Ex Parte Verstandig et al

Patent Trial and Appeal Board

Dec 28, 2018

13310373 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/310,373 12/02/2011
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-001/01 US
316256-2002
8402
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
Appeal2017-001953 1
Application 13/310,373 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 1-22. 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 Dec. 2,
2011), and Appeal Brief ("Br.," filed Dec. 10, 2015), and the Examiner's
Final Office Action ("Amend.," mailed Mar. 11, 2015) and Answer ("Ans.,"
mailed Sept. 23, 2016), and the transcript of the oral hearing held on October
16,2018.
2 Appellants identify Audax Health Solutions, LLC as the real party in
interest. Br. 3.
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Application 13/310,373
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 1002.
Claims 1, 8, and 14 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is 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 signal
sent to a user device such that a user of the user device can select
a first pictogram answer independent from any other individual;
[ (b)] receiving a signal representing the user selection of
the first pictogram answer from the plurality of pictogram
answers for the first question;
[ ( c)] selecting a second question based on the selection of
the first pictogram answer by the user, and not a third question
( 1) that is different from the second question and (2) designated
for selection when the user selects the second pictogram answer;
[(d)] sending a signal representing the second question and
a plurality of pictogram answers for the second question, the
second question being different from the first question, the
plurality of pictogram answers for the second question being
different from the plurality of pictogram answers for the first
question, the first question and the second question collectively
defining at least portion of a health-related survey, the plurality
of pictogram answers for the first question and the plurality of
pictogram answers for the second answer configured to engage
the user more than text-only answers;
[ ( e)] receiving a signal representing a user selection of a
pictogram answer from the plurality of pictogram answers for the
second question; and
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[(f)] defining a health-related user profile based on the user
selection for the second question.
REJECTIONS
Claims 1 and 8 are provisionally rejected under 35 U.S.C. § 101 as
claiming the same invention as that of claims 1, 3, 4, and 8 of copending
Application No. 13/310,373. 3
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1 and 2 are rejected under 35 U.S.C. § I02(b) as anticipated by
Pristine (US 2004/0138924 Al, pub. July 15, 2004).
Claim 3 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Huyn (US 2002/0035486 Al, pub. Mar. 21, 2002) and Kellman
(US 2003/0151630, pub. Aug. 14, 2003).
Claims 4 and 5 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Pristine and Afeyan (US 2007 /0282666 Al, pub. Dec. 6, 2007).
Claims 6 and 7 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Pristine and Iliff (US 2003/0135095 Al, pub. July 17, 2003).
Claims 8-10, 21, and 22 are rejected under 35 U.S.C. § I03(a) over
Pristine and Young (US 2005/0273359 Al, pub. Dec. 8, 2005).
Claim 11 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Pristine, Young, Huyn, and Kellman.
Claims 12 and 13 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pristine, Young, and Afeyan.
3 13/310,373 is the Application Number for the current appeal.
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Claims 14 and 15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pristine and Sukurai (US 2002/0062248 Al, pub. May 23,
2002).
Claims 16 and 17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pristine, Sakurai, and Iliff.
Claim 18 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Pristine, Sukurai, Huyn, and Kellman.
Claims 19 and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pristine, Sukurai, and Afeyan.
ANALYSIS
Nonstatutory Double Patenting
Claims 1 and 8 are provisionally rejected under 35 U.S.C. § 101 as
claiming the same invention as claims 1, 3, 4, and 8 "of copending
Application No. 13/310,373." Final Act. 3. Even though Appellants do not
contest this rejection (see Br. 14), Application No. 13/310,373 refers to the
subject application on appeal. Because the Examiner has not established a
prima facie provisional rejection under 35 U.S.C. § 101, we do not sustain
this provisional rejection.
Anticipation
Claims 1 and 2 are rejected under 35 U.S.C. § I02(b) as anticipated by
Pristine. Appellants do not contest this rejection. Therefore, we summarily
sustain the rejection of claims 1 and 2 under 35 U.S.C. § I02(b).
