Ex Parte Verstandig et al

Patent Trial and Appeal Board

Dec 28, 2018

13404801 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/404,801 02/24/2012
58249 7590 01/02/2019
COOLEYLLP
ATTN: IP Docketing Department
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
FIRST NAMED INVENTOR
Grant Verstandig
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.
AUDA-001/02US
316256-2005
2919
EXAMINER
NG, JONATHAN K
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
zIPPatentDocketingMailbox US @cooley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GRANT VERSTANDIG and ALEXANDER SIEDLECKI
Appeal2017-001956 1
Application 13/404,801 2
Technology Center 3600
Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, 7-10, 14--17, 23, 24, 27, and 28. An oral hearing
was held on October 16, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Specification ("Spec.," filed Feb. 24,
2012), and Appeal Brief ("Br.," filed June 20, 2016), the Examiner's Final
Office Action ("Final Act.," mailed Oct. 20, 2015) and Answer ("Ans.,"
mailed Sept. 23, 2016), and the transcript of the oral hearing held on October
16, 2018 ("Tr.").
2 Appellants identify Audax Health Solutions, LLC as the real party in
interest. Br. 3.
Appeal2017-001956
Application 13/404,801
CLAIMED INVENTION
Appellants' claimed invention "relate[s] generally to a health-related
survey such as a health risk assessment, and more particularly [to] apparatus
and methods for a health-related survey using pictogram answers." Spec.
if 1003.
Claims 1, 8, and 14 are the independent claims on appeal. Claims 1
and 8, reproduced below with bracketed notations added, are illustrative of
the claimed subject matter:
1. A method comprising:
[ (a)] sending a signal representing a first question and a
plurality of pictogram answers for the first question including a
first pictogram answer and a second pictogram answer, the first
pictogram answer having a first portion and a second portion, the
second pictogram answer having a first portion and a second
portion, the first portion of the first pictogram answer
substantially corresponding in shape to the first portion of the
second pictogram answer and being unrelated to human
anatomy, the second portion of the first pictogram answer
differing in shape to the second portion of the second pictogram
answer;
[ (b)] receiving a signal representing a selection by a first
user of a pictogram answer from the plurality of pictogram
answers for the first question at a first time;
[ ( c)] dynamically selecting a second question and a
plurality of pictogram answers for the second question based on
the selection of the pictogram answer at the first time;
[(d)] automatically sending a signal representing the
second question and the plurality of pictogram answers for the
second question, the first question and the second question
collectively defining at least portion of a health-related survey;
[(e)] receiving a signal representing a selection by the first
user of a pictogram answer from the plurality of pictogram
answers for the second question at a second time after the first
time;
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[(f)] defining, at a processor, a health-related social user
profile having health-related information based on the selection
for the first question and the selection for the second question,
the health-related social user profile accessible by a plurality of
users including the first user;
[(g)] receiving, a signal representing a permission granted
by the first user for access to the health-related social user
profile; and [sic]
[(h)] receiving, from a user device associated with a
second user from the plurality of users, a request to access the
health-related social user profile, the second user not being a
healthcare professional; and
[(i)] granting the user device permission to access the
health-related social user profile based on the request and the
perm1ss10n.
8. A method, comprising:
[ (a)] sending a signal representing a dashboard within a
session at a first time that includes a first question and a plurality
of pictogram answers for the first question, the plurality of
pictogram answers including a first pictogram answer and a
second pictogram answer, the first pictogram answer having a
first portion representing a first portion of a statement answering
the first question and a second portion representing a second
portion of the statement answering the first question, the second
pictogram answer having a first portion and a second portion, the
first portion of the first pictogram answer substantially
corresponding in shape to the first portion of the second
pictogram answer and being unrelated to human anatomy, the
second portion of the first pictogram answer differing in shape to
the second portion of the second pictogram answer;
[ (b)] receiving a selection of a user through the dashboard
within the session of a pictogram answer from the plurality of
pictogram answers for the first question;
[ ( c)] dynamically selecting a second question and a
plurality of pictogram answers for the second question based on
receiving the selection of the pictogram answer at the first time;
[(d)] automatically sending a signal representing the
dashboard within the session at a second time after the first time
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that includes the second question and the plurality of pictogram
answers for the second question, the second question being
different from the first question, the first question and the second
question collectively defining at least portion of a health-related
survey; and [sic]
[(e)] receiving a selection from the user through the
dashboard within the session of a pictogram answer from the
plurality of pictogram answers for the second question;
[(f)] defining, at a processor, a health-related social user
profile having health-related information based on the selection
for the first question and the selection for the second question,
the health-related information being different from the selection
of the first question and the selection of the second question; and
[(g)] sending, to a second user, a signal representing at
least a portion of the health-related social user profile in response
to a request from the second user and a permission setting of the
first user.
