Ex Parte Jones et al

Patent Trial and Appeal Board

Jun 29, 2018

13598734 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/598,734 08/30/2012
51444 7590 07/03/2018
COOPER LEGAL GROUP I ORACLE
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
FIRST NAMED INVENTOR
Jeffrey M. Jones
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.
ORA121031 (0271) 9557
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
MUthoff@CooperLegalGroup.com
DDay@CooperLegalGroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY M. JONES and TIMOTHY KV ANVIG1
Appeal2017-004493
Application 13/598,734
Technology Center 3600
Before CAROLYN D. THOMAS, DAVID J. CUTITTA II, and
PHILLIP A. BENNETT, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 2, 6-8, and 26-33, all the
pending claims in the present application. Claims 3-5 and 9-25 are
canceled. See Claims Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to monitoring spending
for pharmaceutical and life science concerns. See Abstract.
1 The Appellants name Oracle International Corporation as the real
party in interest (App. Br. 2).
Appeal2017-004493
Application 13/598,734
Method Claim 29 is illustrative:
29. A computer-implemented method performed by a
computer system including at least a processor and a memory
for executing instructions, the method comprising:
accessing, via an internet connection, one or more
data sources maintained by a company, and retrieve transaction
data that includes data of payments made by the company,
wherein the transaction data is described by terms;
parsing, by at least the processor, the transaction
data to identify terms that reference a health care practitioner
and to identify one or more monetary amounts paid to the
health care practitioner;
classifying, by at least the processor, the one or
more monetary amounts paid to the health care practitioner
from the transaction data by identifying a transaction type from
the terms in the transaction data, and retrieving a transaction
type identifier that is mapped to the term, where the transaction
type identifier classifies the term as one of several different
types of monetary payments including gift payments, wherein
the transaction type identifier is determined by comparing the
term of the monetary amount to a set of stored predefined
transaction types;
identifying, by at least the processor accessing a
practitioner data source, a practitioner identifier that uniquely
identifies the health care practitioner;
creating and storing, by at least the processor, a
spend record in a spend record database, where the spend
record includes data corresponding to: the transaction data, the
practitioner identifier, and the transaction type identifier, where
creating a spend record that includes the practitioner identifier
and the transaction type identifier in the spend record facilitates
web-based querying of spend records stored in the spend record
database by a provider of the transaction data based, at least in
part, on the practitioner identifier of transaction type identifier;
accessing, by at least the processor, a compliance
rule data source that includes one or more compliance rules that
specify limits on at least gift payments made to the health care
practitioner;
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Application 13/598,734
querying, by at least the processor, the compliance
rule data source to identify a compliance rule associated with
the transaction type that specifies a limit on monetary amounts
that include gift payments paid to the health care practitioner
for transactions of the transaction type;
querying, by at least the processor, the spend
record database to aggregate the monetary amounts in the spend
records for each of the practitioner identifiers based on the
transaction type identifier to generate a resulting aggregated
monetary amount made to the health care practitioner for gift
payments;
comparing, by at least the processor, the resulting
aggregated monetary amount for each of the practitioner
identifiers with the limit on the monetary amounts that include
gift payments; and
compiling, by at least the processor, a compliance
report that reports a result of the comparison to identify the
health care practitioners that have the aggregated monetary
amount that is more than the limit on the monetary amounts that
include gift payments, and generate a flag to indicate a violation
for the associated spend record.
Appellants appeal the following rejection:2
Claims 1, 2, 6-8, and 26-33 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory
subject matter (Final Act. 2--4); and
R2. Claims 1, 2, 6-8, and 26-33 are rejected under 35 U.S.C.
§ l 12(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement.
2 The Examiner withdrew the rejection of claims 1, 2, 6-8, and 26-33
under 35 U.S.C. § l 12(a) or 35 U.S.C. 112 (pre-AIA), first paragraph,
as failing to comply with the written description requirement (Ans. 2).
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Appeal2017-004493
Application 13/598,734
We review the appealed rejections for error based upon the
issues identified by Appellants, and in light of the arguments and
evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075
(BP AI 2010) (precedential).
ANALYSIS
Rejection under§ 1 OJ
Issue: Did the Examiner err in finding that the claims are
directed to non-statutory subject matter?
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility
under § 101. According to Alice step one, "[ w ]e must first determine
whether the claims at issue are directed to a patent-ineligible
concept," such as an abstract idea. Alice, 134 S. Ct. at 2355.
In this regard, with respect to independent method claim 29,
and similarly, non-transitory computer-readable medium claim 1 and
system claim 26, the Examiner finds that the claims are directed to an
abstract idea of using categories, i.e., transaction term, transaction
type, practitioner identifier, to organize, store, and transmit
information (Final Act. 2). The Examiner adds that the claims use
