Ex Parte Fafara

Patent Trial and Appeal Board

Jun 12, 2018

14613199 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/613,199 02/03/2015
909 7590 06/14/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
Glen Michael FAFARA
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.
057618-0435105 7171
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/14/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLEN MICHAEL F AF ARA
Appeal2017-002159
Application 14/613,199
Technology Center 3600
Before JEAN R. HOMERE, NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4--10, 19, 21, and 23-29, which constitute all claims pending in
this application. 1 Claims 3, 11-18, 20, and 22 have been canceled. App.
Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the real party in interest as Systems Made Simple, Inc.
App. Br. 2. The Examiner withdraws the obviousness rejection previously
entered against the pending claims. Ans. 2.
Appeal2017-002159
Application 14/613,199
Introduction
According to Appellant, the claimed subject matter relates to a
method and system for enabling a social media platform user to securely
access sensitive health care event information through communications
distributed within the social media platform. Spec. ,r,r 3-8. In particular, a
computer system generates a hash value that represents an anonymized
version of the health care event information item including a uniform
resource locator (URL) associated with an authorized recipient of the health
care event information item so as to enable the authorized recipient and
other non-administrative users of the social media platform to securely and
confidentially access the health care event information. Id.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method for communicating health care information via a
hybrid architecture including a social media platform and a
website external to the social media platform, comprising:
obtaining, by a computer system, a first health care event
information item associated with an event pertaining to a first
individual;
generating, by the computer system, a first hash value
that represents at least part of the first health care event
information item;
generating, by the computer system, an anonymized
version of the first health care event information item that
comprises the first hash value such that the anonymized version
of the first health care event information item refers to but does
not specifically identify the first individual and refers to but
does not specifically identify the event, wherein the
anonymized version of the first health care event information
item comprises the first hash value in lieu of the at least part
2
Appeal2017-002159
Application 14/613,199
of the first health care event information that the first hash
value represents;
determining, by the computer system, an authorized
recipient of the anonymized version of the first health care
event information item;
generating, by the computer system, a first
communication at the social media platform to the authorized
recipient using a social media platform address associated with
the authorized recipient such that the first communication is
accessible to the authorized receipt and other non-
administrative users of the social media platform that are
permitted to access communications directed to the authorized
receipt, wherein the first communication comprises the
anonymized version of the first health care event information
item and a URL to a specific portion of the website that pertains
to the first health care event information item associated with
the first individual, wherein the URL enables the authorized
recipient to initiate a request to fill and/ or refill a prescription,
and the URL comprises the first hash value as a parameter
related to the request to fill and/or refill the prescription, and
wherein, responsive to the generation of the first
communication at the social media platform, the first hash
value is accessible to the authorized receipt and the other non-
administrative users of the social media platform;
receiving, at the website external to the social media
platform, via the first communication, a request from the
authorized recipient for access to the first health care event
information item associated with the URL, wherein the request
received at the website is based on the first hash value in the
URL; and
determining, by the computer system, if the request
should be authorized, and, in response to a determination that
the request should be authorized, providing access to a non-
anonymized version of the first health care event information
item.
Rejection on Appeal
Claims 1, 2, 4--10, 19, 21, and 23-29 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 2--4.
3
Appeal2017-002159
Application 14/613,199
ANALYSIS
We consider Appellant's arguments, as they are presented in the
Appeal Brief, pages 6-20, and the Reply Brief, pages 1-18. 2
Appellant argues the Examiner erred in rejecting claims 1, 2, 4--10,
19, 21, and 23-29 as being directed to patent ineligible subject matter
because the rejection is devoid of any meaningful analysis as to how the
claims are drawn to the alleged abstract idea of accessing a health care event
