Ex Parte Carlsgaard et al

Patent Trial and Appeal Board

Oct 11, 2018

13462055 (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/462,055 05/02/2012
98067 7590 10/15/2018
Harness Dickey & Pierce (Roche)
5445 Corporate Drive, Suite 200
Troy, MI 48098-2683
FIRST NAMED INVENTOR
Eric S. Carlsgaard
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.
30797 US-3 5801
EXAMINER
GORT, ELAINE L
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/15/2018 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
Ex parte ERIC S. CARLSGAARD, MARK G. MEARS,
ROBERT E. REINKE, and JUSTIN DAVID ADAMS
Appeal2017-007217
Application 13/462,055
Technology Center 3600
Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and
NORMAN H. BEAMER, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/462,055
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 11-14 and 16-26. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a user interface features for a diabetes
management application contextualizing manual entries of blood glucose
measures for a patient into a patient log of a portable computing device.
Claim 11, reproduced below, is illustrative of the claimed subject matter:
11. A computer-implemented method for displaying results of
at least a three-day structured collection procedure of blood
glucose measures obtained by a blood glucose meter to a user of
a portable computing device, comprising
administering, by the computing device, a structured
collection procedure over a period of three days to the user,
where the structured collection procedure specifies seven future
events of pre-breakfast, post-breakfast, pre-lunch, post-lunch,
pre-dinner, post-dinner, and bedtime and an acceptance window
that is prospective for each of the plurality of future events for
obtaining blood glucose measures from a patient throughout the
course of a given day;
obtaining blood glucose measures from the patient by the
user operating the blood glucose meter to perform the structured
collection procedure over the period of three days;
1 Appellants indicate that Roche Diabetes Care, Inc. is the real party in
interest. App. Br. 3.
2 We herein refer to the Final Office Action, mailed Nov. 3, 2015 ("Final
Act."); Appeal Brief, filed June 3, 2016 ("App. Br."); Examiner's Answer,
mailed Feb. 9, 2017 ("Ans."); and the Reply Brief, filed Apr. 7, 2017
("Reply Br.").
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transferring blood glucose measures from the blood
glucose meter to the computing device by the user;
determining, by a sensor residing in the computing device,
an orientation of a display of the computing device;
displaying, on a display of the computing device, a first
graph for the structured collection procedure in response to a
determination that a longitudinal axis of the display is orientated
vertical, the first graph plots blood glucose measures from the
seven predetermined events that meet the acceptance window
that is prospective from each of the three days on the first graph
such that one axis of the first graph represents time during a
single day and blood glucose measures for each day is a time
series represented by a separate line on the first graph; and
displaying, on a display of the computing device, a second
graph for the structured collection procedure in response to a
determination that the longitudinal axis of the display is
orientated horizontal, the second graph plots blood glucose
measures from the seven predetermined events that meet the
acceptance window that is prospective for each of the three days
on the second graph such that one axis of the second graph
represents time over three days and blood glucose measures are
a time series represented by a single line on the second graph.
(App. Br., Claims Appendix, 20-21.)
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rosman et al., US 2007/0128682 Al
hereinafter "Rosman"
Weinert et al., US 2008/0177149 Al
hereinafter "Weinert"
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June 7, 2007;
July 24, 2008;
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Application 13/462,055
Soni et al.
hereinafter "Soni"
US 2010/0218132 Al
REJECTIONS
The Examiner made the following rejections:
Aug. 26, 2010;
Claims 11-14 and 16-26 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. (See Final Act. 2-3.)
Claims 11-14 and 19-23 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Soni in view of Rosman. (See Final Act. 3-13.)
Claims 16-18 and 24--26 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Soni in view of Rosman in further view of Weinert.
(See Final Act. 13-20.)
ANALYSIS
Patent eligibility under 35 U.S.C. § 101
In Alice, the Supreme Court sets forth an analytical "framework 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. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012)). 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. (citing Mayo, 566 U.S. at 77-78). 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
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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). 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.
