Ex Parte Hahn et al

Patent Trial and Appeal Board

Feb 28, 2019

13891881 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/891,881 05/10/2013
7590
Atirix Medical Systems
10201 Wayzata Blvd.
Suite 310
Minneapolis, MN 55305
03/01/2019
FIRST NAMED INVENTOR
Jerad J. Hahn
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.
5026.01US04 1079
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
03/01/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERAD J. HAHN and RYAN M. KROCAK
Appeal2017-010368
Application 13/891,881
Technology Center 3600
Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and LARRY J. HUME,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/891,881
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 7-12, and 22. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
The claims are directed to a system and method for managing medical
imaging professional certifications. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computing device comprising a processor, a display, a
system interface, and accessible storage having instructions
stored thereon that, when executed by the processor, cause the
computing device to perform a method for managing medical
imaging credentials for medical imaging professionals, the
method comprising:
processing medical imaging credential data stored in a
database with information for a plurality of medical imaging
professionals and a plurality of credential identities to identify a
renewal date for each of the plurality of credential identities,
wherein the medical imaging credential data comprises a user
identity, a plurality of credential identities associated with the
user identity, and a renewal schedule associated with each of the
plurality of credential identities and wherein the renewal date is
identified from the renewal schedules, wherein credential
identities comprise professional certification name and
credential requirements for the professional certification wherein
at least one credential requirement comprises both continuing
education units and exam/reading requirements over a period of
time;
displaying to a display device, operably coupled to the
computing device, the plurality of medical imaging credential
identities, associated renewal dates, a first input field configured
to receive input indicating a user's renewed status, a second input
field configured to receive input indicating a corresponding date
1 According to Appellants, the real party in interest is Atirix Medical
Systems, Inc. App. Br. 3.
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the renewed status was obtained, a third input field indicating
information for entry concerning completion of continuing
education units, and a fourth input field indicating information to
enter concerning completion of exam/reading requirements; and
receiving input from a user through a system interface to
alter the first input field, the second input field, the third input
field, the fourth input field, or combinations thereof, wherein the
receiving by the processor of the indication of updated status
relating to one or more of the input fields causes the processor to
update the renewal schedule in the database.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ghosh
Goldhaber
Schramm-Apple
US 2001/0032094 Al
US 2002/0188652 Al
US 2004/0078225 Al
REJECTI0NS 2
Oct. 18, 2001
Dec. 12, 2002
Apr. 22, 2004
The Examiner made the following rejections:
Claims 1--4, 7-12, and 22 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more.
Claims 1 and 2 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Goldhaber in view of Schramm-Apple.
Claims 3, 4, 7-12, and 22 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Goldhaber in view of Schramm-Apple further in
view of Ghosh.
2 The Examiner withdrew the indefiniteness rejections under 35 U.S.C.
§ 112, second paragraph. (Advisory Action, dated October 12, 2016).
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ANALYSIS
PRINCIPLES OF LAW
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. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
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 [P]etitioners' 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, 192
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( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
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 176, 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), and 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 (quotation 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. (alteration in original) (quoting Mayo, 566 U.S. at 77).
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"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
USPTO Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/
2018-28282.pdf).
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); 3 and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)). 4
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
§ 2106.0S(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. 5
See Guidance.
Step 2A(i)-Abstract Idea
3 Referred to as "Revised Step 2A, Prong l" in the Guidance (hereinafter
"Step 2A(i)").
4 Referred to as "Revised Step 2A, Prong 2" in the Guidance (hereinafter
"Step 2A(ii)").
5 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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Informed by our judicial precedent, the recent Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity- 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); and
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Under the Guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Guidance.
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii)-Practical Application
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If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP,
cited in the Guidance under Step 2A(ii), are:
(1) MPEP § 2106.0S(a) Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field
(2) MPEP § 2106.0S(b) Particular Machine
(3) MPEP § 2106.0S(c) Particular Transformation
(4) MPEP § 2106.0S(e) Other Meaningful Limitations
(5) MPEP § 2106.0S(f) Mere Instructions To Apply An Exception
(6) MPEP § 2106.0S(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.0S(h) Field of Use and Technological
Environment
See MPEP § 2106.0S(a}-(c), (e}-(h). Citations to the MPEP herein
refer to revision [R-08.2017].
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B - "Inventive Concept" or "Significantly More"
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Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 6 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception (e.g., because the additional elements were
unconventional in combination). 7 Therefore, if a claim has been determined
to be directed to a judicial exception under Revised Step 2A, we must
evaluate the additional elements individually and in combination under Step
2B to determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself). 8
Under the Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
6 See, e.g., Diehr, 450 U.S. at 187.
7 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349--52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
8 We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimerv. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Guidance, III.B. 9
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine, or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that demonstrates the
well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05( d)(II) as noting the well-understood, routine, conventional
nature of the additional element( s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional element( s ).