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Obviousness
Independent Claim 8 and Dependent Claims 9--13, 21, and 22
In rejecting claim 8 under 35 U.S.C. § 103(a), the Examiner relies on
Pristine as disclosing substantially all of the claim limitations. See Final
Act. 12-14 (citing Pristine ,r,r 24, 48, 49, 52, 58, Figs. 7-8). The Examiner
acknowledges that Pristine does not teach "access[ing] a third-party
repository containing lifestyle information for the user;" "compar[ing] the
pictogram answer for the first question against the lifestyle information
during the first time period;" and "identify[ing] ... the pictogram answer for
the first question as a suspect answer based on the lifestyle information
being inconsistent with the pictogram answer for the first question," as
recited in claim 8. Id. at 13-14. The Examiner finds that Young teaches
these limitations. Id. at 14 ( citing Young ,r 50). Specifically, the Examiner
finds that Young discloses "an automated system for eliciting information
from a patient where [the] system receives and stores data from a patient for
use in comparing consistency of answers," and "flagging the answer as
being inconsistent when comparing to previous data" Id.
Young describes a patient using a computing system to complete a
health care questionnaire at a pre-op screening website prior to surgery.
Young ,r,r 10, 40. Specifically, a health care provider determines that a
patient needs a particular surgical procedure, logs into a pre-op screening
website, and sets up a questionnaire for the patient. Id. ,r 41. The patient
logs into the pre-op screening website and answers the questions. Id. ,r 44.
The patient's answers are stored, and software processes the answers to
check for certain errors and determine a confidence level. Id. ,r 50. For
example, if a patient answers "no" to hypertension but the physician
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measures high blood pressure during a physical exam, then the on-line
questionnaire makes further inquiry or the patient's answer is reviewed or
re-confirmed to get a set of consistent and reliable answers. Id.
Appellants argue that because Young's system collects its own
information, it cannot be reasonably interpreted as accessing a third party
repository for lifestyle information, as required by claim 8. Br. 5---6. The
Examiner interprets Young's centralized database 34 on computer 30 as the
claimed third party repository. See Final Act. 14 ( citing Young ,r 50); see
also Ans. 3--4 (citing Young ,r,r 10, 50, Fig. 2). The Examiner takes the
position that Young's paragraph 50 "clearly teaches to access[] a third party
repository [centralized database 34] for information." Ans. 3. The
Examiner points out that claim 8 does not clearly delineate the first and
second parties and the Examiner determines one of ordinary skill in the art
would interpret Young's hospital as a third party, and the patient and
healthcare provider as the first and second parties, respectively. Id. at 4.
However, claim 8 recites code comprising seven steps to be executed
by a processor, and the steps include receiving a user selection. Therefore,
one of ordinary skill in the art would understand the entity or entities whose
code causes the processor to execute the recited steps and a user as the first
and second party. Young discloses that computer 30 hosts websites for
viewing information and for receiving information from a patient and health
care provider. Young ,r 40. The information displayed on the hosted
website is stored on central database 34. Id. Central database 34 also stores
and maintains the questionnaires and the corresponding answers which pass
through the website. Id.; see also id. ,r 50. Because the Examiner finds that
centralized database 34 on computer 30 is the claimed third party repository,
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and centralized database 34 stores and maintains the questionnaires and
corresponding answers, making it one of the first and second parties, the
Examiner has not adequately shown on the present record "access[ing] a
third party repository," as recited in claim 8.
The Examiner additionally finds in the Answer that Pristine at
paragraph 58 teaches "obtaining data from a third-party repository of data."
Id. at 3. Pristine at paragraph 58 teaches that the kiosk can send an intake
report to a server, and the server selects an appropriate treatment room and
prints the report. But sending a report to a central server and the server
printing and/ or selecting a treatment room does not teach or suggest
accessing a third-party repository containing lifestyle information for the
user, and comparing a pictogram answer for the first question against the
lifestyle information, as required by claim 8.
The Examiner also finds that Pristine teaches at paragraph 61 that the
server can be located in a third party location. Paragraph 61 teaches a
variation in which a server is located at a dispatch center and executes the
intake software. In this variation, the server determines availability of
certain hospitals to handle a condition reported by a patient and directs the
patient to a hospital having capacity and/or expertise to handle the patient
and the patient's condition. Pristine ,r 61. But because the central dispatch
center executes the intake software, the central dispatch center and patient
correspond to first and second parties and, thus, fail to teach accessing a
third-party repository, as required by claim 8. See, e.g., Pristine ,r,r 43-57.