REJECTIONS
Claims 1, 2, 7-10, 14--17, 23, 24, 27, and 28 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1, 2, 7-10, and 28 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pristine (US 2004/0138924 Al, pub. July 15, 2004),
Cacioppo (US 2012/0270201 Al, pub. Oct. 25, 2012), Iliff
(US 2003/0135095 Al, pub. July 17, 2003), and Fotsch
(US 2005/0165627 Al, pub. July 28, 2005).
Claims 14--17 and 23 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pristine, Iliff, Cacioppo, and Ackerson
(US 2012/0295676 Al, pub. Nov. 22, 2012).
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Claim 24 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Pristine, Iliff, Cacioppo, Ackerson, and Nanos (US 2001/0052122 Al, pub.
Dec. 13, 2001).
Claim 27 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Pristine, Iliff, Cacioppo, Fotsch, and Ackerson. 3
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 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. If the
3 The Examiner indicates that claim 27, which depends from claim 8, is
rejected under 35 U.S.C. § I03(a) as unpatentable over "Pristine, Iliff,
Cacioppo, and Brown as applied to claim 8 above, and in further view of
Ackerson." Final Act. 22. Yet, claim 8 was rejected as obvious over
Pristine, Iliff, Cacioppo, and Fotsch. Id. at 4. Therefore, we treat the
identification of Brown, instead of Fotsch, as inadvertent error.
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claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "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, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to the abstract idea of displaying a
patient questionnaire and defining a patient profile based on answers to the
questionnaire. Final Act. 2-3; see also Ans. 6. The Examiner concluded
that this is an abstract idea analogous to the process found patent-ineligible
in SmartGene, Inc. v. Advanced Biological Labs, S.A., 555 F. App'x 950
(Fed. Cir. 2014), in which new and stored information is analyzed using
rules to identify options. Final Act. 3; see also Ans. 6-7 ("[t]he focus of the
asserted claims, as illustrated by claim 14, is on collecting information via a
questionnaire, analyzing the answers provided, and displaying certain results
of the collection and analysis, such as a patient profile and reminders"), 7
("[ t ]he advance the Appellant makes is a process of gathering and analyzing
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information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions,"
i.e., an abstract idea). The Examiner also determined that the claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception. Final Act. 3.
Independent Claim 14 and Dependent Claims 15-17, 23, and 24
Focusing first on apparatus claim 14, Appellants contend that the
Examiner "failed to treat the step-one Alice/ Mayo test as the meaningful
inquiry it is." Br. 13. Appellants assert that the Examiner's analysis
"entirely ignored significant portions of claim 14," such as the claimed
"reminder module" that is "configured to cause at least a portion of the
health-related user profile to be displayed by a user device associated with a
second user based, at least in part on a health-related goal shared by the first
and second user." But the Examiner's formulation of the abstract idea need
not copy the language recited in the claim. Instead, the Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether 'their character
as a whole is directed to excluded subject matter."' Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents
Corp., 790 F.3d at 1346). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an "abstract idea" for which computers are invoked merely as a
tool. See id. at 1335-36.
Here, claim 14 recites an apparatus comprising three components: a
survey module, a database, and a reminder module. The survey module is
configured to send questions defining at least a portion of a health-related
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survey and a plurality of pictogram answers for each question. The database
is configured to store a health-related user profile having health-related
information associated with the selections of pictogram answers from the
questions of the survey. And the reminder module is configured to cause at
least a portion of the health-related user profile to be displayed by a user
device associated with a second user based, at least in part, on a
health-related goal shared by the first and second users. In other words,
claim 14 recites collecting information via a survey, processing the
information, such as to create a health-related user profile, and displaying at
least a portion of the health-related user profile.
