Ex Parte DOUGLASS et al

Patent Trial and Appeal Board

Dec 21, 2018

14454312 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/454,312 08/07/2014 MATTHEW CHRISTOPHER DOUGLASS
149752 7590 12/26/2018
Medley, Behrens & Lewis, LLC
6100 Rockside Woods Blvd.
Suite 440
Independence, OH 44131
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.
ALSP-1145 3807
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
admin-docketing@medleybehrens.com
mmedley@medleybehrens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW CHRISTOPHER DOUGLASS and
STEFAN MILLS KLOCEK1
Appeal2017-009902
Application 14/454,312
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3, 5-12, and 14--21 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is Practice Fusion, Inc.
See Appeal Br. 3.
Appeal2017-009902
Application 14/454,312
THE INVENTION
The Appellants' claimed invention is directed to recommending
medical applications based on a user's electronic medical record system
(Spec., para. 1 ). Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A computer-implemented method for providing a
physician related medical application electronic marketplace by
an electronic health records (EHR) system including an EHR
server, compnsmg:
(a) activating, by the EHR server, a plurality of medical
applications in the EHR system, the activating including:
for each of the medical applications:
(i) receiving information identifying the medical
application, and
(ii) generating an activation key based on the information
identifying the medical application;
(b) storing, by the EHR server, feature information associated
with each of the activated plurality of medical applications in a
database of the EHR system;
( c) receiving, at the EHR server from a physician using the
EHR system, a request for browsing the physician-related medical
application electronic marketplace;
( d) retrieving, by the EHR server, medical information
describing practice of the physician from the database of the EHR
system;
( e) filtering, by the EHR server, the plurality of the activated
medical applications based on the retrieved medical information
describing practice of the physician and the stored feature
information associated with the respective medical application to
generate a recommended list of medical applications, wherein the
filtering ( e) further comprises:
(i) after the activating, comparing the retrieved medical
information describing the practice of the physician to
the stored feature information associated with an
activated medical application of the plurality of the
activated medical applications,
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Application 14/454,312
(ii) calculating a relevancy score between the retrieved
medical information
describing the practice of the physician and the stored
feature information associated the medical application,
(iii) determining whether the relevancy score exceeds a
threshold value,
(iv) when the relevancy score is determined to exceed the
threshold value, incorporating the medical application
into the recommended list, and
(v) ranking medical applications in the recommended list
based on a number of the physician's patients diagnosed
with the medical problem associated with the respective
medical application; and
(f) outputting, by the EHR server, the recommended list
of medical applications, as ranked by the ranking ( e )( v ),
to a device for display to the physician.
THE REJECTION
The following rejection is before us for review:
Claims 1-3, 5-12, and 14--21 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 14/454,312
ANALYSIS
Rejection under 35 USC§ 101
The Appellants argue that the rejection of claim 1 is improper because
the claims are not directed to an abstract idea and are "significantly more"
(App. Br. 13-18). The Appellants also argue that the claimed steps do not
preempt any well-known business practices (App. Br. 24, 25).
In contrast, the Examiner has determined that that the rejection of
record is proper (Final Rej. 2-5, Ans. 3-13).
We agree with the Examiner. 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: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
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Application 14/454,312
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention" Id. at 2358.
Here, we determine that the claim is directed to the concept of
providing a list of recommend medical applications based on data. This is a
method of organizing human activities or an idea in itself, and is an abstract
idea beyond the scope of§ 101. See Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing
it, and displaying results from certain results of the collection and analysis
was held to be an abstract idea. See In re Meyer, 688 F.2d 789, 795-96
(CCPA 1982), which held that "a mental process that a neurologist should
follow" when testing a patient for nervous system malfunctions was not
patentable.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. The Specification at paragraphs 85-102 for example describes using
conventional servers, networks, databases, modules, and computing devices
in a manner known for their known functions.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
The Appellants have also cited to Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016) to show that the claim is not abstract, but the
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Application 14/454,312
claims in that case were not similar in scope to those here in contrast and
were in contrast directed to a self-referential data table.
The Appellants have also cited to McRo but the claims in that case are
distinguished from this case in being directed to rules for lip sync and facial
expression animation.
The Appellants in the Appeal Brief at page 1 7 also argue the claim is
rooted in retrieving a large amount of candidate data and presenting data to
overcome a particular problem in the realm of electronic health records and
cite to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59
(Fed. Cir. 2014). We disagree with this assertion. Here, the claim is not
rooted in technology but rather to the abstract concept of providing a list of
recommend medical applications based on data as determined above.
We note the point about pre-emption (App. Br. 24, 25). While pre-
emption "might tend to impede innovation more than it would tend to
promote it, 'thereby thwarting the primary object of the patent laws'" (Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), "the absence of complete preemption
does not demonstrate patent eligibility" (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015)("[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
We reach the same conclusion as to independent system claim 10 and
its dependent claims. Here, as in Alice, "the system claims are no different
in substance from the method claims. The method claims recite the abstract
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idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea."
Alice 134 S. Ct. at 2351. "[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea 'while adding the words 'apply it' is not
enough for patent eligibility." Id. at 2358 (quoting Mayo, 132 S. Ct. at
1294).
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-3, 5-12, and 14--21 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1-3, 5-12, and 14--21 is sustained.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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