Ex Parte Neagle

Patent Trials and Appeals Board

Mar 22, 2019

13916022 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/916,022 06/12/2013 Charles E. Neagle III
134449 7590 03/26/2019
Grable Martin Fulton PLLC
2709 Dublin Road
Plano, TX 75094
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.
PHAR-POOOlUS-CIPl 1510
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
docketing@gchub.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES E. NEAGLE III
Appeal2018-001706
Application 13/916,022
Technology Center 3600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant 1 appeals from the Examiner's
decision to reject claims 1, 3, 4, 6-25, and 28-30, which constitute all the
claims pending in this application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ). Claims 2 and 5 were cancelled previously. Claims 26 and 27 are
withdrawn from consideration.
We affirm.
1 Appellant identifies the real party in interest as Pharmalto, LLC. App.
Br. 1.
2 Appellant cancelled claim 2 in a "Response to Final Office Action" (After
Final Amend. 3) which was entered by the Examiner (Adv. Act. 1) after the
Final Office Action.
Appeal2018-001706
Application 13/916,022
CLAIMED SUBJECT MATTER
Appellant's invention relates to a "patient-centric" health and wellness
mobile management system. Spec. ,r 11. Appellant's Figure 1 is reproduced
below:
EMERGENCY
HOSPITALS ROOMS
ACUTE CARE
FACILITIES OUTPATIENT
\ PHARMACIES ~
HEALTHCARE ~ ,
PROVIDERS ~
/
SURGERY CENTERS
PHARMACY,
EMERGENCY
MEDICAL
TECHNICIANS
PHYSICAL
THERAPISTS
/
14
HEATH & WELLNESS DATA
MEDICINES & SUPPLEMENTS • ALLERGIES
HISTORY • VACCINATION RECORD
BENEFITS MANAGER &
INSURER
CONTENT MANAGEMENT
SYSTEMS
THIRD PARTY
LIVE DATA
ANALYSIS
FIG. 1
• ACTIVE LISTS LIFE STYLE/EXERCISE DATA
• COMPLIANCE DATA • DIETARY DATA
REMINDERS
• SIDE EFFECTS
HEALTHCARE PROVIDERS
• SUB-ACCOUNTS
INSURANCE DATA
PHARMACIES
PHYSIOLOGICAL
MEASUREMENTS
Reproduction of Appellant's Figure 1.
Figure 1 illustrates a health and wellness mobile management system 10
accessible to a patient via a software application 13 executed on a computing
device 12. Id. The patient may access a variety of health and wellness data
14. Id. ,r 12. The health and wellness data may originate from a variety of
sources 18. Id. ,r 13.
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Claim 1 is representative and reproduced below:
1. A health and wellness mobile management system
independent of a healthcare entity and [solely] owned and
controlled by a patient, comprising:
a database operable to store a health and wellness data
record associated with a patient who is the sole owner of the data
and has sole control over access authorization and storage of the
data, the health and wellness data selected from the group
consisting of medicines, supplements, medical history,
compliance data, reminders, ineffective medicine, side effects,
healthcare provider data, pharmacies, allergies, vaccination
record, lifestyle data, exercise data, dietary data, legal
documents, medical charts, laboratory data, imaging data,
emergency contact data, and insurance data;
a data access control system adapted to strictly control
access to the health and wellness data record stored in the
database according to access rules and authorization [solely] set
by the patient;
a web interface adapted to interface with information
requesters submitting requests for entering and accessing data in
the health and wellness data record via a web application
executable by a computing device selected from the group
consisting of mobile telephones, mobile gaming devices, tablet
computers, laptop computers, and desktop computers, the
information requesters submitting identification information and
authorization solely granted by the patient;
the web interface further configured to receive the
patient's self-reported data to update the data in the health and
wellness data record;
an external connect interface adapted to interface
electronically with external systems and applications associated
with at least one of physical therapists, emergency medical
technicians, healthcare providers, pharmacies, hospitals,
emergency rooms, acute care facilities, laboratories, outpatient
surgery centers, benefits manager and insurer content
management systems, and third party live data analysis systems
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for receiving health and wellness data associated with the patient
for storing in the health and wellness data record in the database;
the external connect interface further configured to
interface electronically with a personal health monitoring device
for receiving additional health and wellness data associated with
the patient for storing in the health and wellness data record in
the database;
a prescription interface in communication with the
database adapted to receive a pharmaceutical prescription for a
prescribed medication for the patient submitted by a healthcare
provider, verify the submitted pharmaceutical prescription
against data in the patient's health and wellness data record,
request and receive approval for the submitted pharmaceutical
prescription, and monitor patient compliance including receiving
the prescribed medication and following instructions in using the
prescribed medication;
a patient identification device in the form of a wearable
accessory adapted to automatically and uniquely identify the
patient as the data owner of the health and wellness data record
stored in the database, and to grant access to the data in response
to detecting the patient identification device and verifying patient
identification data automatically transmitted by the patient
identification device, the patient identification device operable to
automatically direct the web application to access at least a data
subset of the health and wellness data record stored in the
database upon recognition of access being granted; and
a physiological parameter measurement device adapted to
wirelessly communicate with the external connect interface, the
physiological parameter device operable to measure a
physiological parameter of the patient, and transmit the
measurement data via the external connect interface for storing
in the health and wellness data record in the database.
