Ex Parte WANG et al

Patent Trial and Appeal Board

Nov 14, 2018

14289596 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/289,596 05/28/2014
143846 7590 11/16/2018
Sheppard Mullin / Palantir
379 Lytton Avenue
Palo Alto, CA 94301
FIRST NAMED INVENTOR
Lekan WANG
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.
53HV-259176-US 6934
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
svipdocketing@sheppardmullin.com
abaker@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEKAN WANG, ALLEN CHANG, JOHN GARROD,
SINA IMAN, PATRICK TARDIF, ANTOINE LLORCA,
SEV AS TIAN BRUCKNER, CODY VEAL, SAMUEL FENDELL,
CHRISTOPHER LEWIS, BRIAN NGO, PATRICK DUNN,
SEBASTIAN CALIRI,
HARI ARUL, AJAY SUDAN, MICHAEL WINLO, ISAAC GATENO,
MICHAEL GLAZER, DANIEL CERVELLI and
LAUREN CHAPARRO
Appeal2017-007151
Application 14/289,596
Technology Center 3600
Before ST. JOHN COURTENAY III, NORMAN H. BEAMER, and
JOHN D. HAMANN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a second Non-Final
Rejection of claims 1-3, 5-8, 10-14, and 16-20. Claims 4, 9, and 15 are
cancelled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b). We affirm.
1 According to Appellants, the real party in interest is Palantir Technologies
Inc., which is the assignee of the present application. App. Br. 3.
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STATEMENT OF THE CASE
Introduction
Embodiments of Appellants' invention are generally related to
computer-implemented systems and methods for analyzing healthcare-
related entity performance. Abstract.
Exemplary Claim
1. A system for analyzing healthcare-related entity
performance, the system comprising:
a memory device that stores a set of instructions;
one or more processors configured to execute the set of
instructions in order to:
[L 1] associate one or more of a plurality of categories of
healthcare-related interactions associated with multiple
healthcare-related entities in a data structure with one or more
filters corresponding to one or more filter selections;
receive a request that includes one or more filter
selections;
access the data structure including information that
specifies the plurality of categories of healthcare-related
interactions associated with multiple healthcare-related entities;
identify a set of categories from the plurality of
categories based on the one or more filter selections;
[L2] utilize the information of the identified categories
to:
determine one or more records within the data structure
based on the identified categories;
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determine one or more interactions within the data
structure comprising the one or more determined records;
determine one or more entities of the multiple
healthcare-related entities corresponding to the one or more
determined interactions; and
determine performance information indicating a
performance of the one or more entities based at least in part
on the one or more interactions; and
generate a user interface that includes the determined
performance information.
App. Br. 25 (Claims Appendix) (Contested limitations emphasized regarding
anticipation rejection C).
Rejections
A. Claims 1-3, 5-8, 10-14, and 16-20 are rejected under 35 U.S.C.
§ 101, as being directed to a judicial exception, without
significantly more. Non-Final Act. 3.
B. Claims 1-3, 5-8, 10-14, and 16-20 are rejected under 35 U.S.C.
§ 112(b) as being indefinite. Non-Final Act. 10. 2
C. Claims 1-3, 5-8, 10-14, and 16-20 are rejected under 35 U.S.C.
2 The Examiner initially set forth two independent bases for rejection B
under 35 U.S.C. § 112(b). As we understand the status of rejection Bon
appeal, the Examiner has withdrawn the first ground for the ,r 112(b)
rejection (Ans. 10, ,r 12, "The Examiner drops this rejection"), but the
Examiner does not withdraw the second ground under 35 U.S.C. § 112(b ).
Ans. 10-11, ,r 13, ("therefore the rejection is maintained."). Therefore, the
second ground of rejection under 35 U.S.C. § 112(b) is before us on appeal.
See Ans. 11, ,r 13.
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§ 102(a)(2) as anticipated by Chao (US 2006/0241974 Al; Oct. 26,
2006). Non-Final Act. 17.
