Ex Parte Charlot et al

Patent Trial and Appeal Board

Feb 5, 2018

13887117 (P.T.A.B. Feb. 5, 2018)

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.
13/887,117 05/03/2013 Regis JP CHARLOT 155439.00007 7026
26711 7590 02/07/2018
QUARLES & BRADY LLP (CHI)
Attn: IP Docket
411 E. WISCONSIN AVE.
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/07/2018 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REGIS JP CHARLOT, FRANK NAEYMI-RAD, and
IVANA NAEYMI-RAD
Appeal 2016-0071081
Application 13/887,1172
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
November 30, 2015) and Reply Brief (“Reply Br.,” filed July 1, 2016), and
the Examiner’s Answer (“Ans.,” mailed May 5, 2016) and Final Office
Action (“Final Act.,” mailed August 5, 2015). The record also includes a
transcript of the January 30, 2018 hearing.
2 Appellants identify Intelligent Medial Objects, Inc. as the real party in
interest. App. Br. 2.
Appeal 2016-007108
Application 13/887,117
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—5, 7—15, and 17—19. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing in this case was held on January 30, 2018.
We AFFIRM.
CFAIMED INVENTION
Appellants’ claimed invention relates to “a method for receiving and
processing patient medical information” (Spec. 1 8).
Claims 1, 9, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for receiving and processing patient
medical information, comprising:
(1) transmitting data comprising a question designed to
obtain medical information by a first computer system to an
application server;
(2) receiving data by the first computer system
comprising a response to the question from the application
server;
(3) analyzing the response data and codifying the
response data with one or more code values using the first
computer system;
(4) transmitting the codified response data by the first
computer system to the application server; and
(5) pushing responsibility by the first computer system
of maintaining an interview state.
REJECTIONS
Claims 1—5, 7—15, and 17—19 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
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Claims 1—5, 7, 8, 15, and 17—19 are rejected under 35 U.S.C. § 112(b)
as indefinite for failing to particularly point out and distinctly claim the
subject matter that Appellants regard as the invention.3
Claims 1—5, 7, 9-11, 13, 15, and 17—19 are rejected under 35 U.S.C.
§ 102(a)(2) as anticipated by Aita et al. (US 2013/0218598 Al, pub.
Aug. 22, 2013) (hereinafter “Aita”).
Claims 8, 12, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Aita and Myers et al. (US 2008/0046292 Al, pub.
Feb. 21, 2008) (hereinafter “Myers”).
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: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 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 these concepts.” Alice Corp., 134 S. Ct.
3 We treat the Examiner’s omission of claim 7 as among the claims rejected
under 35 U.S.C. § 112, second paragraph, as inadvertent inasmuch as
claim 7 depends from claim 1, which is rejected on that basis.
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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
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.”
Alice Corp., 134 S. Ct. at 2355 (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. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
found that the claims are directed to “mapping a patient record with
reference materials,” which the Examiner determined is an abstract idea; and
that the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because “the
claim[s] require [ ] no more than a generic computer to perform generic
computer functions that are well-understood, routine, and conventional as
previously known to the industry” (Final Act. 2).
Appellants argue that the Examiner has failed to establish a prima
facie case of unpatentability with respect to claims 1—5, 8, 15, and 17—19
because “no case law precedent, no portion of applicant’s own disclosure,
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and no evidence has been cited” to support the Examiner’s finding that
claims are directed to an abstract idea (App. Br. 5—6). Yet, there is no
requirement that an examiner provide evidentiary support in every case
before a conclusion can be made that a claim is directed to an abstract idea.
See, e.g., para. IV “July 2015 Update: Subject Matter Eligibility”4
to 2014 Interim Guidance on Subject Matter Eligibility, 79 Fed. Reg. 74618
(Dec. 16, 2014) (“The courts consider the determination of whether a claim
is eligible (which involves identifying whether an exception such as an
abstract idea is being claimed) to be a question of law. Accordingly, courts
do not rely on evidence that a claimed concept is a judicial exception, and in
most cases resolve the ultimate legal conclusion on eligibility without
making any factual findings.”). Although evidence may be helpful, e.g.,
where facts are in dispute, it is not always needed. Appellants’ bare
assertion that evidence is needed, without any supporting reasoning as to
why, is insufficient to require the Examiner to provide evidentiary support.5
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,
4 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf.