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REJECTION
Claims 1, 3, 4, 6-25, and 28-30 stand rejected under 35 U.S.C. § 101
as being directed to ineligible subject matter. Final Act. 3-8; Ans. 2. 3
ANALYSIS
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "' [L Jaws of nature, natural phenomena, and abstract
ideas' are not patentable." Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
3 Although the Examiner includes cancelled claim 2 in the header of the
rejection (Final Act. 3), we nonetheless omit that claim and present the
correct claim listing here for clarity. Additionally, because claim 2 has been
canceled, the rejection of claim 2 under 35 U.S.C. § 112 (Final Act. 2-3) is
not before us.
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in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diehr, 450 U.S. at 191); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252 (15 How.) 267-68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). That
said, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "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." Alice, 573 U.S. at 221 ( quotation marks omitted). "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]."' Id. (brackets in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
In January 2019, the USPTO published revised guidance on the
application of§ 101. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF p ATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. 50.
ALICE/MAYO STEP ONE
Independent claim 1 recites a health and wellness mobile management
system by providing at least a database, a data access control system, a web
interface, an external connect interface, a prescription interface, a patient
identification device, and a physiological parameter measurement device.
As claimed, the health and wellness mobile management system is
independent of a healthcare entity and solely owned and controlled by a
patient.
The database is operable to store a health and wellness data record
associated with a patient. The patient is the sole owner of the data and has
sole control over access and storage of the data. The data access control
system is adapted to control access to the health and wellness data record
according to rules and authorizations set by the patient.
The web interface is (1) adapted to interface with information
requesters submitting requests for entering and accessing data in the health
and wellness data record via a web application executable by a computing
device, and (2) configured to receive the patient's self-reported data to
update the health and wellness data record.
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The external connect interface is ( 1) adapted to interface
electronically with external systems and applications associated with a party
for receiving health and wellness data associated with the patient for storing
in the health and wellness data record in the database, and (2) configured to
interface electronically with a personal health monitoring device for
receiving additional health and wellness data associated with the patient for
storing in the health and wellness data record in the database.
The prescription interface (1) communicates with the database and (2)
is adapted to (a) receive a pharmaceutical prescription for a prescribed
medication for the patient submitted by a healthcare provider, (b) verify the
submitted pharmaceutical prescription against data in the patient's health
and wellness data record, ( c) request and receive approval for the submitted
pharmaceutical prescription, and ( d) monitor patient compliance including
receiving the prescribed medication and following instructions in using the
prescribed medication.
The patient identification device is (1) in the form of a wearable
accessory, (2) adapted to (a) identify the patient as the data owner of the
health and wellness data record stored in the database and (b) grant access to
the data in response to (i) detecting the patient identification device and (ii)
verifying patient identification data transmitted by the patient identification
device, and (3) operable to direct the web application to access at least a data
subset of the health and wellness data record stored in the database upon
recognition of access being granted.
The physiological parameter measurement device is ( 1) adapted to
wirelessly communicate with the external connect interface and (2) operable
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to (a) measure a physiological parameter of the patient and (b) transmit the
measurement data via the external connect interface for storing in the health
and wellness data record in the database. App. Br. 25-26 (Claims App'x).
