Ex Parte Jones et al

Patent Trial and Appeal Board

Nov 8, 2018

13492727 (P.T.A.B. Nov. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/492,727 06/08/2012 Jeff Jones
38662 7590 11/13/2018
Potomac Law Group, PLLC
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
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.
l 909-0011US02 7977
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/13/2018 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):
patents@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF JONES, TOM MILLER,
TOM QUINN, and KARTIK SHAH
Appeal2017-005720
Application 13/492,727 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITT A, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 46, 48-51, 53-56, 58, and 60, which are all of the
claims pending in the application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify Aptus Health, Inc., as the real party in interest. See
Br. 3.
2 Claims 1--45, 47, 52, 57, and 59 have been cancelled. See Br. 9.
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Application 13/492,727
STATEMENT OF THE CASE
According to Appellants, the claims are directed to a drug sample
request fulfillment service. Spec. 3: 12-21, Abstract. 3 Claim 46, reproduced
below, is representative of the claimed subject matter:
46. A computer system for promoting pharmaceutical drugs,
compnsmg:
a mobile communication device configured for a
prescriber to access mobile drug sampling services;
a drug sample promotional ecosystem configured to
execute on one or more pieces of computer hardware to provide
said mobile drug sampling services to the mobile communication
device, the drug sample promotional ecosystem comprising a
promotional orchestration engine which comprises a services
engine, an analysis engine, and a learning engine;
a computer communication network provided between
said mobile communication device and said drug sample
promotional ecosystem;
wherein the services engine is configured to process
transaction requests received from the mobile communication
device via the computer communication network, so as to access
said mobile drug sampling services;
wherein the analysis engine is configured to execute a set
of rules associated with a service requested by the prescriber, the
set of rules defining whether the prescriber is to receive a
particular drug sample, its dosage, and its form, the analysis
engine comprising an electronic authorization and authentication
component for analyzing and validating one of electronic, digital,
and digitized signatures when the prescriber uses said mobile
communication device to access said promotional ecosystem;
3 This Decision refers to: (1) Appellants' Specification, filed June 8, 2012
("Spec."); (2) the Final Office Action, mailed August 19, 2015 ("Final
Act."); (3) the Appeal Brief, filed April 7, 2016 ("Br."); and (4) the
Examiner's Answer, mailed August 12, 2016 ("Ans.").
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wherein the learning engine is configured to customize the
mobile drug sampling services for the prescriber in accordance
with the set of rules in the analysis engine, the learning engine
determining whether the prescriber receives services
corresponding to the requested service comprising certain types
of drugs at certain stages of development including after
development, based on one or more behaviors selected from a
group consisting essentially of one or more samples requested by
the prescriber in a given period of time, whether the prescriber
has had mandatory education, and whether the prescriber accepts
a visit from a pharmaceutical representative;
said mobile drug sampling services being accessible via
multiple entry points using said mobile communication device
including through at least one of direct access channels, channel
partners, and pharmaceutical sample centers;
wherein said mobile communication device is configured
to:
display, on a touch screen of the mobile
communication device, information associated with the
customized mobile drug sampling services indicating
available drug samples received from said drug sample
promotional ecosystem via the computer communication
network for said prescriber to request the available drug
samples;
receive, from the touch screen, a drug sample
request through a hyperlink depicted on the touch screen
as a sample request button for one or more of the available
drug samples from said prescriber;
capture, from the touch screen, a digital signature of
the prescriber upon receipt of the drug sample request; and
transmit, via the computer communication network,
the captured digital signature to the electronic
authorization and authentication component, such that the
drug sample request is authorized by said promotional
ecosystem.
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Application 13/492,727
REJECTION
Claims 46, 48-51, 53-56, 58, and 60 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2-3.
Our review in this Appeal is limited only to the above rejection and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02; 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l).
ANALYSIS
The Examiner concluded claims 46, 48-51, 53-56, 58, and 60 are
directed to patent-ineligible subject matter. Final Act. 2-3. We agree with
the Examiner.
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 Bank Int'!, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
75-79 (2012)). The first step in the analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts." Id.
