Ex Parte ZIOBRO

Patent Trials and Appeals Board

Feb 25, 2019

14875099 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/875,099
7590
RANDY T. ZIOBRO
10/05/2015
02/25/2019
FIRST NAMED INVENTOR
RANDY T ZIOBRO
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.
718195.1003 1098
EXAMINER
575 NW Lamonde Terrace LUBIN, VALERIE
Portland, OR 97229
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
02/25/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDY T. ZIOBRO
Appeal2017-009743
Application 14/875,099 1
Technology Center 3600
Before JOHN A. EV ANS, CARL L. SILVERMAN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7, 10-13, and 15-20, which constitute all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as Dura Health LLC. App. Br. 3.
Appeal2017-009743
Application 14/875,099
STATEMENT OF THE CASE
Appellant's invention relates to analyzing trending injury data
suffered by operators, such as military operators, and determining combat
mission readiness of the operators. Abstract; Spec. 13 :20-14: 10, 41: 11-19,
45:14--16, 54:6-8, Figs. 1-7. Claim 1 is exemplary of the matter on appeal
( emphasis added):
1. A method of analyzing trending injury data suffered by
operators, comprising:
receiving at a central server first pre-injury data about a first operator,
the first pre-injury data including a full-body medical assessment and a
tactical occupational assessment for the first operator before an injury
occurs, the first pre-injury data continuously compiled and stored at
multiple, regular intervals in a dynamic database;
receiving at the central server a first plan of care that includes
information related to a first injury suffered by a first operator, the first plan
of care including any one or more of multiple treatment elements with a
medical provider based at least in part on the tactical occupational
assessment of the first operator, the first plan of care continuously compiled
and stored in the dynamic database at every one of the multiple treatment
elements with the medical provider for the first operator;
receiving at the central server second pre-injury data about a second
operator, the second pre-injury data including a full-body medical
assessment and a tactical occupational assessment for the second operator
before an injury occurs, the second pre-injury data continuously compiled
and stored at multiple, regular intervals in the dynamic database;
receiving at the central server a second plan of care that includes
information related to a second injury suffered by a second operator, the
second plan of care including any one or more of multiple treatment
elements with a medical provider based at least in part on the tactical
occupational assessment of the second operator, the second plan of care
continuously compiled and stored in the dynamic database at every one of
the multiple treatment elements with the medical provider for the second
operator;
2
Appeal2017-009743
Application 14/875,099
identifying one or more common characteristics between any one or
more of the first pre-injury data, the second pre-injury data, the first
operator, the second operator, the first plan of care, and the second plan of
care;
analyzing each of the first pre-injury data, the second pre-injury data,
the first operator, the second operator, the first plan of care, the second plan
of care, and all identified common characteristics between any one or more
of the first pre-injury data, the second pre-injury data, the first operator, the
second operator, the first plan of care, and the second plan of care to identify
one or more trends relating to one or more of the first pre-injury data, the
second pre-injury data, the first operator, the second operator, the first plan
of care, and the second plan of care;
continuously creating a new dynamic database each time any one of
more of the first pre-injury data, the second pre-injury data, the first
operator, the second operator, the first plan of care, and the second plan of
care is received and each time any one or more trends relating to the first
pre-injury data, the second pre-injury data, the first operator, the second
operator, the first plan of care, and the second plan of care is identified;
storing each of the continuously created new dynamic databases on
the central server; and
transforming some portion of the first pre-injury data, the second pre-
injury data, the first operator, the second operator, the first plan of care, the
second plan of care, and the one or more identified trends into data reflecting
whether one or both of the first operator is combat mission ready and the
second operator is combat mission ready, the first operator being combat
mission ready based at least in part on the first pre-injury data and the
second operator being combat mission ready based at least in part on the
second pre-injury data; and
outputting to a user one or more of the identified trends and the
transformed data reflecting whether one or both of the first operator and the
second operator are combat mission ready.
App. Br. 33-35 (Claims Appendix)).
3
Appeal2017-009743
Application 14/875,099
REJECTIONS
Claims 1-7, 10-13, and 15-20 are rejected under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written-description requirement. Final Act. 5.
