Ex Parte ETCHEGOYEN

Patent Trial and Appeal Board

Mar 15, 2016

13743198 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/743, 198
96051 7590
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
01/16/2013
03/17/2016
FIRST NAMED INVENTOR
Craig S. ETCHEGOYEN
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.
UN-NP-MD-089 3693
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
sean. burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. ETCHEGOYEN1
Appeal 2016-003113
Application 13/743,1982
Technology Center 3600
Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 3
STATEMENT OF THE CASE
Craig S. Etchegoyen (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's final rejection of claims 1-9. We have jurisdiction
under 35 U.S.C. § 6(b).
1 Appellant identifies the real party in interest as "Uniloc Luxembourg S.A.,
and Uniloc USA, Inc." App. Br. 3.
2 Appellant's request to participate in the Patent Prosecution Highway (PPH)
program and the petition to make special under 37 C.F.R. § l.102(a) filed
July 30, 2013 was granted on September 24, 2013.
3 Our decision references Appellant's Appeal Brief ("App. Br.," filed June 9,
2015), Reply Brief ("Reply Br.," filed Jan. 18, 2016), the Examiner's
Answer ("Ans.," mailed Nov. 19, 2015), and the Final Office Action ("Final
Act.," mailed Dec. 9, 2014).
Appeal 2016-003113
Application 13/743,198
fNVENTION
Appellant's claimed invention relates generally to network-based
computer services and, more particularly, to a method of conducting
physical examination of a remotely located person for the purposes of health
assessment. Spec. i-f 2. Claim 1 is the sole independent claim on appeal and
recites:
1. A method for assessing the health of a person, the
method comprising:
binding one or more medical measurement devices to one
or more user devices that are under control and operation of the
person;
receiving health attribute data from the medical
measurement devices through a computer network, wherein the
health attribute data represents one or more health attributes of
the person measured by the medical measurement devices;
receiving log data from one or more selected ones of the
user devices, wherein the log data represents events (i) that
occurred in the selected user devices and (ii) that are associated
with the usage of the medical measurement devices;
comparing the health attribute data and the log data to
determine that the medical measurement devices measured the
health attributes of the person concurrently with the person's
use of the selected user devices; and
using the health attribute data to assess a health state of
the person.
App. Br. 20, Claims App.
REJECTIONS
The following rejections are before us for review.
Claims 1-9 stand rejected under 35 U.S.C. § 101. Final Act. 2--4.
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cohen (US 2006/0031094 Al, pub. Feb. 9, 2006) and
Dong (US 2007/0180047 Al, pub. Aug. 2, 2007). Id. at 4--6.
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Application 13/743,198
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Cohen, Dong, and Richardson (US 2007/0126550 Al, pub. June 7, 2007).
Id. at 7.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cohen, Dong, Richardson, and Wessel (US 2003/0050537
Al, pub. Mar. 13, 2003). Id. at 7-10.
Claims 6-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Cohen, Dong, and Wessel. Id. at 10-14.
ANALYSIS
Rejection under 35 USC§ 101
Claims 1-9
The initial burden to establish a prima facie case for subject matter
eligibility is on the Examiner to explain why the claims are unpatentable, so
that Appellant has sufficient notice and is able to effectively respond. 4 This
burden is met by clearly articulating the reasons why the claimed invention
is not eligible, for example by providing a reasoned rationale that identifies
the judicial exception, and also identifies the additional elements in the
claim and explains why they do not amount to significantly more than the
exception. 5 The Supreme Court in Alice6 reiterated the framework set out
previously in Mayo 7 "for distinguishing patents that claim laws of nature,
4 In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
5 http://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (July 2015 Update: Subject Matter Eligibility Guidelines).
6 Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014).
7 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012).
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Application 13/743,198
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts."
Although Appellant does not challenge that claim 1 is directed to an
abstract idea, Appellant however argues
that the Office Action did not address whether any limitations of
the claim itself recite significantly more than an abstract idea but
instead focused solely on "these devices" and whether the
devices are anything other than "routine" or "generic".
Applicant respectfully submits that this evidences a fundamental
misunderstanding and misapplication of the law established by
the Supreme Court in Alice Corp.
App. Br. 7; see also Reply Br. 5 ("Without these requisite factual findings,
Applicant respectfully submits that the rejection under § 101 is legally
insufficient and should be withdrawn.").
\Vith respect to the first step of the Supreme Court's two-step
frarnework for determining whether the claimed invention is directed to non-
statutory subject matter, the Examiner asserts that claim 1 "appears to be
directed towards a method of organizing human activities." Final Act. 3.
Assuming that "assessing the health of a person" is a patent-ineligible
abstract idea, for example, the Examiner fails to perform the second step of
the two-step analysis. 1\tfore specifica11y, the Examiner fails to consider all
the elements of the clairn both individually and as an ordered combination to
determine whether the additional elements in the claim transform the nature
of claim into a patent-eligible application of the abstract idea. Independent
claim 1 recites five process steps, but the Examiner does not explain why
any of these steps individually and when viewed together fail to transform
the abstract idea into a patent-eligible invention. JV1erely stating that the
c 1ai med "devices appear to be directed towards generic computer structure
4
Appeal 2016-003113
Application 13/743,198
that serves to perfc1rrn generic computer functions that are well-understood,
routine, and conventional activities previously knovvn to the pertinent
industry" (Final Act 3) is not sufficient to perform the second part of the
Alice test Although we recognize that many computer functions such as
receiving and transmitting data over a network to be well-understood,
routine, and conventional activity, 8 to facilitate review, an analysis or
explanation of the steps individually and in combination should be made
explicit.
l\!Ioreover, with respect to dependent claims 2----9, the Examiner asserts