Step 1 of the Guidance
Under the Guidance, we must first determine whether the claims fall
within the four statutory categories of patent subject matter identified by 35
U.S.C. § 101. See 84 Fed. Reg. at 53-54. Claim 1 recites a system and,
thus, falls within the "machine" category of§ 101.
Revised Step 2A, Prong 1 of the Guidance
Next, we must determine whether the claim is directed to a judicial
exception, such as an abstract idea. See Alice, 573 U.S. at 218. To this end,
we must determine whether the claim (1) recites a judicial exception and (2)
fails to integrate the exception into a practical application. See 84 Fed. Reg.
at 54--5 5. If both elements are satisfied, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test, which the Guidance
refer to as Step 2A. See id.
In the rejection, the Examiner concludes the claims are directed to the
abstract idea of "a patient controlled health and wellness record including
categorization of patient record." Final Act. 3; Ans. 2. To determine
whether a claim recites an abstract idea, we ( 1) identify the claim's specific
limitations that recite an abstract idea and (2) determine whether the
identified limitations fall within certain subject matter groupings, namely (a)
mathematical concepts, (b) certain methods of organizing human activity, or
(c) mental processes. See 84 Fed. Reg. at 52-54.
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Mathematical concepts include mathematical relationships,
mathematical formulas or equations, and mathematical calculations. Id. at
52. Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, and
mitigating risk); commercial or legal interactions (including agreements in
the form of contracts; legal obligations; advertising, marketing, or sales
activities or behaviors; and business relations); and managing personal
behavior or relationships or interactions between people (including social
activities, teaching, and following rules or instructions). Id.
Mental processes are concepts performed in the human mind
including an observation, evaluation, judgment, or opinion. See id. Unless
the claim cannot practically be performed in the mind, the claim is in the
mental process category if the claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components. See id. n.14.
The claimed database's functionality could be performed mentally
apart from the recited database and storage in the database. Notably, a
patient's mind could practically store a health and wellness data record
associated with the patient, the health and wellness data selected from the
group consisting of medicines, supplements, medical history, compliance
data, reminders, ineffective medicine, side effects, healthcare provider data,
pharmacies, allergies, vaccination record, lifestyle data, exercise data,
dietary data, legal documents, medical charts, laboratory data, imaging data,
emergency contact data, and insurance data as claimed. For example, the
patient could merely memorize his or her own side effects of a medication.
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The patient, by memorizing the side effects of the medication, could then be
the sole owner of the data and have sole control over access authorization
and storage of the data as claimed. In HealthTrio, LLC v. Aetna, Inc., 2015
WL 5675303 (D. Colo. Sept. 28, 2015), aff'd, 673 F. App'x. 1006 (Mem)
(Fed. Cir. 2017), the court determined, and our reviewing court affirmed,
that claims directed to a "collection of data from various sources with the
goal of compiling a single, comprehensive, patient health record" were no
more than within the capacity of the human mind. The claimed database's
functionality that collects data from the patient to compile into the single
health and wellness data record is similar to the claims our reviewing court
affirmed as being performed by the human mind. See id.
The claimed data access control system's functionality could be
performed mentally apart from the recited data access control system.
Notably, the patient's mind could also strictly control access to the health
and wellness data record stored according to access rules and authorization
solely set by the patient. For example, the patient could merely mentally
determine the circumstances under which the patient is willing to share
known allergies.
The claimed web interface's functionality could not only be mentally
performed apart from the recitation of generic computer components, the
functionality organizes human activity because it manages interactions
between people. Notably, a healthcare provider may (mentally) determine
whether she wants to request data from, or provide additional information to
add to, the health and wellness data record. Communicating these
determinations and the provider's identification information to the patient
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merely outputs the result of those determinations and simply defines the
personal interaction between the provider and patient. Furthermore, as
discussed above, the patient solely granting authorization is simply a mental
process the patient performs.
For example, a provider could merely think about his or her
credentials, or recall such information. Using this information, the provider,
for example, could provide her credentials to the patient and either ask for
access to the patient's known allergies to a medication or provide additional
information to the patient regarding medications that may cause allergic
reactions. Such mental steps performed by the physician are similar to
claims found abstract in In re Meyer, 688 F.2d 789 (CCPA 1982). In Meyer,
our reviewing court held that a mental process a neurologist should follow
when testing a patient for nervous system malfunctions is not patentable.
