Ex Parte Schaefer et al

Patent Trial and Appeal Board

Oct 31, 2017

13566794 (P.T.A.B. Oct. 31, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/566,794 08/03/2012 David Schaefer 44088 2942
23589 7590 11/02/2017
Hnvftv Williams T T P
EXAMINER
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
patents@hoveywilliams.com
amalik @hovey williams .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SCHAEFER and RON LINDAHL
Appeal 2016-005472
Application 13/566,794
Technology Center 3600
Before ST. JOHN COURTENAY, III, ERIC S. FRAHM, and
JAMES W. DEJMEK, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005472 '
Application 13/566,794
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 23-41. Claims 1-22 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Independent claim 23, reproduced below with emphases added, is
illustrative of the claimed subject matter: v
23. A computer program stored on non-transitory
computer-readable medium for directing operation of a portable
electronic device for assisting a caregiver in treating a first
patient;the computer program comprising:
a code segment for receiving via the portable electronic
device pre-treatment patient data representative of a condition
of the first patient before the first patient receives a treatment;
a code segment for receiving via the portable electronic
device treatment patient data representative of the, condition of
the first patient after the first patient receives the treatment;
a code segment for transmitting the pre-treatment patient
data and the treatment patient data to a remote computer for
aggregating the pre-treatment patient data and treatment patient
data with pre-treatment patient data and treatment patient data
of other patients for creating data cohorts comprising groups of >
patients, the cohorts being derived from the conditions of the
first patient and the other patients; and
a code segment for receiving from the remote computer
data representative of the data cohorts for assisting the
caregiver in determining whether a treatment regimen of
the first patient should be changed or maintained based on the
data cohorts.
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REFERENCES and REJECTIONS
The Examiner made the following rejections:1
(1) Claims 23-41 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Non-
Final Act. 3; Ans. 3-4. Specifically, the Examiner determines the claims are
directed to the abstract idea of treating a patient using treatment and pre­
treatment patient data, which constitutes the organization of human activity
in the healthcare field, and the additional claimed elements in the claims are
instructions to implement the idea on a computer. Non-Final Act. 3; Ans. 3-
4.
(2) Claims 23-41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Quintanilla (US 2003/0023461 Al; published Jan. 30,
2003) and Lipes (US 2013/0017192 Al; published Jan. 17, 2013 and filed
July 15, 2011). Non-Final Act. 4-8; Ans. 4-7.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
We rely on the Examiner’s factual findings and reasoning stated in the
Final Rejection (Non-Final Act. 3-8) and Answer (Ans. 3-7). Additional
findings of fact may appear in the Analysis below.
1 The Examiner’s rejection of claims 25 and 27 under 35 U.S.C. § 112,
second paragraph, for indefiniteness (Non-Final Act. 2-3) was withdrawn by
the Examiner in the Answer (Ans. 2). Although the Examiner inadvertently
omitted claim 27 in the withdrawal in the Answer (Ans. 2), we consider this
harmless error based on the Examiner’s (Ans. 2-3) and Appellants’ (Reply
Br. 4) agreement that the indefiniteness rejection is not an issue to be
considered on appeal.
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Application 13/566,794
ANALYSIS
35 U.S.C. §101 Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75-77 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts” (id), e.g., to an abstract idea. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355-57. If the
claims are not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. at 2355 (quoting Mayo,
566 U.S. at 78-9). For claims to pass muster, “at step two, an inventive
concept must be evident in the claims.” RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
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The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
Alice Step One
According to Alice step one, “[w]e must 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. We have considered all of
Appellants’ arguments (App. Br. 23-27; Reply Br. 5-6), but find them
unpersuasive as to error in the rejection.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially-recognized exception—i.e., an abstract idea. Non-Final Act. 3;
Ans. 3-4. In particular, the Examiner concludes the claims are directed to
the abstract idea of “organizing human activities in healthcare (e.g., assisting
a caregiver in treating a first patient, receiving pre-treatment patient data,
receiving treatment patient data, transmitting pre-treatment patient data and
the treatment patient data, etc.” Non-Final Act. 3; see also Ans. 3-^.
