Ex Parte Stueckemann et al

Patent Trials and Appeals Board

Apr 19, 2019

13649070 - (D) (P.T.A.B. Apr. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/649,070 10/10/2012
89146 7590 04/23/2019
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.
31247-1118 (11273US01) 5982
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
04/23/2019 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):
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 VENKATARAMANAN,
V AIBHA V JINDAL, and SHANNON MARIE SWORD
Appeal2017-009039
Application 13/649,070
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Peter Carl Stueckemann, Pankaj Dubey, Richard Lanier, Prakash
V enkataramanan, Vaibhav Jindal, and Shannon Marie Sword ("Appellants")
seek review under 35 U.S.C. § 134 from a final rejection of claims 1-14,
16-25, 27-37, 39-47, 49-59, and 61-70, the only claims pending in the
1 Our Decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed December 23, 2016) and the Examiner's Answer ("Ans.," mailed
March 24, 2017), and Final Action ("Final Act.," mailed July 28, 2016).
Appeal2017-009039
Application 13/649,070
Application on Appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b ).
We affirm.
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.
Spec., 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,
compnsmg:
[ 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;
[2] receiving, from a healthcare provider (HCP) computing
device, (i) patient intake information including provider
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;
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[7] generating a data message that includes the benefits
summary and the populated form;
[8] transmitting the data message to the HCP computing device
at a first time;
[9] causing the first time to be stored in a storage device;
[10] 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;
[11] receiving a signal from the HCP computing device
indicating that the populated form has been signed by the HCP
and transmitted to the provider at a second time;
[12] causing the second time to be stored in the storage device;
[ 13] calculating, based on the received signal, an elapsed time
between the first time and the second time;
and
[ 14] analyzing the calculated elapsed time to assess a diligence
of the HCP in completing the populated form by:
[15] causing a dashboard to be displayed on the HCP
computing device, wherein the dashboard includes an
average elapsed time that is an average of the calculated
elapsed time and additional calculated elapsed times for
the HCP to complete populated forms for other patients;
[ 16] constantly monitoring whether an updated average
elapsed time has been calculated;
and
[ 1 7] automatically updating the dashboard displayed on
the HCP computing device to include the updated
average elapsed time upon calculation of the updated
average elapsed time.
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Claims 1-14, 16-25, 27-37, 39-47, 49-59, and 61-70 stand rejected
under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
Claims 1-14, 16-25, 27-37, 39-47, 49-59, and 61-70 stand
provisionally rejected under the judicially created doctrine of obviousness
type double patenting as claiming the patentably indistinguishable subject
matter as another U.S. Patent.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite abstract ideas without significantly more.
ANALYSIS
Claims 1-14, 16--25, 27-37, 39--47, 49-59, and 61-70
rejected under 35 U.S.C. § 101 as directed to ajudicial
exception without significantly more
STEP 12
Claim 25, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
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, ...
2 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
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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. Ltd. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014)
( citations omitted) ( citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims "apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." 2019 Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
Method claim 25 recites providing forms data, receiving patient and
prescription data, generating verification request data, obtaining benefits
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data, selecting among the forms data, populating forms data, generating and
transmitting a message, storing time data, displaying benefits and form data,
receiving data indicating signature complete, storing second time data and
calculating and analyzing an arithmetic difference between time data,
displaying other patient elapsed times and average, constantly monitoring
whether an updated elapsed time has been calculated, and automatically
updating the display when calculated. Thus, claim 25 recites storing,
receiving, transmitting, generating, analyzing, displaying, and updating data.
None of the limitations recite technological implementation details for any
of these steps, but instead recite only results desired by any and all possible
means.
