Ex Parte Tong et al

Patent Trial and Appeal Board

Jul 30, 2018

12947051 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/947,051 11/16/2010
71130 7590 08/01/2018
SEYFARTH SHAW LLP
WORLD TRADE CENTER EAST
TWO SEAPORT LANE, SUITE 300
BOSTON, MA 02210-2028
FIRST NAMED INVENTOR
Tri Tong
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.
23845.700015 1187
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
bosippto@seyfarth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRI TONG, JEAN W. RAWLINGS,
CHRISTOPHER A. HANE, RON HOFFNER, and
DAVID R. ANDERSON
Appeal2017-003877
Application 12/947,051
Technology Center 3600
Before LARRY J. HUME, BETH Z. SHAW, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5, 9-15, 19-25, 29, and 30, which are all of the
claims pending in this Application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Optuminsight, Inc.
App. Br. 4.
2 Claims 6-8, 16-18, 26-28, and 31-34 have been canceled. Final Act. 2.
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Application 12/947,051
INVENTION
Appellants' invention relates to a healthcare index. Abstract. Claim 1
is representative and reads as follows:
1. A computer-implemented method, executable by at
least one processor on a computing system, the computer
system specifically configured to create an improved healthcare
price index, said computer-implemented method comprising:
receiving, by an interface module of the computing
system, at least one input representing one or more health
services, one or more attributes for identifying subjects, a time
frame, and a baseline time for generating an output, wherein the
interface module comprises a graphical user interface
specifically configured for the computing system to display
options for selecting information from the one or more health
services, the one or more attributes for identifying subjects, the
time frame, and the baseline time for generating an output, and
wherein the graphical user interface is specifically configured to
receive the at least one input;
searching, by a search module of the computing system, a
database stored on a data storage device of the computing
system to obtain records of prices for the one or more health
services received by a group of subjects, wherein the one or
more health services represent a health service category,
wherein the data storage device is specifically configured to
store healthcare-related data of a plurality of individuals, and
wherein the healthcare-related data associated with each
individual is keyed to a common field for each of the
individuals in the database;
extracting, by an extraction module of the computing
system, a representative price for each of the one or more health
services;
determining, by a determination module of the
computing system, a weight for each of the one or more health
services relative to the health service category;
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Application 12/947,051
generating, by a weighted-price generation module of the
computing system, a weighted price for each of the one or more
health services based on the weight and the representative price
of each of the one or more health services, wherein the weight
of the one or more health services is calculated as the ratio of
the total prices for the one or more health services to the total
prices for the health service category;
generating, by an index generation module of the
computing system, one or more elementary indices based, at
least in part, on the weighted price for one or more health
services, wherein an elementary index represents at least a price
change for the health service category relative to a base time
period;
generating, by the index generation module of the
computing system, a first aggregation index by combining two
or more of the elementary indices, wherein the aggregation
index represents a broader measure of the price of the health
service category in a current time period relative to the base
time period;
outputting, by the user interface module a display of a
graph of the first aggregation index over the received time
frame;
receiving, by the graphical user interface, simulation
parameters, the graphical user interface specifically configured
to receive inputs from the user relating to the simulation
parameters;
generating, by the index generation module, a second
aggregation index based on the received simulation parameters;
and
outputting, by the user interface module, a graph
comparing the second aggregation index with the first
aggregation index.
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Application 12/947,051
REJECTION
Claims 1-5, 9-15, 19-25, 29, and 30 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception
without significantly more. Final Act. 7.
ANALYSIS
We have reviewed the rejections of claims 1-5, 9-15, 19-25, 29,
and 30 in light of Appellants' arguments that the Examiner erred. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants could have made, but chose
not to make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and adopt
as our own the Examiner's findings of facts and conclusions as set forth in
the Answer and in the Action from which this appeal was taken. We provide
the following explanation for emphasis.
In rejecting independent claims 1, 11, and 21, the Examiner concluded
the claims are directed to the abstract idea of "generating ... elementary
indices based ... on the weighted price for ... health services ... [ and]
generating ... [an] aggregation index by combining ... the elementary
indices" as shown by the steps of:
receiving at least one input representing of a selection of
one or more health services, one or more attributes for
identifying subjects, a time frame, and a baseline time for
generating an output;
searching a database to obtain records of prices for the
one or more health services received by a group of subjects;
extracting a representative price for each of the one or
more health services;
determining a weight for each of the one or more health
services relative to the health service category;
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Application 12/947,051
generating a weighted price for each of the one or more
health services based on the weight and the representative price
of each of the one or more health services;
generating one or more elementary indices based on the
weighted price for one or more health services;
generating a first aggregation index by combining two or
more of the elementary indices;
outputting a display of a graph of the first aggregation
index over the received time frame;
receiving simulation parameters;
generating a second aggregation index based on the
received simulation parameters; and
outputting a graph comparing the second aggregation
index with the first aggregation index.
