Ex Parte Morrissey et al

Patent Trial and Appeal Board

Jul 17, 2018

13426935 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/426,935 03/22/2012 Eileen Morrissey
122066 7590 07/19/2018
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
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.
MDAP0235 3297
EXAMINER
GORT, ELAINE L
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
07/19/2018 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):
pair@mb-ip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EILEEN MORRISSEY and JIM ANDERSON
Appeal2017-004393
Application 13/426,935 1
Technology Center 3600
Before CAROLYN D. THOMAS, HUNG H. BUI, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-20, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM. 2
1 According to Appellants, MEDICINE DIFFERENTIATION
ANALYTICS, LLC is the real party in interest. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed May 16, 2016
("App. Br."); Examiner's Answer mailed November 17, 2016 ("Ans.");
Final Office Action mailed November 13, 2015 ("Final Act."); and original
Specification filed March 22, 2012 ("Spec.").
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Application 13/426,935
STATEMENT OF THE CASE
Appellants' invention relates to "a computer implemented method for
determining pharmaceutical asset [] market potential." Spec. ,r 12.
According to Appellants, "[ c ]ertain exemplary embodiments . . . include a
system and method for determining how differentiated a potential medicine
( a pharmaceutical asset) will be when it launches on the market compared to
its competitors and how aligned the assets differentiation features are to the
unmet needs from various customer groups." Spec. ,r 27.
Claims 1, 12, and 13 are independent. Claim 1 is illustrative of the
claimed subject matter, and reproduced below with disputed limitations in
italics:
1. A computer implemented method for determining
pharmaceutical asset market potential, comprising:
collecting asset information about in-line and proposed
pipeline products of pharmaceutical assets by a therapeutic
category;
retrieving data related to the therapeutic category, wherein
the retrieved data includes at least label claims of one or more
existing competitor pharmaceutical assets in the therapeutic
category, wherein the at least one label claim is the wording of a
label published with the asset;
determining, by the computer, an unmet need for the
proposed pharmaceutical asset by evaluating a plurality of
customer value statements (CVS) based on the therapeutic
category;
computing, by the computer, a differentiation score based
on the evaluated plurality of CVS and contents of the label claims
of the of one or more existing competitor pharmaceutical assets
in the therapeutic category;
comparing a strength of the proposed pharmaceutical asset
against the existing competitor pharmaceutical assets in the
therapeutic category; and
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generating an executive summary report of the proposed
pharmaceutical asset market potential base, in part, the computed
differentiation score.
App. Br. 19 (Claims App.).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea. Final Act. 2--4.
(2) Claims 1-20 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over de Nijs et al. (US 2005/0278185 Al; published
Dec. 15, 2005), Koster (US 8,543,411 B2; issued Sept. 24, 2013), and Rao
(US 2010/0241459 Al; published Sept. 23, 2010). Final Act. 6-15.
ANALYSIS
§ 101 Rejection of Claims 1-20
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). The
Supreme Court has long held that "[l]aws 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). The "'abstract ideas' category embodies 'the
longstanding rule that [ a ]n idea, by itself, is not patentable."' Alice, 134 S.
Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court reiterates an analytical two-step
framework previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66, 79 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts." Id. at
2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. If the claims are directed to eligible subject matter, the
inquiry ends. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349
(Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
Cir. 2016). If the claims are directed to a patent-ineligible concept, the
second step in the analysis is to consider the elements of the claims
"individually and 'as an ordered combination"' to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (citing 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. (citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1-20 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to an abstract idea of "generating an
executive summary report of the proposed pharmaceutical asset" akin to the
abstract idea of collecting and comparing information and using rules to
identify options, i.e., which values to be selected for case report. Final Act.
2-3; see also SmartGene, Inc. v. Advanced Biological Labs., SA, 852 F.