Appellants' Specification also provides insight into the problem the
claimed invention seeks to address. Appellants' Specification is entitled
"Systems and Methods for a Health-Related Survey Using Pictogram
Answers." Spec., Title. The Specification describes that the invention
"relates generally to a health-related survey[,] such as a health risk
assessment, and more particular [to an] apparatus and methods for a health-
related survey using pictogram answers." Id. ,r 1003. In the Background
section, the Specification describes that the advent of online social networks
in which users share and connect with other users has led companies to
collect and leverage information associated with the users of the social
networking sites. Id. ,r 1004. Health care providers likewise desire
information about a customer's lifestyle in order to provide better health care
services for the customer. Id. It is known for health care providers to use
surveys to gather information about a person's lifestyle, as it pertains to
health, and then deliver individualized information, such as ideas for
developing a healthy lifestyle, based on the information. Id. ,r 1005.
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"Unfortunately, some people may find known surveys boring and may lack
the motivation to complete known surveys." Id. "Thus, a need exists for
systems and methods for a health-related survey using pictogram answers to
define a health-related user profile." Id. ,r 1006.
In one example, a set of three pictogram answers is presented to a
patient seeking information regarding the patient's last doctor visit. Id.
,r 1063. A first pictogram answer depicts a calendar that displays the
number "3" and text stating, "[ w Ji thin the last 3 months." A second
pictogram answer depicts a calendar with the number "6" and text stating
"[ w ]ithin the last 6 months." And a third pictogram answer depicts a
calendar with the number "12" and text stating"[ w ]ithin the last 12 months."
Id. ,r 1063. In this example, the calendar represents the claimed first portion,
and the numbers (e.g., 3, 6, and 12) represent the second portion, as recited
in claim 14. By providing the answers as a pictogram, the "pictogram
answers [are] more game-like and/ or more fun to answer than text alone."
Id. "Therefore, the user may be more likely to answer the set of pictogram
answers compared to text only answers." Id.
Paragraph 1039 of the Specification describes a reminder module for
generating a reminder based on activity or a period of inactivity with the
social health system. The reminder could be associated with the user's
progress to a specific goal, profile completion, and/or other metrics stored by
the social health system. Id. ,r 1039. The reminder module also can receive
information from the user to update or send a reminder to a different user.
Id. For example, a first user and a second device who are associated on a
social health system and share a common goal. Id. The first user can
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accomplish the goal and the reminder module can send a reminder to the
second user to continue to strive towards the goal. Id.
Considering the claim language in light of the Specification, we agree
with the Examiner (Ans. 6-7) that the focus of claim 14 is on collecting
information via a questionnaire, analyzing the answers provided, and
displaying certain results of the collection and analysis, such as a patient
profile and reminders - i.e., an abstract idea. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims held to be
directed to an abstract idea where "[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions").
Seeking to draw an analogy to the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Appellants contend that
the claimed reminder module, when viewed as an ordered combination,
"address[ es] the Internet-centric challenge of alerting a second user to the
first user's health related user profile based on a shared health-related goal."
Br. 13. Appellants maintain that "in the pre-Internet world, permission to
access health-related data was not granted 'from the user device' that is used
to provide the health-related data." Id. The claimed location "is only
possible in the post-Internet world where users can complete health-related
profiles on their own time, at a location of their choice, and set permissions
for the health-related profile using their own devices (e.g., as distinct from
medical historic surveys conducted by a medical professional)." Id. at 13-
14.
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Although Appellants ostensibly suggest otherwise, the claims at issue
in DDR Holdings were not held patent-eligible because they required user
devices or because the claims themselves involved the use of technology,
such as the Internet. Instead, the Federal Circuit held that the claims were
directed to patent-eligible subject matter because the claimed invention was
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks" (i.e., retaining
website visitors who, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be transported instantly away from a
host's website after "clicking" on an advertisement and activating a
hyperlink), and did not simply use computers to serve a conventional
business purpose. DDR Holdings, 773 F.3d at 1257. Appellants have not
demonstrated that claim 14 addresses any comparable Internet-centric
challenge.