The Examiner concludes, and we agree, that claims 23-41 are directed
to the abstract idea of assisting a caregiver in treating a patient by changing a
treatment regimen based on pre-treatment patient data and treatment patient
data, and that the additional elements in claims 23-32 (drawn to a computer
program, and not simply a method as in claims 33-41) are instructions to
implement the idea on a general purpose computer (Non-Final Act. 3;
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Ans. 3-4). The numerous claim limitations recite generally a method
(claims 33-41), and a computer program stored on a non-transitory
computer-readable for directed operations to perform a method (claims 23-
32), of assisting a caregiver in treating a patient by changing a treatment
regimen based on pre-treatment patient data and treatment patient data using
a remote computer.
We conclude that treating a patient using treatment and pre-treatment
patient data, and assisting a caregiver in treating a patient by changing a
treatment regimen based on pre-treatment patient data and treatment patient
data, as recited in claims 23-41, are fundamental healthcare and/or business
practices, as well as the organization of human activity in the healthcare
field, and, therefore constitutes patent-ineligible subject matter. See Alice,
134 S. Ct. at 2357; Bilski v. Kappos, 561 U.S. 593, 611 (2010); Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (“fundamental
economic and conventional business practices are often found to be abstract
ideas, even if performed on a computer”).
Instead of using a definition of an abstract idea, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that “a claimed
concept is not identified as an abstract idea unless it is similar to at least one
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concept that the courts have identified as an abstract idea.”)- As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs, of Texas, LLC v. DirecTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Here, Appellants’ claims generally relate to a method, and computer
program for performing the method, of assisting a caregiver in treating a
patient by changing a treatment regimen based on pre-treatment patient data
and treatment patient data. The pre-treatment and treatment patient data is
transmittedto a remote computer to create data cohorts which are used to
assist a caregiver in changing or maintaining a treatment regimen for the
patient.
Our reviewing court has said that abstract ideas include the concepts
of collecting and compiling patient health data. See HealthTrio LLC v.
Aetna, Inc., 2017 WL 192962 (mem.) (Fed. Cir. 2017) (affirming district
court decision holding “collection of data from various sources with the goal
of compiling a single, comprehensive, patient health record” is patent
ineligible, and stating that “[t]he normalization patents are directed to a
method of transforming the data collected from various sources from one or
more disparate formats into an integrated format. Although the patent
describes a method by which the program determines the meaning of data,
that task arguably is one within the capacity of the human mind to perform,
and therefore ineligible for patent”); EResearchTechnology, Inc. v. CRF,
Inc., 2017 WL 1033672 (mem.) (Fed. Cir. 2017) (affirming district court
ruling that “using an electronic device to obtain clinical trial data that would
otherwise be collected by pen-and-paper diary, and analyzing the data to
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decide whether to prompt action” and “[classifying clinical trial results by
obtaining data using a portable electronic device and comparing same to a
norm” are patent ineligible).
Our reviewing court has also said that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014).
Additionally, the collection of information and analysis of information (e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353. Similarly, “collecting, displaying, and
manipulating data” is an abstract idea. Intellectual Ventures I LLC v.
Capital One Financial Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Further, merely combining several abstract ideas (such as the
organization of human activity in the healthcare field and a fundamental
business practice) does not render the combination any less abstract.
RecogniCorp, 855 F.3d at 1327 (“Adding one abstract idea ... to another
abstract idea ... does not render the claim non-abstract.”); see also
FairWarningIP, LLC v. latric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
In this light, the treatment of a patient by a caregiver and changing a
treatment regimen based on pre-treatment patient data and treatment patient
data recited in the claims on appeal are the organization of human activity
and constitute a fundamental economic and/or healthcare practice, thus
claims 23-41 are directed to an abstract idea that is patent ineligible.
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Alice Step Two
The Examiner also concludes, and we agree, claim 23 does not
include limitations that are “significantly more” than the abstract idea
because the claims do not include an improvement to another technology or
technical field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment. See Non-Final Act. 3; Ans. 3-4.
Here, we agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. Non-Final Act. 3; Ans. 3-4.
The transmission and receipt of data to/from a portable electronic
device from/to a remote computer are routine and conventional functions
performed by a generic computing device. See, e.g., BuySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”). And, we agree with the
Examiner (Ans. 4) that paragraph 35 of Appellants’ Specification supports a
finding that the invention recited in claims 23-41 is implemented, according
to one embodiment, using a general purpose computer such as a tablet
computer, laptop, or smart phone. Appellants have not shown otherwise.