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo.
9 In accordance with existing Step 2B Guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation ofwell-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
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The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present; or
(b) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception, which is indicative that an inventive concept may not
be present.
Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
35 U.S.C. § 101
With respect to claims 1--4, 7-12, and 22, Appellants argue the claims
together. (App. Br. 8-20). Therefore, we select independent claim 1 as the
representative claim for the group and will address Appellants' arguments
thereto. 37 C.F.R. § 4I.37(c)(l)(iv). Arguments which Appellants could
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have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
Step 1
Claim 1, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because the claims are directed to an abstract idea of
processing credential data "with information for a plurality of medical
imaging professionals and a plurality of credential identities," which is a
fundamental economic practice, and the claims do not recite limitations that
provide significantly more than the abstract idea itself. (Ans. 3).
Based upon the Guidance, we refine the Examiner's statement of the
abstract idea to characterize the abstract idea as the "processing medical
imaging credential data ... " step of independent claim 1, which is a mental
process that can be performed in the human mind and/or by pen and paper.
We find this type of activity, i.e., managing medical imaging credentials for
medical imaging professionals, for example, includes longstanding conduct
that existed well before the advent of computers and the Internet, and could
be carried out by a human with pen and paper. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely
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mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson."). 10
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, ... without more, as essentially
mental processes within the abstract-idea category." Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) (quoting
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)).
Step 2A(ii): Judicial Exception Integrated
into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
In addition to the abstract idea "processing medical imaging credential
data ... "limitation identified in Step 2A(i), supra, claim 1 recites the
1° CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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additional element/steps in the second and third steps of the claimed method
which recite "displaying to a display device ... " and "receiving input from a
user .... "
As to these specific limitations, we find the limitation "receiving input
from a user" recites insignificant data gathering. See MPEP § 2106.05(g).
Data gathering, as performed by the steps or function in Appellants' claims,
is a classic example of insignificant extra-solution activity. See, e.g., In re
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), ajf'd sub nom, Bilski v.
Kappas, 561 U.S. 593 (2010).
We also find the "displaying to a display device ... " step and
"wherein the receiving by the processor of the indication of updated status
relating to one or more of the input fields causes the processor to update the
renewal schedule in the database" limitation recite insignificant post solution
activity. 11 The Supreme Court guides that the "prohibition against patenting
abstract ideas 'cannot be circumvented' [by] adding 'insignificant post-
solution activity."' Bilski, 561 U.S. at 610-11 (quoting Diehr, 450 U.S. at
191-92).
On this record, Appellants' claims do not operate the recited generic
computer components in an unconventional manner to achieve an
improvement in computer functionality. See MPEP § 2106.05(a).
Appellants identify pages 7-8 of the Specification which discloses the
system "may take the form of a variety of different embodiments, including
one or more servers associated with one or more databases and other
physical components for performing data management, user interfaces
11 We also note the "determining" steps can be carried out by a human in the
mind or by use of pen and paper. See CyberSource, 654 F.3d at 1375.
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generation, information storage, or performing other operations as described
herein" and the system "may communicate through a variety of suitable
means, such as the Internet, frame relay, point to point networking, or other
appropriate architectures." Additionally, the Specification discloses "all
code, operating systems, databases, and web servers reside on hard drives
local to the server 100," but "optional on-site and/or off-site storage services,
storage area network (SAN)" may be from a third party provider. (App. Br.
3 citing Spec. 8). Furthermore, the Examiner finds pages 8-9 of the
Specification discloses "a technologist may interact with the system via
system interfaces provided at any number of tech stations located within a
facility ... " support a finding of generic computer structure. (Final Act. 4).
Accordingly, we conclude the recited judicial exception is not
integrated into a practical application as determined under one or more of
the MPEP sections cited above, such that the claim is directed to the judicial
exception.
Step 2B - "Inventive Concept" or "Significantly More"
If the claims are "directed to" a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For Step 2B,
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir.
2016) (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step 2 of the Alice analysis, our reviewing court guides we
must "determine whether the claims do significantly more than simply
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describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea 12; mere instructions to implement an
abstract idea on a computer13 ; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 14
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that claim 1 lacks an inventive concept that
transforms the abstract idea of "processing medical imaging credential data
12 Alice, 573 U.S. at 221-23.
13 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84--85).