To the contrary, Appellants' Specification describes a need to make
surveys "more game-like and/or more fun to answer than text alone" to
motivate an individual to complete a survey. Spec. ,r 1063; see also id.
,r 1005. But using pictograms to make surveys more game-like and more
fun seeks to address a business problem, not a problem rooted in technology
or specifically arising in the realm of computer networks. Unlike the
situation in DDR Holdings, there is no indication that claim 14 requires more
than generic technology operating in its ordinary capacity to effect an
improvement to a business process.
Appellants assert that claim 14' s reminder module, viewed as an
ordered combination, addresses the Internet-centric challenge of alerting a
second user to the first user's health-related user profile. Br. 13. Yet, as the
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court cautioned in DDR Holdings, "not all claims purporting to address
Internet-centric challenges are eligible for patent." DDR Holdings, 773 F.3d
at 1258. Thus, in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014 ), although the patentee argued that its 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 714), the court
determined that this alone could not render the claims patent-eligible where
the claims merely recited 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. at
715-16. Much like the situation in Ultramercial, there is no indication here
that a computer network, or the Internet, in particular, is used other than in
its normal, expected, and routine manner for receiving and processing data.
In addition, narrowing the abstract idea to cause a portion of the health-
related user profile to be displayed by a user device that is associated with a
second user based on a shared health-related goal merely limits the use of
the abstract idea to a particular technological environment, which the Court
made clear in Alice is insufficient to transform an otherwise patent-ineligible
abstract idea into patent-eligible subject matter. See Alice Corp., 134 S. Ct.
at 2358.
Turning to step two, Appellants argue that claim 14 contains
significantly more under step two of the Alice/Mayo framework. Br. 14. In
particular, Appellants contend that the claimed reminder module, when
viewed as an ordered combination, "represents a departure from what is
well-understood, routine, and conventional in the field," because at the time
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of the invention it was "well-understood and conventional in the field of
healthcare data collection ... to maintain strict confidentiality [ of] health-
related data." Id. at 15. But there is nothing in claim 14 about maintaining
confidentiality of the health-related data, and the argument is not
commensurate in scope with what's claimed. We find no indication in the
record, nor do Appellants point us to anything in the record, to indicate that
causing a portion of the health-related user profile to be displayed by a user
device associated with a second user based at least in part on a shared
health-related goal requires any specialized computer hardware or other
inventive computer component, invokes any assertedly inventive
programming, or is implemented using anything other than generic computer
components. As such, we are not persuaded that the reminder module,
considered individually and as an ordered combination, recites an inventive
concept sufficient to transform the abstract idea into a practical application.
We also disagree with Appellants' assertion that claim 14 is an
improved user interface for a computer, analogous to the claims in Core
Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir.
2018). Tr. 14. There, the invention concerned "improved display interfaces,
particularly for electronic devices with small screens like mobile
telephones." Core Wireless Licensing, 880 F.3d at 1359. "The improved
interfaces allow a user to more quickly access desired data stored in, and
functions of applications included in, the electronic devices." Id. An
application summary window displays "a limited list of common functions
and commonly accessed stored data which itself can be reached directly
from the main menu listing some or all applications." Id. ( citation omitted).
The patents at issue in Core Wireless Licensing "explain that the disclosed
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application summary window 'is far faster and easier than conventional
navigation approaches,' particularly for devices with small screens." Id.
(citation omitted). The Federal Circuit found that the claims are directed to
an improved user interface for computing devices, and directed to a
particular manner of summarizing and presenting content in electronic
devices. Here, claim 14 recites a survey module configured to send a first
question and a plurality of pictogram answers for the first question, and a
second question and a plurality of answers for the second question. In so
doing, claim 14 seeks to "improve[] engagement of the survey intake[,
thereby] obtaining more data." Tr. 14. But the improvement identified by
Appellants is an improvement to the abstract idea of gathering data,
analyzing data, and displaying the results, which is insufficient to transform
the abstract idea into a patent-eligible applicaiton. We find no improvement
to claim 14' s survey module analogous to the improved user interface of
Core Wireless Licensing that results in faster navigation.
