11943355 (P.T.A.B. Sep. 21, 2018)

Ex Parte Jakobovits

Patent Trial and Appeal BoardSep 21, 2018

11943355 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/943,355 11/20/2007 99434 7590 09/25/2018 McKesson Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza 101 South Tryon St., Suite 4000 Charlotte, NC 28280-4000 FIRST NAMED INVENTOR Rex Jakobovits 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. 050704/347253 3325 EXAMINER NGUYEN, TRAN N ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 09/25/2018 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte REX JAKOBOVITS Appeal2017-001053 1 Application 11/943,3552 Technology Center 3600 Before ST. JOHN COURTENAY III, SCOTT B. HOWARD, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellant files this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-7, 15-20, and 26-41. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed Dec. 14, 2015), Reply Brief ("Reply Br.," filed Oct. 24, 2016), and Specification ("Spec.," filed Nov. 20, 2007), as well as the Examiner's Answer ("Ans.," mailed Aug. 25, 2016) and the Final Office Action ("Final Act.," mailed Mar. 13, 2015). 2 According to Appellant, the real party in interest is McKesson Technologies, Inc. App. Br. 2. Appeal2017-001053 Application 11/943,355 THE CLAIMED INVENTION Appellant's claimed invention relates to "managing medical images and associated text and data, and more specifically, to the creation and use of medical image knowledge bases for decision support, reference, training, consultation, and collaboration." Spec. 2. Claim 1 is representative of the subject matter on appeal and is reproduced below. 1. A method comprising: receiving, by a server, a plurality of medically-related documents, the plurality of documents being associated with one or more medical cases; transcoding a received document from a first format in which the document was received to a second format, the second format being different from the first format and being compatible for integration into a web page displayable in a web browser; selectively organizing the received documents, by the server, based at least in part on one or more of document type or document content into one or more case portfolios, wherein the one or more case portfolios comprise a web page generated based at least in part on one or more of the received documents and including the transcoded document; integrating client-side logic with each of the case portfolios to facilitate interactive viewing and editing of the client portfolios in the web browser; and causing storage, at the server, of the one or more case portfolios for selective distribution in response to one or more future requests for corresponding interactive viewing and editing of the documents of the distributed case portfolios. REJECTION ON APPEAL The Examiner rejected claims 1-7, 15-20, and 26-41 under 35 U.S.C. Â§ 101 as being directed to patent ineligible subject matter. 2 Appeal2017-001053 Application 11/943,355 ANALYSIS We have reviewed the Examiner's rejection in light of Appellant's contentions that the Examiner erred. We disagree with Appellant's contentions for the reasons discussed below. (1) Claim Grouping Appellant argues that the Examiner "fails to provide any analysis or argument" for independent claims 15, 33, and 37, despite these claims having separate, independent scope from independent claim 1. See App. Br. 10. Rather than such an analysis, Appellant contends the Examiner only provides a conclusory statement (i.e., "[a]s per claim(s) 15-20, 33-38, 41, this/these claim(s) is/are also hereby rejected for substantially similar rationale as applied to claim(s) 1-7, 26-32, 39-40 above, and incorporated herein."), which is "[in]sufficient to enable Appellant to present reasoned arguments rebutting the conclusions reached by" the Examiner. Id. at 10-11 ( citing Final Act. 4 ). The Examiner finds that independent claims 15, 33, and 37 recite an abstract concept similar to that of claim 1. Ans. 2; Final Act. 4. The Examiner also finds that "[a]lthough of differing scope," these other independent claims fail to recite any additional elements that would, either individually or in ordered combination, provide significantly more than the abstract concept and do not provide "beyond what is routine, conventional, and well-understood in the art." Ans. 2. The Examiner also finds that the dependent claims (i.e., 2-7, 16-20, 26-32, 34--36, 38--41) do not remedy the deficiencies of their parent claim, and are, therefore, rejected for the same rationale as applied to the parent claim. Final Act. 4. 