Ex Parte Reyes

Patent Trial and Appeal Board

Feb 25, 2019

13466574 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/466,574 05/08/2012
24739 7590 02/27/2019
CENTRAL COAST PATENT AGENCY, INC
3 HANGAR WAY SUITED
WATSONVILLE, CA 95076
FIRST NAMED INVENTOR
David Reyes
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.
Pl098 2331
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
officeactions@CENTRALCOASTPATENT.COM
plambuth@centralcoastpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID REYES
Appeal2018-000834 1
Application 13/466,574
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-3, 6-9, 21, 22,
24, 25, and 27-30. We have jurisdiction to review the case under 35 U.S.C.
§§ 134 and 6.
The invention relates generally to methods and apparatus for
conducting communications with remote-located patients through a
computer network. Spec. 1: 15-17.
Independent claim 22 is illustrative:
22. A method comprising the steps:
(a) setting two or more on-location medical appointments
in memory of an Internet-connected server having at least one
1 The Appellant identifies the inventor, Dr. David Reyes, as the real party in
interest. Appeal Br. 2.
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Application 13/466,574
processor, at least one connected data repository, and a port
enabling communication with computerized appliances also
connected to the Internet;
(b) providing an interactive display on a display monitor
with input/output (110) capability coupled to the server, the
interactive display having a video conferencing window enabled
to display to a physician attending the display monitor, images
of a specific patient or of a medical assistant attending the
specific patient at an appointment location;
( c) displaying a plurality of interactive indicia representing
individual ones of the on-location medical appointments;
( d) selecting by the physician attending the display
monitor of a specific one of the interactive indicia representing
an appointment;
( e) establishing by the selection in step ( d) a video
conference between the physician attending the display monitor,
using image and audio capability coupled to the server and
proximal the display monitor and either the patient at the
appointment location or the medical assistant at the appointment
location using an Internet-connected communication device
enabled for video conferencing, with video images displayed for
the physician in the video conferencing window in the interactive
display; and
(f) upon the video conference being established, selecting
from the data repository data pertinent to the specific patient and
displaying that data in a data window in the interactive display
displaying the interactive indicia and the video window.
The Examiner rejected claims 1-3, 6-9, 21, 22, 24, 25, and 27-30
under 35 U.S.C. § 101 as directed to ineligible subject matter in the form of
abstract ideas without significantly more.
The Examiner rejected claims 1-3, 6-9, 21, and 302 under 35 U.S.C.
§ 103(a) as unpatentable over Kaboff et al. (US 8,019,622 B2, iss. Sept. 13,
2 In the Answer, the Examiner lists dependent claim 30 as rejected with
independent claim 22. Ans. 3. Claim 30 depends ultimately, however, from
independent claim 1. In the latest Office Action, the Examiner correctly
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2011) ("Kaboff'), Wang et al., (US 2010/0268383 Al, pub. Oct. 21, 2010)
("Wang"), Walter et al. (US 2003/0154110 Al, pub. Aug. 14, 2003)
("Walter"), and Official Notice.
The Examiner rejected claims 22, 24, 25, and 27-29 under 35 U.S.C.
§ I03(a) as unpatentable Kaboff, Wang, and Walter.
We AFFIRM, but designate it as a NEW GROUND of rejection
pursuant to 37 C.F.R. § 4I.50(b).
ANALYSIS
Reiection under 35 U.S. C. § 1 OJ
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]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). 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
included dependent claim 30 as rejected with in independent claim 1. See
Non-Final Act. 5, 10, 13, mailed July 12, 2016, from which this appeal rises.
Appeal Br. 7. We do the same.
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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" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 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 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, 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. ( 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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
Independent claim 22 recites setting appointments, displaying
information and indicia, initiating a videoconference upon the selection of
the displayed indicia, and displaying additional information upon the
selection of the displayed indicia. As claimed, these steps are directed to a
method of organizing human activity, in that they are "managing personal
behavior or relationships or interactions between people (including social
activities, teaching, and following rules or instructions)." See Guidance, 84
Fed. Reg. at 52. Specifically, while some other functions are performed on a
computer, the method steps themselves involve people performing those
functions to facilitate an interaction. For example, the step of "setting two or
more on-location medical appointments" involves people setting those
appointments, while the steps of "selecting by the physician attending the
display monitor of a specific one of the interactive indicia representing an
appointment" and "establishing by the selection in step ( d) a video
conference between the physician ... either the patient at the appointment
location or the medical assistant at the appointment location" involves an
initiation of an interaction between the doctor and the person associated with
the selected appointment. As such, we preliminarily find that independent
claim 22 is directed to one of certain methods of organizing human activity
that are abstract ideas.
The other inquiries under the Guidance do not persuade us otherwise.
The method does not concern an improvement to a technology, because
while the method is executed on a computer, the purported improvement is
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how doctor-patient communications can be improved utilizing that
technology, which is not an improvement to the technology itself. See
MPEP § 2106.05(a). In other words, the method merely implements a
purported improvement to organizing human behavior on general purpose
web server computers and network client computers. See, for example,
Spec. 7: 17-8-13, 12: 17-13 :25. This is indistinguishable from merely
providing instructions to apply the method on a general purpose computer.
See MPEP ,r 2106.05(±). All the claim essentially does is tie the use of
computers, all of which display information and conduct communications, to
a particular medical environment and exchange. See id. § 2106.05(h).
Because the steps involve general purpose computer operations, the method