(brackets in original) (quoting Mayo, 566 U.S. at 72-73). The prohibition
against patenting an abstract idea "'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
adding 'insignificant post-solution activity."' Bilski v. Kappas, 561 U.S.
593, 610-11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, the Examiner maintains
that independent claims 11 and 19 are directed to abstract ideas. The
Examiner finds that the claims are directed to:
the abstract idea of administering a structured collection
procedure, obtaining patient blood glucose measures,
transferring the blood glucose measures, determining orientation
display to display a first & second graph for the structured
collection procedure, which is interpreted as the abstract idea of
comparing new & stored information using rules to identify
options.
(Final Act. 2).
Appellants' arguments, discussed below along with a discussion of
various findings and conclusions of the Examiner, raise the dispositive issue
of whether or not the claims are directed to an abstract idea at all. As further
explained below, we find the Examiner has overgeneralized the claims in
formulating the rejection. Moreover, we find the Examiner provides little
analysis and factual support for the proffered findings that elements of the
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claimed invention are "well-known, routine, and conventional" in many
areas of business. (Final Act. 2).
Appellants contend:
Furthermore, the claim does not recite a basic concept that is
similar to any abstract idea previously identified by the courts.
For example, the claim does not recite any mathematical concept
or mental process that can be performed in the human mind.
Additionally, the claim does not recite any other judicial
exception. In contrast, the examiner asserts that the claims are
directed to "the abstract idea of comparing new & stored
information using rules to identify options" (see page 2 of the
Office Action dated June 23, 2015). As recently noted by the
Federal Circuit, "describing the claims at such a high level of
abstraction and untethered from the language of the claims all
but ensures that the exceptions to § 101 swallow the rule".
Applicant contends the examiner's assertion is overly broad and
the claim is not directed to an abstract concept. The Board's
attention is also directed to the recent Federal Circuit decision of
Enfish v. Microsoft Corp. which held that improvements in
computer-related technology are not inherently abstract.
Accordingly, claim 11 is not directed to a judicial exception and
thus constitutes eligible subject matter.
Assuming arguendo that this claim recites an abstract
concept, claim 11 recites meaningful limitations that amount to
significantly more than the abstract concept of "comparing new
& stored information" as identified by the examiner. For
example, claim 11 recites "obtaining blood glucose measures
from the patient by the user operating the blood glucose meter to
perform the structured collection procedure over the period of
three days; [and] transferring blood glucose measures from the
blood glucose meter to the computing device by the user". Thus,
the claim as a whole adds meaningful limitations beyond
comparing and storing new information. Additionally, the
determining and displaying steps of the claim improve the
manner in which the glucose measures are presented to the
patient. These additional claim limitations should be considered
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both individually and as an ordered combination. The
examiner's rejection only considered the steps individually and
no detailed assessment of the combination has been provided.
When taken as a whole, claim 11 has additional limitations that
amount to significantly more than the abstract concept and thus
recited patent eligible subject matter. Accordingly,
reconsideration and withdrawal of this rejection are respectfully
requested.
(App. Br. 12-13).
The Examiner finds the claims:
are directed to the abstract idea of administering a structured
collection procedure, obtaining patient blood glucose measures,
transferring the blood glucose measures, determining orientation
display to display a first & second graph for the structured
collection procedure, which is interpreted as the abstract idea of
comparing new & stored information using rules to identify
options. While the claims do not explicitly recite "comparing
new & stored information using rules to identify options", the
concept of "comparing new & stored information using rules to
identify options" is described by the functional steps of
administering a structured collection procedure, obtaining
patient blood glucose measures, transferring the blood glucose
measures, determining orientation display to display a first &
second graph for the structured collection procedure.
(Final Act. 2). The Examiner further finds:
The claim( s) does/ do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the computer as recited is a generic computer
component that performs generic computer functions that are
well- understood, routine, and conventional activities previously
known to the industry. See [0030-39] of the Specification, which
discloses a generic computer system consisting of portable
computing device, logging module, test administration module,
reminder interface module & sensors.
