Ex Parte Stueckemann et al

Patent Trial and Appeal Board

Jul 27, 2018

14107154 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/107,154 12/16/2013
89146 7590 07/31/2018
Armstrong Teasdale LLP (AbbVie Inc.)
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Peter Carl Stueckemann
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.
31247-1117 4447
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
uspatents@armstrongteasdale.com
Abbvie_Patents_AB T _PRK@abbvie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER CARL STUECKEMANN,
P ANKAJ DUBEY,
RICHARD LANIER,
PRAKASH VENKA TARAMANAN,
V AIBHA V JINDAL,
and SHANNON MARIE SWORD 1
Appeal2016-006702
Application 14/107, 154
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the Real Party in Interest as Abb Vie Biotechnology
Ltd. App. Br. 1.
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Application 14/107, 154
STATEMENT OF THE CASE2
Peter Carl Stueckemann, Pankaj Dubey, Richard Lanier, Prakash
Venkataramanan, Vaibhav Jindal, and Shannon Marie Sword (Appellants)
seek review under 35 U.S.C. § 134 of a final rejection of claims 1-3 and 5-
31, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of facilitating, coordinating, or
managing healthcare products and/ or services, such as pharmaceutical
products, drugs, medical devices, or other prescribed medical treatments.
Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 25, which is reproduced below (bracketed matter and some
paragraphing added).
25. A method for facilitating a medical order/prescription of a
prescription product for a patient covered by a provider by
providing an encrypted and compressed data message that
includes a benefits summary and a populated form, comprising:
[ 1] providing at least one memory having stored therein a
plurality of predefined forms for the prescription product, the
plurality of predefined forms corresponding to a plurality of
providers, the prescription product including a biologic product;
[2] receiving, from a healthcare provider (HCP) computing
device, (i) patient intake information including provider
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed October 21, 2015) and Reply Brief ("Reply Br.," filed June 23,
2016), and the Examiner's Answer ("Ans.," mailed April 26, 2016), and
Final Action ("Final Act.," mailed March 27, 2015).
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information of the patient and (ii) prescription product
information for the prescription product;
[3] generating, by a processor, a benefits verification request for
the patient based on the patient intake information;
[ 4] obtaining a benefits summary based on the benefits
verification request;
[ 5] selecting one of the predefined forms based on at least
one of the patient provider information and the benefits
summary;
[ 6] populating at least one field of the selected predefined form
based on the patient intake information;
[7] generating a data message that includes the benefits
summary and the populated form;
[8] encrypting the data message to protect patient privacy and to
secure the data message for transmission to the HCP computing
device, wherein the HCP computing device is a mobile device;
[9] compressing the data message to reduce data size and to
facilitate transmission of the data message to the HCP
computing device;
[ 1 OJ transmitting the encrypted and compressed data message to
the HCP computing device; and
[ 11] causing the benefits summary and the populated form to be
displayed on the HCP computing device to enable review of the
benefits summary by the HCP, and to enable review and
signature of the populated form by the HCP.
Claims 1-3 and 5-31 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
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ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
Method claim 25 recites storing forms in memory, receiving patient
and prescription product data, generating a request and obtaining a summary
based on the request, selecting and populating a form, and generating,
encrypting, compressing, transmitting and displaying the form. Thus,
claim 25 recites receiving, analyzing, modifying, transmitting, and
displaying data. Encryption and compression have been so universally
incorporated in data transmission since the break out of the Internet as to be
subsumed into the very concept of data transmission. None of the
limitations recites implementation details for any of these steps, but instead
recite functional results to be achieved by any and all possible means. Data
reception, analysis, modification, transmission, and display are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. The sequence of data reception-
analysis-modification-transmission-display is equally generic and
conventional. The ordering of the steps is, therefore, ordinary and
conventional. The remaining claims merely describe process parameters,
with no implementation details.
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The Supreme Court
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, []
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,
[] 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. [The Court] 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."
Alice Corp., Pty. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner determines
the claims to be directed to facilitating a medical order/prescription of a
prescription product. Final Act. 2.
Although the Court in Alice made a determination as to what the
claims were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 25 recites that it is a method for facilitating a
medical order/prescription of a prescription product for a patient covered by
a provider by providing an encrypted and compressed data message that
includes a benefits summary and a populated form. The steps in claim 25
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result in generating, transmitting, and displaying a healthcare form absent
any technological mechanism other than a conventional computer for doing
so. The Specification at paragraph 2 recites that the invention relates to
facilitating, coordinating, or managing healthcare products and/or services,
such as pharmaceutical products, drugs, medical devices, or other prescribed
medical treatments. Thus, all this evidence shows that claim 25 is directed
to generating, transmitting, and displaying a healthcare form, i.e. presenting
healthcare information. This is consistent with the Examiner's
determination.
It follows from prior Supreme Court cases, and Bilski (Bilski v.
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
presenting healthcare information is a fundamental business practice long
prevalent in our system of medicine. The use of presenting healthcare
information is also a building block of ingenuity in medical diagnosis. Thus,
presenting healthcare information, like hedging, is an "abstract idea" beyond
the scope of§ 101. See Alice Corp. Pty., 134 S. Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of presenting healthcare information at
issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. See Alice Corp. Pty., 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d
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1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing
it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent-ineligible concept"); see also
In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 25, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis,
modification, transmission, and display and does not recite an improvement
to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 25 is directed to the abstract idea of
receiving, analyzing, modifying, displaying, and transmitting data.