Supp. 2d 42 (D.D.C. 2012), aff'd 555 F. App'x 950 (Fed. Cir. 2014)). The
Examiner also determines these claims are directed to an abstract idea
because the steps recited in these claims "can be perform[ed] manually,"3
3 The Examiner appears to link "steps that can be perform[ ed] manually" to
"methods of organizing human activities." Final Act. 3. However, these are
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i.e., by a human with pen and pencil. Final Act. 3; see also Cybersource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)).
The Examiner further determines the additional elements in the claims
do not amount to significantly more than the judicial exception, because ( 1)
the additional elements, whether taken individually or in combination, are
"generic computer structure that serves to perform generic computer
functions" and (2) the functions recited "are well-understood, routine, and
conventional activities previously known to the pertinent industry." Final
Act. 3--4. According to the Examiner, "[t]he claims do not recite an asserted
improvement to the functioning of the computer itself, another technology,
or a technological process but rather recite using a computer to lend speed
and efficiency to an abstract idea." Ans. 4.
two separate categories of abstract ideas as identified by the Supreme
Court's decisions in (1) Gottschalkv. Benson, 409 U.S. 63 (1972) (holding
that "mental steps" as steps that "can be performed mentally" are patent-
ineligible under§ 101); see also CyberSource Corp v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011) (stating that "[m]ethods which can be
performed entirely in the human mind are unpatentable because ... methods
which can be performed entirely in the human mind are the types of method
that embody the 'basic tools of scientific and technological work"') and (2)
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014) (holding that
the concept of intermediated settlement between parties, like the risk
hedging in Bilski, is patent-ineligible under§ 101 and, in the view of the
concurrence, the concept of intermediated settlement is akin to "processes
for organizing human activity" that (i) do not involve "manufactures,
machines, or compositions of matter" and (ii) have never been patent-
eligible ever since the English Statute of Monopolies and, as such, (iii)
should not be patent-eligible under US modem patent law). Nevertheless,
both are examples of patent-ineligible abstract ideas under§ 101.
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Alice/Mayo-Step 1
Turning now to the first step of the Alice inquiry, Appellants do not
dispute the Examiner's determination that the claims are directed to an
abstract idea of "generating an executive summary report" akin to
SmartGene. Instead, Appellants contend their "claims are directed to ...
determining pharmaceutical asset market potential" and "do not even
remotely mention humans or human activity, let alone organizing human
activity as alleged." App. Br. 8. (Underlining omitted). According to
Appellants, their claims are not directed to "organizing human activities"
because:
(1) the USPTO's July 2015 Update: Subject Matter
Eligibility clarifies that, the phrase 'certain methods of
organizing human activity' is used to describe concepts
relating to interpersonal and intrapersonal activities, such
as managing relationships or transactions between
people, social activities, and human behavior; satisfying
or avoiding a legal obligation; advertising, marketing,
and sales activities or behaviors; and managing human
mental activity and
(2) "the instant claims do not recite or even remotely suggest
interpersonal or intrapersonal activities which could be
interpreted as organizing human activity."
App. Br. 9--10. (Underlining omitted).
We do not find Appellants' arguments persuasive. At the outset, we
note the claims are directed to concepts relating to advertising, marketing,
and sales activities in connection with "a pharmaceutical asset (product)" by
the US PTO' s July 2015 Update and, as such, can be interpreted as directed
to "organizing human activity." More importantly, we agree with the
Examiner that Appellants' claims are directed to an abstract idea of
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"generating an executive summary report of the proposed pharmaceutical
asset" akin to collecting and comparing information and using rules to
identify options discussed in SmartGene. Final Act. 3.
Information, as such, is intangible, and data analysis and data
generation are abstract ideas. See, e.g., Microsoft Corp. v. AT & T Corp.,
550 U.S. 437,451 n.12 (2007); Alice, 134 S. Ct. at 2355; Parker v. Flook,
437 U.S. 584, 589, 594--95 (1978); Gottschalkv. Benson, 409 U.S. 63, 71-
72 (1972). Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech, 758 F.3d at 1349-50 ("Data in its ethereal, non-physical form is
simply information that does not fall under any of the categories of eligible
subject matter under section 101 ").
