Ex Parte Reisman et al

Patent Trial and Appeal Board

Oct 22, 2018

12038536 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/038,536 02/27/2008
23460 7590 10/24/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Lonny Reisman
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.
258718 5808
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LONNY REISMAN, JEFFREY N. NADLER,
MADHA VI VEMIREDDY, and GREGORY BRIAN STEINBERG
Appeal2017-006463
Application 12/038,536
Technology Center 3600
Before DENISE M. POTHIER, JENNIFER S. BISK, and
SCOTT B. HOWARD, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1,2 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 1-29. Appeal Br. 1. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
1 Throughout this opinion, we refer to (1) the Final Action (Final Act.)
mailed March 12, 2015, (2) the Appeal Brief (Appeal Br.) filed December
14, 2015, (3) the Examiner's Answer (Ans.) mailed July 1, 2016, and (4) the
Appeal2017-006463
Application 12/038,536
Invention
Appellants' invention relates to a method, a system, and medium "for
presenting a patient with an online interactive personal health record (PHR)
capable of delivering individualized alerts based on comparison of evidence-
based standards of care to information related to the patient's actual medical
care." See Spec., Abstract.
Claim 1 is reproduced below with emphasis:
1. A method of providing a customized real-time medical alert
to an individual patient via an electronic patient interface, the
method comprising:
electronically querying, by a care engine system, a set of
clinical rules from available evidence-based medical standards
stored on a non-transitory computer readable medium, at least
one such rule defining an expected mode of care given a
particular set of clinical data;
interfacing, by the care engine system, with at least one
network service for receiving medical care information relating
to the patient, the at least one network service having real-time
access to at least one source of data, including claims data
reflecting clinical information relating to the patient obtained
from at least one health care provider and submitted in
connection with a claim under a health plan;
electronically organizing, by the care engine system, the
received medical care information into a medical data file for
the patient and storing the medical data file, the medical data
file comprising patient clinical data, the patient clinical data
Reply Brief (Reply Br.) filed September 1, 2016. The second appeal brief
filed September 23, 2016 was improperly submitted and will not be
considered for purpose of this appeal. See 3 7 C.F .R. § § 41.3 7 (permitting
the filing of an appeal brief) and 41.41 (a) (permitting Appellants to file only
a single reply brief).
2 The real party in interest is listed as Active Health Management Inc.
Appeal Br. 1.
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indicating an actual mode of care provided to the patient and
derived from said claims data in a medical database;
in response to the receiving of the medical care
information relating to the patient, applying the set of clinical
rules, by a rules engine module in the care engine system, to the
clinical data derived from said claims data in real-time to
identify at least one alert based on the patient clinical data, and
storing an indicator of the at least one alert and associated
alert detail in the medical data file for the patient; and
interfacing, by the care engine system, with the at least
one network service for sending the at least one alert to the
electronic patient interface for displaying to the patient, the at
least one alert and associated alert detail automatically
generated based on the presence of the indicator of the at least
one alert in the medical data file for the patient and comprising
an explanation of circumstances underlying the at least one alert
and a suggestion for patient follow up;
receiving a response from the electronic patient interface
including a follow-up status indicating that the alert has been
addressed; and
updating the indicator of the at least one alert with
follow-up status.
Appeal Br. 13-14 (Claims App.).
The Examiner relies on the following as evidence of unpatentability:
Ciamiello
Heckerman
Greene
US 2004/0260155 Al
US 2007/0112598 Al
US 2008/0033751 Al
The Rejections
Dec. 23, 2004
May 17, 2007
Feb. 7,2008
Claims 1-29 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 2--4. 3
3 The Examiner presents a new ground of rejection for claims 1-29 under 35
U.S.C. § 101 in the Answer. Ans. 2. We refer to this rejection throughout
our Opinion.
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Claims 1-17 and 19-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Heckerman and Ciamiello. Final Act. 3-10.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Heckerman, Ciamiello, and Greene. Final Act. 11.