Issues on Appeal
Did the Examiner err in rejecting claims 1-3, 5-8, 10-14, and 16-20
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
Did the Examiner err in rejecting claims 1-3, 5-8, 10-14, and 16-20
under 35 U.S.C. § 112(b), as being indefinite?
Did the Examiner err in rejecting claims 1-3, 5-8, 10-14, and 16-20
under 35 U.S.C. § 102(a)(2), as anticipated by Chao (US 2006/0241974 Al;
Oct. 26, 2006)?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection A under 35 U.S.C. § 101
Mayo/Alice Analysis
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) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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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, 82-84 (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, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "'Phenomena of nature, though just discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.'" In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk, 409
U.S. at 67). Moreover, 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. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
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combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S.Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). For example, we consider the
question of whether the claims are directed to a specific improvement in the
capabilities of the computing devices, or, instead, "a process that qualifies as
an 'abstract idea' for which computers are invoked merely as a tool."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two, whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See id.
The Examiner's Rejection A under 35 U.S.C. § 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes that claims 1-3, 5-8, 10-14, and 16-20 are directed to a judicial
exception, i.e., an abstract idea: "Although not explicitly stated, the abstract
idea is shown through: Comparing new and stored information and using
rules to identify options." Non-Final Act. 3. 3
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds "[t]he claims do not include additional elements ( e.g. computer,
processor, memory) that are sufficient to amount to significantly more than
3 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
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the judicial exception because the specification shows them to be part of a
general purpose computer." Non-Final Act. 3. 4
The Examiner cites paragraphs 4 7-50 of the Specification ( which
describe generic computer components) and finds:
the claimed elements are not improvements to another
technology or technical field and are not improvements to the
functioning of the computer itself. Rather, the elements
are simply appending well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
Non-Final Act. 4 (emphasis added).
For the aforementioned reasons, the Examiner concludes that all
claims 1-3, 5-8, 10-14, and 16-20 on appeal are not patent eligible under
35 U.S.C. § 101.
Mayol Alice Analysis - Step 1
Regarding Alice Step 1, Appellants contend that claims 1-3, 5-8,
10-14, and 16-20 satisfy step 1 because "the Examiner provides no
reasoning as to how any of the claims are directed to an abstract idea." App.
Br. 10-11. Appellants urge: "Instead, and without analyzing the actual
language of the claims, the Examiner merely generalizes that the claims are
drawn to 'an idea of itself,' which is allegedly shown through ' [ c ]omparing
new and stored information and using rules to identify options."'
4 The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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App. Br. 11.
Appellants further contend: "Appellants claims are similar to those
found subject matter eligible in Enfzsh because they too are 'directed to a
specific implementation of a solution to a problem in the software arts.'"
App. Br. 12. In support, Appellants note:
Id.
As described in the specification, the technology-at-issue
provides an improved analysis of interactions,
leading to reduced errors when processing extremely large
amounts of anonymous information, which can be useful when
attempting to detect fraud. See Specification ,r [0016]. This
reduction also leads directly to a decrease in the memory
requirements for storage and processing resulting in more
efficient processor operations.
Furthermore, the pending claims cannot be directed to an
abstract idea because they do not attempt to preempt or
monopolize every application of the asserted abstract
idea( s) of " [ c] omparing new and stored information and using
rules to identify options." This is at least evident from the prior
art of record, which demonstrates that alternative
methods in the art exist for " [ c] omparing new and stored
information and using rules to identify options," including those
that fall outside of the elements of the pending claims.
In response, the Examiner disagrees, and further explains the basis for
the rejection:
the Examiner disagrees with the Appellant's assertion regarding
"oversimplification." As the Specification states in paragraph
16, "Using the information that is collected, processed,
analyzed, and displayed, a number of useful insights associated
with healthcare-related entities can be inferred." The Abstract
states, "Computer implemented systems and method are
provided for analyzing healthcare-related entity performance."