5 We note that the Appellants have put forward no rebuttal evidence
showing the claims are not directed to an abstract idea.
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“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). 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.”).
In rejecting the pending claims under § 101, the Examiner notified
Appellants of the reasons for the rejection in a sufficiently informative
matter as to meet the notice requirement of § 132. And we find that, in
doing so, the Examiner set forth a prima facie case of patent-ineligibility.
Appellants do not contend that the § 101 rejection was not understood
or that the Examiner otherwise failed to comply with the requirements of
§ 132. Indeed, Appellants’ understanding of the rejection is clearly
manifested by their response as set forth in the briefs.
Further addressing the § 101 rejection in the Reply Brief, Appellants
argue that the Examiner’s § 101 analysis is rendered moot by the Federal
Circuit’s opinion in Enfish, which issued shortly after the Examiner’s
Answer was mailed (Reply Br. 2). Directing the Board’s attention to
Section V of the Appeal Brief, Appellants assert that, as in Enfish, their
claimed method and system are “‘directed to a specific improvement to the
way computers operate’ and ‘to a specific implementation of a solution to a
problem in the software arts’” (id.). Appellants, thus, maintain that the
claimed method and system include the same benefits over conventional
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systems, “i.e., ‘increased flexibility, faster search times, and smaller memory
requirements’ that the Federal Circuit. . . enumerated in support of patent
eligibility in EnfisPT (id).
Citing paragraphs 78 and 82 of the Specification6 in Section V of the
Appeal Brief, Appellants assert that “the requirement of pushing
responsibility of maintaining an interview state in claims 1 and 15 and the
requirement of not retaining the respective interview history state data on the
first computer system of claim 9” results in increased flexibility over
medical record systems that retain that information, i.e., because “the
constraints imposed by HIP AA compliance, including the recordkeeping
and audit history requirements may not apply” (App. Br. 4). But even
accepting Appellants’ assertion, there is a fundamental difference between
computer functionality improvements, on the one hand, and uses of existing
computers as tools to perform a particular task, on the other. Indeed, the
Federal Circuit applied this very distinction in rejecting the § 101 challenge
in Enfish because the claims at issue there focused on a specific type of data
structure, i.e., a self-referential table for a computer database, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data, and not merely on asserted advances in uses to which
existing computer capabilities could be put. Enfish, 822 F.3d at 1335—36.
The alleged improvement that Appellants tout does not concern an
improvement to computer capabilities but instead relates to an alleged
improvement in receiving and processing patient medical information for
which a computer is used as a tool in its ordinary capacity.
6 Appellants’ references are to paragraphs 78 and 82 of their published
application (US 2014/0129258 Al, pub. May 8, 2014).
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Appellants also point, in Section V of the Appeal Brief, to the
stateless nature of a request as allowing several hosts to handle incoming
requests concurrently (App. Br. 4). And Appellants cite the small size of the
data file transmitted with every question and answer as resulting in the
consumption of fewer system resources and allowing for large scale system
scalability (id. ). But we find nothing in the claim language, nor do
Appellants direct us to any claim recitations, regarding the handling of
concurrent incoming requests or the size of data files transmitted with
questions and answers. Appellants’ arguments in this regard are not
persuasive at least because they are not commensurate with the scope of the
claims.
Appellants further argue that, even without the guidance provided by
the Enfish decision, the § 101 rejection “requires reversal because it is self­
contradictory and in conflict with relevant precedent” (Reply Br. 3).
Appellants note that the Examiner has admitted that the term “pushing
responsibility” is not a term commonly used within the healthcare art (id.).
And Appellants argue that this admission directly contradicts the Examiner’s
allegation that the claims require “‘no more than a generic computer to
perform generic computer functions that are well-understood, routine, and
conventional as previously known to the industry’” (id.).