From this we see that claim 25 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts3, (2) certain methods of organizing
human activity4, and (3) mental processes5. Among those certain methods of
3 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
4 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
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organizing human activity listed in the Revised Guidance is insurance. Like
those concepts claim 25 recites preparing an insurance request. Specifically,
claim 25 recites operations that would ordinarily take place in insurance
benefits processing by processing benefits data and adding the elapsed time
and other elapsed time examples to an otherwise conventional benefits
verification display. Insurance benefits processing by processing benefits
data and adding the elapsed time and other elapsed time examples to an
otherwise conventional benefits verification display involves insurance
processing, which is economic act, and processing benefits data, which is an
act ordinarily performed in the stream of commerce. For example, claim 25
recites "obtaining a benefits summary based on the benefits verification
request," which is an activity that would take place whenever one is using
insurance benefits for medicine. Similarly, claim 1 recites "selecting one of
the predefined forms based on at least one of the patient provider
information and the benefits summary" and "populating at least one field of
the selected predefined form based on the patient intake information," which
are also characteristics of administering insurance forms for healthcare.
The Examiner determines the claims to be directed to using categories
to organize, store and transmit information, and comparing new and stored
information, and using rules to identify options, which are concepts that
have been previously found by the courts to be abstract. Final Act. 3.
5 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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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. The steps in claim 25 result in processing benefits data and
adding the elapsed time and other elapsed time examples to an otherwise
conventional benefits verification display absent any technological
mechanism other than a conventional computer for doing so.
As to the specific limitations, limitation 1 recites providing generic
memory for storage. Limitations 2 - 12 recite insignificant receiving,
generating, storing, entering, displaying, and transmitting of benefits data,
which advise one to apply generic functions to get to these results.
Limitations 13-14 are the only steps associated with performing what the
claim produces and recite performing generic arithmetic subtraction and
averaging operations to compute elapsed time data and displaying a
continually updated analysis of benefits data, which is simply a layout of
benefits data. The limitations thus recite advice for processing benefits data
and adding the elapsed time and other elapsed time examples to an otherwise
conventional benefits verification display is abstract conceptual advice of
good insurance processing ideas. To advocate processing benefits data and
adding the elapsed time and other elapsed time examples to an otherwise
conventional benefits verification display is conceptual advice for results
desired and not technological operations.
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 intrinsic evidence shows that claim 25 is
directed to processing benefits data and adding the elapsed time and other
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elapsed time examples to an otherwise conventional benefits verification
display, i.e. insurance benefits processing. This is consistent with the
Examiner's determination.
This in tum is an example of insurance as a certain method of
organizing human activity because business processes such as insurance
processing are ways of systematizing insurance transactions among
participants.
The concept of insurance benefits processing by processing benefits data
and adding the elapsed time and other elapsed time examples to an otherwise
conventional benefits verification display is conceptual advice of good
insurance processing ideas. The steps recited in claim 25 are part of what
the insurance carrier's staff does in organizing benefits provision to the
clients.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar insurance related subject matter. Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1338
(Fed. Cir. 2013) (Generating rule-based tasks for processing an insurance
claim.); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (Managing a stable value protected life
insurance policy.); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (Creating a transaction performance guaranty for a commercial
transaction on computer networks such as the Internet.).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of storing, receiving, transmitting,
generating, analyzing, displaying, and updating data mimic human thought
processes of observation, evaluation, judgment, and opinion, perhaps with
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paper and pencil, where the data interpretation is perceptible only in the
human mind. See 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 storage,
reception, transmission, generation, analysis, display, and updating 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 storing, receiving, transmitting, generating, analyzing,
displaying, and updating data, and not a technological implementation or
application of that idea.
From this we conclude that at least to this degree, claim 25 is directed to
insurance benefits processing by processing benefits data and adding the
elapsed time and other elapsed time examples to an otherwise conventional
benefits verification display is abstract conceptual advice of good insurance
processing ideas.
STEP 2A Prong 2
The next issue is whether claim 25 not only recites, but is more precisely
directed to this concept itself or whether it is instead directed to some
technological implementation or application of, or improvement to, this
concept i.e. integrated into a practical application. 6
6 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[ A Jpplication[ s ]" of such
concepts " 'to a new and useful end,' " we have said, remain
eligible for patent protection. Accordingly, in applying the §
101 exception, we must distinguish between patents that claim
the " 'buildin[g] block[ s ]' " of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the 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
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] its elf."