Ans. 4.
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As pointed out by the Examiner (id.), Appellants' Specification (i116)
expressly describes: "Using the information that is collected, processed,
analyzed, and displayed, a number of useful insights associated with
healthcare-related entities can be inferred." ( emphasis added).
Our reviewing court has held that claims directed to data collection,
analysis, and display are directed to an abstract idea. Elec. Power Grp. LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" are "a familiar class of claims 'directed to' a patent
ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1093-94 (Fed. Cir. 2016).
The Federal Circuit further guides that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364,
1372 (Fed. Cir. 2017) (concluding "claims directed to the collection, storage,
and recognition of data are directed to an abstract idea"). The court also
guides that data gathering is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane),
ajf'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
Nor do we find persuasive Appellants' attempts to analogize their
claims to the subject claims considered by the court in McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), and Enfish.
App. Br. 11.
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We note the McRO claims concerned a method for automatically
animating lip synchronization and facial expressions. McRO, 837 F.3d at
1303. The McRO court concluded the subject claim did not recite an
abstract idea because the computer animation improved the prior art through
the use of rules, rather than artists, to set morph weights and transitions
between phonemes. Id. at 1308. Thus, the claimed invention in McRO
allowed for computer performance of animation steps that previously had to
be performed by human animators. Id. at 1309. The subject claim inMcRO
used "limited rules in a process specifically designed to achieve an improved
technological result" over "existing, manual 3-D animation techniques." Id.
at 1316 ( emphasis added).
Here, Appellants' claimed invention does not apply positively recited
rules, per se. The invention under appeal merely adapts to a technological
setting ( e.g., generic memory device, processor, and user interface) the broad
concept of associating one or more of a plurality of categories of healthcare-
related interactions with multiple healthcare-related entities, filtering the
information according to a filter selection, and using the results, e.g., for
display (to a person) on a user interface. Thus, the invention under appeal is
directed to the result of "generat[ing] a user interface that includes the
determined performance information." Claim 1. We emphasize that McRO
(837 F.3d at 1312) guides that "[t]he abstract idea exception prevents
patenting a result where 'it matters not by what process or machinery the
result is accomplished."' (quoting O'Reilly v. Morse, 56 U.S. 62, 113
(1854)) (emphasis added).
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Here, Appellants' claims merely implement generic computer
components to perform the recited functions (system claim 1) and steps
(method claim 11 ).
Regarding Appellants' arguments analogizing Enfzsh to the claims
before us on appeal (App. Br. 12), we note the Enfzsh court (822 F.3d at
1336) concluded that there was no abstract idea under Alice step 1
("Accordingly, we find that the claims at issue in this appeal are not directed
to an abstract idea within the meaning of Alice. Rather, they are directed to
a specific improvement to the way computers operate, embodied in the self-
referential table.").
Thus, the court concluded the claimed self-referential database table
was a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfzsh, 822 F.3d at 1339. Because the
analysis stops if there is no abstract idea under Alice step 1, the Enfish court
concluded the claims were patent eligible.
Here, Appellants have not persuasively shown that any features of the
claimed invention improve the way the recited generic "memory device"
( claim 1) and/or "data structure" ( claims 11 and 17), store and retrieve data,
in a manner analogous to that found by the court in Enfzsh.
Therefore, we are not persuaded that Appellants' claimed invention
improves the recited memory device or processor ( claim 1 ), or data structure
( claims 11 and 17) functionality or efficiency, or otherwise changes the way
the claimed generic computer components function, at least in the sense
contemplated by the Federal Circuit in Enfzsh.
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Regarding Appellants' contention asserting the absence of preemption
(App. Br. 12), 5 our reviewing court provides applicable guidance: "While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013).
Therefore, we are not persuaded by Appellants' argument regarding the
absence of complete preemption. See App. Br. 12, 14, 15.