We cannot agree with Appellants that the Examiner’s admission is
fatal to the § 101 rejection. The Examiner rejected claims 1—5, 7, 8, 15,
and 17—19 under 35 U.S.C. § 112, second paragraph, as indefinite because
the Examiner concluded that a person of ordinary skill in the art would not
understand what is claimed when the claims are read in light of the
Specification, i.e., the meaning of “pushing responsibility,” as recited in
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independent claim 1 and similarly recited in independent claim 15 (Final
Act. 3, 10-11; see also Ans. 10). The Examiner noted that “pushing
responsibility” is “not a term commonly used within the art”; therefore, the
Examiner concluded that “a clear explanation of ‘pushing responsibility’ to
properly execute the invention is required” (Final Act. 10).
Appellants ostensibly maintain that the § 101 rejection cannot be
sustained in the face of the Examiner’s statement that “pushing
responsibility” is not a term commonly used within the art (Reply Br. 3).
Yet, saying that “pushing responsibility” is not a term of art in the healthcare
field is not the same as saying that “pushing responsibility,” which the
Examiner interprets for purposes of examination to mean “the system
pushing the responsibility to a computer,” requires more than a generic
computer to perform generic computer functions that are well-understood,
routine, and conventional.
We find no indication in the record, nor do Appellants point us to
anything in the record to indicate that “pushing responsibility by the first
computer system of maintaining an interview state” requires any specialized
computer hardware or other inventive computer components, invokes any
assertedly inventive programming, or that the claimed invention is
implemented using anything other than generic computer components. And,
as the Court made clear in Alice, the mere recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible. See
Alice Corp., 134 S. Ct. at 2358.7
7 Because we are not persuaded that the Examiner erred in finding that
claims 1—5, 7, 8, 15, and 17—19 are directed to an abstract idea, and that the
claims fail to include additional elements or a combination of elements that
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We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 1—5, 7, 8, 15, and 17—19 under 35 U.S.C.
§101. Therefore, we sustain the Examiner’s rejection.
Appellants do not present any arguments with respect to claims 9—14.
Therefore, we summarily sustain the Examiner’s rejection of those claims
under § 101.
Indefiniteness
We are persuaded that the Examiner erred in rejecting claims 1—5, 7,
8, 15, and 17—19 under 35 U.S.C. § 112(b) as indefinite. In this regard, we
agree with Appellants that a person of ordinary skill in the art would
understand the meaning of “pushing responsibility,” when the claim
language is read in light of the Specification, i.e., that “pushing
responsibility” means that the computer system does not maintain an
interview state itself but rather requires that some other computer system be
responsible for maintaining that state (Reply Br. 5).
Therefore, we do not sustain the Examiner’s rejection of claims 1—5,
8, 15, and 17—19 under 35 U.S.C. § 112, second paragraph.
See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second
paragraph, [now, § 112(b)] is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.”).
amounts to significantly more than the judicial exception, we need not, and
do not, address Appellants’ further argument that the Examiner erred in
finding that claims 15, 17, and 18 are patent-ineligible because the claims
recite software per se (App. Br. 6—7; see also Reply Br. 4).
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Anticipation
Independent Claim 1 and Dependent Claims 2—5, 7, and 19
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 102(a)(2) at least because
Aita does not disclose “analyzing the response data and codifying the
response data with one or more code values using the first computer
system,” as recited in claim 1 (App. Br. 9).
Aita is directed to an electronic medical coding system (Aita 13), and
discloses that caregivers (e.g., physicians, psychiatrists, counselors,
therapists, medical assistants, secretaries, receptionists, or other people that
are involved in providing care to a patient and/or documenting clinical visits
with a patient) interact with the system to access medical information and/or
document patient encounters {id. H 15,21). Aita discloses, with reference
to Figure 1, that the system 100 includes a medical information coding
system 102, a network 110, and user computing devices 112 {id. 115). The
information coding system includes a server 104 and a database 108 that
communicate across a local network 106; database 108 includes various
external and internal medical terminologies, and stores medical information
relating to medical conditions {id. 116).