Alice, 573 U.S. at 223-24 ( 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, 573 U.S. at 225. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Step 1 only provides the memory that any general
purpose computer must have. Steps 2 - 4 are pure data gathering steps.
Limitations describing the nature of the data do not alter this. Steps 5-12 are
pure data entry steps including selecting a form and entering and storing data
for the form. Step 13 is a conventional arithmetic subtraction operation and
so an abstract mathematical operation. Steps 14 -17 are insignificant post
solution activity, such as storing, transmitting, or displaying the results.
Steps 14-1 7 also recite analyzing the elapsed time, but this is further recited
as being done by continually updating the data for step 13 by generic
computer processing expressed in conceptual terms to be performed by any
and all possible means. All purported inventive aspects reside in how the
data is interpreted and the results desired, and not in how the process
physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellants' claim 25 simply recites the concept of
insurance benefits processing by processing benefits data and adding the
elapsed time and other elapsed time examples to an otherwise conventional
benefits verification display is abstract conceptual advice of good insurance
processing ideas as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 25 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
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or technical field. The Specification spells out different generic equipment7
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
insurance benefits processing under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, claim 25 at issue amounts to nothing significantly more than an
instruction to apply insurance benefits processing by processing benefits
data and adding the elapsed time and other elapsed time examples to an
otherwise conventional benefits verification display, which is conceptual
advice of good insurance processing ideas using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
7 The Specification describes a tablet, mobile phone, laptop, or desktop
computer. Spec., para. 17.
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None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 25 is directed to achieving the result of insurance
benefits processing by advising one to processing benefits data and adding
the elapsed time and other elapsed time examples to an otherwise
conventional benefits verification display is abstract conceptual advice of
good insurance processing ideas as distinguished from a technological
improvement for achieving or applying that result. This amounts to
commercial or legal interactions, which fall within certain methods of
organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 25 provides an inventive concept because the additional elements
recited in the claim provide significantly more than the recited judicial exception. Taking the claim
elements separately, the function performed by the computer at each step of the process is purely
conventional. Using a computer for storing, receiving, transmitting, generating, analyzing, displaying, and
updating data amounts to electronic data query and retrieval-one of the most basic functions of a
computer. The limitations of storing two different times and calculating and displaying the difference are
the closest the claims come to reciting some technological improvement. But even here, the claims recite
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no more than the concept of measuring elapsed time absent any technological means or improvement for
doing so. One other claim limitation, that of constantly monitoring whether data has been created, is again
no more than abstract conceptual advice to perform a function by any and all means.
All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Also see 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").
None of these activities are used in some unconventional manner nor do any
produce some unexpected result. Appellants do not contend they invented
any of these activities. In short, each step does no more than 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 America, Inc.
v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claim 25 add nothing that is not already present when the steps
are considered separately. The sequence of data storage-reception-
transmission-generation-analysis-display-updating is equally generic and
conventional. 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,
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and transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
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.
We conclude that claim 25 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 25 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
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 § 10 l "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
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methods of organizing human activity as exemplified by insurance benefits
processing by processing benefits data and adding the elapsed time and other
elapsed time examples to an otherwise conventional benefits verification
display is abstract conceptual advice of good insurance processing ideas,
without significantly more.
APPELLANTS' ARGUMENTS
We are not persuaded by Appellants' argument that "the relevant
technology is tracking the electronic exchange of prescription data." Br. 6.
Tracking is not a technology. It is a business or social process.
Technological means for tracking may be technological solutions, but pure
data processing as recited in the claims is not technological means. It is the
electronic equivalent of looking up, reading, writing, and analyzing data.
See In re TL! Commc 'ns LLC Patent Litig., 823 F .3d at 611, supra.