Moreover, but for the recitations of a memory device, one or more
processors, and a data structure ( claim 1 ), we are of the view that the
recited functions or steps ( excepting the generation of the recited "user
interface") could be performed as mental steps, or with the aid of pen and
paper. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
4 7 (Fed. Cir. 2016) ("While the Supreme Court has altered the § 101
analysis since CyberSource in cases like Mayo and Alice, we continue to
'treat[] analyzing information by steps people go through in their minds, or
by mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category."' (Brackets in original) (quoting Elec.
Power Grp., 830 F.3d at 1354)); see also 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.").
"Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
5 Appellants repeat essentially the same preemption argument on pages 14
and 15 of the Appeal Brief.
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scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67
(1972). (Emphasis added). Moreover, "merely selecting information, by
content or source, for collection [and] analysis ... does nothing significant
to differentiate a process from ordinary mental processes .... " Elec. Power
Grp., 830 F.3d at 1355. Data gathering, such as receiving and analyzing (or
identifying data), by itself, does not transform an otherwise-abstract process
or system of information collection and analysis. See id.
For at least these reasons, we are not persuaded the Examiner erred in
concluding that each of claims 1-3, 5-8, 10-14, and 16-20 on appeal is
directed at least to the abstract idea of a method of organizing human (i.e.,
healthcare) activities, similar to the abstract ideas identified by our
reviewing courts, ( as discussed above) that could additionally be performed
as mental steps, albeit with the aid of pen and paper.
Appellants provide no further substantive arguments regarding Alice
Step 1. Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Therefore, we proceed to Alice Step 2.
Mayo/Alice Analysis - Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Non-Final Act. 3;
Ans. 4---6), we tum to the second part of the Alice/Mayo analysis. We
analyze the claims to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claims amount to
"significantly more" than the abstract idea. Alice, 134 S.Ct. at 2357 (internal
quotations and citation omitted).
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Regarding Alice Step 2, Appellants addresses the purported inventive
concept of the claims. Appellants urge:
Even if an abstract idea is somehow related to the
pending claims, which Appellant[s] dispute[], the pending
claims amount to "significantly more" than whatever abstract
idea may be asserted by the Examiner. For example, the claims
require specialized computer processing and hardware ( e.g.,
independent claim 11 recites "accessing a data structure
including information that specifies a plurality of
categories of healthcare-related interactions associated with
multiple healthcare-related entities" and "generating a user
interface that includes the determined performance
information"). Independent claim 1 ( directed to a "system for
analyzing healthcare related entity performance") and
independent claim 17 ( directed to a "non-transitory
computer-readable medium storing a set of instructions ... for
analyzing healthcare related entity performance") also recite
elements that are more than any abstract idea for similar
reasons.
As evidenced by the language of the claims,
Appellant[s '] independent claims do not merely correspond to
conventional functions of a general purpose computer. Instead,
these operations or functions require special design and
programmed operations and hardware, and equate to
"significantly more" than any abstract idea.
App. Br. 9 (emphasis added).
Contrary to Appellants' contentions (id.), we find the claims on appeal
are silent regarding specific limitations directed to an improved computer
system, processor, memory, network, database, or Internet. Therefore, we
find Appellants' claimed invention does not provide a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," as considered by the court in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
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2014) (emphasis added).
Further regarding the use of the recited generic memory device or
processor ( claim 1 ), or data structure ( claims 11 and 17), the Supreme Court
held "the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Alice, 134 S.Ct. at
2358.
Appellants' analogy to BASCOM 6 is similarly unavailing. See App.
Br. 10. The Federal Circuit held in BASCOM that the claimed Internet
content filtering, featuring an implementation "versatile enough that it could
be adapted to many different users' preferences while also installed remotely
in a single location," expressed an inventive concept in "the non-
conventional and non-generic arrangement of known, conventional pieces."
BASCOM, 827 F.3d at 1346, 1350.