We are not persuaded that the Examiner erred in rejecting claim 14
and its dependent claims under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
Independent Claim 1 and Dependent Claims 2, 7, and 28
Appellants assert that claim 1 is patent eligible for reasons similar to
those described above with reference to claim 14. Br. 16. These arguments
are not persuasive, at least for the same reasons presented above with respect
to claim 14.
Appellants assert that claim 1 recites limitations related to receiving a
request to access a health-related social user profile of a first user from a
user device associated with a second user who is not a healthcare
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professional, and granting the user device associated with the second user
permission to access the health-related social user profile based on the
request and a persmission granted by the first user. Appellants contend that
these limitations "when viewed within the claim as an ordered combination
distinguishes claim 1 from claims previously found by the courts to be
directed to abstract ideas." Br. 16. Specifically, Appellants charge that
claim 1 "addresses the Internet-centric challenge of sharing health-related
social user profiles with non-healthcare professionals and is contrasted
against pre-Internet business methods of maintaining health records in
confidence among health-care processionals [sic]." Id. And Appellants
contend that granting permission to access a health-related social user
profile, when viewed as an ordered combination, represents a departure from
what is well understood, routine, and conventional in the field. Id.
According to Appellants' attorney argument, it was "well-understood and
conventional in the field of healthcare data collection ... to maintain strict
confidentiality [ofJ health-related data." Id. at 16-17.
However, claim 1, like claim 14, is directed to collecting information
via a questionnaire, and analyzing the answers provided- i.e., an abstract
idea. Claim 1 additionally recites receiving a signal representing a
permission granted by the first user for access to the health-related social
user profile; receiving a request from the second user, who is not a
healthcare professional, to access the health-related social user profile; and
granting the user device permission to access the health-related social user
profile based on the request and the permission (i.e., steps (g}-(i)). In other
words, claim 1 recites an abstract idea along with routine additional steps
that lack any particular inventive technology. See Ultramercial, 772 F.3d at
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715-16 (recitation of abstract idea along with routine additional steps, such
as restrictions on public access and use of the Internet, is patent-ineligible).
Such steps, specified at a high level of generality, are insufficient to supply
an inventive concept. Steps (g) and (h), for example, represent insignificant
data gathering steps that add nothing of practical significance to the
underlying abstract idea. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 and its dependent claims under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
Independent Claim 8 and Dependent Claims 9, 10, and 2 7
Appellants assert that claim 8 is patent eligible for reasons similar to
those described above with reference to claims 1 and 14. Br. 17. These
arguments are not persuasive, at least for the same reasons presented above
with respect to claims 1 and 14.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 8 and its dependent claims under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection of claims 8-10 and 27.
Obviousness
Independent Claim 1, and Dependent Claims 2, 7, and 28
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a), because Fotsch fails to
disclose or suggest limitations (h) and (i), as recited in claim 1. Br. 6-7. In
rejecting claim 1, the Examiner finds that Fotsch at Figure 1 and paragraphs
77 and 81 teaches the argued limitations. See Final Act. 7-8. Appellants
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argue that paragraph 77 of Fotsch teaches a patient granting access to a
healthcare provider, not an individual who is not a healthcare professional,
as required by limitations (h) and (i). Br. 7.
Fotsch provides at paragraph 77 that a patient "may grant or deny
access by selecting a particular permission type for one or more
individuals." Fotsch further provides that "[i]n this example, each of the
individuals is a healthcare provider (e.g., physician)." Fotsch ,r 77; see also
id. at Fig. 7. Pointing to this passage, Appellants argue that Fotsch fails to
disclose that the second user is not a healthcare provider, as required by
limitations (h) and (i). However, the passage does not limit the individuals
who are granted access to include only healthcare providers. Instead, it
refers to a particular embodiment depicted in Figure 7 and suggests that
individuals who are not healthcare providers may be granted access in other
embodiments. Supporting this interpretation, Fotsch expressly provides in
the preceding paragraph that the patient grants access to a "healthcare
provider or another individual," i.e., someone who is not a healthcare
provider. Id. ,r 76 (emphasis added).
We also are not persuaded by Appellants' argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because Pristine teaches
away from the claimed invention. Br. 7-8. Appellants assert that Pristine
discloses assembling compiled information into a report that is provided to a
doctor or medical professional. Id. at 7 ( citing Pristine ,r,r 22-23).