that "these claims do not appear to remedy the deficiencies of parent claim 1
above, and are therefore rejected for at least the same rationale as applied to
parent claim 1 above." Final Act. 4. A dependent claim, however, cannot
remedy the deficiencies of an independent claim that is determined to be
non-statutory under 35 U.S.C. § 101.
Thus, we agree with Appellant that the omission of the requisite
explanation with respect to the second step of the Alice test amounts to a
failure to articulate a prima facie case of unpatentability of claims 1-9 as
being directed to patent-ineligible subject matter.
Accordingly, to the extent that the Examiner failed to establish a
primafacie case, we do not sustain the rejection of claims 1----9 under 35
U.S.C. § 101.
8 See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Circuit
2014).
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Appeal 2016-003113
Application 13/743,198
Rejections under 35 USC§ 103
Independent claim 1 requires, inter alia, "receiving health attribute
data from the medical measurement devices through a computer network,
wherein the health attribute data represents one or more health attributes of
the person measured by the medical measurement devices." App. Br. 20,
Claims App.
In interpreting this claim limitation, the
Examiner directs attention to the limitation "wherein the
health attribute data represents one or more health attributes of
the person measured by the medical measurement devices".
There are two (2) possible interpretations of this
limitation, as follows:
(1) the medical measurement devices measure the health
attributes of the person, and provides the health attribute data as
output, and
(2) the medical measurement devices measure a person,
and provides health attributes. The health attribute data merely
represents the health attributes of the person of interest, but this
health attribute data is not actually provided by the medical
measurement devices. Instead, this health attribute data may be
derived later and/or elsewhere to indicate the person's health
attributes, such as metadata that describes the health attributes of
the patient, e.g. the patient's name, patient's identifier, type of
data for which the patient is being measured. All these exemplary
data may be considered to be "health attribute data" even though
the medical measurement devices don't actually generate these
exemplary data; the exemplary data merely "represents" data
generated by the medical measurement devices, but that is
enough to meet the claimed scope.
Ans. 4--5. The Examiner asserts the "recited health attribute data need not
be generated by the medical measurement device, as in interpretation (2)
above." Id. at 5. Thus, the Examiner determines that the claimed "'health
attribute data' is broad and may encompass any kind of data regarding a
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Application 13/743,198
patient, such as patient identification data used for authentication because
this is an 'attribute' that may be used to describe the patient's health." Id. at
6. Therefore, the Examiner concludes "[t]his 'health attribute data' is met
by the teachings in Dong of authentication data 82 (page 4 paragraph 40)
because this is an 'attribute' that describes the patient and may be used to
link the patient to health and other medical data." Id.
Appellant contends that the Examiner's novel interpretation of the
claim language, presented for the first time in the Answer, contradicts the
explicit language of the claim. Reply. Br. 10. In particular, Appellant "fails
to understand how the 'health attribute data is not actually provided by the
medical measurement devices' when claim 1 clearly and explicitly recites
'receiving health attribute data from the medical measurement devices
through a computer network.'" Id. at 10-11. Appellant further argues that
"neither a person's name nor a person's identifier is a health attribute of the
person. . . [and thus] data representing a person's name or identifier does not
represent a health attribute of the person" as required by the claim. Id. at 12.
We are persuaded by Appellant's arguments because the Examiner's
interpretation of the claim language is not consistent with the plain language
of the claim and the Specification. The plain language of the claim recites
that "health attribute data" is received "from" the medical measurement
devices. Moreover, the limitation reciting "wherein the health attribute
data" provides explicit antecedent basis to reference the earlier recitation of
"health attribute data," thus providing clarity to the claim. 9 Therefore, the
9 See Baldwin Graphic Sys. v. Siebert, Inc., 512 F.3d 1338, 1343 (Fed. Cir.
2008).
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Application 13/743,198
Examiner's interpretation (2) of the claim is unreasonable considering the
plain language of the claim.
Furthermore, during examination, claims are to be given their
broadest reasonable interpretation consistent with the specification, and the
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. 10 The Specification discloses
that "[h ]ealth attribute data 908 represents physical characteristics of the
user as measured by medical measurement devices." Spec. i-f 34. The
Examiner's finding that Dong's "authentication data 82" corresponds to the
claimed "health attribute data" is inconsistent with the Specification.
Dong's stored authentication data provides the capability to confirm patient
identification when performing data collection. See Dong i-f 40. Although
biometric data may be used to authenticate a user, as taught by Dong and as
disclosed in the Specification, "health attribute data" measured and received
from the medical measurement devices representing health attributes of the
person cannot reasonably correspond to Dong's authentication data. In other
words, Dong's authentication data represents the identity of the user,
whereas the claimed health attribute data represents the physical health
characteristics of the user, as measured by the medical measurement devices.
Thus, paragraph 40 of Dong fails to disclose "health attribute data" as
required by independent claim 1.
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103. The Examiner does not rely on Cohen, Richardson,
10 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). "[W]hen giving claim terms their broadest reasonable
construction, the construction cannot be divorced from the specification."
See, e.g., In re NTP, 654 F.3d 1279, 1288 (Fed. Cir. 2011).
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Application 13/743,198
and Wessel to remedy the deficiency in Dong. Thus, for the same reasons,
we do not sustain the rejections of dependent claims 2-9. 11
CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims as listed in the Rejections section above.
DECISION
Therefore, the Examiner's rejections of claims 1-9 are reversed.
REVERSED
11 Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
9