Claim 20 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor or a joint
inventor, or for pre-AIA the applicant regards as the invention. Final Act. 6.
Claims 1-7, 10-13, and 15-20 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 6-7.
Claims 1-7, 10-13, 15-18, and 20 are rejected under 35 U.S.C. § 103
as being unpatentable over Malone (US 2006/0206027 Al; published Sept.
14, 2006) ("Malone") in view of Collins et al. (US 2011/0077977 Al;
published Mar. 31, 2011) ("Collins"). Final Act. 8-12.
Claim 19 is rejected under 35 U.S.C. § 103 as being unpatentable over
Malone, Collins, and Ott et al. (US 2005/0108055 Al; published May 19,
2005) ("Ott"). Final Act. 12-13.
ANALYSIS
The§ l 12(a) rejection
A written "description must 'clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed." Ariad
Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991)). "In other words, the test for sufficiency is
4
Appeal2017-009743
Application 14/875,099
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Id. (citing Vas-Cath, 935 F.2d at 1563).
"Although [the applicant] does not have to describe exactly the subject
matter claimed, ... the description must clearly allow persons of ordinary
skill in the art to recognize that [he or she] invented what is claimed." Vas-
Cath, 935 F.2d at 1563 (alteration in original) (quoting In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989)). Put another way, "the applicant must ...
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention." Id. at 1563---64.
The Examiner finds the application does not describe a transformation
step in enough detail for the claims 1, 16, and 17 limitation "transforming
some portion" of data to show that Applicant was in possession of this
feature when the application was filed. Final Act. 5. The Examiner finds
the limitations "continuously creating a new dynamic database each time"
and "storing each of the continuously created new dynamic databases"
constitute new matter because Applicant's disclosure recites only one
database which is being updated and does not recite creating databases. Id.
(citing PG-Pub U.S. 2016/0098808 Al; Apr. 7, 2016 (hereinafter "Spec.")
,r 127).
Regarding "transforming," Appellant argues the Specification
describes "compilation" of injury data and "analysis of injury data" and the
"analysis of the injury data based on the selected criteria is what transforms
the data." App. Br. 9--10 (citing Spec. ,r,r 135-136). Appellant argues "the
practical, application-specific results can either be the transformed data or
can be some additional application of the transformed data." Id. at 10
5
Appeal2017-009743
Application 14/875,099
(citing Spec. f 148) (emphasis added)). According to Appellant, paragraph
148 of the Specification is an example of "transforming some portion" of
data to generate a commander's report. Id.
The Examiner finds the Specification does not describe a
transformation process because the transformation process depends on an
analysis and Appellant does not describe the analysis process. Ans. 2. The
Examiner finds that paragraph 148 of the Specification merely states that a
commander can use data in a report in order to determine if operators are
combat ready and does not provide details for the claimed feature of
"transforming some portion ... into data reflecting whether one or both ...
operator[ s] [are] combat ready .... " Id.
We are persuaded by Appellant's arguments because the compilation
and analysis transforms the data.
Appellant argues the Examiner errs in finding the claims 1, 16, and 17
limitations "continuously creating a new dynamic database each time" and
"storing each of the continuously created new dynamic databases" constitute
new matter. App. Br. 10. According to Appellant, the recited database is
"dynamic" and "continuously changing with additions of new data about
new injuries and any analyses performed on the data." Id. ( citing Spec.
,r 127). As changes are made to the database, the database is thus changed
and repeatedly or continuously stored, creating a "new" database that is
different from the database prior to being changed. Id. Appellant argues the
dynamic nature of the database creates "multiple databases," each database
capable of recording and storing a change in data wherein each of the
"multiple databases" can be retrieved or accessed based on the tracking or
recording the changes made to the dynamic database. Id. at 10-11.
6
Appeal2017-009743
Application 14/875,099
The Examiner finds paragraph 127 of the Specification recites a single
database being updated. Ans. 2. According to the Examiner, "[u]pdating a
database is different from creating multiple databases, and adding/updating
data to the database does not structurally split the database into two, three or
more databases each time said addition or update occurs; the database
remains a single database with updated content." Id. at 3. The Examiner
finds Appellant's claimed language of continuously creating a new database
and storing said new database is unsupported and constitutes new matter. Id.