"the well-known concept of categorical data storage" and the
"Examiner is using the logic as shown within Ciberfone" (id. at 3).
Appellants challenge the Examiner findings by asserting that
claim 1 "improves the existing technological process by integrating a
number of separate computer system components, and automatically
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Application 13/598,734
generating violation flags for specific data records" (App. Br. 13) and
"claim 1 does not describe an economic practice or organizing activity
[because] [i]t is a computer implemented invention ... all concepts
inextricably tied to computer technology" (id. at 14-15). Appellants
emphasize that "[a] computer and processor must perform [the]
actions as claimed" (App. Br. 16).
In response, the Examiner finds, and we agree, that Appellants'
Specification indicates that "[t]he laws focus on banning or limiting
gifts ... offered to healthcare providers ... and adoption of codes of
conduct" as such"[ w ]hat more fundamental idea of economic activity
is to regulate [sic] commercial transactions?" (Ans. 3 (citing Spec.
iJ 9)). In other words, the Examiner finds support in Appellants'
Specification for indicating that the claimed invention is directed
towards a fundamental economic activity, i.e., regulating activities
with practitioners. The Examiner further finds that "automating the
abstract idea is just an automated abstract idea" (id.). We agree with
the Examiner.
Courts have similarly determined that various methods of
organizing human activity fall "squarely within the realm of 'abstract
ideas."' Alice, 134 S. Ct. at 2357 (discussing methods for risk hedging
and intermediated settlement as non-limiting examples of organizing
human activity). Among others, recent cases from the Federal Circuit
also have "applied the 'abstract idea' exception to encompass
inventions pertaining to methods of organizing human activity." In re
TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)
(finding the claimed method of classifying and storing images in an
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Application 13/598,734
organized manner was a well-established basic concept analogous to
methods of organizing human activity); see Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir.
2015) (finding the claim at issue was directed to the abstract idea of
budgeting, which was "not meaningfully different from the ideas
found to be abstract in other cases before the Supreme Court and our
court involving methods of organizing human activity"). See also,
e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (finding claims
directed to collecting data, recognizing certain data within the
collected data set, and storing the recognized data is drawn to an
abstract idea and noting that "humans have always performed these
functions").
For at least the reasons noted supra, we find that the Examiner
has sufficiently shown that the claims are directed to an abstract idea.
We now tum to the second step of the Alice framework: "a
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."' Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative
Servs., 132 S. Ct. at 1294).
Appellants contend that "[g]eneric computers do not generate
the type of flag violations as recited in the claim" (App. Br. 17), "the
ordered combination is not a conventional or generic arrangement of
known elements" (id. at 18), and "the computer could not previously
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identify such violations and generate flags for the violations" (id. at
19).
Specifically, Appellants' Specification states that "[t]he system
300 also includes a data logic 320 configured to rationalize the
transaction data received by the capture logic 310 and transform the
transaction data into a format suitable for compliance analysis" (iJ 21)
and that "the record verification logic may apply one or more
transaction rules to the stored spend records and flag spend records
that violate a transaction rule" (iJ 23).
For example, claim 29 recites, inter alia, "creating and storing a
spend record ... [that] facilitates web-based querying ... and
generate a flag to indicate a violation for the associated spend record"
(see claim 29).
The Examiner highlights that Appellants' disclosure describes
the invention being implemented by "a computer 500 that includes a
processor 502, a memory 504, and input/outputs 510 operably
connected by a bus 508" (Ans. 4 (citing Spec. iJ 30)), but the
Examiner fails to persuasively explain how Appellants' creation of
the spend record to generate a flag is conventional and well-
understood.
Although we agree with the Examiner that the claimed
invention uses "generic computer, network, and Internet components,
none of which is inventive by itself," the "inventive concept can be
found in the non-conventional and non-generic arrangement of
known, conventional pieces." Bascom, 827 F.3d 1350. According to
Appellants, the claimed invention "improves the existing technology
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process by integrating a number of separate computer system
components and automatically generating violation flags" (App.
Br. 18). The Examiner has not set forth with sufficient specificity or
provided any finding (see Ans. 5-7; see also Final Act. 10) that the
specifically claimed manner of creating and storing the spend record
and using the same to generate a flag to indicate a violation is well-
understood, routine, or conventional. Berkheimer v. HP Inc., No.
2017-1437, slip op. at 14 (Fed. Cir. Feb. 8, 2018) ("Whether
something is well-understood, routine, and conventional to a skilled
artisan at the time of the patent is a factual determination."). As such,
on the record before us, the Examiner has not shown that the
aforementioned features are well-understood or routine.
DECISION
We reverse the Examiner's§ 101 rejection.
REVERSED
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