14 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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... " into a patent-eligible application of that abstract idea. See Final Act. 4;
Ans. 3. 15
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, 811 F.3d at 1325. In particular, "[t]he question of
whether a claim element or combination of elements is well-understood,
routine and conventional to a skilled artisan in the relevant field is a question
of fact." Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the computing device,
processor, display, system interface and storage, we note the Examiner's
citation to pages 6-9 and 57 of Appellants' Specification. (Ans. 3).
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
15 "The additional elements present ( computing device comprising a
processor, a display, a system interface and accessible storage having
instructions stored thereon) are generic computer components (page 6, line
30 to page 7, line 6, page 7, line 31 to page 8, line 4, page 8, line 31 to 9,
lines 4, and page 57, lines 14-16 of Specification), which are (a) well-
known, routine and conventional. The additional elements present are
arranged in a well-known, routine and conventional fashion and used in
ways that are also well-known, routine and conventional found in the claim
recited, "receiving input from a user through a system interface to alter the
first input field, the second input field, the third input field, the fourth input
field, or combinations thereof, wherein the receiving by the processor of the
indication of updated status relating to one or more of the input fields causes
the processor to update the renewal schedule in the database;" (independent
claiml) which is interpreted as insignificant extra-solution activity, i.e. mere
data gathering."
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techniques, particularly in light of Appellants' Specification, as quoted
above. 16
With respect to the Step 2B analysis, we agree with the Examiner
because, as in Alice, the recitation of a "computing device comprising a
processor, a display, a system interface, and accessible storage having
instructions stored thereon" ( claim 1) is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 573 U.S. at 221 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention.").
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's§ 101 rejection of representative independent claim 1, and
grouped claims 2--4, 7-12, and 22, not argued separately, and which fall
therewith.
16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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We address Appellants' arguments as they apply to the Guidance and
add the following primarily for emphasis and clarification with respect to the
Guidance.
First, Appellants argue the Examiner errs in determining the claims
are directed to an abstract idea, because "the Examiner extracts less than two
lines from a 23 line claim and identifies this abstraction of the claim as the
claimed invention." (App. Br. 9). "Appellant's initial point with respect to
Enfish is to pay heed to a trap of abstracting claim language for analysis and
then concluding that the claim is necessarily abstract, which the Federal
Circuit has cautioned against doing in multiple cases based on a specific
Supreme Court caution." (Reply Br. 3).
Second, Appellants provide a brief discussion of five separate cases
and analogize the claims with conclusory statements after each of the brief
discussions. (App. Br. 10-18).
Third, Appellants contend:
Even if the claims were an abstract idea under an Alice
analysis, Appellant's claims are directed to an inventive concept
under the second step of an Alice analysis. Appellant's claims
are directed to a method does not do anything without an
interaction with a user. The user thus provides an instrumental
input in the function of the system. The system then reacts to the
input provided by the user. Such functions expressly indicate the
function of a tool in the hands of the user, which involves an
inventive concept.
(App. Br. 19).
Finally, Appellants present attorney argument regarding objective
evidence of commercial success with regards to patent eligible subject
matter similar to that provided with regards to obviousness rejections:
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With respect to the present claimed invention, Appellant's "QC-
TRACK®.Credentials" product, the undersigned has confirmed
with Appellant's CEO the following information. This product is
part of a larger QC-Track product used by over 200 imaging
facilities, including academic medical centers, hospitals imaging
department, and outpatient imaging centers. The QC-
Track. Credentials module collectively tracks the credentials
status of thousands of clinical imaging professionals, including
in such well known centers as Mayo Clinic, Rochester, MN,
Sutter Health, Sacramento, CA, and University of Virginia,
Charlottesville, VA.
(App. Br. 19).
Although Appellants present attorney argument regarding a
commercial product, Appellants have not provided a correlation to the
invention as recited in the language of independent claim 1. As a result, the
attorney argument does not provide any substantive evidence of commercial
success of the claimed invention and would not impact the patent eligibility
determination. Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Based on the record before us, we do not discern "a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." Memorandum, Section
III(A)(2). Accordingly, the claim does not integrate the judicial exception
into a practical application. See Memorandum, Section III(A)(2) (Prong
Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application). Nor does the
claim include a specific limitation or a combination of elements that
amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial
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Exception, Evaluate Whether the Claim Provides an Inventive Concept).
The remaining claim elements only recite generic computer components that
are well-understood, routine, and conventional. See Ans. 3 (citing Spec. 6-
8, 57), Figs. 1-2; Alice, 573 U.S. at 226.
