Ex Parte Smythe et al

Patent Trial and Appeal Board

Sep 14, 2018

11299980 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/299,980 12/12/2005
62058 7590 09/18/2018
PAULY, DEVRIES SMITH & DEFFNER, L.L.C.
Suite 900
121 South 8th Street
MINNEAPOLIS, MN 55402-2481
Alan H. Smythe
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.
l 15.0084US01/ 03-191 7065
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
docketing@pdsdlaw.com
kds@pdsdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN H. SMYTHE, HOW ARD D. SIMMS,
KENNETH P. HOYME, and GEORGE D. JELATIS
Appeal2017-005420
Application 11/299 ,980
Technology Center 3600
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR,
and JASON J. CHUNG, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-15, 17-26, 28, and 29, which are all the
claims pending in this application. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Cardiac Pacemakers, Inc., as the real party in interest.
Br. 3.
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Application 11/299,980
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to a secure feature set distribution
infrastructure for medical device management. Spec., Page 1, 11. 10-11.
Exemplary Claim
Claim 1 is exemplary and illustrative of the invention and reads as
follows:
1. A system for providing a secure feature set
distribution infrastructure for medical device management, the
system comprising:
a database storing downloadable sets of features for
medical devices; and
at least one server comprising
a unique association map maintained on the at least
one server mapping unique associations for data download
between a medical device and a communications device
transiently coupleable to the medical device;
a configuration catalog maintained on the at least
one server comprising operational characteristics of at least one
of the medical device and the communications device;
an update checker maintained on the at least one
server to periodically check the operational characteristics as
maintained in the configuration catalog against the database
storing downloadable sets of features and to identify one or
more feature sets comprising changed operational
characteristics for distribution, wherein the one or more feature
sets are digitally signed and the one or more feature sets are
provided to the communications device over a plurality of
networks; and
an authenticator maintained on the at least one
server to authenticate and check the integrity of the one or more
feature sets over a chain of trust originating with a trusted
source and terminating at the communications device.
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Application 11/299,980
The Examiner's Rejections
1. Claims 1-15, 17-26, 28 and 29 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter. Non-Final Act. 3.
2. Claims 1-15, 17-26, 28 and 29 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Lee et al. (US 2005/0240246 Al;
published Oct. 27, 2005 ) ("Lee"), in view of Lindberg et al.
(US 2003/0046677 Al; published Mar. 6, 2003) ("Lindberg"), further in
view of Childers et al. (US 2002/0161885 Al; published Oct. 31, 2002)
("Childers"), further in view of Thomas et al. (US 2003/0154199 A 1;
published Aug. 14, 2003) ("Thomas"). Non-Final Act. 5.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the briefs that the Examiner has erred. We are unpersuaded by
Appellants' contentions and concur with the findings and conclusions
reached by the Examiner as explained below.
Rejection Under 35 US.C. § 101
With regard to the Examiner's rejection under 35 U.S.C. § 101, we
disagree with Appellants' arguments, and agree with and adopt the
Examiner's findings and conclusions in: (i) the action from which this
appeal is taken (Non-Final Act. 3--4); and (ii) the Answer (Ans. 7-8) to the
extent they are consistent with our analysis below.
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Non-Final Act. 4. The
Examiner specifically finds the claims are directed to the abstract idea of
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"storing data, periodically checking based on stored data, authenticating data
based on stored data." See id. The Examiner further finds the claims use
generic computer components to perform generic computer functions, which
"do not add meaningful limitations to the idea of beyond generally linking
the system to a particular technological environment, that is, implementation
via computers." See id. Appellants argue the Examiner erred. See Br. 7-10.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides "[ w ]hoever 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." 35 U.S.C. § 101. That provision "contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quoting Association for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those
concepts. First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts .... If so, we
then ask, "[ w ]hat else is there in the claims before us?" ... To
answer that question, we consider the elements of each claim
both individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application .... We have described
step two of this analysis as a search for an ["]inventive
concept["] -i.e., an element or combination of elements that is
"sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself."
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Alice Corp., 134 S. Ct. at 2355 (internal citations omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); and
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015).
Regarding Alice step one, the Examiner finds that the claims are
directed to the abstract idea of
(i) comparing new and stored information and using
rules to identify options. While claim(s) 1-15, 17-26 and 28-29
do not explicitly recite "(i) comparing new and stored
information and using rules to identify options", the concept of
"(i) comparing new and stored information and using rules to
identify options" is described by the steps of "storing data,
periodically checking based on stored data, authenticating data
based on stored data ( comparing new and stored information
and using rules to identify options)", etc. in claim( s) 1-15, 1 7-
26 and 28-29.
Non-Final Act. 4.
We note the Federal Circuit has "treated collecting information,