THE PA TENT ELIGIBILITY REJECTION
Appellants argue claims 1-20 and 22-29 as a group and dispute
dependent claim 21 separately. Appeal Br. 4--7. In the Reply Brief,
Appellants additionally discuss claims 11 and 18. Reply Br. 4. We select
claims 1, 11, 18, and 21 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 1, 2, 4-10, 14-17, 19, 20 and 22-25
Appellants argue claim 1 is not drawn to an abstract idea (Appeal Br.
4, 6) and that Examiner "fail[ s] to identify the alleged abstract idea with any
specificity" (Reply Br. 1 ). Appellants further contend claim 1, as a whole, is
a "narrowly focused, particularized solution to providing customized real-
time medical alerts to patients" (Reply Br. 1) that does not preempt the
allegedly abstract idea (Reply Br. 1-2). Appellants also argue claim 1
amounts to significantly more than any abstract idea. Appeal Br. 6; Reply
Br. 2-3. Specifically, Appellants contend claim 1 "recite[s] additional
elements, disregarded in the newly stated grounds for rejection, that specify
a particular type of real-time medical alert that is sufficiently focused so as
not to preclude others from carrying out the allegedly abstract ideas in a vast
variety of alternative ways" and is therefore patent-eligible. Reply Br. 3; see
also Reply Br. 3--4 and Appeal Br. 4.
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ISSUE
Under § 101, has the Examiner erred in rejecting claim 1 by
concluding the claim is directed to patent-ineligible subject matter?
ANALYSIS
Based on the record before us, we are not persuaded of error. In Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70
(2012) and Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014 ), the Court set forth a two-step analytical framework for evaluating
patent-eligible subject matter. First, "determine whether the claims at issue
are directed to a patent-ineligible concept," such as an abstract idea. Alice,
134 S. Ct. at 2355. If so, "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than a patent-ineligible concept. Id. at 2355, 2357
( quoting Mayo, 566 U.S. at 79).
As a preliminary matter, Appellants contend the Examiner has not
applied the proper test in concluding claim 1 is patent-ineligible under 35
U.S.C. § 101 and fails to consider the elements of the dependent claims.
Appeal Br. 4, 6. The Examiner presented a new ground of rejection for all
the claims under § 101 in the Answer. Ans. 2--4. Because Appellants do not
repeat these arguments in the Reply Brief (Reply Br. 1--4), we presume
Appellants no longer maintain these contentions. However, to the extent this
assertion is maintained, we disagree as the Examiner analyzes both prongs
of the Mayo/Alice test and addresses the dependent claims. See Ans. 2--4.
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Mayo/Alice Step 1
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). This "inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfzsh, 822 F.3d at 1335 (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Appellants argue claim 1 is not directed to an abstract idea ( Appeal
Br. 6) and that the Examiner does not identify an abstract idea with
specificity (Reply Br. 1 ). We disagree. The Examiner states claim 1 's
abstract idea is drawn to "providing a customized real-time medical alert."
Ans. 2. This finding is supported by claim 1 's preamble, which recites "[a]
method of providing a customized real-time medical alert to an individual
patient." Appeal Br. 13 (Claims App.). The Specification also supports the
Examiner, stating embodiments of the present invention "include
implementing a plurality of modules for providing real-time processing and
delivery of clinical alerts and personalized wellness alerts to the patient via
the PHR [(personal health record (PHR)]." Spec, Abstract. Thus, when
considering claim 1 as a whole in light of the Specification, claim 1 's focus
is directed to an abstract idea of providing customized real-time medical
alerts.
Given the described abstract idea, we further determine the recited
"electronically querying ... a set of clinical rules," "interfacing ... with at
least one network service for receiving medical care information relating to a
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patient," "electronically organizing ... the received medical care
information into a medical file for the patient and storing the medical file,"
"applying the set of clinical rules ... to the clinical data derived from said
claims data in real-time to identify at least one alert based on the patient
clinical data, and storing an indicator of the at least one alert and associated
alert detail," and "interfacing ... with the at least one network service for
sending the at least one alert to the electronic patient interface for displaying
to the patient," steps recited in claim 1 are part of the abstract idea of
providing customized real-time medical alerts.