Ans. 3. The Examiner further concluded the claims do not amount to
significantly more than the underlying abstract idea. Final Act. 8.
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75-78 (2012)). The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims "individually and 'as an ordered combination'" to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S. at 79,
77-78). In other words, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
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ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Id. (brackets in original) (quoting
Mayo, 566 U.S. at 71-73). The prohibition against patenting an abstract
idea "'cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment' or adding 'insignificant
postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010)
( citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that claim 13 is directed to an abstract idea of "'generating
elementary indices based on a weighted price for health services and
generating an aggregation index by combining the elementary indices,"'
which is similar to abstract ideas held by courts to be judicial exceptions.
Final Act. 7 ( emphasis omitted).
Appellants contend the Examiner erred because "[t]he claims are not
directed to the mere comparing of new and stored information and using
rules to identify options, use of categories to organize information, use of
data recognition, or categorization and organization of information through
mathematical correlations," as the Examiner concluded. App. Br. 18.
We disagree. The Examiner concluded the abstract idea of
"'generating elementary indices based on a weighted price for health
services and generating an aggregation index by combining the elementary
indices"' is similar to abstract ideas held by courts to be judicial exceptions.
Final Act. 7-8 ( citing Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057 (Fed. Cir. 2011) (collecting and comparing known information is
3 Appellants argue claims 1, 11, and 21. App. Br. 15. We select claim 1 as
representative of the group. 37 C.F.R. § 4I.50(b).
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abstract); SmartGene, Inc. v. Adv. Bio. Labs, 555 F. App'x 950 (Fed. Cir.
2014) (nonprecedential) (comparing new and stored information and using
rules to identify options is abstract); Cyberfone Sys., LLC v. CNN Interactive
Group, Inc., 558 Fed. App'x 988, 992 (Fed. Cir. 2014) (using categories to
organize, store and transmit information is abstract); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) ("[t]he concept of data collection, recognition, and storage
is undisputedly well-known"); Digitech Image Tech., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (organizing information
through mathematical correlations is abstract)).
Appellants for the first time in the Reply Brief attempt to distinguish
the claims at issue each of the cases cited by the Examiner from the present
claims. See Reply Br. 2--4. Appellants, however, have waived these
arguments because they presented them for the first time in the Reply Brief,
without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012);
accord Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(informative opinion) ("[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not."). We note, however, that,
even if Appellants' arguments were timely, they are not persuasive of error
because the arguments address only the actual recitations of the claims, not
the similarities in the abstract ideas to which the claims are directed. See
Reply Br. 2--4.
Appellants contend the claims recite "a specially computer
implemented healthcare information processing system and method" that
transforms data into an improved healthcare price index. App. Br. 18.
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To the extent Appellants rely on the machine-or-transformation test
set forth in Bilski v. Kappas, 130 S. Ct. 3218, 3227 (2010), we are not
persuaded that claim 1 satisfies the test. Claim 1 recites method steps that
merely include manipulation of values in the form of numerical weighting
and index generation, as well as the output of graphs. The transformation of
one type of electronic data (i.e., "a weight for each of the one or more health
services" or "a weighted price") into another type of electronic data (i.e.,
"elementary indices based on the weighted price") is not a transformation or
reduction of an article into a different state or thing constituting patent-
eligible subject matter. "The mere manipulation or reorganization of data ..
. does not satisfy the transformation prong." CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). Thus, claim 1 fails to
satisfy the transformation prong of the machine-or-transformation test. 4
Appellants also rely on the Board's holding in Ex Parte Wegman III,
Appeal 2013-008168, 2015 WL 5578687 (PTAB Sept. 18, 2015), a non-
precedential decision in which the Board reversed a rejection under
35 U.S.C. § 101. App. Br. 18. Although we consider Wegman neither
controlling nor germane, we note that Wegman does not stand for the
proposition that claims that recite specific calculations are per se patent-
eligible. On the record before us, we find the claims on appeal similar to the
claims held ineligible under controlling precedent ( e.g., Bilski and Alice) for
the reasons set forth above.
4 The Supreme Court has made clear that a patent claim's failure to satisfy
the machine-or-transformation test is not dispositive of the § 101 inquiry.
See Bilski, 130 S. Ct at 3227. However, the machine-or-transformation test
is "a useful and important clue, an investigative tool, for determining
whether some claimed inventions are processes under§ 101." Id.
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Turning to step two of the Alice analysis, Appellants contend the
elements taken as a whole "provide a tangible, novel and nonobvious (as
acknowledged by the fact that only subject matter eligibility rejections
remain) technical solution to the technical problem of transforming
particular healthcare information into a specific improved healthcare price
index." App. Br. 19; see also id. at 18 ("the novel and nonobvious
combination of elements and method steps are not fundamental
mathematical relationships or algorithms.").
