Ex Parte Drew et al

Patent Trials and Appeals Board

Apr 30, 2019

13629426 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/629,426 09/27/2012
126679 7590 05/02/2019
Lane Powell, PC
601 S.W. Second Avenue
Suite 2100
Portland, OR 97204
FIRST NAMED INVENTOR
Kevin C. Drew
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.
130424.003003 8031
EXAMINER
PORTER, RACHELL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
physio_control_docketing@cardinal-ip.com
IPMail.MedSurgGroup@stryker.com
patents@lanepowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN C. DREW and DANA S. LEWIS
Appeal2017-009213
Application 13/629,426 1
Technology Center 3600
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-14, which are all the claims pending in this application.
Claims 15-30 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is the Applicant, Physio-
Control, Inc. App. Br. 3.
Appeal2017-009213
Application 13/629,426
STATEMENT OF THE CASE
Introduction
Appellants' application relates to sending software application
upgrades to medical devices over a network. Spec. 3: 1-30. Claim 1
illustrates the appealed subject matter and reads as follows:
1. A computer, comprising:
a first communication port for establishing a first
connection with a medical device;
a second communication port for establishing a second
connection with a network;
an agent configured to query a collection of device records
within the network to determine whether a device record specific
to the medical device exists; and
a processor configured to receive over the second
connection a message from the network responsive to the query,
the message including an upgrade link specific to a device type
corresponding to the device, and the processor also configured to
send to the medical device over the first connection an upgrade
of a software application on the medical device responsive to a
user selecting the upgrade link, the software application
structured to cause the device to operate.
The Examiner's Rejections
Claims 1-14 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 9-12.
Claims 1-14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Price (US 2006/0026304 Al; Feb. 2, 2006) and Medema
(US 2003/0025602 Al; Feb. 6, 2003). Final Act. 3-11.
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ANALYSIS
Patent-Ineligible Subject Matter
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014) ( citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk .... ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
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rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under that guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. Claim 1 recites a "computer." Appellants do not
argue the Examiner erred in concluding claim 1 falls within the four
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statutory categories of patentable subject matter. We agree with the
Examiner's conclusion because claim 1 falls within the machine category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). See Revised Guidance.
Claim 1 recites the following limitations: (1) "a first communication
port for establishing a first connection with a medical device," (2) "a second
communication port for establishing a second connection with a network,"
(3) "an agent configured to query a collection of device records within the
network to determine whether a device record specific to the medical device
exists;" ( 4) "a processor configured to receive over the second connection a
message from the network responsive to the query, the message including an
upgrade link specific to a device type corresponding to the device;" and
( 5) "the processor also configured to send to the medical device over the first
connection an upgrade of a software application on the medical device
responsive to a user selecting the upgrade link, the software application
structured to cause the device to operate."
The Examiner concludes claim 1 is directed to the abstract idea of
"querying and distributing message(s)." Ans. 9. The Examiner further
concludes claim 1 is directed to the concept of "receiving, screening and
distributing data/messages" and that this concept falls within "certain
methods of organizing human activity." Id. at 9-10 (citing Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)).
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Appellants argue the Examiner erred in concluding claim 1 is directed
to an abstract idea. See Reply Br. 4-6. In particular, Appellants argue the
Examiner oversimplifies claim 1, mischaracterizing the claim as a method
claim. Id. at 4.
We agree with Appellants because claim 1 does not recite an abstract
idea under the Revised Guidance. The Examiner concludes claim 1 is
directed to an abstract idea because it is directed to "certain methods of
organizing human activity." Ans. 9. Under the Revised Guidance, abstract
ideas include "certain methods of organizing human activity." Revised
Guidance, 84 Fed. Reg. at 52. These "certain methods of human activity"
include:
Id.
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions).
The Examiner concludes claim 1 is directed to "querying and
distributing message(s)" and "receiving, screening and distributing
data/messages." Ans. 10. We agree with the Examiner's characterization of
the claims because the limitations discussed above, under their broadest
reasonable interpretation, characterize sending messages to medical devices,
where those messages include upgrade links, a particular type of data.
However, we disagree with the Examiner's conclusion that the claims are
directed to an abstract idea because these concepts do not fit within the
"certain methods of organizing human activity," or any of the other
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categories, identified in the Revised Guidance. Accordingly, we agree with
Appellants that the Examiner erred in concluding claim 1 is directed to an
abstract idea. Because claim 1 does not fit within any of the categories of
abstract idea identified in the Revised Guidance, we need not proceed to
Step 2A, prong 2 of the analysis.
Obviousness
Appellants argue the Examiner erred in rejecting claim 1 as
unpatentable over Price and Medema because Price does not teach or
suggest "an agent configured to query a collection of device records within
the network to determine whether a device record specific to the medical
device exists." App. Br. 5. In particular, Appellants argue the Examiner's
rejection does not address the notion of querying device records within a
network, and Price does not teach or suggest this limitation. Id.
Appellants have not persuaded us of Examiner error. The Examiner
finds, and we agree, Price teaches a coordinating computer ( the claimed
"agent") that performs continuous or non-continuous surveillance of primary
and secondary software entities or services ("querying" of the "device
records") to determine whether a software upgrade is required. Ans. 12
( citing Price ,r,r 43-44). Appellants have not identified persuasively error in
the Examiner's findings and reasoning, instead offering conclusory assertion
of error. See App. Br. 5.
Appellants also argue the Examiner erred in rejecting claim 1 as
unpatentable over Price and Medema because Prices does not teach or
suggest "a processor configured to receive over the second connection a
message from the network responsive to the query, the message including an
upgrade link specific to a device type corresponding to the device," and "the
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processor also configured to send to the medical device over the first
connection an upgrade of a software application on the medical device
responsive to a user selecting the upgrade link, the software application
structured to cause the device to operate," as recited in claim 1. See App.
Br. 6-7 ( emphasis omitted). In particular, Appellants argue Price merely
describes a software update is delivered from the coordinating computer to
the software-controlled devices for updating. Id. at 7 ( citing Price Fig. 3,
,r 44). According to Appellants, Price does not teach or suggest an upgrade
link or message including an upgrade link from a network responsive to a
query. Id. at 7.
Appellants have not persuaded us of Examiner error. The Examiner
finds, and we agree, Price teaches a user is notified regarding the need for a
software update. Ans. 14 ( citing Price ,r 30). The notification may be via
email, instant message, or on-screen pop-up. Id. The coordinating computer
may provide software updates via the Internet using HTTP. Price ,r 43.
Thus, Price at least suggests providing an "upgrade link" as claimed by
providing software updates via the Internet using HTTP. See id. Appellants
have not persuasively identified error in the Examiner's findings and
reasoning, instead offering conclusory assertion of error. See App. Br. 6-8.
Accordingly, Appellants have not persuaded us of Examiner error.
For these reasons, we sustain the Examiner's rejection of claim 1 as
unpatentable over Price and Medema. We also sustain the Examiner's
obviousness rejection of dependent claims 2-14, for which Appellants offer
no separate argument. See App. Br. 6-8.
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DECISION
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the decision of the Examiner
rejecting claims 1-14. See 37 C.F.R. § 4I.50(a)(l).
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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