( describing the intake process in which a computer system presents
questions and recites responses). The Examiner has not shown that Pristine,
alone or in combination with Young, teaches accessing a third party
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repository containing lifestyle information for the user, and comparing the
pictogram answer for the first question against the lifestyle information, as
required by claim 8.
Therefore, we do not sustain the rejection of claim 8 under 35 U.S.C.
§ 103(a). We also do not sustain the rejections of claims 9--13, 21, and 22,
which depend from claim 8 and do not cure the deficiencies in the rejection
of claim 8.
Independent Claim 14 and Dependent Claims 4, 6, 7, 15-17, and 19
Appellants do not contest the rejections of claims 4, 6, 14--17 and 19
under 35 U.S.C. § 103(a). Therefore, we summarily sustain the rejections of
claims 14--17 and 19 under 35 U.S.C. § 103(a).
Dependent Claims 3 and 18
We are persuaded by Appellants' arguments that the Examiner erred
in the rejections of dependent claims 3 and 18 under 35 U.S.C. § 103(a)
because Huyn and Kellman do not teach or suggest that "the first pictogram
answer has a size and the second pictogram answer has a size larger than the
size of the first pictogram answer, the size of the first pictogram answer
being associated with a numerical value, the size of the second pictogram
answer being associated with a numerical value larger than the numerical
value associated with the first pictogram answer," as recited in claim 3, and
similarly recited in claim 18. Br. 6-7. The Examiner maintains that the
argued limitation is obvious over Huyn and Kellman because Huyn teaches
that a questionnaire presents different images, each image being associated
with a specific value or answer (Final Act. 7 ( citing Huyn ,r 80), 25), and
Kellman teaches displaying various images to the user that are
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"proportionally sized based on [the] value assigned to each image" (id. at 8
(citing Kellman, Fig. 4, Abstract); see also id. at 25).
Appellants argue that paragraph 80 of Huyn illustrates a picture of
human hands so that a patient can select a specific hand joint, but does not
disclose or suggest presenting several different images or images associated
with a specific value or answer, asserting Huyn is not relevant to a plurality
of pictogram answers. Br. 6-7. Appellants further argue that Kellman
teaches data visualization, but does not contain a description of surveys or
pictogram answers. Id. at 7.
In the Answer, the Examiner elaborates that Huyn at paragraph 80
teaches displaying images of different medications to the patient, and that
each image is associated with a specific value, or answer. Ans. 4--6. The
Examiner reasons that "medications have different shapes and sizes and
therefore displaying images of different medications is analogous to
displaying images with different sizes." Id. at 5. The Examiner
acknowledges that Huyn fails to teach a first image having a size larger than
a second image. Id. And the Examiner finds that Kellman describes
displaying images of objects having different sizes, the objects' sizes being
based on the objects' associated value. Id. The Examiner determines that it
would have been obvious to combine the references to "allow[] a user to
discriminate size among many objects in a visual scene." Id.
Huyn teaches a questionnaire system in communication with a
commercial medication software package that provides images of different
medications to help patients identify medications whose names and dosage
they do not remember. Huyn ,r 80. The images can be "organized by
symptom and displayed to the patient." Id.
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Kellman shows in Figure 4 aircraft position and heading in two
dimensional space. Kellman ,r 27, Fig. 4. The axes represent latitude and
longitude, and a number displays the altitude of the aircraft. Id. The size of
the aircraft icon is selected from a limited number of discriminable different
sizes to represent the aircraft altitude, with each size representing a distinct
altitude range. Id. at Abstract.
It is unclear how or why, and the Examiner does not adequately
explain how or why, one of ordinary skill in the art having knowledge of
Kellman's disclosure of conveying altitude information through icon size,
would be motivated to modify the size of images in Huyn' s medications
such that "the first pictogram answer has a size and a second pictogram
answer has a size larger than the size of the first pictogram answer, the size
of the first pictogram answer being associated with a numerical value, the
size of the second pictogram answer being associated with a numerical value
larger than the numerical value associated with the first pictogram answer,"
as recited in claim 3, and similarly recited in claim 18. For example, it is
unclear what value would be associated with Huyn's image sizes of
medications, particularly where the images help patients remember the
names and dosage of their medications.