Appellants next argue claim 1 is directed to a particular way for
providing real-time customized medical alerts, is narrowly focused on a
particular solution, involves specific data, and does not preempt an abstract
idea of customizing real-time medical alerts. Reply Br. 1-2. We are not
persuaded. Lack of preemption does not make a claim any less abstract. See
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) ("While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility");
see also Parker v. Flook, 437 U.S. 584, 589 (1978).
Moreover, even when the claimed information is limited to specific
content (see Reply Br. 1-2), such as in claim 1, courts have found steps,
such as collecting certain information ( e.g., the recited "electronically
querying ... a set of clinical rules" and "interfacing ... for receiving
medical care information" steps), are within the realm of abstract ideas.
Elec. Power Grp., 830 F.3d at 1353; see also Ans. 2 (stating certain steps
"are similar to the concepts identified as abstract ideas by the courts"). For
example, courts have found that the following activities are drawn to
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abstract ideas: gathering, analyzing, manipulating, and storing information
and displaying results (e.g., the recited "electronically organizing ... the
received medical care information into a medical file for the patient and
storing the medical file," "applying the set of clinical rules ... to the clinical
data derived from said claims data in real-time to identify at least one alert
based on the patient clinical data, and storing an indicator of the at least one
alert and associated alert detail," "interfacing ... for displaying to the
patient," and "updating the indicator" steps in claim 1 ). See Elec. Power
Grp., 830 F.3d at 1354, Content E:ttraction & Transn1ission LLC v. Wells
Fargo, 776 F.3d 1343, 1347 (Fed. Cir. 2014), In re TL! Comms. LLC Patent
Litig., 823 F.3d 607,613 (Fed. Cir. 2016), andFairwarning IP, LLCv. Iatric
Systems, Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (holding the
functions of collecting personal health information, analyzing information
according to rules, and providing notification are directed to abstract ideas).
Additionally1 receiving or sending information, similar to recitations in
claim 1 (e.g., "interfacing ... with at least one network service for receiving
medical care information relating to a patient" and "interfacing ... for" (1)
"sending the at least one alert to the electronic patient interface" and (2)
"receiving a response" steps), have been be1d to be processes directed to
abstract idea. See lntellectual Ventures ILLC v. S'.ymantec Corp., 838 F.3d
1307, 1313 (Fed. Cir. 2016).
In its Appeal Brief, Appellants assert the claimed invention includes a
"care engine system" enabling what cannot be performed by a human or
using pen and paper. Appeal Br. 6. Specifically, Appellants contend the
care engine system enables the electronic collection of claims and clinical
data, the real-time application of clinical rules to data, generating and
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displaying an alert for the patient, and receiving electronic feedback from
the patient regarding the alert. Appeal Br. 6. We are not persuaded.
As noted above, the focus of claim 1 is not on an improvement in the
case engine system ( or any other recited computer component) but rather on
certain abstract ideas of customizing real-time medical alerts and following
up on the alerts that use computer components as tools. See Elec. Povver
r, - 0 .., 0 i::: .., -l 1 '' .:;4 I rrrz 1· (~ - 8'1.., n i l L 12· 1 brp., {)j r' .. :H.1 at __ 1_ ; see a.so 1.., .o,nms., .,c.,j r..c at u . 11 any
event, some of the above-identified steps argued to be enabled by the "care
engine system" use other components, including a rules engine module ( e.g.,
the "applying the set of rules ... to identify the at least on alert" step) and an
electronic patient interface ("for displaying" the alert to the patient step), to
perform their functions. Also, but for the recitation of these computer
hardware or software components in claim 1, we agree with the Examiner
the above, recited steps or functions could be performed as mental steps, or
with the aid of pen and paper. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("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[, 409 U.S. 63
(1972)]"). Courts have treated "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category."' Elec.