We are persuaded by Appellant's arguments because updating a
database constitutes continuously creating a new dynamic database and the
claim does not recite creating multiple databases or structurally splitting the
databases.
Appellant argues the Examiner errs in finding the claim 10 limitation
"in response to receiving the first care plan, generating comparative data
between the first pre-injury data and the first plan of care ... is not described
in [the] specification." App. Br. 11 (citing Final Act. 5). According to
Appellant, the Specification, paragraph 141 and Figure 6, illustrates the
collection of "pre-injury evaluations" 610 and "injury treatment evaluations"
614 which can be correlated 620 and assessed 624. Id. Appellant argues the
recited element of Appellant's claim 10 was described in Appellant's
Specification in at least the portions referenced above in sufficient detail for
a person of skill in the art to understand that Appellant had possession of the
claimed features. Id.
Regarding "in response to receiving the first care plan, generating
comparative data between the first pre-injury data and the first plan of care,"
the Examiner finds Paragraph 141 of the Specification states that "data is
7
Appeal2017-009743
Application 14/875,099
being correlated without describing said correlation process, nor does it
disclose/describe a process of generating comparative data." Ans. 3.
We are persuaded by Appellant's arguments because the Specification
sufficiently describes pre-injury evaluations and injury treatment evaluations
which can be correlated and assessed.
The Examiner finds the claim 19 limitation "evaluation equipment
being electrically coupled to the central server" is not recited in the
Specification and constitutes new matter. Final Act. 5---6. Appellant argues
the Specification describes "[t]he testing equipment ... can collect the injury
data in a software format for electronic storage and analysis" and "the injury
strengthening and/or evaluation equipment can be linked to software .... "
App. Br. 11 (citing Spec. ,r,r 43, 44). According to Appellant, the recited
element of claim 19 was described in the Specification with enough detail to
allow a person of skill in the art to understand that Appellant was in
possession of the claimed invention and, thus, these features are not new
matter. Id. The Examiner disagrees with Appellant's arguments "because
the recitation of equipment in those paragraphs and of a server (i-f 127)
8
Appeal2017-009743
Application 14/875,099
receiving data does not show how the equipment is structurally or
electrically coupled to the disclosed server." Ans. 4.
We are not persuaded by Appellant's arguments as the Examiner's
findings, supra, are reasonable. Additionally, we note Appellant does not
rebut the Examiner's findings in a Reply Brief.
In view of the above, we do not sustain the rejection of independent
claims 1, 16, and 17, and dependent claims 2-7, 10-13, 15, 18, and 20. We
sustain the rejection of claim 19.
The§ l 12(b) rejection
The Examiner finds the claim 20 limitation "identifying one or more
tactical activities known to be more difficult'' is indefinite because the
Examiner cannot ascertain the metes and bounds of "known to be more
difficult," i.e., "known to whom/what, how." Final Act. 6.
Appellant argues the recited portion more fully reads "identifying one
or more tactical activities known to be more difficult for an operator
suffering from the identified first injury . .. "and "[t]he further reading of the
claim clearly defines whom, the operator; what, tactical activities; and how,
the tactical activity being more difficult for an operator suffering from the
first injury than an operator not suffering from the first injury." App. Br.
11-12. According to Appellant, "[t]hese identified who, what, and how
clearly define metes and bounds of the claim." Id. Appellant argues
paragraph 70 of the Specification further explains this concept: "tactical
skills that are known to be more difficult with specific weakened physical
9
Appeal2017-009743
Application 14/875,099
areas ... ," such "weakened physical areas" can be so "weakened" due to
injury. Id.
The Examiner finds Appellant does not set the metes and bounds for
the limitation for instance by indicating information regarding the tactical
activities, injury and pre-injury data. Ans. 4. Therefore, according to the
Examiner, one of ordinary skill in the art cannot ascertain the limits of what
is "known to be more difficult" to whom/what it is known, and how it is
known. Id. The Examiner finds "more difficult" is a relative term for which
Appellant does not provide a standard measure. Id.