Additionally, we find the Examiner's identified abstract idea is a
mental process using merely conventional computer hardware because of the
following claim interpretation.
With respect to the first step of independent claim 1, we find the claim
recites processing medical image credential data stored in a database and
then recites a number of facets of the data items in "wherein" clauses
without setting forth specific aspects regarding any of the processing "to
identify a renewal date for each of the plurality of credential identities." In
the second step, the claim merely recites displaying the plurality of medical
image credential identities and lists four "input fields" without actively
performing any additional functions beyond conveying information. Finally,
in the third step, the claim recites "receiving input from a user through a
system interface to alter" one or a combination of the "input fields"
displayed in the second step and the claim concludes with "wherein the
receiving by the processor of the indication of updated status relating to one
or more of the input fields causes the processor to update the renewal
schedule in the database." But the recited steps of the claimed process do
not actually update the renewal schedule or perform any additional functions
beyond "causing." The Summary of the Claimed Subject Matter identifies
pages 61---62 of the Specification, which indicate a wide spectrum of
additional functions, but may merely be checking the "renewed checkbox,"
which we find is merely modifying a data item. (App. Br. 4.)
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Alternatively, Appellants have not identified how the claimed
invention is integrated into a practical application under MPEP 2106.05(g)
and the "causing" function in the third step may be viewed as insignificant
extra-solution activity because no further details are recited. We find the
broadest reasonable interpretation of the claimed method merely recites
processing various stored data and displaying four additional fields for
medical credential information and receiving user input.
As a result, we find Appellants' arguments do not show error in the
Examiner's conclusion of a lack of patent eligible subject matter of
representative independent claim 1 and claims 2--4, 7-12, and 22 grouped
claims therewith.
35 U.S.C. §103
With regards to claims 1--4, 7-12, and 22, Appellants argue claims 1
and 2 together as a first group and claims 3, 4, 7-12, and 22 together as a
second group. (App. Br. 5).
We select independent claim 1 and dependent claim 3 as the
representative claims for the two groups and will address Appellants'
arguments thereto. Arguments which Appellants could have made but did
not make in the Briefs are deemed to be waived.
For independent claim 1, Appellants argue the Examiner's claim
interpretation is not reasonable with regards to the claimed "processing
medical imaging credential data stored in a database ... to identify a renewal
date for each of a plurality of credential identities." (App. Br. 20-22).
Appellants contend "[ w ]ith all due respect, a person of ordinary skill in the
art would not interpret the notation of a semiannual renewal requirement as
identifying a date on which the renewal is due." (App. Br. 20-21).
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Appellants further contend that "just knowing the frequency of renewal does
not provide sufficient information to obtain a renewal date, and construing
the claim differently is not reasonable." (App. Br. 21).
Appellants further contend:
[C]laim construction is not reasonable in view of the
specification from the perspective of a person of ordinary skill in
the art. "Exam/reading requirements" refers to image readings as
part of an exam performed with the imaging device, and not to
reading a text. Refer to Appellant's Fig. 59, which recites
imaging facilities for performing exams/readings. The claims
refers repeatedly to the context of medical imaging professionals
who would understand what exam/reading means in this context
in view of the specification.
(App. Br. 21 ). Yet, Appellants have not included the totality of the details of
Figure 59 in the language of independent claim 1 nor have Appellants
identified any specific definition in the Specification to further limit the
Examiner's claim interpretation.
In addition to the claim interpretation argument, Appellants argue the
Examiner has not addressed the claim as a whole and three elements of the
claim are missing from the combination. (App. Br. 21-22). Specifically,
Appellants contend that, "to identify a renewal date for each of a plurality of
credential identities," "at least one credential requirement comprises both
continuing education units and exam/reading requirements over a period of
time," and "a first input field ... , a second input field ... and a fourth input
field" are not taught or suggested by the combination. (App. Br. 21-22).
The Examiner addresses Appellants' arguments in the Examiner's
Answer. (Ans. 9-10). The Examiner finds that the Goldhaber reference in
paragraphs 51-52 implicitly teaches a recurring renewal date for physicians
and technologists. We agree with the Examiner. With the Goldhaber
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suggestion that the continuing education be monitored in combination with
the interface of the Schramm Apple's system, we agree with the Examiner
that the combination teaches and fairly suggests the claimed limitation.
With regards to the claimed "at least one credential requirement
comprises both continuing education units and exam/reading requirements
over a period of time" or "monitoring information relating to exam/reading
requirements," the Examiner finds that the Goldhaber reference in paragraph
50 suggests continuing medical education and additional storage of non-
image data. (Ans. 9--10 (emphasis omitted)). Additionally, we find the
Schramm-Apple reference in figures 2A and 2B identified both continuing
education 201 and course examination 222 elements. As a result, we agree
with the Examiner that the combination teaches and fairly suggests the
claimed limitation.