Here, we are not persuaded by Appellants' contention that "the
particular arrangement of elements in the claims provides a technical
improvement over prior methods for analyzing healthcare data." App. Br.
15 ( emphasis added). This contention is unconvincing, because Appellants
fail to identify the particular structural arrangement of conventional
elements in the claims that provides the purported technical improvement.
Instead, Appellants' merely support their conclusion by an assertion:
"For example, as discussed above, the improved analysis techniques lead to
reduced errors when processing extremely large amounts of anonymous
information, which can be useful when attempting to detect fraud. See
Specification ,r [0016]." App. Br. 15. But see BASCOM, 827 F.3d at 1348
6 BASCOM Glob. Internet Servs. v. AT&T Mobility, LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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("An abstract idea on 'an Internet computer network' or on a generic
computer is still an abstract idea"). On this record, we are of the view that
Appellants' claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality.
Our reviewing court provides additional guidance: See Fair Warning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use
of generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter."); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) ( claims reciting, inter alia, sending messages over a network,
gathering statistics, using a computerized system to automatically determine
an estimated outcome, and presenting offers to potential customers found to
merely recite "'well-understood, routine conventional activities"' by either
requiring conventional computer activities or routine data-gathering steps)
(internal citation omitted); see also Elec. Power Grp., 830 F.3d at 1355
("We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are 'insufficient to pass the test of an
inventive concept in the application' of an abstract idea" ( quoting buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1353, 1355 (Fed. Cir. 2014)));
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332,
1341 (Fed. Cir. 2017) ("Rather, the claims recite both a generic computer
element-a processor-and a series of generic computer 'components' that
merely restate their individual functions .... That is to say, they merely
describe the functions of the abstract idea itself, without particularity. This is
simply not enough under step two").
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The Supreme Court additionally guides that the "prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or [by] adding
'insignificant post-solution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
Because we find Appellants have not established that claims 1-3, 5-8,
10-14, and 16-20 are directed to an improvement in the recited generic
memory device or processor ( claim 1 ), or data structure ( claims 11 and 17),
we conclude that none of the claim limitations, viewed both individually and
as an ordered combination, amount to significantly more than the judicial
exception in order to sufficiently transform the nature of the claims into
patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellants' claims 1-3, 5-8, 10-14, and 16-20, considered as a
whole, is directed to a patent-ineligible abstract idea (under step one), and
under step two, does not recite something significantly more to transform the
nature of the claim into a patent-eligible application.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection A under 35 U.S.C. § 101 of claims 1-3, 5-8, 10-14,
and 16-20, as being directed to a judicial exception, without significantly
more. 7
7 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
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Rejection B of Claims 1-3, 5---8, 10---14, and 16--20
under 3 5 U.S. C. § 112 (b) 8
Regarding the claim language, "utilize the information of the
identified categories to" perform the recited steps or functions of
"determining," the Examiner sets forth rejection B under 35 U.S.C. § 112(b)
(indefiniteness) for the following reason:
Claims 1, 11, and 1 7 provide for the use of "the information of
the identified categories," but, since the claim does not set forth
any steps involved in the method/process, it is unclear what
method/process applicant is intending to encompass. A claim is
indefinite where it merely recites a use without any active,
positive steps delimiting how this use is actually practiced.
Non-Final Act. 10.
Appellants traverse the § 112(b) rejection: "the Office appears to be
applying a misinterpretation of the relevant portion of the MPEP- MPEP §
2173.05(q) 'Use' claims. This section is directed to entire claims that 'claim
a process without setting forth any steps involved in the [ claimed] process
' MPEP § 2173.05(q)." App. Br. 19.
Appellants further contend: "On top of that, MPEP § 2173.05(q)(II)
further clarifies that the step of 'utilizing' is not indefinite. This clarification
shows that this section is only relevant to entire process claims that do not
recite any steps, as opposed to a step that recites 'utilizing,' as recited in the
pending claims." App. Br. 19 ( emphasis added).