We are persuaded by Appellants' arguments regarding indefiniteness
based on the understanding of one of ordinary skill in the art. In re Packard,
751 F.3d 1307 (Fed. Cir. 2014). As Appellant emphasizes, claim 20 recites
"known to be more difficult" in the context of the additional elements,
discussed supra, and, in this context, one of ordinary skill in the art would
understand the claim with sufficient definiteness. Additionally, we note the
Specification describes, for example, "[ o Jperators suffering from shoulder
injuries might need additional or repeated evaluation for the types of tactical
skills that are known to be more difficult with specific weakened physical
areas, like an operator's injured shoulder when the operator needs to
accurately fire an M16 rifle." Spec. 22:22-25.
In view of the above, we do not sustain the 35 U.S.C. § 112 (pre-
AIA), second paragraph, rejection of claim 20.
10
Appeal2017-009743
Application 14/875,099
The § 101 re} ection
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "Laws of
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 573 U.S. 208,216 (2014) (citation omitted); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. 573 U.S. at 217-18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed to."
See Alice, at 219 ("On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
11
Appeal2017-009743
Application 14/875,099
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191-192
("We view respondents' claims as nothing more than a process for molding
rubber products and not as an attempt to patent a mathematical formula.").
Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
protection of our patent laws, ... and this principle cannot be circumvented
by attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, at 221 ( citation omitted). "A claim that recites
12
Appeal2017-009743
Application 14/875,099
an abstract idea must include 'additional features' to ensure 'that the [claim]
is more than a drafting effort designed to monopolize the [ abstract idea]."'
Id. ( quoting Mayo, at 77). "[M]erely requir[ing] generic computer
implementation[] fail[ s] to transform that abstract idea into a patent-eligible
invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum").
Under that guidance, we first determine whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
13
Appeal2017-009743
Application 14/875,099
Appellant argues the Examiner errs in determining that the claims are
directed to an abstract idea, the claims do not recite significantly more than
the abstract idea, and in failing to give sufficient weight to Declarations
submitted by Appellant. App. Br. 12-28.
The Examiner determines
[ c] laims 1, 16 and 1 7 are directed to a method and systems for
performing functions of receiving pre-injury data and plan of care for
multiple operators, analyzing the received data to identify trends,
creating and storing databases with the received data and identified
trends, transforming and outputting the data. Those functions are
directed to the abstract idea of using categories to organize, store and
transmit data (Cyberfone ), as well as the abstract ideas of comparing
new and stored data, and applying rules to identify options (SmartGene)
and collecting and comparing known information (Classen) because
they relate to receiving data, comparing the data, storing the data in an
organized manner in a database and based on the comparison
identifying trends and other data analyses to output/transmit.
The claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because first,
for claim 1, there are no additional elements, and or claims 16 and 17,
the server and the "means for" components refer to a generic processor
that is well-known in computing technology and is being used to
implement the abstract ideas.
Final Act. 6-7
Appellant argues the expert testimony of Dr. Michael Bledsoe and
Ret. Lt. Col. Anthony Capobianco should be given substantial weight.
App. Br. 13-14 (citing§ 1.132 Declarations at App. Br. XI, Evidence
Appendix, Exhibits A, B). Appellant argues the Declarations show the
conventional state of the art of treating injuries suffered by operators does
not include the claimed "dynamic database" and additional features. Id. at
14
Appeal2017-009743
Application 14/875,099
13. According to Appellant, the Declarations support novelty and
uniqueness of the claimed methods and systems as being directed to the
combat mission ready status of operators and refute the Examiner's assertion
that Appellant's claims are directed to abstract ideas without having
additional limitations that add significantly more to the judicial exceptions.
Id. Appellant argues the Declarations "should carry substantial weight in
determining the fact-based analysis of what is considered conventional in
then relevant art, which in this case is a specific application to highly-trained
military operators who engage in combat missions." Id. at 14.
Appellant argues the claims recite much more than organizing,
storing, and transmitting of data, comparing new and stored data and
applying rules and/or collecting and comparing known information because,
for example, "claim 1 ... recites a method of analyzing trending injury data
in a dynamic database that are both unconventional in the art of injury
analysis and provides sufficient technical details that produces a concrete
result that is rooted in technology." Id. at 17 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)) (emphasis added).