by a generated hash value. App. Br. 8-15. In particular, Appellant argues
that the Examiner overgeneralizes the claims by merely parroting the claim
language, stripping therefrom essential limitations, and somehow concludes
that the combination thereof is similar to "' comparing new and stored
information and using rules to identify options, and using categories to
organize, store, and transmit information."' Id. at 9. According to
Appellant, similarly to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014), the claims on appeal are directed to a "solution
[that] is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." Id. at 13.
More particularly, Appellant argues that the claims recite a particular
technical solution to a problem of how to enable social media platform users
to access sensitive health care event information through a generated hash
value so as not to reveal their sensitive health care event information even if
2 Rather than reiterate Appellant's arguments, and the Examiner's
findings/conclusions in their entirety, we refer to the Appeal Brief (filed
March 30, 2016) ("App. Br."), the Reply Brief (mailed November 7, 2016)
("Reply Br."), the final rejection from which the appeal is taken (mailed
November 9, 2015) ("Final Act"), and the Answer (mailed September 8,
2016) ("Ans.") for the respective details.
4
Appeal2017-002159
Application 14/613,199
those social media communications become publicly available or are
compromised. Id. at 13-14.
These arguments are persuasive. The U.S. Supreme Court provides a
two-step test for determining whether a claim is directed to patent-eligible
subject matter under 35 U.S.C. § 101. In the first step, we determine whether
the claims are directed to one or more judicial exceptions (i.e., law of nature,
natural phenomenon, and abstract ideas) to the four statutory categories of
invention (i.e., process, machine, manufacture, and composition of matter).
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014)
( citations omitted) ( citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 75-79 (2012)) ("Mayo"). In the second step, we "consider
the elements of each 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." Id. (citing 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. ( citing Mayo, 566
U.S. at 73).
We agree with the Appellant the Examiner's conclusion that the
claims are directed merely to the abstract idea "of comparing new and stored
information and using rules to identify options" is not supported by the
record before us. In particular, we agree with Appellant that the Examiner's
mere parroting of the claim language followed by the conclusion of abstract
idea is not a meaningful analysis supported by evidence and the controlling
case law. Ans. 3--4. The Federal Circuit, applying the Supreme Court's
5
Appeal2017-002159
Application 14/613,199
Alice framework, cautions that "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." Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). The claims require
particularly generating a hash value representing a health care information
event including a URL that enables an authorized social network user to
securely access the health information event without being compromised.
As persuasively argued by Appellant, the Examiner's analysis is insufficient
to show the claims are abstract, and fails to appreciate that they are instead
directed to a technological solution only made possible when implemented
in a computer network-based context. Further, although the claimed
methods and systems are perhaps simple and straightforward, the Examiner
does not provide sufficient evidence to demonstrate that the claimed process
is merely the automation of the same process previously performed by a
human. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016) ("\Vhile the nlles are embodied in computer software
that is processed by genera1-purpose computers, Defendants provided no
evidence that the process previously used by animators is the same as the
process required by the claims.") \Ve thus fail to grasp from the Examiner's
rejection how the claimed solution for securely accessing health event in a
social network relates to the alleged abstract idea "of comparing new and
stored information and using rules to identify options."
Because Appellant has shown at least one reversible error in the
Examiner's rejection, we need not reach Appellant's remaining arguments.
Accordingly, we are persuaded of error in the Examiner's conclusion that
6
Appeal2017-002159
Application 14/613,199
claims 1, 2, 4--10, 19, 21, and 23-29 are directed to patent-ineligible subject
matter.
DECISION
For the above reasons, we reverse the Examiner's subject matter
ineligibility rejection of claims 1, 2, 4--10, 19, 21, and 23-29. 3
REVERSED
3 In the event of further prosecution, the Examiner should determine whether
independent claims 1 and 19 meet the requirements of 35 U.S.C. 112,
second paragraph, to particularly point out and distinctly define the metes
and bounds of the subject matter to be protected by the patent grant.
Namely, the Examiner should determine whether there is sufficient
antecedent basis for the limitation "the authorized receipt," as in claims 1
and 19.
7