Appellants' argument is not persuasive at least because Appellants do not
point to any passage in Pristine that criticizes, discredits, or otherwise
discourages a patient from granting an individual who is not a healthcare
provider access to the patient's health record-which is required to
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establish a "teaching away." See In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) ( explaining that a teaching away occurs when a references
discourages one skilled in the art from following the claimed path, or when
the reference would lead one skilled in the art in a direction divergent from
the claimed path).
Therefore, we sustain the Examiner's rejection under 35 U.S.C.
§ 103 (a) of independent claim 1 and its dependent claims, which are not
argued separately.
Independent Claim 8, and Dependent Claims 9 and 10
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 8 under 35 U.S.C. § 103(a), because Cacioppo fails to
disclose or suggest limitation (a), as recited in claim 8. Br. 8-10. The
Examiner finds that Cacioppo at Figure 6A and paragraph 43 teaches this
limitation. Final Act. 11.
Cacioppo provides an audience response system ("ARS") with
dynamic user interfaces. Cacioppo ,r 27. The ARS includes multiple remote
handsets that may be used by students to answer questions posed by a
teacher, vote on a topic, confirm attendance at a lecture, and so on. Id. ,r 28.
The dynamic user interfaces include multiple configurable user input
interface elements for answering various questions presented in an audience
interaction environment, such as a classroom. Id. ,r 31. A teacher
configures the configurable user input interface elements to correspond to
possible answers to a question, and a student answers the question by
selecting the appropriate user input interface element. Id. For example, a
teacher may configure user input interface elements 602a-602e to
correspond to different spatial regions on a displayed world map. Id. User
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input interface element 602b shows a box around South America. See id. at
Fig. 6A.
In rejecting claim 8, the Examiner finds that each answer associated
with Cacioppo' s configurable user input interface elements 602a---602e has
two portions: a box and a spatial region contained within the box. See Final
Act. 10 ("the box represents the container for the spatial region and the
spatial region represents the second portion of a statement"). The Examiner
takes the position that the claimed "first portion of the pictogram answer is
represented in Cacioppo as the box," and the claimed "second portion of the
pictogram is represented in Cacioppo as the portion of the country [sic]."
Ans. 5.
However, we agree with Appellants that one of ordinary skill in the
art would not reasonably understand Cacioppo' s box to be a portion of the
pictogram answer. See Br. 10; see also Tr. 8 (describing that Cacioppo's
"box" is a line around the answer, not a portion of the answer). For
example, Cacioppo describes that user input elements 602a---602d ( or
"boxes") may be configured as shown in Figure 6A to enclose the different
answers (i.e., spatial regions), or as shown in Figure 6B to point to the
different spatial regions). Cacioppo ,r 38. Stated differently, the user input
elements 602a---602d ("boxes") would be understood by one of skill in the art
to enclose the answer, not constitute a portion of the answer.
The Examiner further determines that the content of the first and
second pictogram answers, as recited in claim 8 's limitation (a), is an
obvious matter of design choice. Final Act. 10-11; see also Ans. 5---6. Yet,
"[r ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
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with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the
Examiner has failed to provide any articulated reasoning with rational
underpinnings for modifying Pristine with Cacioppo to arrive at Appellants'
claimed invention, including limitation (a).
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claim 8 and claims 9 and 10, which depend
therefrom.
Independent Claim 14 and Dependent Claims 15-17, 23, and 24
Independent claim 14 includes language substantially similar to the
language of claim 8, and stands rejected based on the same findings applied
with respect to claim 8. See Final Act. 16. Therefore, we do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of independent claim 14 and
the Examiner's rejections of dependent claims 15-17, 23, and 24.
Dependent Claim 2 7
The Examiner's rejection of dependent claim 27 does not cure the
deficiency in the Examiner's rejection of independent claim 8. Therefore,
we do not sustain the rejection of claim 27 for the same reason set forth
above with respect to the independent claim 8.
DECISION
The Examiner's rejection of claims 1, 2, 7-10, 14--17, 23, 24, 27, and
28 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1, 2, 7, and 28 under 35 U.S.C.
§ 103(a) is affirmed.
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The Examiner's rejections of claims 8-10, 14--17, 23, 24, and 27
under 35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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