoting 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." Ariosa, 788 F.3d at 1379.
Accordingly, claims 1, 12, and 19, when considered "both
individually and 'as an ordered combination,"' amount to nothing more than
an attempt to patent the abstract idea embodied in the steps of the claims.
See Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
Because we agree with the Examiner's analysis and find Appellants'
arguments insufficient to show error, we sustain the Examiner's § 101
rejection of independent claims 1, 12, and 19, and dependent claims 2-11,
13-18, and 20 argued together with the independent claims. App. Br. 5, 7-
9, 15, 18; Reply Br. 3, 8-9; see 37 C.F.R. § 4I.37(c)(l)(iv).
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-20 under
35 U.S.C. § 101.
DECISION
As such, we affirm the Examiner's final rejection of claims 1-20
under 35 U.S.C. § 101.
14
Appeal2017-010519
Application 14/266,352
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
15