According to Appellant, claim 1 recites a method of analyzing trending
injury data suffered by operators who have associated pre-injury data that
includes both a full body medical assessment and a tactical occupational
assessment. Id. at 19. Appellant argues, referring to Dr. Bledsoe's
Declaration, conventional processing of injury claims was through
"(1) paper files; (2) without any feedback on the patients and no follow-up
or re-evaluation of the patient; and (3) with only post-injury care that was
significantly delayed from the date of the injury" and "[i]n stark contrast,
Appellant recites dynamic pre-injury analysis, that is specific to the tactical
15
Appeal2017-009743
Application 14/875,099
occupational assessment of the operator."' Id. Appellant argues Ret. Lt.
Col. Capobianco's Declaration highlights that the conventional manner in
which the AFSOC (Air Force Special Operations Command) operators
sought medical treatment was post-injury using static data. Id. at 21.
Appellant argues, like Enfish, the claims recite a concrete
improvement in database technology, which is deeply rooted in
technology and claims a very specific and dynamic database that
continuously produces a concrete result of another dynamic database. Id.
at 23 ( citing Enfzsh ). Appellant argues the Examiner did not consider the
invention as a whole. Id. at 25.
Appellant further argues the claims recite significantly more than the
abstract idea. Id. at 26-28. According to Appellant, it is "the combination
of creating a dynamic database of injury information and identified trends
and then continuously updating the dynamic database each time new data is
received and/or analysis occurs that is patentable subject matter." Id. at 27
(citing Alice, 573 U.S. at 208; Diehr, 450 U.S. at 175).
In the Answer, the Examiner finds the expert testimony does not
materially impact the eligibility analysis of the claimed subject matter,
which in its current form remains ineligible. Ans. 4. The Examiner finds
the use of a database to store data and the continuous update of the database
are routine and well-known functions linked to data storage which do not
add significantly more to the disclosed abstract concepts. Id. at 5.
According to the Examiner, the analysis step and the transforming step are
similar to a comparison process of received data with other received and
stored data as in both Classen and SmartGene. Id. at 5 ( citing Classen
Immunotherapies, Inc. v. Elan Pharms, Inc., 786 F.3d 892 (Fed. Cir. 2015);
16
Appeal2017-009743
Application 14/875,099
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed.
Cir. 2014))). The Examiner determines the present claims are ineligible
because, like Electric Power Group, Appellant's claims are directed to
"collecting data, analyzing it and displaying certain results of the collection
and analysis." Id.
The Examiner finds Appellant's arguments referring to "smart
database" are not reflected in the claims and the claims are not similar to
DDR because Appellant's claims are not rooted in technology and could be
performed using pen and paper to review data received from the database or
other conventional data communication means such as paper, phone, fax,
face-to-face conversation, etc. Id. (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). The Examiner finds
Enfzsh is inapplicable because, unlike Enfish, which improved the function
of a computer, the present claims do not achieve unconventional results or
improve the function of a computer. Id. The Examiner finds the operators
do not add to eligibility considerations. Id. at 6.
As discussed below, we are persuaded by Appellant's arguments. In
particular, we determine the Examiner's analysis does not correctly weigh the
Declarations in Alice step 2 inventive-concept inquiry.
Applying the current Guidelines (Memorandum), we agree with the
Examiner's findings that claim 1 recites abstract ideas, including
"collecting data, analyzing it and displaying certain results of the collection
and analysis." Ans. 5 (citing Electric Power Group, LLC, v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016)); see also additional abstract ideas, Final
17
Appeal2017-009743
Application 14/875,099
Act. 72. The identified abstract ideas constitute a method of organizing
human activity and constitute a judicial exception. See Memorandum,
84 Fed. Reg. 50 at I(a), III.
Next, we consider whether the claim includes additional elements that
integrate the judicial exception into a practical application. Here, although
the claim does include additional elements, such as a dynamic database, a
central server, a first and second operator, these are insufficient to constitute
integration into a practical application because these elements are recited at
high level of generality and the claim simply applies the judicial exception
using computer components. In particular, the additional elements do not
constitute a particular machine, but instead use a generically recited
computer (i.e., generic computer components) to perform the abstract idea.