Therefore, we do not sustain the rejections of claims 3 and 18 under
35 U.S.C. § 103(a).
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Dependent Claims 5 and 20
We are persuaded by Appellants' arguments that the Examiner erred
in rejecting dependent claims 5 and 20 under 35 U.S.C. § 103(a) because
Afeyan does not teach or suggest
the first pictogram answer has a first portion and a second
portion, the second pictogram answer has 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[,]
as recited in claim 5, and similarly recited in claim 20. See App. Br. 7-8.
The Examiner determines that "Afeyan further teaches [that] each answer
has two portions[:] the box and the thumbs up." Final Act. 10 (citing
Afeyan, Fig. 7 A, ,r 185), 27 ( citing Afeyan, Fig. 7 A).
However, we agree with Appellants that one of ordinary skill in the
art would not reasonably understand Afeyan's box to be a portion of the
pictogram answer. In particular, we agree that one of ordinary skill would
interpret Afeyan's box as a border to a "thumbs up" answer that itself does
not convey meaning. See Br. 8 ("the 'box' of Afeyan is a mere border or
background ... it does not convey meaning, and it therefore cannot be
reasonably interpreted as reading on a portion of a pictogram answer").
Therefore, we do not sustain the Examiner's rejections under 35 U.S.C.
§ 103(a) of dependent claims 5 and 20.
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
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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
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 providing a
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healthcare survey to a patient. Final Act. 4; see also Ans. 8. The Examiner
concluded that the focus of the claims, as illustrated by claim 14, is on
"collecting information via a survey, analyzing the answers providing, and
displaying certain results of the collection and analysis, such as issuing
rewards," which the Examiner determines is a combination of abstract idea
processes and, therefore, an abstract idea. Ans. 8 ( citing Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (collecting information, including when limited to particular
content, is within the realm of abstract ideas); In re TL! Commc 'ns LLC
Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2017) (analyzing information
by steps people go through in their minds or by mathematical algorithms is
essentially a mental process within the abstract-idea category.). Specifically,
the Examiner determines that "[t]he advance the Appellant[s] 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," i.e., an abstract idea. Ans. 8. 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. 4; see also Ans. 9--10.
Independent Claim 14 and Dependent Claims 15-20
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 provide
attorney argument that claim 14 is not directed to an abstract idea because it
is rooted in computer technology and does not recite a business practice
known from the pre-Internet world along with the requirement to perform it
on the Internet. Br. 9. In particular, Appellants assert that in the pre-Internet
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world health related user profiles, if developed at all, presumably were
developed in isolated systems, such as those maintained by hospitals or
doctors. Id. If rewards for developing the user profiles were issued,
presumably they were not issued on the basis of the number of questions
answered. Id. According to Appellants, the claimed solution is "only
possible in the post-Internet world" where users can complete health-related
profiles on their own time and preferred location. Id. at 9--10. Appellants
further contend that only in the post-Internet environment is providing
incentives a useful mechanism for encouraging users to complete additional
survey questions. Id. at 10. However, Appellants do not cite any factual
evidence to support these assertions, which amount to mere attorney
argument. See In re Pearson, 949 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
Moreover, even if Appellants provided evidentiary support to support the
assertions, the challenge that Appellants' identify the invention as
addressing-i.e., incentivizing a user to complete additional survey
questions to develop more robust profiles (Br. 1 O; see also Spec. ,r 1004
("people may find known surveys boring and may lack the motivation to
complete known surveys")) - is not a problem rooted in computer
technology or an Internet-centric challenge.
Although Appellants ostensibly suggest otherwise, the claims at issue
in DDR Holdings were not held patent-eligible because they involved the
use of 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
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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. Here, Appellants have
not demonstrated that claim 14 addresses any comparable Internet-centric
challenge or uses a computer network other than in its normal, expected, and
routine manner.
Appellants assert that claim 14 "is not directed to an abstract idea as
contemplated by the courts." Br. 10. Claim 14 recites an apparatus having a
survey module, a database, and a reward module. The survey module is
configured to: (1) send a signal representing a first question and a plurality
of pictogram answers; (2) receive a signal representing a selection of an
answer; (3) send a signal representing a second question and a plurality of
pictogram answers; (4) receive a signal representing a selection of an
answer; ( 5) send a signal representing a third question; ( 6) receive a signal
representing a selection of an answer; and (7) send a signal representing a
fourth question and a plurality of pictogram answers. The database stores a
health related user profile for the first user and second user based on their
answers to the questions. The reward module causes a first reward to be
issued to the first user and a second reward to be issued to the second user
based on the number of questions answered.