3 Appeal2017-001053 Application 11/943,355 We are not persuaded by Appellant's argument that the Examiner fails to sufficiently address independent claims 15, 33, and 37, and their dependent claims. We find that the Examiner has sufficiently set forth a prima facie case of unpatentability for these claims based on the Examiner (i) rejecting these claims for the same reasoning as articulated for claim 1, and (ii) finding that these claims fail to recite any additional elements that would add significantly more to the abstract concept itself, beyond "what is routine, conventional, and well-understood in the art." Appellant fails to persuasively address substantively this finding. Appellant argues the pending claims as a group as Appellant does not provide separate, substantive arguments for claims other than claim 1. See generally App. Br.; Reply Br. Thus, we decide the appeal of theÂ§ 101 rejection on the basis of representative claim 1, and refer to the rejected claims collectively herein as "the claims." See 37 C.F .R. Â§ 41.37 ( c )(1 )(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). (2) Â§ 1 OJ Re;ection Appellant contends the Examiner improperly rejected the claims under 35 U.S.C. Â§ 101. See App. Br. 13-26; Reply Br. 2-9. According to Appellant, the claims do not concern an abstract idea, and even if they did, the claims would be patent eligible because the claims amount to significantly more than an abstract idea. See App. Br. 13. We find Appellant's arguments unpersuasive. Section 101 of the Patent Act provides that "[ w ]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this 4 Appeal2017-001053 Application 11/943,355 title." 35 U.S.C. Â§ 101. The Supreme Court has explained that this provision is subject to a long-standing, implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014). The Court has set forth a two-part inquiry to determine whether this exception applies. First, we must determine if the claim at issue is directed to one of those patent-ineligible concepts. Id. at 2355. Second, if the claim is directed to one of those patent-ineligible concepts, we must consider the elements of the 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. ( quotation marks omitted) ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72 (2012)). (i) Abstract ideas We first consider whether the Examiner properly concluded the claims are directed to one or more abstract ideas. For example, the Examiner concluded that the claims are directed to the abstract ideas of: receiving data, processing data, sorting data, appending data, and storing data, which corresponds to the concepts identified as abstract ideas by the courts, such as comparing new and stored information and using rules to identify options in SmartGene,[ 3] and using categories to organize and store information for transmission in Cyberfone. [4] Ans. 3 (emphasis added). The Examiner concludes that "[t]he concept described in th[ e] claim[ s] is not meaningfully different from those found by 3 SmartGene, Inc. v. Adv. Bio. Labs., SA, 555 Fed. App'x 950 (Fed. Cir. 2014). 4 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. App'x 988, 991-92 (Fed. Cir. 2014). 5 Appeal2017-001053 Application 11/943,355 the courts to be abstract ideas. As such, the description in th[ e] claim[ s] is an abstract idea." Id. at 3--4. Appellant argues the claims are not directed to an abstract idea. Reply Br. 2---6. Appellant argues that the Examiner oversimplifies the claims, and fails to evaluate the claims as a whole and an ordered combination of individual steps. Id. at 2-3 ( citations omitted). Appellant also argues that the abstract ideas of "'receiving data, processing data, sorting data, appending data, and storing data' is too far removed from the claim language" and "boil[s] away too many features from the claims themselves," such as "transcoding." Id. at 3--4. Appellant also argues that the Examiner improperly relies on the SmartGene and Cyberfone decisions, as they are non-precedential opinions. Id. at 5. Appellant also argues that (i) "Cyberfone relates to obtaining data, 'exploding' the data into component parts, and sending those parts to different destinations," which are unrelated to the claimed features and (ii) SmartGene limits its opinion to something that could be done in one's head, which the claimed transcoding cannot be. Id. at 4--5. Appellant also argues that Cyberfone and SmartGene are pre-Alice cases and, thus, are "insufficient to establish that the pending claims are directed to an abstract idea." Id. at 5. In contrast, Appellant relies on Enfzsh 5 and argues it "holds that specific improvements to computer technology are, as a matter of law, not abstract[,] ... set[ting] forth a dichotomy between claims that 'are directed to an improvement to computer functionality versus being directed to an abstract idea."' Id. (citing Enfzsh, 822 F.3d at 1335). Appellant argues that 5 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). 