Power Grp., 830 F.3d at 1354.
Accordingly, when considering claim 1 's character as a whole
consistent with the Specification, the claim's focus is directed to at least one
abstract idea.
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Mayo/Alice Step 2
Because we determine claim 1 is directed to at least one abstract idea,
we proceed to analyze the claim under step two. We consider the elements
of claim 1 both individually and as a combination to determine whether the
additional elements add enough to transform the claim into significantly
more than a patent-ineligible concept. Step two involves the search for an
"inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power Grp., 830 F.3d
at 1353. An "inventive concept" requires more than "well-understood,
routine, conventional activity already engaged in" by the relevant
community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F .3d 1042,
1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79--80).
Appellants contend claim 1 recites additional elements that amount to
significantly more than the abstract idea. Appeal Br. 6. In particular,
Appellants assert generating an alert using real-time application of clinical
rules to a patient's medical claim-based health information elevates the
claimed invention to more than providing a customized real-time medical
alert. Appeal Br. 6. But, Appellants fail to identify how such rules are used
to improve a relevant technology, such that they are more than an abstract
idea or amount to an inventive concept. See Appeal Br. 6.
Appellants allege the additional elements that amount to significantly
more are the recited "receiving a response from the electronic patient
interface including a follow-up status indicating that the alert has been
addressed." Reply Br. 4. As previously stated, the "interfacing, by the care
engine system, with at least one network service for" receiving a response
and sending the alert steps are part of the abstract idea of providing a
customizing medical alert. We thus are not persuaded that the interfacing
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step "for sending an alert" is an additional element that transforms the noted
abstract idea.
Appellants also assert the inclusion of a display, interfaces, and real-
time constraints demonstrate the claimed invention is rooted in computer
technology sufficiently to transform the claimed invention into significantly
more. Appeal Br. 6. We disagree. The above-noted "interfacing" step does
involve "one network service." But, a computer component sending
information (e.g., an alert) over a network is not an inventive concept under
§ 101. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014). Like the Examiner (Ans. 3--4), we agree the additional elements in
claim 1 ( e.g., the recited "interface for displaying to the patient") fail to
transform the claim's nature into a patent-eligible concept; rather, they are
merely tools used to perform the claim's steps. See Alice, 134 S. Ct. at 2358
(holding "the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention").
For example, the additional element of the "electronic patient
interface' used to display to the patient the alert is recited '"at a high level"
(Ans. 3) and is not sufficient to amount to significantly more than the
judicial exception. Ans. 3----4. The Specification also describes the interface
in g:eneralitfos. stating: alerts l 04 are prominentlv displa,;ed with a user
"--=-' / "--=-' °' ~X
interface of PHR 108~ such as that shown in Figures 3 and 4. Spec. ~1,r 42~
46----48, Figs. 11 3, 4 (element 400). Thus, the nature of claim 1 's additional
elements ( e.g., the electronic patient interface) implement or perform the
abstract idea using generic computer components to achieve claimed results
and merely provide a generic environment in which to carry out claim 1 's
abstract ideas. See Ans. 3--4; see also TL!, 823 F .3d at 611.
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As for the specific assertion that the recited "receiving a response"
step that includes "a follow-up status indicating that the alert has been
addressed" is significantly more than the abstract idea (Reply Br. 3--4 ), we
are not convinced. That is, claim 1 is drawn to at least one abstract idea,
including customizing real-time medical alerts and receiving responses that
includes a follow-up status indicating that the alert has been addressed (e.g.,
• • • -C' • ) C r · " l rs 1· 8"'Q f' "'d 1 "'11 rece1vmg m1ormat10n . 0ee 1nteuectua r entures , _1c'i ._1 at .:, _
