Ex Parte Schoenberg

Patent Trial and Appeal Board

Sep 8, 2017

13352007 (P.T.A.B. Sep. 8, 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.
13/352,007 01/17/2012 Roy Schoenberg TZG0009-CON1 6702
93261 7590 09/12/2017
Bey & Cotropia PLLC (Trizetto Customer Number)
ATTN: Dawn-Marie Bey
213 Bayly Court
Richmond, VA 23229
EXAMINER
LULTSCHIK, WILLIAM G
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/12/2017 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):
dawnmarie @ beycotropia.com
bey_cotropia_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROY SCHOENBERG
Appeal 2016-002282
Application 13/352,007
Technology Center 3600
Before MICHAEL J. STRAUSS, JON M. JURGOVAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 36—52, 57, and 58.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2
CLAIMED INVENTION
The claims are directed to a rule management method and system.
Claim 36, reproduced below, is illustrative of the claimed subject matter:
1 Claims 1—35 and 53—56 have been canceled. See Appeal Brief 16—20.
2 Our Decision refers to the Specification (“Spec.”) filed January 17, 2012,
the Final Office Action (“Final Act.”) mailed March 26, 2015, the Appeal
Brief (“App. Br.”) filed June 3, 2015, the Examiner’s Answer (“Ans.”) filed
October 23, 2015, and the Reply Brief (“Reply Br.”) filed December 18,
2015.
Appeal 2016-002282
Application 13/352,007
[36].[3] A rule processing computer-based method for facilitating
communication of information to one or more patients within a
target group of patients comprising:
managing, by a key maintenance module of a computer,
individual provider access to one or more portions of medical
records of one or more patients of the individual provider,
wherein the one or more patients grant access keys to the
individual provider and determine the one or more portions of
their medical records which are associated with the granted
access keys;
determining by a computer, for a specific computer-executable
rule that is stored to a computer-readable medium, a target group
of patients, wherein said target group of patients comprise at least
a subset of patients for whom a particular medical service
provider has an access key that grants the medical service
provider access to at least a portion of the medical records of the
patients;
determining, for said specific computer-executable rule, an
action to be initiated by the computer concerning one or more
patients within the target group of patients whose respective
medical records satisfy said specific computer-executable rule,
wherein the action comprises communicating information to the
one or more patients;
determining, for said specific computer-executable rule, an
execution time for the action; and
initiating by the computer the action concerning the one or more
patients within the target group of patients on or after the
execution time.
3 Claim 36 is misidentified as claim 37 in the Claims Appendix
accompanying the Appeal Brief.
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Application 13/352,007
REJECTIONS
Claims 36—52, 57, and 58 stand rejected under 35 U.S.C. § 101. Final
Act. 6—7.
Claims 36-45, 48—52, 57, and 58 stand rejected under 35 U.S.C.
§ 103(a) based on Baharav (US 2004/0220829 Al, November 4, 2004) and
Schoenberg (US 6,463,417 Bl, October 8, 2002). Final Act. 9-24.
Claims 46 and 47 stand rejected under 35 U.S.C. § 103(a) based on
Baharav, Schoenberg, and Rao (US 2003/0120134 Al, June 26, 2003).
Final Act. 24—26.
ANALYSIS
§101 Rejection
A. Appellant’s Contentions
Appellant contends the Examiner errs by finding claims 36—52, 57,
and 58 are directed to the sending of messages, which is a method of
organizing human activity that amounts to an abstract idea. App. Br. 5—6,
Reply Br. 3—5. Appellant asserts there is no case law to support the
Examiner’s position that sending messages is abstract. App. Br. 7—8, Reply
Br. 4—6. According to Appellant, only certain methods of organizing human
activity have been held to be abstract, specifically, managing the game of
Bingo {Planet Bingo, LLC v. VKGS, LLC, 576 Fed.App’x 1005 (Fed. Cir.