In the Answer, the Examiner further explains the basis for the
rejection:
The question that the Examiner has is whether [ the claim 1
function] "utilize the information ... to:" means that the
8 See supra, n.2.
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"determine" steps that follow are performed or are the intent of
the "utilize the information." The Appellant argues the
converse of the claim language, or even more clearly that the
[ claim 1] "utilize the information of the identified categories
to:" limitation does not perform anything. The Examiner
believes that every limitation is important and therefore the
rejection is maintained.
Ans. 11 ( emphasis added).
As pointed out in MPEP § 2173.05(q)(II) (regarding "Use" Claims),
"It is often difficult to draw a fine line between what is permissible, and
what is objectionable from the perspective of whether a claim is definite."
Based upon our review of the record, we reverse the Examiner's
rejection B under 35 U.S.C. § 112(b) of all claims 1-3, 5-8, 10-14, and
16-20 on appeal, for essentially the same reason argued by Appellants in the
Appeal Brief ( 18-19). Moreover, we are of the view that the Examiner
conflates an arguable statement of intended purpose ("utilize ... to" -
claim 1) with indefiniteness.
Anticipation Rejection C of Representative Independent Claim 1
under 35 U.S.C. § 102(a)(2)
Issues: Under 35 U.S.C. § 102(a)(2), did the Examiner err by finding
the cited Chao reference expressly or inherently discloses contested
limitations L 1 and L2 :
[L 1] associate one or more of a plurality of categories of
healthcare-related interactions associated with multiple
healthcare-related entities in a data structure with one or more
filters corresponding to one or more filter selections; ...
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[L2] utilize the information of the identified categories
to:
determine one or more records within the data structure
based on the identified categories;
determine one or more interactions within the data
structure comprising the one or more determined records;
determine one or more entities of the multiple
healthcare-related entities corresponding to the one or more
determined interactions; and
determine performance information indicating a
performance of the one or more entities based at least in part
on the one or more interactions; and
generate a user interface that includes the determined
performance information[,]
within the meaning of representative claim 1 ?9 ( emphasis added).
Contested Limitation LI (Claim 1)
Appellants contend:
Chao generally relates to an "automated system and method for
evaluating the performance of individuals or entities employed
9 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see also, e.g., Spec. ,r 143 ("In the
foregoing specification, embodiments have been described with reference to
numerous specific details that can vary from implementation to
implementation. Certain adaptations and modifications of the embodiments
described herein can be made. Therefore, the above embodiments are
considered to be illustrative and not restrictive.") (emphasis added).
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by an organization." Chao, Abstract. Chao discloses collecting
data associated with physicians, performing statistical
analyses, and producing performance information. Chao, ,r
[0025]-[0029], Fig. 2. The cited portions of Chao, however, do
not disclose "associating one or more of a plurality
of categories of healthcare-related interactions associated with
multiple healthcare related entities in a data structure with one
or more filters corresponding to one or more filter selections,"
as claimed. For example, the Office cites paragraphs [0025]-
[0030] as disclosing a plurality of categories of healthcare-
related interactions associated with multiple healthcare-related
entities. Office Action, p. 11. These paragraphs describe
how statistical analyses can be performed on collected data,
how a user can access a "Physician Performance System," and
how requested information can be automatically calculated.
Chao,,r [0025]-[0030]. This portion of Chao, however, does not
disclose "associating one or more of a plurality of categories ...
with one or more filters" as claimed. While Chao discloses
classification systems and a plurality of evaluation
categories (see Chao, ,r,r [0026], [0028]), Chao does not disclose
associating the evaluation categories with filters.
App. Br. 20-21 ( emphasis added).