See id. at 795-96; Cf SmartGene, Inc. v. Advanced Biological Labs., SA,
555 F. App'x 950, 955 (Fed. Cir. 2014) (determining that comparing new
and stored information and using rules to identify medical options are mental
steps and no more than an abstract idea). Furthermore, collecting data from
the physician to compile into the single health and wellness data record is
similar to the claims our reviewing court affirmed as being performed by the
human mind. See HealthTrio, 2015 WL 5675303.
The claimed web interface's additional functionality of receiving the
patient's self-reported data to update the data in the health and wellness data
record could be performed mentally apart from the recitation of generic
computer components. Cf id. For example, the patient could merely
memorize any self-reported allergies.
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The claimed external connect interface's functionality could not only
be performed mentally apart from the recitation of generic computer
components, the functionality also simply organizes human activity because
it manages interactions between people. Notably, the patient could interact
with providers to receive health and wellness data associated with the patient
for storing in the health and wellness data record in the database. Cf id. For
example, a provider could merely determine a diagnosis or think about a
treatment_associated with the patient. The patient, then, receives and
memorizes (i.e., stores) the diagnosis or treatment.
The claimed external connect interface's additional functionality for
receiving additional health and wellness data associated with the patient for
storing in the health and wellness data record could be performed mentally
but for the recitation of generic computer components. Cf id. For example,
the patient could merely monitor various health conditions ( shortness of
breath, sore joints, etc.) and memorize those conditions, along with other
health and wellness data that the patient remembers.
The claimed prescription interface's functionality organizes human
activity because it manages interactions between people ( e.g., following
rules or instructions). Notably, the particular functions of the recited
prescription interface are all functions that a patient and pharmacy perform
in response to a doctor's prescribed medication to the patient. For example,
if the patient is prescribed medication by the doctor, a pharmacy receives a
patient's pharmaceutical prescription for a prescribed medication by a
healthcare provider. The patient (1) verifies the submitted pharmaceutical
prescription against the patient's knowledge of which medications the
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patient already takes; (2) requests and receives approval for the submitted
pharmaceutical prescription; and (3) monitors his or her own compliance
including receiving the prescribed medication and following instructions in
using the prescribed medication. These managed interactions fit squarely
within the certain methods of human activity organization category of the
agency's Guidance. See 84 Fed. Reg. at 52 (listing exemplary ineligible
methods of organizing human activity).
The claimed patient identification device's functionality controls
one's access to information and, therefore, also recites certain methods of
organizing human activity, which is a category of abstract idea. See 84 Fed.
Reg. at 52. In Prism Technologies LLC v. T-Mobile USA, Inc., 696 Fed.
App'x 1014, 1016 (Fed. Cir. 2017), our reviewing court also analyzed
whether a system that controls access to protected computer resources by
authenticating identity data was directed to non-statutory subject matter. In
Prism, the Federal Circuit determined a system that receives identity data,
authenticates the identity data, and permits access upon successfully
authenticating the identity data was directed to an abstract idea of "providing
restricted access to resources." Id. at 1016-17.
Like the claims in Prism, the patient identification device's recited
functionality restricts access to resources. Notably, the particular functions
of the recited patient identification device-(1) uniquely identifying the
patient as the data owner of the health and wellness data record stored in the
database and (2) granting access to the data in response to detecting the
patient and verifying patient identification data automatically transmitted by
the patient-are functions that organize human activity at least to the extent
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that access is restricted to only some people (i.e., those who are
authenticated and authorized), yet denied to others. Thus, the patient
identification device's above-noted functionality controls one's access to
information and, therefore, recites certain methods of organizing human
activity, which is a category of abstract idea. See 84 Fed. Reg. at 52.
The claimed physiological parameter measurement device's
functionality could be performed mentally but for the recitation of generic
computer components. Notably, the patient could mentally measure a
physiological parameter of the patient and remember the data (i.e., "transmit
the measurement data ... for storing in the health and wellness data
record"). Cf HealthTrio, 2015 WL 5675303. For example, the patient could
merely determine her own measured heart rate over time and memorize the
measured heart rate.