2004)), using advertising as an exchange or currency (Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)), and intermediating settlement
risk {Alice Corp. v. CLSBanklnt’l, 134 S. Ct. 2347 (2014) {“Alice”)). App.
Br. 9. Appellant argues that because the claims are not similar to the
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claimed subject matter involved in these cases, the claims are directed to
statutory subject matter. Id.
Appellant also argues the Examiner misapplies the first step of the
two-part Alice test by finding that the claims include an abstract idea, not
that the claims are directed to a patent-ineligible concept. App. Br. 8.
Appellant further asserts that even if sending messages is an abstract idea,
the claims recite “significantly more” than simply sending messages, and do
not seek to tie up sending messages. App. Br. 10, Reply Br. 5—6.
Specifically, Appellant asserts that
the eligibility of the present claims is self-evident. The claims
require specific combinations of elements for controlling and
granting access to portions of medical records using a key
maintenance system, ascertaining through specific rule
application target patients through the key-accessible portions of
their medical records who should be subject to informational
action in accordance with the rule and scheduling the action in
accordance with the rule. The claims combine various
technologies (data security and access, data and information
communications) and fields (medical, data transmission,
security, automated rule application) to improve communication
content and flow in the medical field, while still maintaining
patient privacy and health record security.
App. Br. 10.
B. §101 Analysis
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
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In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice, 134 S. Ct. at
2354. The rationale is that patents directed to basic building blocks of
technology would not “promote the progress of science” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Thales Visionix Inc. v. U.S., 850 F.3d 1343,
1346 (Fed. Cir. 2017) {citing Alice, 134 S. Ct. at 2354).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice. 134 S. Ct. at 2355. The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76—77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “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, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). The “inventive
concept” may be embodied in one or more of the individual claim
limitations or in the ordered combination of the limitations. Alice, 134 S. Ct.
at 2355. The “inventive concept” must be significantly more than the
abstract idea itself, and cannot be simply an instruction to implement or
apply the abstract idea on a computer. Alice, 134 S. Ct. at 2358. “‘[Wjell-
understood, routine, [and] conventional activities] ’ previously known to the
industry” are insufficient to transform an abstract idea into patent-eligible
subject matter. Alice, 134 S. Ct. at 2359 (citing Mayo, 566 U.S. at 73).
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Applying step one of the Alice!Mayo test to claim 36, we agree with
the Examiner that the claim is directed to an abstract idea. Final Act. 3.
Although the claim sets forth a computer-based method, at its core, the
method merely organizes the human activity of medical providers
communicating with patients, as the Examiner finds. Id. Historically, patent
monopolies have not been granted to such methods of organizing human
activity. In re Bilski, 545 F.3d 943, 972 (Fed. Cir. 2008) (Dyk, J.,
concurring) (“There is no suggestion in any of th[e] early [English]
consideration of process patents that processes for organizing human activity
were or ever had been patentable”).
Furthermore, the claim embodies a mental process that can be
performed entirely by hand with pencil and paper, without the use of a
computer. Specifically, determining patients with whom to communicate
using accessible medical records according to some rule, and determining
some action to take involving communicating with the patients at some
particular time, can be performed mentally using pen and paper. Our
reviewing court has found such mental processes to be abstract ideas.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371—72 (Fed.
Cir. 2011).
We also note that our reviewing court has stated that “[information as
such is an intangible.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). Also, collecting information (i.e., portions of
patient medical records), and limiting that information to particular content
(i.e., target group of patients) resulting in no change of its character as
information, is within the realm of abstract ideas. Id. Further, presenting the
results of abstract processes of collecting and analyzing information (i.e.,
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communicating information to target groups of patients), without more, is
abstract as an ancillary part of such collection and analysis. Id. at 1354. In
short, the claim is directed to the kind of subject matter that our reviewing
court has found abstract.
