Ex Parte Keresman et al

Patent Trial and Appeal Board

Mar 9, 2018

13338586 (P.T.A.B. Mar. 9, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/338,586 12/28/2011 Michael A. Keresman III 8223-1710015 3766
28289 7590 03/13/2018
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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 @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. KERESMAN III, JEFFRY J. BOWMAN,
FRANCIS M. SHERWIN, CHANDRA S. BALASUBRAMANIAN, and
RAVISHANKAR S. BHAGAVATULA
Appeal 2016-005760
Application 13/338,5861
Technology Center 3600
Before JOHN A. EVANS, JOYCE CRAIG, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-10 and 12-20, which constitute all claims
pending in the application. Claim 11 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Cardinal Commerce
Corporation. App. Br. 1.
Appeal 2016-005760
Application 13/338,586
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to processing drug prescriptions via the
Internet, by using a third party to authenticate the prescribing doctor and
patient. Spec. 2-7. Claims 1, 9, and 16 are independent. Claim 1 is
illustrative of the invention and the subject matter of the appeal, and reads as
follows:
1. A computer-implemented method of processing drug
prescriptions via the Internet, said method comprising:
receiving a first request over the Internet at a server of a
pharmacy registered with an external agent, wherein the first
request is received from a doctor registered with the external
agent and specifies a prescription, wherein the prescription
identifies a patient registered with the external agent;
redirecting the doctor to the external agent via the server
and using the Internet, wherein the external agent authenticates
the doctor and returns the doctor to the server using the Internet;
receiving a second request over the Internet at the server,
wherein the second request is received from the patient registered
with the external agent and specifies an order for the prescription;
redirecting the patient to the external agent via the server
and using the Internet, wherein the external agent authenticates
the patient and returns the patient to the server using the Internet;
receiving a patient-specific authorization level for the
patient from the external agent at the server, the patient-specific
authorization level including one or more limitations on
authorized order requests from the patient; and,
the server rejecting the second request in response to the
second request violating the patient-specific authorization level
and allowing the second request otherwise;
wherein the method is performed by a pharmacy
registered with an external agent.
2
Appeal 2016-005760
Application 13/338,586
App. Br. 17-18 (Claims App.).
The Rejection on Appeal
Claims 1-10 and 12-20 are rejected under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 2-3.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejection from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
The Examiner finds the claims are directed to the abstract idea of
“processing [a] drug prescription,” and that any additional elements do not
amount to significantly more than the abstract idea itself. Final Act. 2-3.
Accordingly, the Examiner concludes the claims are directed to ineligible
subject matter. Id. Appellants argue the Examiner erred because the
invention “improves the technical functioning of a server of a pharmacy,” is
directed to “an Internet-centric problem,” and the claims “do not unduly
preempt the field.” App. Br. 11-15. In other words, Appellants do not
dispute the Examiner’s findings under the first step of the Alice test, but
rather, argue the claims satisfy the second step of Alice. Id. We are not
persuaded.
Section 101 of the Patent Act provides “[wjhoever invents or
discovers any new and useful process, machine, manufacture, or
3
Appeal 2016-005760
Application 13/338,586
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: “[ljaws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass ’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013)). The Court has
set forth a two-part inquiry to determine whether this exception applies.
First, we must “determine whether the claims at issue are directed to one of
those patent-ineligible concepts.” Alice, 134 S. Ct. at 2355. Second, if the
claim is directed to one of those patent-ineligible concepts, we consider “the
elements of each 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.” Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012)). Put differently, we must search the claims for an “inventive
concept,” that is, “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
(quoting Mayo, 132 S. Ct. at 1294).
As noted above, Appellants do not dispute the Examiner’s finding,
under the first step of Alice, that the claims are directed to the abstract idea
of processing or filling a drug prescription, and we discern no error in that
finding on this record.
Appellants focus their argument on the second step of Alice. In this
second step,
4
Appeal 2016-005760
Application 13/338,586
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. 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].”
Alice Corp., 134 S. Ct. at 2357 (internal citations omitted). Appellants
contend the invention “improves the technical functioning of a server of a
pharmacy,” but Appellants’ only support for this argument consists of
identifying general purpose servers, processors, and memory (as well as the
Internet itself). App. Br. 11-12; Spec. Fig. 1, ]fl[ 5, 59. Such generic
computing elements, however, “do not alone transform an otherwise abstract
idea into patent-eligible subject matter.” FairWarning IP, LLC, v. Iatric
Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, LLC,
v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)); Ans. 2.
Similarly, we discern no error in the Examiner’s finding that fulfilling
prescription orders is not an “Internet-centric problem,” nor is it analogous
to “example 21, claim 2” as cited in Appellants’ Brief. App. Br. 13 (citing
example related to wireless backup for transmitting stock quotations when
primary computer is offline). Rather, Appellants’ invention substitutes one
generic server (the “external agent”) for another generic server (“server of a
pharmacy”) to perform authentication. Ans. 3.
Finally, Appellants argue that the claims “confute] the abstract idea
to a particular useful application,” and therefore do not “unduly preempt the
field.” App. Br. 14. As the Examiner finds, however, the alleged absence of
preemption does not transform abstract claims into eligible subject matter.
See, e.g., FairWarning IP, 829 F.3d at 1098 (quoting Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP
5
Appeal 2016-005760
Application 13/338,586
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (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.”).
Accordingly, we sustain the rejection of claims 1-10 and 12-20 as
directed to ineligible subject matter.
DECISION
We affirm the Examiner’s decision rejecting claims 1-10 and 12-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
6