The remaining claims merely describe process parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty., 134 S. Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, modifying, transmitting, and displaying
data amounts to electronic data query and retrieval----one of the most basic
functions of a computer. Encryption and compression have been so
universally incorporated in data transmission since the break out of the
Internet as to be subsumed into the very concept of data transmission. 3 All
of these computer functions are well-understood, routine, conventional
activities previously known to the industry. See Elec. Power Grp. v. Alstom
S.A., supra. See also In re Katz Interactive Call Processing Patent
Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms "processing," "receiving," and "storing,"
. . . those functions can be achieved by any general purpose computer
without special programming"). In short, each step does no more than
3 See e.g., Bidgoli (ed.), Handbook of Information Security, Key Concepts,
Infrastructure, Standards, and Protocols, p, 416, (2006)
https://books.google.com/books?id=bdxJhKWOe8wC&pg= P A416.
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require a generic computer to perform generic computer functions. As to the
data operated upon, "even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
SAP Am., Inc. v. InvestPic LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018)
(quoting Elec. Power, 830 F.3d at 1353). Referring to the data as a "data
message," as recited, adds nothing because no implementation details for
such a message are recited, and any data transmission with a beginning and
end is within the scope of a message.
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-transmission-display is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F .3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission); Two-Way Media Ltd. v.
Comcast Cable Commc 'ns., LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
( sequence of processing, routing, controlling, and monitoring). The ordering
of the steps is, therefore, ordinary and conventional.
Viewed as a whole, Appellants' method claims simply recite the
concept of presenting healthcare information as performed by a generic
computer. To be sure, the claims recite doing so by advising one to select
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and enter data in a form on one computer and send it along with a benefits
summary to another computer for review. But this is no more than abstract
conceptual advice on the parameters for such presenting healthcare
information and the generic computer processes necessary to process those
parameters, and does not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment4 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of presenting healthcare information under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of presenting
healthcare information using some unspecified, generic computer. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
4 The Specification describes the client computers as computers including a
web browser and does not describe server hardware, but only that servers
may include various commonplace server software. Spec. para. 59.
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ways that make patent eligibility 'depend simply on the
draftsman's art."'
Alice Corp. Pty., 134 S. Ct. at 2360 (quoting Mayo, 566 U.S. at 72).
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2 and Answer 3-8 and reach
similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that the Examiner
provides no support for the allegation that the claims recite an abstract idea.
Reply Br. 1. We determine supra the intrinsic evidence is sufficient to
support this determination.
We are not persuaded by Appellants' argument that the Examiner fails
to present a prima facie case because he did not follow a USPTO
memorandum. Reply Br. 2. The Examiner properly made findings as per
Alice. Failure to follow Examiner Guidelines is beyond our jurisdiction and
remedy is to be found by petition to the Director. See MPEP § 1201.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 3-4. In DDR Holdings, the
court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The court cautioned,
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however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings
the court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258-59 (citing
Ultramercial, 772 F.3d at 715-16). As noted there, the Ultramercial
claims were "' directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before."' Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-
16). Nevertheless, those claims were patent ineligible because they
"merely recite[d] the abstract idea of 'offering media content in exchange
for viewing an advertisement,' along with 'routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet."' Id. (quoting
Ultramercial, 772 F.3d at 715-16).
Appellants' asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website"; "restricting general public access to said
media product"; "receiving from the consumer a request to view [a]
sponsor message"; and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
receiving, analyzing, modifying, transmitting, and displaying data. This is
precisely the type of Internet activity found ineligible in Ultramercial.
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Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016). The claims differ from those found patent eligible
in Enfzsh, where the claims were "specifically directed to a self-
referential table for a computer database." 822 F.3d at 1337. The claims
thus were "directed to a specific improvement to the way computers
operate" rather than an abstract idea implemented on a computer. Id. at
1336. Here, by contrast, the claims are not directed to an improvement
in the way computers operate. Though the claims purport to accelerate
the process of selecting and transmitting a form, our reviewing court has
held that speed and accuracy increases stemming from the ordinary
capabilities of a general purpose computer "do[] not materially alter the
patent eligibility of the claimed subject matter." Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir.
2012). Instead, the claims are more analogous to those in FairWarning,
wherein claims reciting "a few possible rules to analyze audit log data"
we re f o u n d directed to an abstract idea because they asked "the
same questions (though perhaps phrased with different words) that
humans in analogous situations detecting fraud have asked for decades."
839 F.3d at 1094, 1095.
We are not persuaded by Appellants' argument that the claims provide
a technological advantage to protect privacy and reduce bandwidth by
encrypting and compressing the data. Reply Br. 4--5. The claims recite no
technological implementation for such encryption and compression, but only
recite the concept of doing so. As such, the claims recite no more than
abstract conceptual advice for doing so.
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The claims thus do not go beyond "stating [ the relevant]
functions in general terms, without limiting them to technical
means for performing the functions that are arguably an
advance over conventional computer and network technology."
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271
(Fed. Cir. 2016) (quoting Elec. Power, 830 F.3d at 1351).
CONCLUSIONS OF LAW
The rejection of claims 1-3 and 5-31 under 35 U.S.C. § 101 as directed
to non-statutory subject matter is proper.
DECISION
The rejection of claims 1-3 and 5-31 is affirmed.
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) (2011).
AFFIRMED
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