(Final Act. 2). The Examiner further finds:
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The claim recites a basic concept that is similar to identified
abstract idea(s) previously identified by the courts, such as "An
idea of itself' as referenced in Alice Corp. An example of "An
idea of itself' are the concept that it is analogous to the court-
defined abstract ideas outlined in (Smartgene), (Classen)&
(Electric Power Group), all of which are analogous to the
obtaining, transferring, determining, comparing & outputting
steps found in the Applicants' claims.
(Ans. 2). The Examiner's response to Appellants' argument regarding DDR,
the Examiner finds the present claims merely:
implement the known practice of "administering stored data"
AND obtaining, transferring, comparing ( determining),
outputting decision based on comparison in a new environment.
(See Alice, 134 S. Ct. at 2356) Further, there are no
unconventional steps recited in the claims. The claims are
directed to an abstract idea as shown in the previous Office
Action. The Examiner asserts that the claimed methods do not
amount to more that the identified abstract ideas. The claims do
not solve an unconventional problem; they solve a problem
utilizing computer technology. These are two different things.
The purported improvements of the claimed invention improve
the same technical field, not another. The claimed invention does
not improve the functioning of the computer and, actually, there
are no claims directed to such an improvement. The Examiner
notes that performing a method on a computerized-device may
make the method perform better ( which is what computers are
for), but it does not physically improve the function of the
computer at all. The CAFC has again reiterated that "our
precedent is clear that merely adding computer functionality to
increase the speed or efficiency of the process does not confer
patent eligibility on an otherwise abstract idea." (Intellectual
Ventures ILLC v. Capitol One Bank (USA), No. 2014-1506, slip
op. at 12 (Fed. Cir. July 6, 2015).
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(Ans. 3). In response to Appellants' arguments regarding Enfzsh, the
Examiner finds:
claims are considered to be directed to a patent-ineligible concept
where the focus of the asserted claims is on collecting
information, analyzing it, and displaying certain results of the
collection and analysis. Information as such is an intangible.
Accordingly, we have treated collecting information, including
when limited to particular content (which does not change its
character as information), as within the realm of abstract ideas.
In a similar vein, we have treated analyzing information by steps
people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-
idea category. And we have recognized that merely presenting
the results of abstract processes of collecting and analyzing
information, without more ( such as identifying a particular tool
for presentation), is abstract as an ancillary part of such
collection and analysis. Here, the claims are clearly focused on
the combination of those abstract-idea processes. The 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 "specific improvements" for performing
those functions. They are therefore directed to an abstract idea.
The 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 "specific improvements" for
performing those functions.
(Ans. 3--4). Finally, in response to Appellants' arguments that the Examiner
has not considered the limitations as an ordered combination, the Examiner
finds:
Rather, these limitations [sic, are] correspond to concepts
identified as abstract ideas by the courts, such as "an idea of
itself' in Alice (i.e. "comparing new & stored information using
rules to identify options" in (SmartGene) or "Collecting
information, analyzing it, and displaying certain results of the
collection and analysis" (Electric Power Group)) In addition, the
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Examiner points out the Applicants' Specification [86,93-94]
discloses general purpose computer hardware, to merely execute
the loaded software. However, merely adding the software, does
not make the device(s) "special purpose" or constitute
"significantly more", rather it merely frames the identified
abstract concept in a technical environment because the claims
fails to solve a technological problem or provide a specific
technique for actually transformation of the disclosed data.
(Ans. 5).
Appellants renew their contention that:
the examiner's assertion is overly broad and the claim is not
directed to an abstract concept. The Federal Circuit has
cautioned against "describing the claims at such a high level of
abstraction and untethered from the language of the claims all
but ensures that the exceptions to § 101 swallow the rule." See,
Enfish v. Microsoft Corp
(Reply Br. 3). Appellants further contend:
the Court reasoned that "Recent decisions emerging from the
Federal Circuit that have held claims to be patent eligible. In
particular, the Board's attention is drawn to Trading
Technologies Int 'l, Inc. v. CQG, Inc. In this case [Trading
Technologies] the claims relate to a method and system for
electronic trading of stocks, bonds, futures, options and similar
products
the claims [in Trading Technologies] 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". The Court went on to say
"ineligible claims generally lack steps or limitations specific to
solution of a problem, or improvements in the function of
technology". Similar reasoning was used by the Court to find
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that claims directed to processes for automated lip
synchronization animation were patent eligible. MCRO, Inc., v.