See Memorandum, 84 Fed. Reg. 50 at III A(2); MPEP § 2106.05(b); Eibel
Process Co. v. Minn. & Ontario Paper Co., 261 U.S. 45, 64--65 (1923);
MPEP § 2106.05(±); Alice, 573 U.S. at 222-26; Benson, 409 U.S. 63; Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
Therefore, under the Memorandum, claim 1 is directed to an abstract
idea, and we proceed to analyze the claims under Alice step 2. As discussed
2 "Claims 1, 16 and 1 7 are directed to a method and systems for performing
functions of receiving pre-injury data and plan of care for multiple operators,
analyzing the received data to identify trends, creating and storing databases
with the received data and identified trends, transforming and outputting the
data. Those functions are directed to the abstract idea of using categories to
organize, store and transmit data (Cyberfone ), as well as the abstract ideas of
comparing new and stored data, and applying rules to identify options
(SmartGene) and collecting and comparing known information (Classen)
because they relate to receiving data, comparing the data, storing the data in
an organized manner in a database and based on the comparison identifying
trends and other data analyses to output/transmit." Final Act. 6-7.
18
Appeal2017-009743
Application 14/875,099
above, in the Alice step 2 inquiry, we determine whether there is an
inventive concept that renders the abstract idea patent eligible.
We note the introduction of a processor of a computer system into the
claims to implement an abstract idea is not a patentable application of the
abstract idea. Alice, 573 U.S. at 223. The computer implementation here is
purely conventional and performs basic functions. See id. at 225. Appellant
does not adequately show how the claimed steps are done technically such
that they cannot be done manually or that they are not routine and
conventional functions of a generic computer. See Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) ("the limitations of
claim 17 involve arranging a hierarchy of organizational and product groups,
storing pricing information, retrieving applicable pricing information,
sorting pricing information, eliminating less restrictive pricing information,
and determining the price. All of these limitations are well-understood,
routine, conventional activities previously known to the industry.").
Appellant's reliance on DDR is misplaced as the recited claims do not
improve the computer or underlying technology. In DDR, the claims at
issue involved, inter alia, "web page[] displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants" (claim 1 of U.S. Patent No.
7,818,399). The Federal Circuit found the claims in DDR to be patent
eligible under step two of the Mayo/Alice test because "the claimed solution
is necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." DDR Holdings, 773
F.3d at 1257. Specifically, the Federal Circuit found the claims addressed
the "challenge of retaining control over the attention of the customer in the
19
Appeal2017-009743
Application 14/875,099
context of the Internet." Id. at 1258. The rejected claims are dissimilar to
DDR's web page with an active link, and the Specification does not support
the view that the computer related claim elements are unconventional. See
Spec. 41: 8-19. Similarly, we agree with the Examiner that, unlike Enfzsh,
the present claims are not directed to a specific improvement to computer
functionality.
However, we are persuaded by Appellant's argument that the
Examiner erred in determining that the Declarations of Dr. Michael Bledsoe
& Ret. Lt. Col. Anthony Capobianco do not "materially impact the
eligibility of the claimed subject matter." Ans. 4. In particular, on the
record before us, the unrebutted Declarations persuasively contradict that
claim 1 recites only generic computer components that are well understood,
routine, and conventional under step two of Alice. We note 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). Here, on the record before us, the facts set
forth in the unrebutted Declarations support that claim 1 is not well
understood, routine, and conventional to a skilled artisan in the relevant
field. See also MPEP § 2106.05(d).
In view of the above, we do not sustain the rejection of claim 1,
independent claims 16 and 17, and dependent claims 2-7, 10-13, 15, and
18-20.