As also recognized by the Examiner (Final Act. 3), steps recited in
claims 1, 12, and 13, including: "collecting asset information", "retrieving
data related to therapeutic category", "computing a differentiation score,"
"comparing a strength of the proposed pharmaceutical asset against the
existing competitor" and "generating an executive summary report" can be
performed manually using, at most, a pen and paper, without need of any
computer or other machine. See CyberSource, 654 F.3d at 1372-73 ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101."); see also In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes-or processes of human
thinking-standing alone are not patentable even if they have practical
application."); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Phenomena
of nature ... , mental processes, and abstract intellectual concepts are not
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patentable, as they are the basic tools of scientific and technological work"
( emphasis added)). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 1375 ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.").
Accordingly, we agree with the Examiner that claims 1-20 are
directed to an abstract idea.
Alice/Mayo-Step 2
In the second step of the Alice inquiry, Appellants argue: (1) their
"claim limitations offer improvements to the field in which the subject
matter of the present application directed by at least one application server
configured to perform the pharmaceutical asset differentiation process" and
(2) their "claims address a real challenge related to the determination of
pharmaceutical asset market potential to evaluate the strength of a proposed
pharmaceutical asset" and "to perform the determination requires processing
of large amounts of data per therapeutic category" and, as such, "the
determination requires complex processing that cannot be performed without
machines." App. Br. 10. (Underlining omitted).
We disagree. At the outset, we note that the second step of Alice
requires 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, 566 U.S. at 72-73).
According to the Federal Circuit, "the concept of inventiveness is distinct
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from that of novelty" and "[ t ]he inventiveness inquiry of§ 101 should
therefore not be confused with the separate novelty inquiry of§ 102 or the
obviousness inquiry of§ 103." See Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1312 (Fed. Cir. 2016). Under current Federal Circuit
precedent, an "inventive concept" under Alice step 2 can be established by
showing, for example, that the patent claims:
( 1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution [] necessarily rooted in computer
technology in order to overcome a problem specifically arising in the
realm of computer networks" (see DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014);
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a filtering tool at
a specific location, remote from the end-users, with customizable
filtering features specific to each end user" (see Bascom Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016)); or
(3) "entail[] an unconventional solution ([ e.g.,] enhancing
data in a distributed fashion) to a technological problem ([ e.g.,] massive
record flows which previously required massive databases)" and
"improve the performance of the system itself' (see Amdocs, 841 F.3d
at 1302).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1, 12, and 13 that contains any "inventive
concept" and adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 134 S. Ct. at 2357. As
discussed supra, we are not persuaded the added computer elements such as
the computer, storage device or server can transform the abstract idea into a
patent eligible invention. As our reviewing court has observed: "[ A ]fter
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Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible." DDR
Holdings, 773 F.3d at 1256 (citing Alice Corp., 134 S. Ct. at 2358)).
Because Appellants' claims 1-20 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101.
35 US.C. § 103(a): Claims 1-20
In support of the obviousness rejection of claim 1 and similarly,
claims 12 and 13, the Examiner finds de Nijs teaches tools used to assess
pharmaceutical products (assets) with most aspects of Appellants' claimed
"method for determining pharmaceutical asset market potential," based on
various attributes, scores, and comparison with competitor's product, shown
in Figures 1-2, including:
(1) "[ c ]ollecting asset information ... by a therapeutic category"
(Final Act. 6 (citing de Nijs ,r,r 40-41));
(2) "retrieving data related to the therapeutic category ... " (Final
Act. 7 (citing de Nijs ,r 18));
(3) "determining ... an unmet need for the proposed
pharmaceutical asset" (Final Act. 7-8 (citing de Nijs ,r,r 46,
7 4)( emphasis omitted);
( 4) "computing ... a differentiation score ... " (Final Act. 9-10
(citing de Nijs ,r,r 18, 21)(emphasis omitted));
( 5) "comparing a strength of the proposed pharmaceutical asset
against [the] existing competitor pharmaceutical assets in the
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therapeutic category" ((Final Act. 7 (citing de Nijs ,r
16)( emphasis omitted)); and
( 6) "generating an executive summary report of the proposed
pharmaceutical asset market potential base, in part, the
computed differentiation score." (Final Act. 10-11 (citing de
Nijs ,r,r 16, 20, and 77)).