Bandai Namco Games America Inc. 837 F.3d 1299 (Fed. Cir.
2016). In this case, the Court also stated "the claim uses the
limited rules in a process specifically designed to achieve an
improved technological result".
Claims in the pending application are more analogous to
the claims in these two decisions than any court decision
identified by the examiner.
(Reply Br. 4). Finally, Appellants contend:
applicant's claims improve diabetes care by enabling patients to
better understand their glucose measurements as well as
contextual and other factors that impact glucose measurements.
Specifically, the claim addresses the problem of presenting
measurements, such as glucose measures, taken over multiple
days in an intuitive and comprehendible manner on the display
of a portable computing device. By reciting limitations that are
specifically designed to achieve an improvement, the pending
claims are patent eligible. That is, claims 11 and 19 are not
directed to a judicial exception and thus constitutes eligible
subject matter.
(Reply Br. 5).
We agree with Appellants that the Examiner's rejection was
formulated at too high of a level of abstraction which did not correlate well
with the express language of independent claim 11. Furthermore, the
Examiner's rejection does not address the two conditional steps of
"displaying ... " two different display functions relative to a determination of
the physical orientation of the display device so as to be more
appropriate/useful display depending on the orientation of the display
device. We find the Examiner has not addressed this distinction in the
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analysis for patent eligible subject matter. 3 As a result, we conclude that the
Examiner erred in his underlying factual findings and ultimate conclusion of
a lack of patent eligible subject matter because the Examiner's analysis
overgeneralized the claimed invention and additionally therefore
overgeneralized the sequence of steps as a whole as an appropriate ordered
combination.
We agree with Appellants on each of the separate arguments above.
In the patent eligibility rejection, the Examiner must present evidence or a
convincing line of reasoning why invention as recited in claim 1 would not
have been patent eligible. We find the Examiner's analysis to be flawed
based upon an over generalization of the abstract idea and oversimplification
of the recited claim functions. Because we find the Examiner has erred in
the finding of an abstract idea and basing of the remainder of the analysis
upon this finding, we cannot sustain the Examiner's conclusion of a lack of
patent eligible subject matter of independent claim 11 and its respective
dependent claims based upon the Examiner's stated analysis.
3 We do note that the Examiner identified para. 86 of Appellants'
Specification in the obviousness rejection, but the Examiner did not make
any specific findings regarding "well-known routine and conventional" steps
in the patent eligibility determination. ("More specifically, a determination
is made as to the orientation of the display being used to present test results.
That is, whether the display ( or a longitudinal axis thereof) is oriented
vertically or horizontally. One or more accelerometers and/or other types of
sensors residing in the computing device may be used to determine the
orientation. Such techniques are commonly found in mobile computing
devices." (Spec. ,r 86)( emphasis added).
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With respect to independent claim 19, the Examiner did not meet this
initial burden because the Examiner did not address the totality of the
claimed invention. As a result, we cannot sustain the Examiner's patent
eligibility rejection of independent claim 19 and its corresponding dependent
claims.
Obviousness under 35 U.S.C. § 103
With respect to the obviousness of independent claim 11, Appellants
set forth that the Examiner has erred in the obviousness rejection over the
combination of the Soni and Rosman references because as conceded by the
Examiner the Soni reference does not teach the two different graphs and the
Examiner has relied upon the Rosman reference to teach or suggest the two
different graphs. (App. Br. 14). Appellants contend that the Rosman
reference discloses two separate graphs which are the same format and are
not displayed in response to a determination of a display orientation. (App.