We are not persuaded. Although the second step of the Alice
framework is termed a search for an "inventive concept," the analysis is not
an evaluation of novelty or non-obviousness, but rather a search for "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., 134 S. Ct. at 2355. "[T]he § 101
patent-eligibility inquiry and, say, the § 102 novelty inquiry might
sometimes overlap." Mayo, 566 U.S. at 1304. "But, a claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating§ 102 novelty." Synopsys, Inc.
v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Thus, a
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 1304.
Appellants argue the recited "modules" are not generic computer
elements because they are tailored to "the types of computing systems that
analyze healthcare data." App. Br. 21. Appellants also argue the claimed
"graphical user interface" and "data storage devices" are not generic
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computer elements because they are tailored to a system for creating an
improved health care system. Id.
We are not persuaded. Appellants define "module" in the
Specification as comprising "a component of a machine, a machine or a
plurality of machines that are suitably programmed to operate according to
executable instructions." Spec. ,r 4 7. The Specification further emphasizes
the implementation independence of modules. Id. Similarly, the terms
"graphical user interface" (id. ,r,r 63, 65) and "data storage device" (id. ,r,r
55, 65) are described generically in the Specification.
We are also not persuaded by Appellants' conclusory argument that
"[ t ]he specific graphical representation of indices is not merely 'extra-
solution data gathering steps, which are well-known and routine computer
functions."' See App. Br. 19. In the Specification, the generation and
display of graphical representations of indices is described in generic terms.
See, e.g., Spec. ,r 63 ("adapter 322 may display a graphical user interface
associated with a software or web-based application for generating an output
comprising a graph of relative importance of prices or indices, or indices of
different time frames"); ,r 70 ("web service 414 may return price data for
subjects identified by one or more attributes to generate indices, statistics,
distributions, graphs, or the like"); ,r 75 ("interface module 502 may display
weighted price, weights (relative importance), or indices. Such analysis
results may include statistics, tables, charts, graphs, recommendations, and
the like."); ,r 85 ("generation module 510 may also create outputs such as
statistics, tables, charts, graphs, recommendations, and the like"). In light of
the descriptions in the Specification, we are not persuaded the claimed
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graphical representation of indices amounts to more than extra-solution
activity involving well-known and routine computer functions.
Appellants further argue the Examiner erred by not considering all
claim elements in step two of the Alice analysis. App. Br. 19.
Contrary to Appellants' contention, the Examiner identified elements
recited beyond the judicial exception and explained why they do not add
significantly more to the abstract idea. See Ans. 8-10. The Examiner
concluded the additional elements merely limit the use of the idea to a
particular technological environment or add insignificant extra-solution
activity. See id.; see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1310 (Fed. Cir. 2016) (citing Bilski, 561 U.S. at 610-11).
We agree with the Examiner that the claims here, unlike those in DDR
Holdings, do not recite limitations that are "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014); see Ans. 10; App. Br. 20-21. The
Specification makes clear that the recited physical components merely
provide a generic environment in which the computer executable
instructions carry out the described processes and methods. See, e.g., Spec.
,r 65. "[ A ]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible." DDR Holdings, 773 F.3d at 1256.
We are unpersuaded by Appellants' argument that claim 1 is like the
claims in DDR Holdings because claim 1 improves the creation of healthcare
price indexes by improving data processing times. App. Br. 20, 22.
Appellants articulate a commercial solution to an efficiency problem, not a
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technical solution. While Appellants' commercial solution may be assisted
using a general purpose computer to perform the data collection, analysis,
manipulation, and output processes, it does not arise specifically in the realm
of computer networking or improve how the computer itself functions. As
we previously explained, the instant claims are more akin to the claims for
analyzing information found abstract in Classen, SmartGene, Cyberfone,
Content Extraction, and Digitech.
In the Reply Brief, Appellants argue for the first time that claim 1
addresses a technical problem in the field of data mining. Reply Br. 5-6.
Appellants, however, have waived these arguments because they presented
them for the first time in the Reply Brief, without a showing of good cause.
See 37 C.F.R. § 41.41(b)(2) (2012); accord Borden, 93 USPQ2d at 1473-74.
We note, however, that, even if Appellants' arguments were timely, they are
not persuasive of error because Appellants' newly identified "technical"
improvement also does not arise specifically in the realm of computer
networking or improve how the computer itself functions.
With respect to Appellants' preemption argument (App. Br. 20),
"' [ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility."'
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) (quotingAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015)); see also OIP Techs., 788 F.3d at 1362-63 ("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Further,"[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
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this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
For these reasons, we are not persuaded the Examiner erred in
concluding there are no additional elements in claim 1 that transform the
nature of the claim into a patent-eligible application.
Accordingly, we sustain the Examiner's§ 101 rejection of
representative claim 1, as well as grouped independent claims 11 and 21.
See App. Br. 15. We also sustain the Examiner's§ 101 rejection of
dependent claims 2-5, 9, 10, 12-15, 19, 20, 22-25, 29, and 30, not argued
separately. See id. at 23.
DECISION
We affirm the decision of the Examiner rejecting claims 1-5, 9-15,
19-25, 29, and 30.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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