Appellants also attempt to analogize the claims to those involved in
McRO. Br. 7-8. In McRO, the court held that, although the processes were
previously performed by humans, "the traditional process and newly
claimed method ... produced ... results in fundamentally different ways."
FairWarning, 839 F.3d at 1094 (Differentiating the claims at issue from
those in McRO.). In McRO, "it [was] the incorporation of the claimed rules,
not the use of the computer, that improved the existing technology process,"
because the prior process performed by humans "was driven by subjective
determinations rather than specific, limited mathematical rules." McRO, 837
F.3d at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of using decision criteria in making sales decisions in a new
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environment. Appellants have not argued that the claimed processes of
selecting products apply rules of selection in a manner technologically
different from those which humans used, albeit with less efficiency, before
the invention was claimed. Merely pigeon holing the objects of decision
making in tiers to aid decision making is both old and itself abstract.
The claims in McRO were not directed to ... "a specific
asserted improvement in computer animation, i.e., the
automatic use of rules of a particular type." We explained that
"the claimed improvement [was] allowing computers to
produce 'accurate and realistic lip synchronization and facial
expressions in animated characters' that previously could only
be produced by human animators." The claimed rules in McRO
transformed a traditionally subjective process performed by
human artists into a mathematically automated process
executed on computers.
FairWarning, 839 F.3d 1089, 1094 (Fed. Cir. 2016) (citations omitted)
(Differentiating the claims at issue from those in McRO.). Beyond that,
Appellants contend that the instant claims use rules as in McRO. This
argument is not commensurate with the scope of the claims, which do not
recite the use of rules.
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in Bascom
(Bascom Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016)). Br. 8-9. Initially, we remind Appellants that Bascom did not
find claims eligible on the substance, but rather that the Appellees did not
provide sufficient evidence to support a Federal Rule of Civil Procedure
§ 12(b)(6) motion to dismiss in which facts are presumed in the non-
movant' s favor.
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The key fact in Bascom was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server." Bascom, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Br. 9-10. The claims differ from those found patent eligible in
Enfish, where the claims were "specifically directed to a self-
referential table for a computer database." Enfish, 822 F.3d 1327, 1337
(Fed. Cir. 2016). The claims, thus, were "directed to a specific
improvement to the way computers operate" rather than an abstract idea
implemented on a computer. Enfish, 822 F.3d at 1336. Here, by contrast,
the claims are not directed to an improvement in the way computers operate.
Though the claims purport to make the process of reviewing insurance
benefits verification more accurate, 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., 687 F.3d at 1278. Instead, the
claims are more analogous to those in FairWarning, wherein claims reciting
"a few possible rules to analyze the audit log data" were found directed 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." FairWarning, 839 F.3d at 1094, 1095. As to
the elapsed time measure, judging whether a subordinate spent sufficient
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Appeal2017-009039
Application 13/649,070
time reviewing data is among the oldest of techniques used in the
professions once delegation of process began.
We are not persuaded by Appellants' argument that the combination
of the recited elements is an inventive concept for the reasons we describe
supra. Br. 11-12.
Claims 1-14, 16--25, 27-37, 39--47, 49-59, and 61-70
provisionally rejected under the judicially created doctrine of obviousness
type double patenting as claiming the patentably indistinguishable subject
matter as another U.S. Patent
Appellants do not contest this provisional rejection.
CONCLUSIONS OF LAW
The rejection of claims 1-14, 16-25, 27-37, 39-47, 49-59, and 61-70
under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more is proper.
The provisional rejection of claims 1-14, 16-25, 27-37, 39-47, 49-
59, and 61-70 under the judicially created doctrine of obviousness type
double patenting as claiming the patentably indistinguishable subject matter
as another U.S. Patent is uncontested.
DECISION
The rejection of claims 1-14, 16-25, 27-37, 39-47, 49-59, and 61-70
is affirmed.
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Appeal2017-009039
Application 13/649,070
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l)(iv) (2011).
AFFIRMED
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