Ex Parte Lee

Patent Trial and Appeal Board

Jun 18, 2018

11946655 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/946,655 11/28/2007
23456 7590 06/20/2018
PATTERSON Intellectual Property Law, P.C.
1600 DIVISION STREET, SUITE 500
NASHVILLE, TN 37203
FIRST NAMED INVENTOR
Chuck Lee
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.
V0241 9569
EXAMINER
NGUYEN, TRANG T
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
docket@IPLA WGROUP.COM
ckr@iplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUCK LEE
Appeal2016-004242
Application 11/946,655 1
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 21, 22, and 24--27. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 "The real party in interest in connection with the present appeal is Charles
'Chuck' Lee, the only named inventor of the present Application." Appeal
Br. 1.
Appeal2016-004242
Application 11/946,655
ILLUSTRATIVE CLAIM
21. A system for tracking and maintaining vascular
access medical records, comprising:
a data storage connected to a communication network;
a database associated with the data storage;
a patient record for a vascular access patient stored in the
database, wherein the patient record includes
a new vascular access service request field
effective to receive a new service request from a first
healthcare provider,
a past service record containing past vascular
access service requests from at least a second healthcare
provider,
a vascular access service entry field effective to
receive vascular access service results data from a
vascular access practitioner in association with a service
request, said service results data comprising an IV
insertion status and existing IV type, and
a vascular access post-service entry field in the
patient profile effective to receive post-service data
comprising a vascular access site evaluation incident to
the new vascular access service request from the vascular
access practitioner;
a host computer connected to the communication
network and effective to
distribute the new service request across the
communications network to a remote network device
associated with a vascular access practitioner,
provide access by the vascular access practitioner
to the past service record via the remote network device
and the communications network,
generate a post-service report in the patient profile
comprising the post-service data, and
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Application 11/946,655
update the past service record by aggregating the
new vascular access service request from the first
provider and at least the past vascular access service
request from the second provider.
CITED REFERENCES
Meyer et al. US 2001/0049277 Al Dec. 6, 2001
(hereinafter "Meyer")
Shapiro et al. US 2005/0075544 Al Apr. 7, 2005
(hereinafter "Shapiro")
Voumakis et al. US 2005/0075597 Al Apr. 7, 2005
(hereinafter "Voumakis")
Staton US 2006/0020490 Al Jan. 26, 2006
Clements et al. US 2006/0271400 Al Nov. 30, 2006
(hereinafter "Clements")
REJECTIONS
I. Claims 21, 22, and 24--27 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 21, 22, 24, and 26-27 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Clements, Shapiro, Voumakis, and Staton.
III. Claim 25 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Clements, Shapiro, Voumakis, Staton, and Meyer.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Applying the first step of the methodology delineated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the
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Application 11/946,655
rejection states that claim 21 is directed to the abstract idea of "receiving a
new service request, associating the new service request with patient profile,
distributing the service request across the communications network,
providing access to the past service record, generating post service report,
and updating past service record." Final Action 2.
Further, as to the second step of the Alice analysis, the rejection states
that the claims do not include any additional elements amounting to
significantly more than the identified abstract idea, because the additional
elements, individually or in combination, merely recite generic computer
structure for performing generic and conventional computer functions that
do no more than link the abstract idea to a particular technological
environment. Id. at 3.
Disputing the rejection, the Appellant argues claims 21, 22, and 24--27
as a group. Appeal Br. 23-27. Claim 21 is selected for analysis herein. See
37 C.F.R. § 4I.37(c)(l)(iv).
According to the Appellant, in regard to the first Alice step, "the
concept of aggregating patient-specific vascular access information across a
continuum of healthcare providers is not a fundamental or longstanding
commercial practice, which is merely applied in a new manner using data
storage networks and computer systems, but is asserted as a new concept of
itself." Appeal Br. 26.
Yet, the Examiner does not characterize the identified abstract idea as
a fundamental economic practice. The Examiner, instead, compares the
claim to concepts that courts have determined to constitute abstract ideas.
See Answer 4--5. The Examiner's approach is proper, because "the
decisional mechanism courts now apply," for evaluating whether a claim is
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directed to an abstract idea, "is to examine earlier cases in which a similar or
parallel descriptive nature can be seen - what prior cases were about, and
which way they were decided." Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). Notably, the Examiner's
Answer (pages 4--5) states that the claimed subject matter is similar to the
use of categories to organize, store, and transmit information, which the
Federal Circuit regarded as an abstract idea in Cyberfone. See Cyberfone
Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 991-992
(Fed. Cir. 2014) (nonprecedential) ("[T]he well-known concept of
categorical data storage, i.e., the idea of collecting information in classified
form, then separating and transmitting that information according to its
classification, is an abstract idea that is not patent-eligible.")
The Appellant also alleges error in the rejection, because the
identified abstract idea "is merely a recitation of claim elements, presumably
each of which is intended as being similar to some concept identified by
courts as an abstract idea, but without appropriate citation as such." Reply
Br. 4.
This argument is unpersuasive of error. "An abstract idea can