(indicating steps of receiving or sending infonnation are considered to be
processes directed to abstract idea). Thus, this noted "receiving'~ step can be
considered part of the identified abstract idea(s) of c1aim 1 and not an
additional elernent for consideration as to whether the e1ement adds enough
to transform the claim into significantly more than a patent-ineligible
concept. ·robe sure, the disputed "receivini' step uses "the electronic
patient interface'~ to receive the response. But~ as previous1y discussed~ Hds
additional element fails to transform claim l's nature into a patent-eligible
concept but rather is used as a tool to perform the claim's steps. See Alice,
134 S. Ct. at 2358.
Appellants also contend claim 1 recites additional elements "that
specify a particular type of real-time medical alert that is sufficiently focused
so as not to preclude others from carrying out the abstract ideas in alternative
ways. Reply Br. 3. As noted above, "limiting the claims to a particular
technological environment ... is, without more, insufficient to transform
them into patent-eligible applications of the abstract idea at their core."
Electric Power Grp., 830 F.3d at 1354; see also Alice, 134 S.Ct. at 2358.
Moreover, to the extent that Appellants contend using real-time data
transforms the abstract idea into significantly more than a patent-ineligible
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concept (Reply Br. 3), we are not persuaded. For example, the claims in
Electric Power Grp. address systems and method for performing real-time
performance of an electric power grid, but the fact the claims use real-time
data or perform real-time analysis was insufficient to transform its abstract
idea into significantly more. Electric Power Grp., 830 F.3d at 1351-52,
1354--56. Moreover, the Specification also indicates the practice of
providing real-time medical alerts already existed. See Spec. ,r 2.
To the extent Appellants are attempting to draw parallels between the
claims in the instant application and Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Reply Br. 2-3), this
argument is unavailing. Bascom concerns claims addressing a content
filtering system having a filtering scheme and logical filtering element set.
The Bascom court determined the claimed combination resulting in a
filtering tool located remote from end-user that harnesses network
technology, while permitting customizing by the user locally, is an
improvement in a computer system itself or an existing technological
process. Bascom, 827 F.3d at 1350-51. However, claim 1 in the instant
application is not a filtering component. Nor do Appellants allege claim 1
improves an existing technological process. Thus, any purportedly analogy
does not hold.
Next, to the extent Appellants attempt to draw a comparison between
claim 1 and claims in Ex parte Barous, Appeal No. 2016-003320 (PTAB
August 1, 2016) (Reply Br. 3), we are not persuaded. "[I]t is immaterial in
ex parte prosecution whether the same or similar claims have been allowed
to others." In re Wertheim, 541 F.2d 257,264 (CCPA 1976). Moreover, Ex
parte Barous is a non-precedential opinion and is not binding on us.
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For the above reasons, claim 1 's limitations, viewed both individually
and as an ordered combination, do not amount to significantly more than a
judicial exception and do not sufficiently transform the nature of the claim
into patent-eligible subject matter. Accordingly, Appellants have not
persuaded us the Examiner erred in the rejecting independent claim 1 and
claims 2, 4--10, 14--17, 19, 20 and 22-25, which are not separately argued.
Claims 3, 21, and 26-29
Claim 21 is separately argued. Appeal Br. 7. We select claim 21 as
representative and group claims 3 and 26 with claim 21, as they have
limitations similar to those in claim 21. Claims 27-29 depend from claim 26
and are also grouped with claim 21. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue claim 21 recites an alert payload filtering module
that reduces real-time message payload carried by the network service, and
this additional feature, which purportedly was not considered by the
Examiner, amounts to significantly more than the abstract idea of providing
customized real-time medical alerts. Appeal Br. 6-7 ( citing Spec. ,r,r 17,
70-71, 83, Fig. 19).
The Specification discusses the alert filtering module reduces the
payload on the system and improves the speed of the alert delivery by
eliminating redundancies. Spec. ,r 1 7. The Specification addresses
approaches used to filter alerts and reduces payload. Spec. ,r,r 7 0-71, Fig.