Aita discloses, with reference to Figures 2 and 3, that medical coding
system 102 includes a plurality of engines, including a user interface
engine 170 and an intelligent prompting engine 172 {id. 138). User
interface engine 170 receives inputs from a caregiver through an
input/output interface 154 (see id. Fig. 2); these inputs include, for example,
descriptions and/or names of medical conditions and health problems,
findings, symptoms, and/or answers to questions presented to the user
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through input/output interface 154 by intelligent prompting engine 172 (id.
140; see also id. 142).
In rejecting claim 1 as anticipated by Aita, the Examiner ostensibly
equates Aita’s user computing device 112 to the claimed “first computer
system,” and equates Aita’s server 104 to the claimed “application server”
(see Final Act. 4). The Examiner cites paragraphs 43 46 of Aita as
disclosing the argued limitation, i.e., “analyzing the response data and
codifying the response data . . . using the first computer system,” as recited
in claim 1 (id.). However, as Appellants correctly observe, Aita discloses
that server 104, i.e., the claimed application server, not user computing
device 112, i.e., the first computer system, is responsible for selecting code
values (App. Br. 9 (citing Aita 1 55, Fig. 1)).
Responding to Appellants’ argument in the Answer, the Examiner
notes that Aita discloses that the user computing devices include stand-alone
computing devices as well as network computing devices (Ans. 11
(citing Aita 115)). And the Examiner concludes, “therefore, Aita teaches
analyzing the response data and codifying the response data with one or
more code values using the first computer system” (id. ). But we fail to see
how or why, and the Examiner does not explain how or why, the fact that the
user computer devices includes both stand-alone computing devices and
network computing devices discloses or suggests “analyzing the response
data and codifying the response data . . . using the first computer system,” as
recited in claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 102(a)(2). For the same reasons,
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we also do not sustain the Examiner’s rejection of dependent claims 2—5, 7,
and 19.
Independent Claim 9 and Dependent Claims 10, 11, and 13
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 9 under 35 U.S.C. § 102(a)(2) because Aita does
not disclose “receiving second interview history state data that includes both
the first interview history state data along with an answer to the first
question, or transmitting both third interview history state data and a second
question,” i.e., “receiving, by the first computer system, a second interview
history state data comprising the first interview history state data along with
an answer to the first question from the second computer system” and
“transmitting the third interview history state data and a second question to
the second computer system,” as recited in claim 9 (App. Br. 10).
The Examiner cites paragraphs 44, 45, and 56 of Aita as disclosing the
argued limitations (Final Act. 6). However, we agree with Appellants that
Aita discloses sending question data in one direction and answer data in the
opposite direction in discrete transactions (App. Br. 10). We find no
disclosure in the cited portions of Aita that other information, e.g., interview
history state data, is transmitted along with, i.e., in addition to, the question
and answer data.
Therefore, we do not sustain the Examiner’s rejection of independent
claim 9 under 35 U.S.C. § 102(a)(2). For the same reasons, we also do not
sustain the Examiner’s rejection of dependent claims 10, 11, and 13.
Independent Claim 15 and Dependent Claims 17 and 18
Claim 15 includes language substantially similar to the language of
claim 1. Therefore, we do not sustain the rejection under 35 U.S.C.
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§ 102(a)(2) of independent claim 15, and claims 17 and 18, which depend
therefrom, for the same reasons set forth above with respect to independent
claim 1.
Obviousness
Each of claims 8, 12, and 14 depends, directly or indirectly, from one
of independent claims 1 and 9. The Examiner’s rejection of these dependent
claims under 35 U.S.C. § 103 based on Myers, in combination with Aita,
does not cure the deficiency in the Examiner’s rejection of independent
claims 1 and 9. Therefore, we do not sustain the rejection of claims 8, 12,
and 14 under § 103.
DECISION
The Examiner’s rejection of claims 1—5, 7—15, and 17—19 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1—5, 7, 8, 15, and 17—19 under
35 U.S.C. § 112(b) is reversed.
The Examiner’s rejection of claims 1—5, 7, 9-11, 13, 15, and 17—19
under 35 U.S.C. § 102(a)(2) is reversed.
The Examiner’s rejection of claims 8, 12, and 14 under 35 U.S.C.
§ 103 is 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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