Claim 1 recites the concept of managing health and wellness
information, which merely consists of activities that fall under the mental
processes and certain methods of organizing human activity categories
identified in the Guidance and thus, recites abstract ideas. See 84 Fed. Reg.
at 52. More specifically, as explained above, the management of health
records is merely the combination of observations, evaluations, judgments,
and opinions (i.e., the mental process category of abstract idea) with
defining business relations and managing relationships or interactions
between people (i.e., the certain methods of organizing human activity
category of abstract idea). Id.
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Revised Step 2A, Prong 2 of the Guidance
Although the claim recites an abstract idea based on these mental
processes and certain methods of organizing human activity, we must
determine whether the abstract idea is integrated into a practical application,
namely whether the claim applies, relies on, or uses the abstract idea in a
manner that imposes a meaningful limit on the abstract idea, such that the
claim is more than a drafting effort designed to monopolize the abstract idea.
See 84 Fed. Reg. at 54--55. To do this, we evaluate the "additional elements
individually and in combination to determine whether they integrate the
exception into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit." Id. at
55.
Notably, the additional limitations recited in claim 1 are the
"database "the "data access control system" the "web interface "the "web
' ' '
application executable by a computing device selected from the group
consisting of mobile telephones, mobile gaming devices, tablet computers,
laptop computers, and desktop computers," the "external connect interface,"
the "external systems and applications," the "interfac[ing] electronically,"
the "personal health monitoring device," the "prescription interface," the
"patient identification device in the form of a wearable accessory adapted to
automatically ... identify the patient," the "patient identification device
operable to automatically direct the web application to access at least a data
subset of the health and wellness data record stored in the database upon
recognition of access being granted," and the "wirelessly communicat[ing]."
App. Br. 25-26 (Claims App'x). Thus, we evaluate the additional
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limitations to determine whether they integrate the abstract idea into a
practical application.
The courts have identified examples in which a judicial exception has
not been integrated into a practical application. See 84 Fed. Reg. at 55. One
such example is whether an additional element adds insignificant extra-
solution activity to the judicial exception. See id. n.31 ( citing MPEP
§ 2106.05(g) regarding insignificant extra-solution activity). "Purely
'conventional or obvious' 'post-solution activity' is normally not sufficient
to transform an unpatentable law of nature into a patent-eligible application
of such a law." Mayo, 566 U.S. at 79 (quoting Flook, 437 U.S. at 590).
The patent identification device's functionality-namely
automatically accessing at least a data subset of a health and wellness data
record stored in a database upon recognition of access being granted-
constitutes insignificant extra-solution activity that is insufficient to integrate
the abstract idea into a practical application. The automatically accessing
the health and wellness data record does not alter the nature of the record,
nor does it require unconventional techniques or hardware. Cf
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)
(restricting public access to media was found to be insignificant extra-
solution activity). Rather, this function simply outputs the data to which
access is granted.
An improvement in the functioning of a computer, or an improvement
to other technology or technical field can indicate that the additional
elements integrate the exception into a practical application. See 84 Fed.
Reg. at 55 (citing MPEP § 2106.05(a)). Appellant contends claim 1 effects
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an improvement of security and access control of a health record database
that is solely owned and controlled by a patient and independent of any
healthcare entity. App. Br. 17. Appellant analogizes the claimed invention
with Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
App. Br. 15-16, 18-19; Reply Br. 2-8.
We disagree. In Enfzsh, the Federal Circuit explained that "[t]he
Supreme Court has suggested that claims 'purport[ing] to improve the
functioning of the computer itself,' or 'improv[ing] an existing technological
process' might not succumb to the abstract idea exception." Enfzsh, 822
F.3d at 1335. Even assuming claim 1 is directed to an improvement to a
health record database's security and access control, the improvement does
not parallel any improvement to computer functionality itself, such as with
Enfzsh's "self-referential table for a computer database." Id. at 1336.
Enfzsh's self-referential table for a computer database is a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Id. at 1339. But, unlike the claimed invention in Enfzsh
that improved how a computer stores and retrieves data in memory, the
claimed invention here uses generic computing components. Appellant's
characterization of the claimed database as being "patient-centric" (App. Br.
5, 18, 21; Reply Br. 7, 10; Spec. ,r 11) does not overcome the fact the
claimed database remains a generic computer database. Appellants' alleged
improvement merely identifies the particular entity who is in control of
access to data, which does not change any technological aspect of how the
data is stored or accessed.