Claim 14, thus, broadly recites communicating information between
users and an apparatus. Claim 14 recites an "apparatus" that comprises a
survey module implemented in at least one of processor or memory, a
database, and a reward module operably coupled to the database module.
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Yet, the underlying processes recited in claim 14 are all acts that could be
performed by a human, e.g., via oral or written communication, without the
use of a computer. For example, a person (or questioner), using pen and
paper, could communicate a question and a plurality of pictogram answers to
a user, and the user, in tum, could communicate a selection of a pictogram
answer from the plurality orally or via a written communication. In response
to receiving the selected answer, the questioner then could store a health-
related user profile based on answers to questions, mentally or using pen and
paper. A person additionally could cause a reward to be issued to the user
based on the number of answers received.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. See CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011)
("[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under§ 101."); Gottschalk v. Benson,
409 U.S. 63, 67 (1972) ("Phenomena of nature ... , mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work."). And, mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. CyberSource, 654 F .3d
at 1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
Claim 14 recites that the reward module is coupled to the database
module and configured to cause a first reward to be issued to a first user and
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a second reward to be issued to the second user. But, like the risk hedging in
Bilski4 and the intermediated settlement in Alice, the use of rewards to
incentivize desired behavior is "a fundamental economic practice long
prevalent in our system of commerce," Alice Corp., 134 S. Ct. at 2356
(citing Bilski, 561 U.S. at 611), and "an 'abstract idea' beyond the scope of
§ 101." Id.
Claim 14 combines the abstract idea of collecting and analyzing
information with the abstract idea of issuing rewards. However, merely
combining two abstract ideas does not make the combination any less
abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea ...
does not render the claim non-abstract."); see also FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas).
Turning to step two, Appellants assert that claim 14 contains
recitations that are significantly more than what is well-understood, routine,
and conventional in the field. Br. 10. Specifically, Appellants assert that
issuing rewards to a user for a profile based on a number of answers is not
conventional in the field of healthcare data collection. Id. Appellants assert
that healthcare-related data is collected by healthcare professionals and kept
highly confidential for privacy purposes. Id. at 10-11. "But the relevant
inquiry is not whether the claimed invention as a whole is unconventional or
non-routine." BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018). Instead, the question is whether the claim includes
4 Bilski v. Kappas, 561 U.S. 593 (2010).
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additional elements, i.e., elements other than the abstract idea itself, that
"'transform the nature of the claim' into a patent-eligible application."
Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). These
transformative elements must supply an "inventive concept" that ensures the
patent amounts to "significantly more than a patent upon the [ineligible
concept] itself." Id. (alteration in original) (quoting Mayo, 566 U.S. at
72-73).
The Examiner determined here, and we agree, that the only elements
beyond the abstract idea are generic computer components used to perform
generic computer functions, e.g., sending, receiving, storing, processing, and
storing data (see Final Act. 4; Ans. 4)- a determination amply supported
by Appellants' Specification (see, e.g., Spec. ,r,r 1021-1027). The Federal
Circuit, in accordance with Alice, has "repeatedly recognized the absence of
a genuine dispute as to eligibility" where claims have been defended as
involving an inventive concept based "merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality." Berkheimer v. HP, Inc., 890 F.3d
1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) ( citations omitted).
We are not persuaded of Examiner error by Appellants' argument that
that claim 14 is patent-eligible because it does not pre-empt the use of the
abstract idea in all fields. Br. 11. There is no dispute that the Supreme
Court has described "the concern that drives [ the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption." Alice Corp.,
134 S. Ct. at 2354. But, 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
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principle of preemption is the basis for the judicial exceptions to
patentability" and "[ fJor 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). "[P]reemption may signal patent ineligible subject matter, [but]
the absence of complete preemption does not demonstrate patent eligibility."
Id.