19. Claim 21 highlights some of these approaches, reciting:
comprising an alert payload filtering module for reducing real-
time message payload carried by the at least one network
service by dynamically filtering a plurality of alerts generated
by the rules engine for the patient by at least one of alert
justification, alert redundancy, alert recommendation family,
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historical alert recipients, predetermined alert recipient
preference, alert severity, and alert communication method.
Appeal Br. 20 (Claims App.) (italics added).
However, as the Examiner indicates (Ans. 6-7) and as emphasized
above, using a recipient's predetermined preferences ( e.g., manually
entered) to reduce payload is not rooted in computer technology. Thus,
although some of the approaches in claim 21 may be an improvement in
payload filtering module technology (see Reply Br. 2), the breadth of claim
21 includes at least one patent-ineligible concept.
Accordingly, we sustain the § 101 rejection for claim 21 and claims 3
and 26-29, which are not separately argued.
Claims 11-13 and 18
Claims 11 and 18 are separately argued. Reply Br. 4. Claims 12 and
13 depend directly or indirectly from claim 11. We select claims 11 and 18
as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
For claim 11, Appellants assert the limitation of "providing a
graphical display showing the trend of the health indicator over time"
transforms the claim's additional elements into significant more than the
abstract idea (Reply Br. 4); for claim 18, Appellants argue the limitation of
generating "a physician performance score," displaying the score using an
electronic physician interface, and regenerating the physician score in real-
time to update the display transform the claim's additional elements into
significant more than the abstract idea. Reply Br. 4. We are not persuaded.
Many of the above steps are directed to abstract ideas of analyzing
data, manipulating data, and displaying results. We refer above for more
detail. As to whether the additional elements, including a display or
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interface to display information ( e.g., a trend or a score) in claims 11 or 18,
add enough to transform the claimed invention into significantly more than
the abstract idea, we refer above regarding how merely recited a generic
computer or interface as a computer tool to perform the abstract idea is
insufficient to transform the claimed invention into a patent-eligible concept.
For the above reasons, we sustain the§ 101 rejection for claims 11
and 18 and dependent claims 12 and 13, which are not separately argued.
OBVIOUSNESS REJECTION BASED ON
HECKERMAN AND CIARNIELLO
Claims 1, 2, 4-17, 19, 20, and 22-25
Appellants argue claims 1, 2, 4--17, 19, 20, and 22-25 as a group.
Appeal Br. 4--7. We select claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
ISSUES
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that Heckerman and Ciamiello would have taught or suggested
(I) in response to the receiving of the medical care information
relating to the patient, applying the set of clinical rules ... to
the clinical data derived from said claims data in real-time to
identify at least one alert based on the patient clinical data, and
storing an indicator of the at least one alert and associated alert
detail in the medical data file for the patient
("the disputed 'applying' step") and
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(II) "receiving a response from the electronic patient interface
including a follow-up status indicating that the alert has been addressed"
("the disputed 'receiving' step")?
ANALYSIS
Based on the record before us, we find no error in the Examiner's
rejection of claim 1. The rejection relies on Heckerman to teach or suggest
the disputed "applying" and "receiving" steps. Final Act. 3--4 ( citing
Heckerman ,r,r 42, 49--51). We thus confine our discussion to Heckerman.
I.
Appellants assert Heckerman discloses sending data to a health-
related system but does not store an alert and associated alert detail in a
medical file for a patient as claim 1 requires. Appeal Br. 9 ( citing
Heckerman ,r,r 43, 49). We are not persuaded.
Heckerman discloses applying rules ( e.g., a machine-learning
component 150) to various patent-specific information to draw conclusions
about a user's health needs. Heckerman ,r 42, Fig. 1. For example,
Heckerman teaches sending an alert notifying a user of various beneficial
behavior modifications to reduce a risk of a heart attack or an alert to discuss
with a physician preventive therapies and useful diagnostic tests.
Heckerman ,r 42. In order to send such an alert, Heckerman teaches storing
an indicator of the alert and alert details for the patient at least temporarily.