If so, the second step is to consider the elements of the claims "individually
and 'as an ordered combination' to determine whether the additional
elements '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 [ineligible
concept] itself."' Id. (quoting Mayo, 566 U.S. at 73).
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Step One
As an initial matter, we observe that independent claims 46, 51, and
56 respectively recite a system, a method and a non-transitory computer
readable medium. As such, the claims are directed to statutory classes of
invention within 35 U.S.C. § 101.
Turning to the first step of the Alice analysis, we agree with the
Examiner that the present claims are directed to an abstract idea, namely,
"determining drug samples available to a prescriber and authorizing the
prescriber to access the drug samples based on rules" including the processes
of a "prescriber accessing available drug samples, customizing the drug
samples displayed, the prescriber requesting samples and signing for the
requested drug samples, the system using a set of rules to analyze whether
the prescriber is to receive a particular drug sample based on behaviors and
authorizing the drug sample request." Ans. 3; Final Act. 2.
Appellants' argument that the claims are not directed to an abstract
idea "because each of the claims, as a whole, is tied to one or more particular
machines or apparatuses" (Br. 10-11) is not persuasive. In In re Bilski, the
Federal Circuit adopted a machine-or-transformation ("MoT") test to
determine whether a process claim is eligible under 35 U.S.C. § 101. See In
re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en bane). Under Bilski's MoT
test, a claimed process can be considered patent-eligible under § 101 if: (1)
"it is tied to a particular machine or apparatus"; or (2) "it transforms a
particular article into a different state or thing." Bilski, 545 F.3d at 954
(citing Gottschalkv. Benson, 409 U.S. 63, 70, 93 (1972). The Supreme
Court held, however, in Bilski v. Kappas, 561 U.S. 593, 604 (2010), that the
MoT test, while a "useful and important clue," is no longer the sole test for
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determining the patent eligibility of process claims under§ 101. Now, the
Supreme Court has created the two-step framework in Alice to determine
subject matter eligibility. Alice, 134 S. Ct. at 2354.
Using the Mo T then as a useful clue, we are not persuaded that the
claimed "mobile communication device including a touch screen,[]
computer communication network, and one or more pieces of computer
hardware" recite "particular machines." Id. Instead, we agree with the
Examiner's finding that those components are broadly claimed "generic"
computing devices. Ans. 4--5. Indeed, the Specification describes mobile
devices as "input/output devices" which include generic, general-purpose
computers such as "laptop computers, notebook computers ... personal
digital assistants; personal digital assistant proxies." Spec. 9:24--32.
Further, the Specification makes clear that known, generic touch screen
mobile devices are used to provide the invention. Id. at 39:14--16 ("Any
suitable mobile platforms may be used ... such as !Phoneâ„¢, IPod Touchâ„¢,
IPadâ„¢, Androidâ„¢, Blackberryâ„¢, and Windows Mobileâ„¢."). Even further,
the Specification describes an "exemplary implementation of a WAN," i.e.,
a computer communication network, "is the Internet." Id. at 10: 1-9. The
Internet "is a ubiquitous information-transmitting medium, not a novel
machine." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir.
2014). As such, the computing components recited in the claims are generic
computing components, rather than any particular machine. The claims,
therefore, amount merely to instructions to apply the abstract idea using
broadly claimed "generic" computing components. And claims that simply
use a generic computing device to perform an abstract idea, like the claims
in Alice, are still abstract. See Alice, 134 S. Ct. at 2358.
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Moreover, even assuming that the computing components recited in
the claims are "particular" computing components, the "claims are not saved
from abstraction merely because they recite components [allegedly] more
specific than a generic computer." BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1286 (Fed. Cir. 2018) (citing In re TL! Commc 'ns LLC Patent
Litig., 823 F.3d 607, 612---613 (Fed. Cir. 2016) and Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014)). Here, the recited "touch screen of the mobile device" and
"computer communication network" only serve to confine the abstract idea
to a particular technological environment, specifically, a mobile device and
its associated communications network. Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1258-59 (Fed. Cir. 2016) (Determining that
limiting an abstract idea to "cellular telephones ... does not render the
claims any less abstract."). As such, the recitation of a "touch screen of the
mobile device" operating on a "computer communication network" does not
save the asserted claims at step one.
