Ex Parte Tripoli

Patent Trial and Appeal Board

Feb 20, 2018

13946976 (P.T.A.B. Feb. 20, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/946,976 07/19/2013 Louis Christopher Tripoli 25136-0003002 6670
20985 7590 02/22/2018
FISH & RICHARDSON P.C. (SD)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS CHRISTOPHER TRIPOLI
Appeal 2016-003854
Application 13/946,976
Technology Center 3600
Before CARL W. WHITEHEAD JR., JON M. JURGOVAN and
ADAM J. PYONIN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 38—49 under 35
U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.
Introduction
The invention is directed to “systems, methods, and techniques for
presenting a medication list to a patient and for maintaining updates to the
medication list.” Specification, paragraph 6.
Appeal 2016-003854
Application 13/946,976
Illustrative Claim
38. A system comprising:
one or more hardware processors; and
non-transitory computer-readable medium encoding instructions that,
when executed by the one or more hardware processors, cause the system to
perform operations comprising:
presenting, in a graphical user-interface, a medication list
comprising graphical representations of medication containers, the graphical
representations of medication containers including a first container for a first
drug and a second container for a second drug, with medication data on the
containers corresponding to a prescription for the respective container;
determining a problem between the first drug and the second drug
on the medication list;
presenting, in the graphical user-interface in response to the
determining of the problem, a user selectable depiction of the first drug
container and the second drug container in physical conflict until a
resolution of the problem is received;
transmitting, in response to user input in the form of a selection of
the depiction of the first drug container and the second drug container in
physical conflict, the determined problem on the medication list to a health
care professional for resolution;
receiving the resolution of the problem from the health care
professional; and
presenting, in the graphical user-interface responsive to the
received resolution, a health care professional graphical depiction resolving
the physical conflict.
Rejection on Appeal
Claims 38—49 stand rejected under 35U.S.C. § 101 because the
claimed invention is directed to nonstatutory subject matter. Final Action 3.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed August 17, 2015), the Final Action
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(mailed December 15, 2014) and the Answer (mailed December 18, 2015)
for the respective details.
35 U.S.C. $ 101 rejection
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Under 35
U.S.C. § 101, a patent may be obtained for “any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof.” The Supreme Court has “long held that this
provision contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS BankInt’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). “The
‘abstract ideas’ category embodies the longstanding rule that ‘[a]n idea of
itself is not patentable.”’ Id. at 2355 (quoting Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (quotations omitted)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. (citing Mayo, 132 S. Ct. at
1296— 97) (emphasis added). If so, the second step is to consider the
elements of the claims “individually and ‘as an ordered combination’” to
determine whether the additional elements ‘“transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
1297— 98). In other words, the second step is to “search for an ‘inventive
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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.’” Id. (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294). Thus, we first analyze the claims to determine
whether the claims embody an abstract idea. If they do, then we proceed to
determine whether the claims are meaningfully limited to a patent-eligible
application of an abstract idea or cover nothing more than the abstract idea
itself.
Turning to the first step of our analysis, we must determine whether
the claims at issue are directed to a patent-ineligible concept, such as an
abstract idea. See Alice, 134 S. Ct. at 2355. In order to determine whether
claims at issue are directed to an abstract idea, we must first determine what
the claims are directed to. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016).
The Examiner finds the claims “are directed to the abstract idea of
human activities - manipulating an interactive [medication] list” because
“the abstract idea of comparing new and stored information and using rules
to identify options” wherein:
[t]he steps of presenting a medication list, determining a
problem on the medication list, presenting in response to the
determining a user selectable depiction of the containers,
transmitting the determined problem in response to user
selection, and receiving/presenting the resolution of the problem
describe the concept of comparing new and stored information
and using rules to identify options.
Final Action 3; Answer 4. Appellant argues the Examiner “failed to
articulate what precisely is considered to be the abstract idea” because the
Examiner’s analysis, including three different statements alleging what the
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abstract idea is, “doesn’t provide any evidence for its conclusion that ‘the
concept of lists’ is ‘a fundamental economic practice long prevalent in our
system of commerce’ and that the ‘use of lists’ is ‘a building block of the
modem economy.’” Appeal Brief 2—3 (citing Final Action 3—4).
The Office carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Put simply, all that is required of the Office is
that it set forth the statutory basis of the rejection in a sufficiently articulate
and informative manner as to meet the notice requirement of § 132. Id.; see
also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (noting that
section 132 “is violated when a rejection is so uninformative that it prevents
the applicant from recognizing and seeking to counter the grounds for
rejection”). Accordingly, we agree with the Examiner’s findings that the
claims are directed to an abstract idea. When “the focus of the asserted
claims” is “on collecting information, analyzing it, and displaying certain
results of the collection and analysis,” the claims are directed to an abstract
idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016).
Appellant further argues “In the present case, there is no issue of
preemption since the independent claim is directed to particular types of user
interface depictions that improve the effectiveness of an interactive
medication list, and so, the independent claim does not preempt essentially
all uses of the alleged abstract idea.” Appeal Brief 4. We do not find
Appellant’s argument persuasive. Although it is true that the Supreme Court
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has characterized pre-emption as a driving concern for patent eligibility (see
Alice, 134 S. Ct. at 2354), characterizing pre-emption as a driving concern
for patent eligibility is not the same as characterizing pre-emption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at
2354). However, “[wjhile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa, 788 F.3d at 1379. Cf. OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701,
193 (2015) (“[Tjhat 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.”).
Appellant contends, “Independent claim 38 includes features that
amount to an inventive concept for resolving a computer-based health care
system’s problem of enabling any user (e.g., a user with very little computer
experience) to manage many different prescribed medications with a
computer-based system” and therefore the claim recite significantly more
than an abstract idea. Appeal Brief 4.
We are not persuaded by Appellant’s contentions that the claims
represent significantly more than the abstract idea exception. We agree with
the Examiner’s findings that the additional elements or combination of
elements in the claims “do not include additional elements that are sufficient
to amount to significantly more than the judicial exception because the
computer as recited is a generic computer component (see paragraph 113 of
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Applicant’s Specification) that performs functions (i.e., presenting
information, analyzing information, transmitting information, and receiving
information).” Answer 4. Appellant does not direct us to, nor do we
discern, any indication in the record that any specialized computer hardware
or other inventive computer components are required. See Appeal Brief 4—5.
Rather than reciting additional elements that amount to significantly more
than the abstract idea, the pending claims, at best, add only a “processor,”
“non-transitory computer readable medium” and a “graphical user interface”
i.e., generic components, which do not satisfy the inventive concept. See,
e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014) (“[Ajfter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm ‘is beside the point.”’ (citation omitted)). For the
foregoing reasons, we sustain the Examiner’s nonstatutory subject matter
rejection of claims 38-49.
DECISION
The Examiner’s nonstatutory subject matter rejection of claims 38—49
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)(1). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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