With respect to the input fields, the Examiner finds that "Schramm-
Apple' s figures 4A, 5 and 6 show tools to input and display a licensure
period, end of licensure period, start date, end date and other continuing
education ( CE) activities shown in Fig. 18, mentioned in paragraphs 104-
107, serve as inputting first, second and third input fields." (Ans. 10). We
agree with the Examiner.
Reply Brief
In the Reply Brief, with regards to the identifying a renewal date,
Appellants contend there is a renewal date in the Goldhaber reference, but
that Goldhaber does not teach doing anything with a renewal date. (Reply
Br. 9).
We disagree with Appellants and find the Goldhaber reference teaches
and suggests identifying a renewal date for accreditation purposes.
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(Goldhaber ,r,r 14, 43, 50, 51, claim 14). Furthermore, in combination with
the Schramm-Apple reference, which suggests identifying a renewal date, it
would have been obvious to one of ordinary skill in the art at the time of the
invention.
With regards to both continuing education units and exam/reading
requirements limitation, Appellants contend:
[T]he Examiner has steadfastly refused without explanation to
construct "exam/reading requirements" as would be understood
m view of the specification as having performed
examination/readings of patient images. Exam/reading
requirement has nothing to do with reading or writing/typing any
words, but the Examiner has refused to construe these terms
correctly or provided any basis for her claim construction which
respectfully is clearly in error in the context of the claims and
specification.
(Reply Br. 10).
We disagree with the Appellants and find Appellants are attempting to
import limitations from the Specification. Additionally, we find Appellants'
Summary of the Claimed Subject Matter merely identifies Figure 55 for
corresponding support, but we find no corresponding definition to limit the
interpretation in the claim language.
With respect to the missing input fields, Appellants contend, "at least
three of the four specific input fields of the claim were not taught by the
cited art. With all due respect, the Examiner has failed to explain a legal
basis for obviousness based on vaguely related teachings and not reciting the
specific features of the claimed invention." (Reply Br. 10).
We disagree with Appellants and find the Examiner has addressed the
specific input fields. Moreover, the specific labels for each of the input
fields do not change the displaying step or any recited functionality in the
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language of independent claim 1. Therefore, Appellants have not shown
error in the Examiner's factual findings or conclusion of obviousness of
representative independent claim 1 and dependent claim 2 which is grouped
therewith.
Dependent Claim 3
With respect to the rejection of representative dependent claim 3 over
the combination of Goldhaber, Schramm-Apple, and Ghosh, Appellants
argue there are fundamental differences between Ghosh and Schramm-
Apple that do not support their combination as suggested in the rejection
absent improper hindsight based on Appellants' disclosure. (App. Br. 23-
24). Appellants further argue the rejection seems to use the features of the
references as pieces of a puzzle to assemble the rejection based on the
template of Appellants' claim without reasonable support from the
references of knowledge in the art. (App. Br. 23).
Appellants further argue that even if the references are improperly
combined, the rejection is deficient since the combination of references does
not teach anything about "exam/reading requirements" relating to imaging
professional credentials. (App. Br. 24). Because we find no error in the
base combination with regards to the exam reading requirements, we
similarly find that the Ghosh reference does not need to remedy that
proffered deficiency.
Appellants argue that due to the deficiencies described above with
respect to combining references related to very different purposes and not
teaching all of the claimed features, the combined teachings of Goldhaber,
Schramm-Apple, and Ghosh clearly do not render Appellants' claimed
invention prima facie obvious. (App. Br. 24). Because we find no error in
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the base combination, we similarly find the Ghosh reference does not need
to remedy that proffered deficiency, and Appellants have not identified any
specific line of reasoning why it would not have been obvious to one of
ordinary skill in the art at the time the invention to combine the three
references.
Appellants provide no further arguments with regards to the Ghosh
reference in the Reply Brief. Therefore, Appellants' arguments have not
shown error in the Examiner's factual findings or conclusion of obviousness
of representative dependent claim 3 and dependent claims 4, 7-12, and 22.
CONCLUSION
The Examiner did not err in rejecting claims 1--4, 7-12, and 22 under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
The Examiner did not err in rejecting claims 1--4, 7-12, and 22 based
upon obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1--4, 7-12, and 22 under 35 U.S.C. § 101 and the obviousness rejection of
claims 1--4, 7-12, and 22 under 35 U.S.C. § 103.
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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