6 Appeal2017-001053 Application 11/943,355 the present claims, like in Enfzsh, provide an improvement to computer functionality. Id. Specifically, Appellant argues that the claims "provide[] a novel and nonobvious solution for conversion of a document to a version displayable by a web browser." Id. at 5-6. Moreover, Appellant contends that "[t]here is no manual analog for this activity because it solves a problem emerging from the ubiquity of the [I]ntemet, and similarly there is no way to manually carry out the claimed procedure that would produce similar results." Id. Appellant has not persuaded us that the Examiner errs. The Federal Circuit has explained that the abstract-idea inquiry requires "looking at the 'focus' of the claims, their 'character as a whole,"' to determine if the claims are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We agree with the Examiner that the claims are directed to the abstract ideas of receiving data, processing data, sorting data, appending data, and storing data, which are akin to at least the claims in Electric Power, which "though lengthy ... the claims d[id] not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology." Id. at 1351. We also are not persuaded by Appellant's reliance on Enfzsh. Unlike the claims in Enfzsh- systems comprising means for configuring memory according to a self-referential table -that were found to be directed to "an improvement to [the] computer functionality itself' (Enfish, 822 F.3d at 1336), the instant claims are more akin to the claims for collecting, 7 Appeal2017-001053 Application 11/943,355 analyzing, and displaying information found to be patent ineligible in Electric Power (830 F.3d at 1353), or the claims directed to image data processing discussed in Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (finding "a process that employs mathematical algorithms to manipulate [ data or] information to generate additional information is not patent eligible"). See Electric Power, 830 F.3d at 1353-54 (citing Digitech, 758 F.3d at 1351). Furthermore, nothing in the claims, understood in light of the Specification, requires anything other than an off-the-shelf, conventional computer used for collecting and processing/analyzing various information/data. Therefore, unlike in Enfzsh, the claims are not directed to improvements in computer functionality. We find that Electric Power and Digitech are sufficiently analogous to establish that the instant claims are directed to an abstract idea. See Enfish, 822 F.3d at 1334 (explaining that when determining whether claims are directed to an abstract idea, "both this court and the Supreme Court have found it sufficient to compare [the] claims at issue to those claims already found to be directed to an abstract idea in previous cases"). Furthermore, we also find that SmartGene ( comparing new and stored information and using rules to identify options) and Cyberfone (using categories to organize and store information for transmission) are persuasive authority that also support the Examiner's finding of an abstract idea. 8 Appeal2017-001053 Application 11/943,355 (ii) Inventive concept We next consider whether the Examiner correctly concluded the claims do not include 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." Alice, 134 S. Ct. at 2355 (quotation marks omitted) (quoting Mayo, Inc., 566 U.S. at 72-73). The Examiner finds that the claims recite computer components at "a high level of generality and are recited as performing generic computer functions routinely used in computer applications[,] ... that are well- understood, routine and conventional activities amount[ing] to no more than implementing the abstract idea with a computerized system." Ans. 5. Accordingly, the claims do not amount to significantly more than the abstract idea itself. Id. at 6. Appellant contends that the claims add significantly more to the abstract idea. App. Br. 20-23; Reply Br. 6-8. Appellant argues that the "claims include at least improvements in a technical field." App. Br. 20. More specifically, Appellant argues that the claims recite "limitations of a novel medical record hosting system, including novel components that format documents in a manner that includes client-side logic to allow for viewing of those documents by clients remote to the hosting system." Id. at 21. Appellant argues that the claims also "provide for interactive viewing and editing of those documents in a novel and nonobvious manner." Id. Appellant contends that these claim features "represent improvements to hospital record management systems in a manner that, as conceded in the Office Action, is not anticipated or rendered obvious by the cited prior art." Id. 9 Appeal2017-001053 Application 11/943,355 