does not represent a "particular machine," or transform a physical object.
See MPEP § 2106.05(b}-(c). The claimed method thus does not "integrate
the abstract idea into a practical application."
Given that, we must now determine whether the claimed method
includes a step that is not well-understood, routine, or conventional. See
§ 2106.05(d). The first recited step (a) of setting an appointment
encompasses any form of making a record of an appointment, such as a
scheduling book. See Spec. 18:3-6. Steps (b), (c), and (f) display selected
information, including images. Displaying text and image information on a
computer display is well-known, routine, and conventional. See Mayo, 566
U.S. at 79. Step ( d) involves letting a user make a selection of to initiate an
action, which is a normal behavior of a graphical user interface. See Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)
(a web browser's back and forward button functionality is "well-understood,
routine, conventional"). Step ( e) establishes a video conference. The
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Specification indicates that "selection of an appointment such as
appointment 206 will cause any live video feed sourced from the location of
the patient and MA to be displayed in window 201." Spec. 16, 11. 9-11.
Because the initiation of a video conference is not limited, but broadly
involves initiating any video feed, we infer this step, and the entire claim,
merely relies on well-understood, routine, and conventional technology. 3
We are unpersuaded by the Appellant's argument that the claimed
method provides "something more" in the way of "a new software
mechanism" that a selection on a user interface to initiate a video
conference, by having the selection of indicia control the computer. Appeal
Br. 9-10. By using general purpose computers and standard computer
functions, such as displaying images and video within a user interface that
initiates actions upon selection of indicia, the Appellant has not introduced a
new software mechanism, because user interfaces that provide these
functions are already available.
We are not persuaded by the Appellant's argument that the method
provides a patentable transformation of data. Appeal Br. 10. This alleged
"transformation" is, at best, merely a manipulation of data, which is not
sufficient to meet the transformation prong under 35 U.S.C. § 101. See
Gottschalk, 409 U.S. at 71-72 (holding that a computer based algorithm that
merely transforms data from one form to another is not patent-eligible).
3 The Appellant's Reply Brief appears to confirm this by arguing the
invention solves the problem of forcing patients to travel to or leave where
specialized computer equipment is located, to communicate with specialized
computer equipment at a physician's location. Reply Br. 9. The solution
apparently involves the use of general purpose computers to resolve these
problems.
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Independent claim 22 thus does not provide additional limitations
beyond the abstract idea to transform the abstract idea into eligible subject
matter. Dependent claim 24 displays text, and dependent claim 25 uses
color, text, or symbol to communicate. Dependent claim 27 lists common
computers to use. Dependent claim 28 recites that the computer is "enabled"
to connect to other devices. Dependent claim 29 indicates that a local area
network is utilized. The dependent claims thus do not alter the analysis or
outcome. In addition, claims 1-3, 6-9, and 30 merely implement the
methods of claims 22, 24, 25, and 27-29 on a system. "[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible. The bare fact that a
computer exists in the physical rather than purely conceptual realm is beside
the point." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014) (internal citations and quotation marks omitted).
For these reasons, the Appellant has not persuaded us of error in the
Examiner's rejection. Therefore, we sustain the rejection of claims under
35 U.S.C. § 101 as directed to abstract ideas. However, because our
rationale differs from that of the Examiner, we denominate our affirmance as
a new ground of rejection.
Reiections under 35 U.S.C. § 103(a)
The Appellant argues together (1) both rejections and (2) both
independent claims 1 and 22. We treat them in the same manner.
For independent claims 1 and 22, the Appellant argues that the cited
"visit types" in Kaboff are not the claimed "interactive indicia," that Kaboff
does not initiate a video conference, and that Wang does not initiate, at
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paragraph 77, where a doctor sends an invitation, a video conference in the
same manner as claimed. Appeal Br. 12-13; see also Reply Br. 10-11.
We are not persuaded by the Appellant's argument, because Wang
discloses initiating a video conference through the selection of interactive
indicia, in the form of the robot and connect button on a graphical user
interface. Wang, Figs. 10, 11, ,r 63.
We also are not persuaded by the Appellant's argument that Walter
fails to disclose interactive indicia that may be selected. Appeal Br. 13-15.
Walter discloses that a doctor may "select individual patients[,] and open
their patient health records from his provider schedule." Walter ,r 3 5 ( cited
at Non-Final Act. 8). Walter also discloses these selection are made using a
"graphical user interface." Id. ,r 26. Graphical user interfaces permit
selection of indicia to perform actions. Kaboff also discloses the use of
graphical menus. Kaboff 9:59---65.
For dependent claim 3, the Appellant asserts that "color, text or
symbol" of the interactive indicia is erroneously considered non-functional
descriptive material, because "the interactive indicia are coded by color, text
or symbol to indicate whether the appointment is ready to start." App.
Br. 15-16. We are unpersuaded the Examiner erred, because the claims do
not provide any technical details as to how the "color, text or symbol" limits
the functioning of the computer. Absent that, the association between the
recited "color, text or symbol" and "appointment is ready to start" is broad
enough to encompass that association made only in the human mind.
For these reasons, we sustain the rejection of all rejected claims as
obvious under 35 U.S.C. § 103(a).
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DECISION
We AFFIRM the rejection of claims 1-3, 6-9, 21, 22, 24, 25, and 27-
30 under 35 U.S.C. § 101.
We AFFIRM the rejections of claims 1-3, 6-9, 21, 22, 24, 25, and
27-30 under 35 U.S.C. § 103(a).
This Decision contains a NEW GROUND of rejection pursuant to
37 C.F.R. § 4I.50(b) (2008). 37 C.F.R. § 4I.50(b) provides "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 4I.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
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.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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