Ex Parte Hoffman

Patent Trial and Appeal Board

Mar 22, 2018

12860646 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/860,646 08/20/2010
46169 7590 03/26/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
MARK A. HOFFMAN
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.
CRNI.156780 1448
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. HOFFMAN
Appeal2017-003857
Application 12/860,646 1
Technology Center 3600
Before ST. JOHN COURTENAY III, MICHAEL R. ZECHER, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-16, 21, 22, and 24, 2 which are all of the claims
pending in this application. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Cemer Innovation, Inc.
Br. 3. This Appeal is related to Appeal No. 2016-008486. See id.
2 In the Final Action, the Examiner erroneously included claim 23 in the
rejection heading. See Final Act. 3.
3 Claims 17-20 and 23 have been canceled. Br. 23, 24 (Claims App'x).
Appeal2017-003857
Application 12/860,646
INVENTION
Appellant's application relates to centralized data mapping for site-
specific data extraction. Title. Claim 1 reads as follows:
1. One or more non-transitory computer storage
media storing computer-useable instructions that cause one or
more computing devices at a central site, to perform a method of
extracting summary data from a healthcare related site system,
the method comprising:
at a web service of the central site, determining a category
of summary data associated with the summary data that is to be
retrieved, wherein the category of summary data corresponds to
one or more of a healthcare order, a clinical event, or a diagnosis;
receiving a first site-specific code that identifies the
category of summary data at a first healthcare related site system,
wherein the first site-specific code is different from a second site-
specific code, the second site-specific code identifying the
category of summary data at a second healthcare related site
system;
mapping the first site-specific code to a standard code
wherein the standard code is a non-site-specific code that
identifies the category of summary data;
receiving a request to determine the first site-specific code
to be identified in an extraction script, that when executed,
extracts the summary data associated with the first site-specific
code;
providing the first healthcare related site system an
indication of the first site-specific code to be identified in the
extraction script;
directing the first healthcare related site system to execute
a set of one or more extraction scripts that are tuned by modifying
the behavior of the extraction script by inserting the first site-
specific code utilizing the mapping; and
in response to the execution, at the first healthcare related
site system, of the set of one or more extraction scripts, receiving
the summary data from the first healthcare related site system.
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Application 12/860,646
REJECTION
Claims 1-16, 21, 22, and 24 stand rejected under 35 U.S.C. § 101
because the claimed subject matter is judicially-excepted from patentability.
Final Act. 3--4; Ans. 3--4.
ANALYSIS
We have reviewed the rejection of claims 1-16, 21, 22, and 24 in light
of Appellant's arguments that the Examiner erred. We have considered in
this decision only those arguments Appellant actually raised in the Briefs.
Any other arguments Appellant could have made, but chose not to make, in
the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant's arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 3-16). We provide the following explanation for
emphasis.
Appellant first contends the Examiner failed to establish a prima facie
case of patent ineligibility under§ 101. Br. 8. We disagree. "[T]he prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
Examiner carries the burden of establishing a prima facie case when its
rejection satisfies 35 U.S.C. § 132 by setting forth a rejection in a
sufficiently articulate and informative manner. In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011). If the Examiner "adequately explain[s] the
shortcomings ... the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument." Hyatt, 492 F.3d at 1370.
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The Final Office Action adequately explains the § 101 rejection. See
Final Act. 3, 14--15. The Examiner's statements satisfy§ 132 because they
apply the Mayol Alice analytical framework, particularly the two-step test,
and apprise Appellant of the reasons for the§ 101 rejection under that
framework. Appellant has recognized the Examiner's Mayo/Alice analysis
and has presented arguments regarding each step. See Br. 7-18. Appellant
has not responded by alleging a failure to understand the rejection. Id.
Appellant next contends the Examiner erred in rejecting the pending
claims as directed to patent-ineligible subject matter. Br. 8. Appellant
argues claims 1-16, 21, 22, and 24 as a group (Br. 8), and we choose claim 1
as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)). The first step is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts," such as an abstract idea.
Id. (citing Mayo, 566 U.S. at 77-78). If the claims are directed to a patent-
ineligible concept, the second step is to consider the elements of the claims
"individually and 'as an ordered combination"' to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Id. (quoting 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
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Application 12/860,646
[ineligible concept] itself."' Id. (alterations in original) (quoting Mayo, 566
U.S. at 72-73). The prohibition against patenting an abstract idea "'cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that limitations of claim 1 are directed to a series of steps related
to extracting healthcare data from disparate sources. Final Act. 3--4; Ans. 3-
4. We also agree that, here, the concept of extracting healthcare data from
disparate sources is similar to the concept of comparing new and stored
information and using rules to identity options, which is an abstract idea.
Ans. 8 (citing SmartGene Inc. v. Adv. Bio. Labs. SA, 555 F. App'x 950 (Fed.