Heckerman also discusses a user can register for alerts related to
medications the user is taking. Heckerman ,r 49. Heckerman even further
explains a user can be queried about medications a user is taking, such as the
drug's name and blood pressure measurements, to detect counterfeit drugs,
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suggesting a user is presented with an alert periodically to enter his or her
blood pressure. See Heckerman ,r 50. In this embodiment, Heckerman
further states the information is stored to determine whether the patient is
adequately responding to therapy. Heckerman ,r 50. By recording the blood
pressure information, Heckerman suggests some type of indicator is stored
in system 300 indicating that an alert to enter a blood pressure measurement
was sent to the user along with an associated alert detail ( e.g., blood pressure
values). See Heckerman ,r 50, Fig. 3. Also, because this information relates
to a specific user, Heckerman further suggests this information is stored in
the user's medical file or "in the medical file" as recited. Thus, although not
explicitly stated, Heckerman teaches or suggests "storing an indicator of the
at least one alert and associated alert detail in the medical data file for the
patient" as recited in claim 1.
Appellants also contend "any 'alerts' in Heckerman arise from a
batch-type process resulting from mining a database" and thus Heckerman
fails to teach "applying clinical rules to clinical data in real time to generate
an alert." Appeal Br. 9; see also Appeal Br. 9-10 (citing Heckerman ,r 49
and Spec. ,r 13). We are not persuaded.
To the extent Appellants contend Heckerman does not generate alerts
in real-time, claim 1 does not require the alert be sent in real-time but rather
"applying the set of clinical rules ... to the clinical data derived from said
claims data in real-time to identify at least one alert." Appeal Br. 13
(Claims App.) (italics added). Granted, the preamble recites its intended use
to "provid[ e] a customized real-time medical alert." Appeal Br. 13 (Claims
App.). Also, the Specification discusses using real-time data or defining
rules engine run with real-time data. Spec. ,r 13, cited in Appeal Br. 10.
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But, claim 1 's body merely recites applying the rules "in response to the
receiving of the medical care information" to identify an alert and the
"interfacing ... with at least one network service for receiving medical care
information" which has "real-time access" to data. Appeal Br. 13 (Claims
App.) (italics added). Thus, to the extent the Specification describes
generating real-time alerts, we decline to import this embodiment into claim
1, which fails to recite real-time alerts, using real-time data, 4 or defining rule
engine run in real-time.
In any event, Heckerman teaches or suggests machine-learning
component 150 applies its rules in real-time to identify alerts. Heckerman
,r,r 42, 49--50. For example, Heckerman states "[i]f a pattern associated with
the user's medication is recognized by the system 300, the forwarding
component 3 60 can send an alert to the user notifying the user of the
relationship." Heckerman ,r 49. Based on this teaching, Heckerman
suggests data is analyzed in real-time (e.g., applying rules in real-time as
recited) and alerts are sent when patterns are recognized. See Heckerman
,r 49. Thus, Appellants' assertion that Heckerman processes alerts in batches
(Appeal Br. 9) is speculative. It is well-settled that counsel's arguments
cannot take the place of factually supported objective evidence. See, e.g., In
re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996).
II.
Appellants contend Heckerman does not teach the disputed
"receiving" step. Appeal Br. 9. Other than this assertion, Appellants do not
further argue this limitation. See Appeal Br. 9-10. In the Reply Brief,
4 Appellants acknowledge Heckerman teaches receiving real-time data.
Reply Br. 4 ( citing Heckerman ,r 25); see also Ans. 8.
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Appellants additionally assert Heckerman does not teach responding to alerts
but rather to questions. Reply Br. 4 (responding the Examiner's discussion
in Ans. 9 ( citing Heckerman ,r 41) ). We are not persuaded.
Turning to the rejection in the Final Action, the Examiner relies on
paragraph 50 in Heckerman. Final Act. 4 ( citing Heckerman ,r 50 and
stating "patients response to treatment over time indicates if an alert has
been addressed"). Focusing on these findings, we find no error.