generally be described at different levels of abstraction." Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Thus, there is no
rigid catechism for determining how closely an identified abstract idea, to
which a claim is directed, must track the claim language. See Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017) ("[W]e see no error here in the district court citing to the
preamble in its review of whether the claims are directed to an abstract
idea.")
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Nor are we persuaded by the Appellant's contention that "the claimed
invention does not preempt all uses of an abstract idea, as the patentable
subject matter has a finite scope respective to the concomitant contribution
of the inventor." Appeal Br. 24. See also, id. at 26-27. The requisite
preemption analysis is performed according to the Alice framework itself
and"[ w ]hile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
The Appellant also argues that claim 21 would be patent-eligible,
under the second Alice step:
Assuming, arguendo, that an "abstract idea" at the heart of each
claim is "organizing aggregated patient information and
creating report (passing around)," as cited in the Office Action,
the claimed invention includes "additional features to ensure
that the claim describes a process or product that applies the
[ abstract idea] in a meaningful way, such that it is more than a
drafting effort designed to monopolize the [abstract idea]." See
2014 Interim Guidance on Subject Matter Eligibility from the
USPTO ("Interim Guidance"), Federal Register/Vol. 79, No.
241 at 74624.
Appeal Br. 24--25. According to the Appellant, the claimed subject matter
recites specific limitations - other than what is well-understood, routine, or
conventional-that confine the claim to a particular useful application. Id.
at 25. Further, "the claimed system and associated operations when
considered as a whole are themselves unconventional, and therefore eligible
subject matter satisfying § 101, without reliance on reference to generic
computer components or communications media." Id. "For example," the
Appellant contends, "the claims recite meaningful limitations wherein
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specific data records are accumulated for specific patients across a newly
defined network of healthcare providers." Id. Still further, the Appellant
contends that "the claimed invention recites a specific combination of
elements collectively defining a new concept, to overcome a specific
problem specifically arising in the realm of vascular access medical
records." Id. at 27.
The Appellant's arguments, addressing the second Alice step, are not
persuasive. As an initial matter, the Appellant does not clearly articulate
which claim elements (whether alone or in combination) purportedly amount
to significantly more than the abstract idea. Furthermore, the Appellant's
characterization of such "meaningful limitations" as "specific data records
are accumulated for specific patients across a newly defined network of
healthcare providers" (id. at 25) does not differ significantly from the
Examiner's characterization of the abstract idea-i.e., "receiving a new
service request, associating the new service request with patient profile,
distributing the service request across the communications network,
providing access to the past service record, generating post service report,
and updating past service record" (Final Action 2). Notably, the Appellant's
characterization of such claim element( s) is even less detailed and less
particularized than the Examiner's description of the identified abstract idea
itself. Therefore, the Appellant has not persuaded us of error in the
Examiner's application of the second Alice step.
Finally, the Appellant argues that each of the dependent claims has
not been fully analyzed under the Alice framework. Reply Br. 5. Yet, the
Appellant, in the Appeal Brief, elects to argue all appealed claims (including
the dependent claims) as a group. See Appeal Br. 23-27. Moreover, the
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Appellant has not presented any separate argument with respect to any
dependent claim.
Accordingly, we sustain the rejection of claims 21, 22, and 24--27
under 35 U.S.C. § 101.
Obviousness
Among the Appellant's arguments contesting the obviousness
rejection, the Appellant contends that the Examiner failed to consider
objective indicia of non-obviousness - specifically, that the claimed subject
matter fulfilled a long-felt and unmet need in the art. Appeal Br. 20-21.
The Appellant's argument is supported by previously submitted items- a
declaration and a collection of publications - addressing the alleged
benefits of the claimed subject matter. Id. at 21 ( citing Declaration of Chuck
Lee, dated July 11, 2014, and Ex. A to the Appeal Brief).
Obviousness is determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F .2d
1443, 1445 (Fed. Cir. 1992). This includes objective indicia of
nonobviousness, such as long-felt but unsolved needs, failure of others, and
commercial success. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)
(citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). As the
Federal Circuit has emphasized, "[ o ]bjective indicia of nonobviousness play
a critical role in the obviousness analysis." Leo Pharm. Prods., Ltd. v. Rea,
726 F.3d 1346, 1358 (Fed. Cir. 2013). These indicia are not a cumulative or
confirmatory part of the obviousness analysis, but rather constitute
independent evidence of nonobviousness that can be the most probative
evidence for "avoiding the trap of hindsight when reviewing, what otherwise
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seems like, a combination of known elements." Id. During the course of
evaluating the obviousness of claimed subject matter, if evidence of
objective indicia having "adequate weight is produced, the holding of prima
facie obviousness ... is dissipated." In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984). "Regardless of whether the primafacie case could have
been characterized as strong or weak, the examiner must consider all of the
evidence anew." Id.
Here, the Examiner did not address the Appellant's proposed
secondary consideration evidence.
Accordingly, we do not sustain the rejection of claims 21, 22, and 24--
27 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 21, 22, and
24--27 under 35 U.S.C. § 101.
We REVERSE the Examiner's decision rejecting claims 21, 22, and
24--27 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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