Cir. 2014)). We further agree with the Examiner that portions of claim 1 are
directed to the abstract idea of using categories to organize, store, and
transmit information because "data is labeled in particular categories such as
summary data categories, site specific codes, extraction scripts, etc. in order
to assemble, process and communicate information." Ans. 8.
In SmartGene, the Federal Circuit concluded claims were patent
ineligible because they did "no more than call on a 'computing device,' with
basic functionality for comparing stored and input data and rules, to do what
doctors do routinely." SmartGene, 555 F. App'x at 954. In the instant case,
the recited "site-specific codes" are nothing more than data used in an
algorithm process that employs a central system (i.e., "computer devices") to
modify an execution script using mathematical comparisons and rule-based
processes. See Ans. 7. The claims at issue in SmartGene relied upon
"expert rules" for "'evaluating and selecting' from a stored 'plurality of
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different therapeutic treatment regimens."' SmartGene, 555 F. App'x at
955. The "expert rules" in SmartGene are analogous to the rules for
"determining a category of summary data," rules for mapping site-specific
codes to standard codes, and rules for tuning extraction scripts required by
claim 1. See Ans. 10.
Appellant contends the Examiner's "overly broad characterization of
the claimed subject matter is inaccurate and ignores the specific features
included in the claims." Br. 11. Appellant, however, does not explain
persuasively how the Examiner mischaracterized claim 1 (see Ans. 5-11) or
how the claims differ from those in SmartGene.
Appellant further contends the claims are "necessarily rooted" in a
computer technology and address a technological challenge confined to
computer technology. Br. 12-13 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Appellant argues "various
claims of the present Application may address the technological challenge of
collecting massive amounts of clinical data in healthcare information
technology systems from disparate health systems that have varying levels
of integrity which scan for real outbreaks that present risk to public health."
Id. at 13.
Appellant's arguments are not persuasive at least because they are
based upon elements not recited or required by the claims. Moreover,
collecting data from more than one system using generic computer
components is routine and well-known, and Appellant has not identified any
particular inventive technology for performing those functions. Here, the
advance the claims purport to make is a process of gathering and analyzing
information, and "not any particular assertedly inventive technology for
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performing those functions." Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016).
Appellant also argues the pending claims are similar to hypothetical
claim 1 of Example 23 of the Appendix to the July 2015 Update: Subject
Matter Eligibility, issued by the PTO. Br. 13. Claim 1 of Example 23 is
directed to a computer-implemented method for dynamically relocating
information on a graphical user interface if a window overlap condition
exists. See id. Appellant, however, does not explain persuasively how
rejected claim 1 is similar to claim 1 of Example 23 apart from arguing that
"this Example is similar to the present claims." See id.
For these reasons, we are not persuaded of error in the Examiner's
determination that the claims are directed to the abstract idea of comparing
new and stored information and using rules to identify options. See Final
Act. 3; Ans. 6-13.
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything "significantly more" to transform the abstract
concept of comparing new and stored information and using rules to identify
options into a patent-eligible application. Alice, 134 S. Ct. at 2357.
We are not persuaded by Appellant's arguments that claim 1 includes
"elements or computer functions that are not well-understood, routine and
conventional in the field, as evidenced by the absence of prior-art-based
rejections." Br. 15. Even if we were to conclude Appellant's claims are
nonobvious, such finding would not necessarily lead to the conclusion that
subject matter is patentable eligible. See Ass 'n for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). Appellant's further
argument that the recited computers are special-purpose computers (Br. 16-
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1 7) is not persuasive in light of the description in the Specification that
"[t]he present invention may be operational with numerous other general
purpose or special purpose computing system environments or
configurations." Spec. i-f 29 (emphases added). That a computer may be
programmed to perform the limitations recited in the claims is not sufficient
to establish an inventive concept where the limitations involve nothing more
than conventional functions computers perform, such as receiving and
looking up data, executing requests, and mapping data. Here, we are not
persuaded the claims improve the functioning of the computer device. See
Alice, 134 S. Ct. at 2359.
Appellant also argues claim 1 poses no risk of preempting the abstract
idea. See Br. 17. Appellant's argument is not persuasive because, "'[w]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility."' Fair Warning
IP, LLC, v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) ). Further, "[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
For these reasons, we are not persuaded the Examiner erred in
concluding the subject matter of claim 1 is judicially-excepted from
patentability.
Accordingly, we sustain the Examiner's§ 101 rejection of
independent claim 1, as well as the Examiner's§ 101 rejection of
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independent claims 9 and 21, and dependent claims 2-8, 10-16, 22, and 24,
not argued separately. See Br. at 7.
DECISION
We affirm the Examiner's decision rejecting claims 1-16, 21, 22, and
24.
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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