As previously stated, paragraph 50 in Heckerman teaches or suggests
sending alerts to a user to enter blood pressure measurements ( e.g., queried
by system 300) periodically to detect counterfeit drugs and whether a user is
responding to therapy. Heckerman ,r 50. Thus, Heckerman teaches or
suggests receiving responses from the user from an interface that includes a
follow-up status indicating the alert has been addressed (e.g., entry of the
blood pressure measurement is stored in system 300). Additionally,
Heckerman teaches employing machine-learning techniques 350 of system
300, which indicate whether a user is responding to therapy or not.
Heckerman ,r 50. This further demonstrates the responses are follow-up
statuses indicating the alert had been addressed ( e.g., a determination that
the user is responding to therapy indicates the possible counterfeit drug alert
has been addressed). See Heckerman ,r 50.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2, 4--17, 19, 20, and
22-25, which are not separately argued.
Claims 3, 21, and 26-29
Appellants argue claims 3, 21, and 26-29 as a group. Appeal Br.
10-11. We select claim 26 as representative. See 37 C.F.R.
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§ 4I.37(c)(l)(iv). Claim 26 recites in relevant part "filtering the plurality of
patient alerts by at least one of alert justification, alert redundancy, alert
recommendation family, historical alert recipients, predetermined alert
recipient preference, alert severity and alert communication method to create
an optimized patient alert set containing at least one of the plurality of
patient alerts." Appeal Br. 23 (Claims App.). The Examiner relies on
Heckerman to reject claim 3, which has similar limitations to claim 26.
Final Act. 6 (citing Heckerman ,r,r 37, 49, 54), 10 (referring to similar
limitations as those already discussed when addressing claim 26). Because
the Examiner relies on Heckerman to teach claim 26 's limitations, we
confine our discussion to this reference.
Appellants contend Heckerman does not teach the above limitation in
claim 26. Appeal Br. 11. Specifically, Appellants assert the cited
paragraphs are silent about alerts and filtering alerts. Appeal Br. 11. We
disagree. As discussed above, Heckerman teaches a user can register for
alerts about medications the user is taking. Heckerman ,r 49. Additionally,
Heckerman teaches system 300 facilitates in early detection of drug side
effects and interactions and provide users with medication alerts, suggesting
that there are numerous medication alerts available. See Heckerman ,r 49.
Thus, when a user registers for alerts for medications the user is taking (e.g.,
two different medications or "a predetermined alert recipient preference" as
recited), Heckerman teaches or suggests a system that filters a number of
patient alerts ( e.g., all the medications alerts) by least a predetermined alert
recipient preference as recited in claim 26. See Heckerman ,r 49.
We thus disagree that "[ t ]here is no mention of a plurality of alerts for
a particular user" in Paragraph 49. Appeal Br. 11. Moreover, contrary to
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Appellants' assertion (Appeal Br. 11), Heckerman's registration process
"create[ s] an optimized patient alert set containing at least one of a plurality
of patient alerts" as recited.
Accordingly, Appellants have not persuaded us of error in the
rejection of independent claim 26 and claims 3, 21, and 27-29, which are
not separately argued.
THE REMAINING OBVIOUSNESS REJECTION
Claim 18 is rejected under 35 U.S.C. § 103 based on Heckerman,
Ciamiello, and Greene. Final Act. 11. Claim 18 is separately discussed.
Appeal Br. 11-12. Appellants contend claim 18 should be found patentable
"[fJor the reasons given above, claim I-from which claim 18 depends-
includes elements not taught by the combination of Heckerman and
Ciamiello" and "[b ]ecause Greene does not include these elements." Appeal
Br. 11. We are not persuaded as previously discussed and need not consider
whether Greene discloses any limitations allegedly not taught by Heckerman
and Ciamello. We sustain the obviousness rejection of claim 18.
DECISION
We affirm the Examiner's rejection of claims 1-29 under 35 U.S.C.
§§ 101 and 103.
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).
AFFIRMED
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