Thus, no more than a general purpose computer is recited in the claims on
appeal, and we conclude the claims are not directed to an improvement to
computer functionality, but to an abstract idea. Thus, Appellants’ contention
that “the type of information gathered and the particular results being
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solved” somehow transforms the abstract idea into something significantly
more (App. Br. 26) is not persuasive in light of the ability of Appellants’
disclosed and claimed invention to be operated on a general purpose
computer.
Summary
In view of the foregoing, we are not persuaded of Examiner error and
we sustain the Examiner’s rejection under 35 U.S.C. § 101 of claims 23-41.
35 U.S.C. § 103
Appellants argue claims 23-25 and 32-41 as a group, primarily
arguing claim 23 (App. Br. 28-29; Reply Br. 6-7). We select independent
claim 23 as the representative claim for this group, and will address
Appellants’ arguments with respect thereto. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with the Examiner (Ans. 4-7) that the disputed clause at the
end of claim 23, “for assisting the caregiver in determining whether a
treatment regimen of the first patient should be changed or maintained based
on the data cohorts” is a statement of intended use that is due little
patentable weight, resulting in a properly construed claim 23 encompassing
the combined teachings and suggestions of Quintanilla and Lipes.
Further, the Examiner relies upon paragraph 8 of Quintanilla as
teaching an internet-based management system for managing patient therapy
including code segments for receiving and transmitting patient data (Ans. 4),
and paragraphs 10, 60, and 61 of Lipes as teaching monitoring the efficacy
of a treatment using data cohorts to enable a caregiver to make a
determination concerning whether a treatment regimen should be changed or
maintained based on the data cohorts (Ans. 5). Appellants have not rebutted
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these findings in the Reply Brief, either by way of evidence or argument, or
otherwise shown these findings to be in error.
In view of the foregoing, Appellants’ argument that the combination
of Quintanilla and Lipes fails to teach allowing a caregiver to determine
whether a treatment regimen should be changed as recited in claim 23 (App.
Br. 28; Reply Br. 6-7), is not persuasive.
Appellants’ contentions (App. Br. 29) that the Examiner’s motivation
of “facilitating the diagnosis and treatment of patient conditions” is not
sufficient, and there is no motivation to make the combination other than
impermissible hindsight are unpersuasive. Instead, we agree with the
Examiner (Non-Final Act. 5; Ans. 5-6) that it would have been obvious to
modify Quintanilla’s internet based therapy management system and
computer implemented method to facilitate the diagnosis and treatment of
patient conditions using data and graphs received from a remote computer to
determine whether a treatment regimen should be changed or maintained as
taught by Lipes (fflf 2-11). Nor have Appellants provided any objective
evidence of secondary considerations, which our reviewing court guides,
“operates as a beneficial check on hindsight.” Cheese Systems, Inc. v. Tetra
Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir.
2013).2
Appellants’ arguments have not shown error in the Examiner’s factual
findings or ultimate conclusion of obviousness of claim 23, or remaining
claims 24, 25, and 32-41, which are argued for similar reasons as claim 23.
With regard to dependent claims 26-31 argued separately {see App.
Br. 29-30; Reply Br. 7), we agree with the Examiner’s explanation (Non-
2 See Evidence Appendix (“None.”). App. Br. 38.
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Final Act. 6-8; Ans. 6) that the combination of Quintanilla and Lipes
teaches or suggests every claimed limitation. Appellants also argue claims
26-31 as a group, and contend (App. Br. 29-30; Reply Br. 7) the
combination of Quintanilla and Lipes fails to disclose aggregating data as
claimed. Appellants assert that Quintanilla “merely show[s] an efficient
patient data collection and display system and nothing more” (App. Br. 29).
However, these arguments are conclusory, and do not address the alleged
shortcomings of the combined teachings and suggestions of Quintanilla and
Lipes with respect to the individual limitations recited in each of claims 26-
31. On this record, and based upon a preponderance of the evidence, we
agree with the Examiner that Quintanilla (Abs.; 7, 29^-0, 55; Figs. 1-19)
teaches or suggests a computer implemented patient treatment
system/method that compiles (i.e., aggregates) data in groups of patients
(Non-Final Act. 6-8; Ans. 6).
CONCLUSION
The Examiner did not err in rejecting claims 23-41 based upon
claimed patent-ineligible subject matter under 35 U.S.C. § 101, and/or for
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
23-41 under 35 U.S.C. §§ 101 and 103.
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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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