The Examiner then relies on: (1) Koster for teaching "wherein the
least one label claim is the wording of a label published with the asset" and
(2) Rao for teaching "determining ... [the] unmet needs for the proposed
pharmaceutical asset by evaluating a plurality of customer value statements
(CVS) based on the therapeutic category" in order to support the conclusion
of obviousness. Final Act. 7-9 (citing Koster's Fig. 3 and Rao's Fig. 1).
Appellants do not dispute the Examiner's factual findings regarding
de Nijs. Appellants also acknowledge "Koster teaches, in relevant part, a
label containing 'information that is required by federal labelling laws and
information added for marketing motivations"' and Koster' s "label includes
'a second bar code representing the authenticating data' and 'an RFID tag."'
App. Br. 13 (citing Koster 6:30-31, 6:56-57, 7:1--4, and 45-51). However,
Appellants argue "that 'reading' a label by processing and recognizing RFID
tags and bar codes for authentication purposes does not read on the claimed
features of retrieving data including label claims which are wordings of
labels published with assets" especially when "Koster does not even
remotely mention recognition of wording on a label, let alone the claimed at
least one label claim." App. Br. 13. (Underlining omitted).
Appellants also argue because "Rao attempts to evaluate the consumer
purchase behavior of a certain consumer ( or group of consumers) seeking to
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purchase a pharmaceutical product, but not to evaluate the pharmaceutical
product itself' disclosed by de Nijs, "the Office Action fails to show, given
these differences, for example, how the method of Rao can be properly
combined with the teachings of de Nijs" and "does not articulate how the
two different approaches taken by the reference can be combined to result in
the claimed invention." App. Br. 15.
Appellants' arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellants' arguments
supported by evidence. Ans. 4--8. As such, we adopt the Examiner's
findings and explanations provided therein. Id. For additional emphasis, we
note obviousness is a question of law based on underlying factual findings,
In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012), including what a
reference teaches, In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992), and
the existence of a reason to combine references, In re Hyon, 679 F.3d 1363,
1365---66 (Fed. Cir. 2012). When a claimed invention "'simply arranges old
elements with each performing the same function it had been known to
perform' and yields no more than one would expect from such an
arrangement, the combination is obvious." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282 (1976)).
Such is true here. All the elements recited in Appellants' claim 1,
including: ( 1) "the at least one label claim [] the wording of a label
published with the asset" and (2) "evaluating a plurality of customer value
statements (CVS)" are well-known elements in the context of product
market research with each performing the same function it had been known
to perform, as evidenced from Koster's label, shown in Figure 3, and Rao's
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CVS, described in paragraphs 7, 25-35. As such, we agree with the
Examiner that (1) information obtained from patient/panelist described in
paragraphs 7, 25-35 of Rao can be considered as the claimed "customer
value statements" and (2) incorporating Rao's evaluation of CVS into the
tools of de Nijs would have been obvious to those skilled in the art "because
customer behaviors will be one of the closet indicator of market need" as
articulated by the Examiner. Ans. 7-8.
Lastly, we note Appellants have not presented sufficient evidence or
argument that the Examiner's proffered combination of references would
have been "uniquely challenging or difficult for one of ordinary skill in the
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Nor have Appellants provided objective evidence of secondary
considerations, which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
For these reasons, Appellants have not demonstrated Examiner error.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claims 1, 12, and 13 and claims 2-11 and 14--20 dependent
therefrom.
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1-20
under 35 U.S.C. § 101 and 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)(l )(iv).
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AFFIRMED
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