To the extent that Appellants argue that claim 14 is analogous to the
claims in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2018) because it improves a display interface by "driv[ing]
better interaction and improv[ing] user interaction with the machine
interface," we are not persuaded. Tr. 14 ("the claims do not "provid[ e] a
static list of questions that everyone goes through, but subsequent questions
can be based on answers previously provided"). The invention in Core
Wireless 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 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
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computing devices, and directed to a particular manner of summarizing and
presenting content in electronic devices. Here, claim 14 recites an apparatus
comprising a survey module configured to send signals representing first
through fourth questions and a plurality of pictogram answers for each
question, and to receive signals representing a selection of an answer to each
of the four questions. 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 application.
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 8 and Dependent Claims 9-13, 20, and 21
Appellants argue that claim 8 does not recite an abstract idea "[ f]or
reasons similar to those discussed with reference to claim 14." Br. 12.
Appellants contend that claim 8 is necessarily rooted in computer
technology. Id. at 12. In particular, Appellants assert that "the ability to
access a third party repository containing lifestyle information for the user
and the ability to compare pictogram answers against the lifestyle
information is an integral part of the claim such that absent computer
technology in which it is rooted, no solution remains," and it is "simply not
feasible [to access a third party repository] without the assistance of a
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computer." Id. Here, Appellants' argument is based on the same false
premise described above with respect to claim 14: using computers to
implement the abstract idea makes the claim patent eligible. We find no
indication in the Specification, nor do Appellants direct us to any indication,
that the operations recited in claim 8, whether considered alone or in
combination, focus on a specific improvement in computer technology.
Instead, claim 8 focuses on a process that qualifies as an abstract idea for
which computers are invoked as a tool.
Appellants also argue that claim 8 contains "significantly more" than
the abstract idea because it includes improvements to another technology or
technical field. Id. Specifically, Appellants provide attorney argument that
"claim 8 applies health-related survey results, which are traditionally highly
confidential for patient privacy purposes, to a different use in a different
field, the open sharing paradigm of third-party lifestyle data, to provide 'a
health-related user profile based on the user selection of the first question,
the user selection of the second question, and the suspect answer."
Appellants charge that this limitation is an improvement to another
technology field, and represents a limitation other than what is well-known,
understood, routine, and conventional in the field. Id. at 12-13. However,
we fail to see how or why, and Appellants do not explain how or why, this
limitation constitutes a technological improvement as opposed to an
improvement in a business practice. We find no indication in the
Specification, nor do Appellants provide any indication, that the operations
recited in claim 8 require any specialized computer hardware, invoke any
assertedly inventive programming, or otherwise are implemented using other
than generic computer technology.
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Here, the advance Appellants purport to make is a process of
gathering and analyzing information of a specified content, and not any
particular assertedly inventive technology for performing those functions.
"As many cases make clear, even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
SAP Am., Inc. v. Investpic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed.
Cir. 2016) (citing cases)). "It is clear from Mayo that the 'inventive concept'
[under step two of the Mayo/Alice test] cannot be the abstract idea itself."
Berkheimer v. HP Inc., 890 F.3d at 1374 (Moore, J., concurring); see also
BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d at1290 ("[i]t has been clear
since Alice that a claimed invention's use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
'significantly more' than that ineligible concept").
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 8 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 has been amended to recite sending a
signal representing a first question and selecting a second question based on
selection of the first pictogram answer by the user and, therefore, "contains
significantly more than providing a healthcare survey to a patient." Br. 13.
Yet, the limitations identified by Appellants amount to steps for gathering
and processing information, which are abstract ideas and fail to provide an
inventive concept. Additionally, the identified limitations are steps for
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providing a healthcare survey to a patient, the abstract idea identified by the
Examiner. As such, they fail to transform the claimed subject matter into a
patent-eligible application such that the claims amount to significantly more
than the abstract idea itself.
Appellants additionally argue that claim 1 is patent eligible because it
does not tie up the judicial exception identified by the Examiner. But
preemption is not a separate test for patent eligibility.
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.
DECISION
The Examiner's provisional rejection of claims 1 and 8 under
35 U.S.C. § 101 is reversed.
The Examiner's rejection of claims 1 and 2 under 35 U.S.C. § 102(b)
is affirmed.
The Examiner's rejections of claims 3, 5, 8-13, 18, and 20-22 under
35 U.S.C. § 103(a) are reversed.
The Examiner's rejections of claims 4, 6, 7, 14--17, and 19 under
35 U.S.C. § 103(a) are affirmed.
The Examiner's rejection of claims 1-22 under 35 U.S.C. § 101 is
affirmed.
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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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