Step Two
Turning to the second step of the Alice analysis, we further agree with
the Examiner that the claims fail to transform the abstract idea into a patent-
eligible invention. Final Act. 3. In particular, we agree with the Examiner's
determination that the claims recite "generic computer component[ s] that
perform[] functions (i.e. accessing services, displaying options, receiving
request, capturing signature, transmitting signature)" that are "conventional
activities previously known to the industry." Ans. 4; Final Act. 4.
Appellants' arguments that the claims amount to significantly more
than the abstract idea itself because the claims "solve an Internet-centric
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problem with a claimed solution that is necessarily rooted in computer
technology" (Br. 11-13) are not persuasive. The claims here do not attempt
to solve "a challenge particular to the Internet." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256-57 (Fed. Cir. 2014). Instead, the
claims use a generically recited "computer communication network" - that
is not even claimed to be the Internet - to provide the allegedly inventive
features reflected in the abstract idea, discussed supra. In particular, the
claims recite the use of some computer network to provide "information .. .
indicating available drug samples," provide "a hyperlink," and "transmit .. .
[a] captured digital signature ... such that the drug sample request is
authorized." Indeed, the Specification's discussion of the Internet describes
the use of the Internet to implement a drug sample fulfillment system. See
Spec. 7: 19-27, 39: 11-23, and Fig. 2A.
Even further, Appellants' Specification refutes Appellants' argument
that the invention is directed to an Internet-centric problem. The
Specification describes a "drug sample fulfillment platform has helped to
control the rising costs of personal selling, [but] much of its functionality
requires manual work done by hand ... Thus, there is a need for an
architecture to orchestrate drug sample distribution while avoiding or
reducing the foregoing and other problems." Id. at 2:7-16. That is,
Appellants' Specification describes the invention eliminates the need for
representatives to personally sell drugs to drug prescribers (id. at 1: 19-21
("Promotion and distribution of drug samples can be accomplished without
the use of sales representatives.")) and reduces manual work. Id. at 8: 11-13
("This automatic replenishment of drug samples frees the prescriber 102
from having to manually keep track of drug samples that are available to him
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at any point in time."), and 16:22-24 ("An electronic authorization and
authentications, such as digital signatures, provides a means of eliminating
the manual steps for obtaining drug samples."). These are business
problems, not Internet problems.
We are also not persuaded that the "use of a mobile communication
device having a touch screen to provide customized drug sampling services"
"provide[ s] unconventional features that confine the alleged abstract idea to
a particular useful application." Br. 14. As discussed supra, Appellants'
Specification describes that touch screen mobile devices are commonly
known. Spec. 39:14--16. Appellants' Specification also describes that using
a network to promote and provide pharmaceutical drugs is commonly
known. Spec. 1:19-21 ("With the proliferation of networking technology,
many prescribers are members of online communities where promotion and
distribution of drug samples can be accomplished without the use of sales
representatives."). Appellants' use of existing technology to implement the
abstract idea is insufficient to transform the claims into patent-eligible
subject matter. Content Extraction, 776 F.3d at 1348.
Additionally, Appellants' argument that the "claims are directed to
such new and useful patent-eligible applications" because "none of the prior
art anticipates or renders obvious" the claimed invention (Br. 11) does not
persuade us that the claims are patent-eligible. Our reviewing court has held
that it is not "enough for subject-matter eligibility that claimed techniques be
novel and nonobvious in light of prior art, passing muster under 35 U.S.C.
§§ 102 and 103." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163
(Fed. Cir. 2018). As discussed supra, we determine that the claims do not
recite significantly more than the abstract idea itself, and, in this case, the
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absence of prior art that anticipates or renders obvious the claimed invention
does not persuade us that the claims are patent-eligible.
Appellants have not proffered sufficient evidence or argument to
persuade us that any of the limitations in the remaining dependent claims
provide a meaningful limitation that transforms the claims into a patent-
eligible application. See Br. 9-14. Accordingly, Appellants have not
persuaded us claims 46, 48-51, 53-56, 58, and 60 are directed to patent-
eligible subject matter. Therefore, we sustain the rejection of claims 46, 48-
51, 53-56, 58, and 60 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 46, 48-51, 53-56, 58, and 60.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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