In addition, Appellant contends that, as in DDR, 6 the present "claims provide a technological solution to a technological problem and as such recite significantly more than" an abstract idea. App. Br. 23. More specifically, Appellant argues the claims: are directed to a specific way to host and format documents to be accessed by remote computers that addresses a problem related to remote hosting. In particular, ... medical images are not typically presented in a format suitable for remote web viewing. . . . [S]uch images ... are unsuitable for displaying via a web server [because] clients typically lack the appropriate applications for viewing such images. These problems are unique and specific to the world of electronic medical imaging technology, and have no corresponding manual analog. To address these problems, the inventors have developed novel systems that transcode received images and append appropriate logic for rendering such images in a client device (e.g., a web browser). Id. at 22-23; see also Reply Br. 7. Furthermore, Appellant argues that "an inventive concept can be found in the nonconventional and non-generic arrangement of known, conventional pieces." Reply Br. 8 (citing Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)). Appellant argues that the claims contain non-conventional limitations ( e.g., "transcoding"), "thus demonstrat[ing] an 'invention concept' amounting to 'significantly more' than the allegedly abstract idea." Id. We agree with the Examiner that the claims do not amount to significantly more than the abstract ideas. Rather, the claims simply recite generic computer components ( e.g., server, logic, and storage) and functions ( e.g., receiving, processing, sorting, appending, and storing data). See 6 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). 10 Appeal2017-001053 Application 11/943,355 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (finding the invocation of computers and generic functionality adds no inventive concept). Moreover, nothing in the claims, understood in light of the Specification, requires anything other than an off-the-shelf, conventional computers used for collecting and processing/analyzing various information/ data. Therefore, unlike the claims considered by the court in Enfish, the claims here are not directed to an improvement in computer capabilities, but to the results of applying an abstract idea. In addition, we are not persuaded by Appellant's reliance on DDR. Unlike the current claims, DDR addressed a technological problem specific to a particular technological environment by implementing a specific solution for that technological environment and different from the routine or conventional use for that environment. See DDR, 773 F.3d at 1258-59 (finding "the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink"). Appellant's claims are more akin to a generic computer programmed with conventional steps to be carried out by a generic computer (i.e., "'apply it with a computer"'), and, thus, fail to provide an inventive concept - Appellant has not shown that transcoding does anything more than conventionally reformat documents. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332 (Fed. Cir. 2015) (quoting Alice, 134 S. Ct. at 2358) (finding an inventive concept "requires more than simply stating an abstract idea while adding the words 'apply it' or 'apply it with a computer"'). We also find Appellant's citation of Bascom unavailing. The "inventive concept" "must be significantly more than the abstract idea itself, 11 Appeal2017-001053 Application 11/943,355 and cannot simply be an instruction to implement or apply the abstract idea on a computer." Bascom, 827 F.3d at 1349. We also are not persuaded by Appellant's argument (e.g., Reply Br. 8-9) that the claims pose no risk of preempting the abstract idea itself. A lack of preemption does not make a claim patent eligible. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility."); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."). Additionally, we are not persuaded by Appellant's argument that the claimed subject matter is unconventional and adds significantly more because it is not found in the prior art. A finding of novelty or nonobviousness does not necessarily lead to the conclusion that subject matter is patentable eligible. "Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the Â§ 101 inquiry." Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). For the above reasons, we sustain the Examiner's rejection of claim 1, as well as claims 2-7, 15-20, and 26-41, grouped therewith. 12 Appeal2017-001053 Application 11/943,355 DECISION We affirm the Examiner'sÂ§ 101 rejection of claims 1-7, 15-20, and 26-41. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13