including when limited to particular content ( which does not change its
character as information), as within the realm of abstract ideas." Electric
Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents, 790
F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015); and Content Extraction & Transmission LLC v. Wells
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Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
similar vein, we 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." Electric
Power, 830 F.3d at 1354 (emphasis added); see also In re TL! Commc 'ns.
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). "And we have
recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis." Electric Power, 830 F.3d at 1354 ( emphasis
added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15
(Fed. Cir. 2014).
Br. 8.
Appellants argue
present claims 1, 13 and 26 do not recite a mathematical
algorithm or a fundamental economic or longstanding
commercial practice. Rather, the claim addresses a challenge
associated with providing a secure feature set distribution
infrastructure for medical device management. This is clearly
not a mathematical algorithm or a fundamental economic or
longstanding commercial practice.
We find the rejected claims "fall into a familiar class of claims
'directed to' a patent-ineligible concept." Electric Power, 830 F.3d at 1353.
Contrary to Appellants' arguments (Br. 7-10), the claims are similar to the
claims of Electric Power, and are focused on the combination of abstract-
idea processes or functions. See Electric Power, 830 F.3d at 1354. For
example, claims 1, 13, and 26 are directed to collecting information
("maintaining a catalog"), and analyzing ("mapping", "periodically
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checking", "authenticating and checking") information. Br. 23-27, Claims
App. See Electric Power, 830 F.3d at 1353. Information as such is
intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437,451 n.12
(2007). Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011).
Regarding Alice step two, contrary to Appellants' assertion (Br. 8-9),
Appellants have not shown the claims in this case require an arguably
inventive set of components or methods, or invoke any assertedly inventive
programming. See Electric Power, 830 F.3d at 1355. Furthermore, the
claims are similar to the claims of Electric Power, because they do not
require any nonconventional computer components, or even a "non-
conventional and non-generic arrangement of known, conventional pieces,"
but merely call for performance of the claimed information collection and
analysis functions on generic computer components. See Electric Power,
830 F.3d at 1355; see also Br. 23 (Claim 1 (reciting "at least one server")),
25 (Claim 13 (reciting "one or more servers")), and 26 (Claim 26 (reciting
"non-transitory computer-readable storage medium" "a processor"; and "a
server")).
Similarly, Appellants' arguments that "there is nothing generic" about
claims 1, 13, and 26 (Br. 9) are unpersuasive because they are conclusory
and unsupported by specific analysis of the technology in these cases and
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any persuasive evidence or argument concerning any similarities of such
technology with the subject matter of claims 1, 13, and 26.
Further, with respect to Appellants' preemption argument (that the
claimed invention does not pre-empt all applications of providing a secure
feature set distribution infrastructure for medical device management, see
Br. 9--10), we note the McRO court explicitly "recognized that 'the absence
of complete preemption does not demonstrate patent eligibility."' See
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1315
(Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015)).
Accordingly, we agree with the Examiner that claims 1-15, 17-26,
28, and 29 are directed to an abstract idea and amount to nothing more than
an attempt to patent the abstract idea embodied in the steps of the claims.
See Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1-15, 17-26, 28, and 29 under 35
U.S.C. § 101.
Rejection Under 35 US.C. § 103
We have reviewed the Examiner's obviousness rejections of claims 1-
15, 17-26, 28, and 29 in light of Appellants' contentions that the Examiner
has erred.
Appellants have presented several arguments (Br. 15-22) as to why
the combination of Lee, Lindberg, Childers, and Thomas does not teach or
suggest the features recited in independent claims 1, 13, and 26.
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We have reviewed the Examiner's response to Appellants' arguments.
The Examiner has provided on pages 3-7 of the Answer a comprehensive
response to each argument presented by the Appellants. We have reviewed
this response and concur with the Examiner's findings and conclusions. We
adopt as our own: ( 1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken (Non-Final Act. 5-11); and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief. Ans. 3-7. In particular, we agree with the
Examiner as our interpretation of the disclosures of Lee, Lindberg, Childers,
and Thomas coincides with that of the Examiner. See Ans. 3-7.
We also agree with the Examiner that nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Keller, 642
F.2d 413,425 (CCPA 1981); see also In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
For the above-stated reasons, we are not persuaded by Appellants'
arguments that the Examiner erred in finding the combination of Lee,
Lindberg, Childers, and Thomas teaches or suggests the disputed features of
claims 1, 13, and 26. Therefore, we sustain the 35 U.S.C. § 103(a) rejection
of independent claims 1, 13, and 26, and their respective dependent claims
not argued separately
CONCLUSION
The Examiner did not err in rejecting claims 1-15, 17-26, 28, and 29
under 35 U.S.C. § 101.
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The Examiner did not err in rejecting claims 1-15, 17-26, 28, and 29
under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's decision to reject claims 1-15, 17-26, 28,
and 29.
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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