Br. 15). Additionally, Appellants contend that the Rosman reference does
not teach the specific graphs as recited in the language of independent claim
11. (App. Br. 15). Appellants further contend that independent claim 11
additionally recites the step of determining by a sensor and the identified
portion of the Soni reference in paragraph 60 does not teach the use of any
orientation sensor. (App. Br. 17). Appellants further contend that the
Examiner's rejection does not recognize the link between determining
orientation of the device and the format of the graph being displayed. (App.
Br. 17-18).
In the Examiner's Answer, the Examiner attempts to remedy the noted
deficiencies set forth by Appellants. Specifically, the Examiner maintains:
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Applicants' Specification [86] states: "a determination is first
made at 1302 as to the orientation of the computing device. More
specifically, a determination is made as to the orientation of the
display being used to present test results. That is, whether the
display ( or a longitudinal axis thereof) is oriented vertically or
horizontally ... One or more accelerometers and/or other types
of sensors residing in the computing device may be used to
determine the orientation. Such techniques are commonly found
in mobile computing devices."
(Ans. 5 [emphasis omitted]). By relying upon Appellants' Specification, the
Examiner appears to be further relying upon well-known features of "mobile
computing devices" in the grounds of the rejection, but the Examiner has not
shown that the devices of the Soni or the Rosman references would have
been well-known "mobile computing devices" which would have had a need
for the use of "such techniques."
While we agree with the Examiner that portable/mobile computing
devices with a touch screen inputs at the time of the invention may have
additionally had well-known sensors for those inputs, the Examiner did not
rely upon well-known mobile computing devices in the grounds of the
rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) ("[W]here
a reference is relied on to support a rejection, whether or not in a 'minor
capacity,' there would appear to be no excuse for not positively including
that reference in the statement of the rejection.").
Additionally, we note that the Soni reference is assigned to the same
real party in interest (Roche Diabetes Care, Inc.) and was a prior art glucose
monitoring device with a display which is relatively similar in both the X
and Y dimensions, which we find would have no perceived benefit having
the addition of an orientation sensor because of the same physical
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dimensions of the display in both the X and Y directions. Nor has the
Examiner identified any teaching or suggestion in the Rosman reference for
having an orientation sensor and having corresponding two different graphs
for differing orientations.
Finally, the Examiner finds:
Further, the Examiner points out the Applicants' drawings (Fig:
12, 14A-B) show the type of data being measured on the Latitude
Axis (is TIME) & Longitudinal Axis (is Glucose), it [sic, in] both
orientations, therefor the type data being displayed the same type
of data in each orientation. The Examiner points out this is this
merely incorporating the commonly known features of
alternating between "Landscape" and "Portrait" display which is
a commonly known features to many computer devices,
including portable computing devices (Applicant's Fig: 12 shows
display on an "Android" phone)
(Ans. 5---6).
Again, the Examiner's reliance upon Appellants' Specification,
drawings and the detailed description in responding to Appellants'
arguments regarding the prior art rejection does not show the combination of
the Soni and Rosman references would have taught or suggested the claimed
invention at the time of filing based upon the teachings within each of the
two references. Additionally, the Examiner oversimplifies Appellants'
Figures 14A and 14B where the data for three separate days in Figure 14A is
overlaid upon each other whereas in Figure 14 B the graphs for the three
separate days are appended/concatenated end to end rather than overlaid
upon each other. Consequently, the varied screen dimensions correspond to
the varied presentation of the same data in differing formats.
We agree with Appellants on each of the separate arguments.
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In the obviousness rejection, the Examiner must present evidence or a
convincing line of reasoning why the prior art would have taught or
suggested the invention as recited in claim 11 and its corresponding
dependent claims. Here, the Examiner has not met the initial burden and
therefore we cannot sustain the Examiner's decision to reject independent
claims 11 and 19 that each have similar limitations, and their corresponding
dependent claims.
CONCLUSIONS
The Examiner erred in rejecting claims 11-14 and 16-26 based upon
a lack of patent eligibility subject matter under 35 U.S.C. § 101, and the
Examiner erred in rejecting claims 11-14 and 16-26 based upon
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, the Examiner's rejections of claims 11-14 and
16-26 are reversed.
REVERSED
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