Ex Parte Ye et al

Patent Trials and Appeals Board

Jun 6, 2018

13022604 - (D) (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/022,604 02/07/2011
79681 7590
Baker & Hostetler LLP
45 Rockefeller Plaza
New York, NY 10111
06/08/2018
FIRST NAMED INVENTOR
Qin Ye
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.
DE2069 (042621.05) 7008
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/08/2018 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):
eofficemonitor@bakerlaw.com
Patents@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QIN YE and MATTHEW J. HADDAD
Appeal2017-003265 1
Application 13/022,604
Technology Center 3600
Before ERIC B. CHEN, ADAM J. PYONIN, and JOSEPH P. LENTIVECH,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-16, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Medversant Technologies LLC is identified as the real party in interest.
App. Br. 1-2.
Appeal2017-003265
Application 13/022,604
STATEMENT OF THE CASE
Introduction
The Application is directed to "an online computer system that allows
healthcare providers to connect via an online portal," improving "the ability
of a provider to readily find other providers who are qualified to provide
peer references." Spec. i-fi-13--4. Claims 1 and 9 are independent. Claim 1 is
reproduced below for reference:
1. A computer-implemented method for generating a
network of peers for obtaining peer references, the method
compnsmg:
receiving profile information for a particular healthcare
provider;
storing the profile information in a data storage device
hosting a networking database including a listing of providers
and profile information for each provider inclusive of the
professional credentials of each provider in the network
database;
converting the credential information in the network
database into a common format of collected credential
information by populating a common object model from the
collected credential information;
using a rules engine having a set of rules to implement the
construction by a computer of a dynamic virtual professional
network of providers from said network database based upon a
qualification criteria from the credential information to form a
limited purpose social network of healthcare providers;
using said computer to automatically identify one or more
other healthcare providers from said stored listing of providers in
the network database who are qualified to provide a peer
reference for the particular healthcare provider by comparing the
field specialization and discipline in the professional background
credentials of the healthcare providers in the virtual professional
network with the profile information received by the particular
healthcare provider for determining which of the other healthcare
providers have matching qualifications based on substantial
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equivalency in the area of field specialization and discipline and
inviting the other healthcare providers with matching
qualifications to join a professional network of peer referrals for
the particular healthcare provider when solicited to do so;
including the identified healthcare providers in a peer
network for the particular healthcare provider for transmitting a
request for peer reference to one or more of the identified
healthcare providers,
wherein the request for peer reference includes a link to a
peer referral input form having fields of peer referral and
mapping the fields of peer referral to the objects of the common
object model for automatically populating the form with peer
reference information.
The Examiner's Rejection
Claims 1-16 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2; Ans. 2--4.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make are deemed waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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: laws of nature, natural phenomena, and abstract ideas are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt'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.
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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,
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,"
e.g., to an abstract idea. Alice, 134 S. Ct. at 2355. If the claims are directed
to a patent-ineligible concept, 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."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In the Answer, the Examiner issued a new grounds of rejection of the
claims pursuant to 35 U.S.C. § 101:
Claims 1-16 are directed to the abstract idea of selecting
members of a network based on stored credentials and further
determine who, within the network, has the credentials to provide
a peer reference for a certain member, as explained in detail
below. The claim(s) do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional computer elements, which are
recited at a high level of generality, provide conventional
computer functions that do not add meaningful limits to
practicing the abstract idea.
Ans. 2.
Appellants argue the Examiner's new grounds of rejection is in error,
because the "interpretation of the Examiner that claim I merely describes 'a
method of selecting members of a network based on stored credentials' is
incorrect, in that this is the objective of the invention and does not represent
the claimed methodology as set forth in claim 1 for accomplishing this
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objective." Reply Br. 2. Appellants assert that the recited "rules engine is
essential to the subject invention," and the Examiner's analysis "leaves out
the use of the rules engine by the computer in combination with the virtual
professional network for performing the qualification criteria analysis of the
healthcare providers." Reply Br. 2-3.
We are not persuaded the Examiner errs. We adopt the Examiner's
findings and conclusions as our own to the extent consistent with our
analysis, and we add the following for emphasis.
Claim 1 recites receiving healthcare provider information, storing the
information as data in a common format, and using a rules engine to
organize the data and determine providers that match certain criteria, as well
as creating a professional network and inviting healthcare providers to join
the professional network. We agree with the Examiner that the claim
"corresponds to concepts identified as abstract ideas by the courts, such as
comparing new and stored information and using rules to identify options as
seen in SmartGene." Ans. 3 (citing SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014)).
Appellants' arguments focus on the claimed usage of the recited
"rules engine." See, e.g., App. Br. 2--4. We conclude however, that the use
of the rules engine and the professional network are part of the abstract idea
itself. See, e.g., Spec. i-f 5 ("Peer references are reviewed according to very
rigorous standards, and thus, not all providers are qualified to provide
references"). As determined by the Examiner, the recited rules engine is
used to analyze stored data; the claim is, thus, a method of organizing human
activity, or an idea of itself, that is comparable to concepts our reviewing
courts have found to be abstract. See Ans. 2-3; see also Intellectual
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Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017)
("the heart of the claimed invention lies in creating and using an index to
search for and retrieve data ... an abstract concept"); Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir.
2013) ("The abstract idea at the heart of system claim 1 ... is "generating
tasks [based on] rules ... to be completed upon the occurrence of an event")
(internal quotations and citation omitted); Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) ("The concept of data collection, recognition, and storage is
undisputedly well-known"); 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").
Additionally, we note claim 1 requires a computer, but otherwise
recites a set of steps that could be performed by a mental process or a person
using a pen and paper. See, e.g., Spec. i-fi-1 4--9 (describing known methods of
communicating among healthcare providers to analyze each other's
credentials and determine qualified peer references); i171 ("Any mechanism
for identifying, accessing, and comparing the information may be utilized as
will be apparent to a person of skill in the art"). The law is clear that "a
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101" and "purely mental processes
can be unpatentable, even when performed by a computer." CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373, 1375 (Fed. Cir. 2011).
We also disagree with Appellants' contention that the pending claims
are similar to both the claims "in the precedential decision of McRo ... [,]
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which also required claim-reciting rules," and "to the claims in Amdocs."
Reply Br. 5---6; McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Cir. 2016); Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841F.3d1288, 1300--01 (Fed. Cir. 2016). InMcRO, the claims "focused on
a specific asserted improvement in computer animation." McRO, 837 F.3d
at 1314. In Amdocs, "claim 1 solves a technological problem (massive data
flows requiring huge databases)" and "is a technical improvement over prior
art technologies and served to improve the performance of the system itself."
Amdocs, 841 F.3d at 1302.
In contrast with McRO and Amdocs, Appellants do not present, nor do
we find, a specific technical improvement provided by the present claims.
Rather, claim 1 automates a "traditionally subjective process performed
manually by human[ s ]" (Reply Br. 5-6), and automating a known process
does not "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78); see
also Ans. 5; Spec. i-fi-135--42 (describing implementing the process using
generic computer functions); FairWarning IP, LLC v. Iatric Sys., Inc., 839
F .3 d 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
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conventional computer activities or routine data-gathering steps) (internal
citation omitted).
CONCLUSION
Accordingly, we are not persuaded the Examiner erred in determining
independent claim 1 is "directed to non-statutory subject matter." Ans. 4.
Appellants do not provide additional substantive arguments for the
remaining claims. See Reply Br. 7. Thus, we sustain the rejection of
independent claim 1, and claims 2-16 for the same reasons as discussed
above.
DECISION
The Examiner's decision rejecting claims 1-16 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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