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To the extent Appellant argues the claimed invention is eligible based
on the holdings in McRO, Inc. v. Bandai Namco Games America, Inc., 837
F.3d 1299, 1312 (Fed. Cir. 2016) (App. Br. 16; Reply Br. 8), this argument
is unavailing. There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process in McRO automatically animated characters
using particular information and techniques-an improvement over manual
three-dimensional animation techniques that was not directed to an abstract
idea. Id. at 1316. Unlike McRO, the claimed invention here merely uses
generic computing components that do not improve a display mechanism as
was the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018) (distinguishing McRO).
Nor does Appellant identify anything in the claims that is directed to
an improvement to a problem specifically arising in the realm of computer
networks, such as DDR Holdings' overriding of routine and conventional
sequence of events ordinarily triggered by clicking a hyperlink. DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014).
Nor does Appellant purport to improve the data access control system, the
interfaces, web application executable by a computing device, the external
systems and applications, the electronic interfacing, the personal health
monitoring device, the patient identification device in the form of a wearable
accessory, or the wireless communication. Notably, each of these
limitations merely recite generic computer components or functions at a high
level of generality. These generic components and functions do not change
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how data is stored or accessed. Rather, the claims simply generically recite
using the components or functions as tools to perform as intended, without
claiming any improvement to the components or technological functions
themselves. See In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 611
(Fed. Cir. 2016).
The Examiner finds, and we agree, that "Appellant fails to provide
support within the specification regarding how the implementation of the
specific invention improves a computer related technology." Ans. 8. Thus,
here, as in Alice, the claims "do not ... purport to improve the functioning
of the computer itself or effect an improvement in any other technology or
technical field." Alice, 573 U.S. at 225.
Accordingly, claim 1 does not integrate the judicial exception into a
practical application.
ALICE/MAYO STEP Two
Revised Step 2B of the Guidance
Because the claim does not integrate the judicial exception into a
practical application, we determine whether additional elements of the claim,
individually or in combination, provide an inventive concept. See Fed. Reg.
at 56. To this end, we determine whether the additional elements (1) add a
specific limitation or combination of limitations that is not well-understood,
routine, and conventional activity in the field, which is indicative that an
inventive concept may be present or (2) simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present. Id.
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Contrary to Appellant's contention (App. Br. 19), the mere fact that
the Examiner has not presented a prior art rejection under§§ 102 or 103
does not overcome a § 101 rejection. "[P]atent-eligibility does not tum on
ease of execution or obviousness of application. Those are questions that are
examined under separate provisions of the Patent Act." Rapid Litig. Mgmt.
Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (citing Mayo,
566 U.S. at 89-90); see Ass 'nfor Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 591 (2013) ("Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the§ 101 inquiry.").
The Examiner concludes under step two in the Mayo/Alice framework
that the additional elements of claim 1, other than the abstract idea, amount
to no more than a recitation of generic computer components performing
functions that are well-understood, routine, and conventional activities
previously known in the pertinent industry. Final Act. 6-7. According to
the Examiner, viewed as a whole, these additional elements do not qualify as
significantly more than the abstract idea. Id. at 7. Appellant does not
persuasively argue that these elements operate in an unconventional manner.
The claims recite the additional elements at a high level of generality and the
disclosure describes the elements in generalities. See, e.g., Spec. ,r,r 11-13,
20-22, Figs. 1-2.
Thus, "the claims at issue amount to 'nothing significantly more' than
an instruction to apply the abstract idea ... using some unspecified, generic
computer." Alice, 573 U.S. at 225-26 (citing Mayo, 566 U.S. at 71).
Therefore, we are not persuaded that the Examiner erred in rejecting claim 1.
Appellant presents shorter versions of substantially the same arguments for
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claims 14 and 28. App. Br. 19-23. Thus, for the same reasons discussed
above, we are not persuaded the Examiner erred in rejecting claims 14 and
28. Nor are we persuaded the Examiner erred in rejecting claims 3, 4, 6-13,
15-25, 29, and 30, not argued separately with particularity.
CONCLUSION
The Examiner did not err in rejecting claims 1, 3, 4, 6-25, and 28-30
under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision to reject claims 1, 3, 4, 6-25, and
28-30.
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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