We turn now to step two of the Alice!Mayo analysis to inquire
whether the claim is “significantly more” than the abstract idea. We agree
with the Examiner it is not. Final Act. 4—5. The claim merely uses a
general-purpose computer to perform “well-understood, routine, and
conventional activities previously known to the industry.” Alice, 134 S. Ct.
at 2359. For example, the claim computerizes the use of patient-authorized
medical records stored in a medical provider’s locked file cabinets, to
remind patients that they are due for an annual physical, for example, or to
wish them a happy birthday. Such activity is indeed “well-known, routine,
and conventional” and does not amount to an “inventive concept” sufficient
to establish the claim is “significantly more” than the abstract idea of
communicating information between certain persons.
As to the computer recited in the method, there is no indication it has
any special configuration or capability beyond what a general-purpose
computer would offer, so its inclusion in the claim is likewise unavailing to
establish the claim has an “inventive concept” that is “significantly more”
than the abstract idea contained therein.
Fundamentally, the claim uses a computer to (1) manage access keys
granted by patients to medical providers to allow access to portions of their
medical records, (2) determine a target group of patients from the portions of
the medical records using a rule, (3) determine an action involving
communication of information to the target group of patients, and (4) take
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the action at a particular time. Appellant does not persuade us that any of
these functions, considered individually, is new to the industry. Moreover,
when these functions are considered as an ordered combination, there is no
indication that their combination is new, or that the implementation of any
one of these functions results in improvement of another function. Under
such circumstances, our reviewing court has found that such a claim lacks an
“inventive concept” and does not amount to significantly more than the
abstract idea. In re TLI Communication LLC Patent Litigation, 823 F.3d
607, 613-14 (Fed. Cir. 2016).
In addition, the claim recites elements in the sort of “vague,
functional” language criticized in TLI. Id. For example, the claimed “rule,”
“action,” and “information,” and the steps or functions that use them, are
entirely unrestricted — they may even be unrelated to the medical industry.
The claim thus fails to recite a particular application of the abstract idea. For
this additional reason, we are not persuaded the claim amounts to
“significantly more” than the abstract idea.
Moreover, a patent on so broad a claim would result in significant
preemption even of well-known processes such as communicating with
patients to schedule appointments, and thus would not promote progress in
the medical industry. Appellant argues the claimed invention is
“particularized to the medical field and combine [s] key-based patient-
controlled medical record access with provider-driven messaging to select
patients by specifically programmed computer rule execution.” Reply Br. 5.
However, as we have indicated, “rule,” “action,” and “information” are
entirely unrestricted in the claim, and may have nothing to do with the
medical field. In any case, “the absence of complete preemption does not
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demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). For the foregoing reasons, we are not
persuaded that claim 36 is directed to patent-eligible subject matter.
Claim 36 is argued as representative of all claims. App. Br. 5. Thus,
we sustain the rejection of claims 36—52, 57, and 58 under 35 U.S.C. § 101.
37 C.F.R. § 41.37(c)(l)(iv) (grouped claims stand or fall together).
§ 103(a) Rejections
A. Claim 36
Claim 36 recites
managing, by a key maintenance module of a computer,
individual provider access to one or more portions of medical
records of one or more patients of the individual provider,
wherein the one or more patients grant access keys to the
individual provider and determine the one or more portions of
their medical records which are associated with the granted
access keys.
Claims App’x.
The Examiner relied on Baharav to teach the claim limitation of
“managing, by a key maintenance module of a computer, individual provider
access to one or more portions of medical records of one or more patients of
the individual provider.” Final Act. 9, 15, 16, 21. The Examiner relied on
Schoenberg to teach the claim limitation of “wherein the one or more
patients grant access keys to the individual provider and determine the one
or more portions of their medical records which are associated with the
granted access keys.” Final Act. 11—12, 17—18, 23—24.