In response, the Examiner further explains the basis for the
anticipation rejection of contested limitation L 1 on the basis of claim
interpretation: "filtering is understood to be a query." Ans. 13. 10
We agree with the Examiner that database queries inherently filter the
data to be returned, because a standard SQL relational database query uses
conditional statements to return the desired (filtered) data. For example,
using "where" condition statements ( e.g., select employee_name from
10 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (internal citation omitted).
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table_name where employee_age > 40), as used in a standard SQL relational
database query). See Ans. 12-13.
Contested Limitation L2 (Claim 1)
Based upon our review of the record and the paragraphs in Chao cited
by the Examiner as evidence, we agree with and adopt the Examiner's
factual findings regarding contested limitation L2 of independent claim 1.
Non-Final Act. 11-12; see also Ans. 14--16.
However, as an initial matter of claim construction ( a question of
law), the Examiner raises the issue of purported intended use (Non-Final
Action 11-12), as discussed previously regarding rejection B. Specifically,
under anticipation rejection C: "The Examiner notes the 'using' verb ...
and[] how the use is not limiting. The information following 'identified
categories to' represents the intended use of the identified categories. These
functions are not positively claimed and therefore are not performed." Id.
See Claim 1.
We note our reviewing court guides: "[a]n intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention operates."
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although "[s]uch statements often ... appear
in the claim's preamble," In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
However, Appellants disagree and urge:
First, the "determining" steps recited above do not represent
"the intended use of the identified categories"; rather, each step
is positively claimed, and the claims are clear that the
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performance of each step is required to practice the claim. For
example, claim 11 recites "utilizing the information of the
identified categories to determine the one or more records .... "
(Emphases added.) Accordingly, to practice claim 11,
"information of the identified categories" must be utilized "to
determine the one or more records". It is insufficient that
"information of the identified categories" be utilized merely
with the intent that determination of the one or more records
may occur.
App. Br. 22.
Even assuming arguendo that Appellants are correct regarding the
disputed "determine" limitations being positively claimed (id.), in the
alternative, in considering representative independent claim 1 as a whole, we
conclude Appellants' claimed "determined performance information" is non-
functional descriptive material (NFDM) intended for human viewing.
The 1\1anual of Patent Examining Procedure (l\t1PEP) provides
applicable guidance: "where the claim as a whole is directed to conveying a
message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists." MPEP §
2111.05 (III.) (9th Ed., Rev. 08.2017, Last Revised Jan. 2018). See also
Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he
nature of the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.").
Therefore, in applying the procedural guidance of the MPEP, and the
controlling guidance of Nehls, we broadly but reasonably construe the
recited "determined performance information" ( claim 1) as non-functional
descriptive material merely intended for human perception.
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For at least these reasons, we agree with the Examiner that
Appellants' arguments are not commensurate with the scope of claim 1,
under a broad but reasonable interpretation. See supra n.10. Therefore, on
this record, we find a preponderance of the evidence supports the
Examiner's finding of anticipation over the cited Chao reference.
Accordingly, we sustain the Examiner's rejection C under§ 102(a)(2)
of representative independent claim 1. Claims 2, 3, 5-8, 10-14, and 16-20
(not argued separately) fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2015).
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
CONCLUSIONS
The Examiner did not err in rejecting claims 1-3, 5-8, 10-14, and
16-20 under 35 U.S.C. § 101, as being directed to a judicial exception,
without significantly more.
The Examiner erred in rejecting claims 1-3, 5-8, 10-14, and 16-20
under 35 U.S.C. § 112(b), as being indefinite.
The Examiner did not err in rejecting claims 1-3, 5-8, 10-14, and
16-20 under 35 U.S.C. § 102(a)(2), as being anticipated by Chao.
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DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5-8, 10-14,
and 16-20 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-3, 5-8, 10-14,
and 16-20 under 35 U.S.C. § 112(b), as being indefinite.
We affirm the Examiner's decision rejecting claims 1-3, 5-8, 10-14,
and 16-20 under 35 U.S.C. § 102(a)(2).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
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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