Appellant asserts the Examiner uses impermissible hindsight, and
argues “combining the patient-centric teachings of Schoenberg with the
predominantly provider-implemented system of Baharav to arrive at the
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provider-centric system of the claims would not have been obviousness to
one having ordinary skill in the art.” App. Br. 10—13. However, the words
“patient-centric” and “provider-centric” do not appear in the claims. Thus,
Appellant argues limitations not present in the claims, which cannot be
relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
In addition, the Specification and claims provide no guidance on what
constitutes a “patient-centric” and a “provider-centric” system or process,
and how the two are distinguishable. The claim involves both patient and
medical provider activities, so how one could determine the claim is
“provider-centric,” as Appellant asserts, is not clear from the record. The
same is true of the references, Baharav and Schoenberg, which do not
mention “patient-centric” or “provider-centric,” and which disclose activities
performed by both patients and medical providers. See Baharav, Abstract,
Schoenberg, 2:25—39. With no guidance to indicate how one could
determine the claim and Baharav are “provider-centric” whereas Schoenberg
is “patient-centric,” we find Appellant’s arguments unpersuasive.
Furthermore, the Examiner finds the rationale to modify Baharav with
Schoenberg is “to enable the patient to control which, and how much,
information within the medical record is accessible to third parties.” Final
Act. 12, Ans. 27. We agree with the Examiner that a person of ordinary skill
would have appreciated the desirability of using Schoenberg’s patient
control of access to medical records in Baharav’s system.
In addition, the similarities of Baharav and Schoenberg would have
led a person of ordinary skill to combine them. Baharav is directed to
managing communication among healthcare providers, patients, and third
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parties. Baharav, Abstract. Similarly, Schoenberg is directed to distributing
health information in which patients can control what the medical care
provider may access. Schoenberg 2:25—39. Given the similar teachings of
the references in that both involve the management and communication of
information among healthcare providers and patients in the medical industry,
we agree with the Examiner that a person of ordinary skill in the art would
have looked to Schoenberg to modify the teachings of Baharav.
No separate arguments are presented for the remaining dependent
claims, which fall with independent claim 36. 37 C.F.R. § 41.37(c)(l)(v).
B. Claims 42 and 57
Claims 42 and 57 contain similar limitations to claim 36, and
Appellant asserts the same arguments for these claims. Claims App’x, App.
Br. 13. We find these arguments unpersuasive for the reasons stated
regarding claim 36.
Appellant also argues the Examiner errs by finding Baharav teaches
that the applied rule is defined by a particular medical service provider. Id.
Instead, Appellant argues, the providers in Baharav simply choose program
selections from a pre-populated list. Id. Thus, Appellant seems to argue that
to “define” a rule means to create it. The Examiner, on the other hand,
interprets “define” to mean merely specifying what the rule is. Final Act. 5—
6 (citing Baharav 1243, Fig. 42).
“[T]he PTO is obligated to give claims their broadest reasonable
interpretation during examination.” In re Am. Acad. ofSci. Tech Ctr., 367
F.3d 1359, 1369 (Fed. Cir. 2004). This interpretation must be consistent
with the specification. Id. In the present case, although “define” is used in
connection with “rule” in the Specification (|| 46, 53), there is no restrictive
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definition that would limit the Examiner from using the broadest reasonable
interpretation of the term. One dictionary states “[i]f you define something,
you show, describe, or state clearly what it is and what its limits are, or what
it is like.” Collins English Dictionary (“www.collinsdictionary.com/
us/dictionary/english/defme”) (last visited Aug. 30, 2017). As choosing a
program selection per Baharav states what the rule is, we agree with the
Examiner that Baharav discloses defining rules. Thus, we are not persuaded
the Examiner errs in the rejection.
C. Remaining Claims
No separate arguments are presented for the remaining claims, which
fall with their respective independent claims for the stated reasons. 37
C.F.R. §41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s rejection of claims 36—52, 57, and 58 under
35U.S.C. § 101.
We affirm the Examiner’s rejections of claims 36—52, 57, and 58
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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