20
Appeal2017-009743
Application 14/875,099
The§ 103 rejection
Appellant argues the Examiner errs in finding the combination of
Malone and Collins teaches the limitations of independent claims 1, 16, and
17 because the Examiner incorrectly relies on Collins to teach the limitation
"to identify one or more trends relating to one or more of the first pre-injury
data, the second pre-injury data, the first operator, the second operator, the
first plan of care, and the second plan of care." App. Br. 28-29. According
to Appellant, Collins, paragraph 30 relied upon by the Examiner, only
briefly references trends in data for determining a comprehensive worker's
compensation loss history on a business, not for active treatment of an
injured operator both pre-injury and post-injury. Id. at 28. Appellant argues
Collins does not mention trends anywhere else and the mention of trends in
Collins provides no explanation as to the manner in which the claims are
calculated or used and no examples are explained beyond merely citing the
type of data in which a trend might occur. Id. Appellant further argues the
data collected and analyzed in Collins relates only to a static snapshot of
data that is taken after an injury occurs and without an interactive or
dynamic component. Id.
The Examiner notes that Collins is relied upon to disclose identifying
trends related to injury, how the trend data is used afterwards, i.e., for
worker's compensation or for treatment of an injury is directed to the
intended use of the data resulting from the step of identifying said trend, and
such intended use does not limit the step itself. Ans. 6-7. Collins is not
relied upon to show a data-analysis process, for which Examiner relies on
Malone. Id. at 7. The Examiner finds the type of injury or medical data
used to identify trends is a substitution of one known type of medical data
21
Appeal2017-009743
Application 14/875,099
for another known type of medical data that yields the same predictable
results of showing trends in injury data. Id.
Regarding Appellant's argument that, because Collins does not teach
dynamic data, its trends cannot become dynamic trends either, the Examiner
finds that data used to identify trends, whether old or new does not change
the step of identifying the trends, but merely the value/ direction of the trends
may change. Id. The Examiner finds dynamic data simply refers to updated
data, which again does not further limit a step of identifying trends using
injury/medical data. Id. The Examiner further finds Malone discloses
updating a database. Id. (quoting Malone ,r 116, "Next, at operation 422, the
computing apparatus 102 updates the data source with data associated with
the predictive analysis associated with the athlete assessed. Thus, the
computing apparatus 102 adds more data to the athlete injury data store in
the data mine server 112 after each assessment."). The Examiner finds
Collins also updates a database ( quoting Collins ,r 15, "Insurance company
125 can also update its databases regularly," and citing Collins ,r 32).
According to the Examiner, in Malone and Collins, data is used to identify
trends changes and would therefore result in changed or updated trends. Id.
Appellant presents no persuasive argument that the claim terms
should be limited to exclude the combined teachings of Malone and Collins
and presents no persuasive argument that the Examiner's findings and claim
interpretations are unreasonable or overbroad. Collins teaches using
trending information to deal with injury data, and we agree one of ordinary
skill in the art would use this general teaching in the injury-treatment system
of Malone. Claim terms in a patent application are given the broadest
reasonable interpretation consistent with the Specification, as understood by
22
Appeal2017-009743
Application 14/875,099
one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004).
Appellant argues the references individually, although the rejection is
based on the combination of the teachings of the cited references. In re
Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references." (citations omitted)); In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant also argues an unreasonably narrow teaching of the cited
references and an overly demanding standard of obviousness.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
Keller, 642 F.2d at 425.
Here, the Examiner provides sufficient evidence as required for
obviousness. As stated by the Supreme Court, the Examiner's obviousness
rejection must be based on:
[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
23
Appeal2017-009743
Application 14/875,099
The Examiner's findings are reasonable because the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" because the skilled artisan is "a person of ordinary creativity, not
an automaton." KSR, 550 U.S. at 420-21.
Based upon the teachings of the references and the fact that each
claimed element was well known in the art, we agree with the Examiner
because the combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.
Id. at 415-16. We note Appellant presents no persuasive arguments that the
results are unpredictable. Moreover, as discussed supra, the Examiner
additionally provided reasons why one of ordinary skill in the art would
combine each of the references in the manner suggested.
In view of the above, we sustain the rejection of claim 1, independent
claims 16 and 17 as these claims are argued together with claim 1, and
dependent claims 2-7, 10-13, 15, and 18-20.
24
Appeal2017-009743
Application 14/875,099
DECISION
We affirm the Examiner's rejection of claim 19 and reverse the
rejection of claims 1-7, 10-13, 15-18, and 20 under 35 U.S.C. § 112(a).
We reverse the Examiner's rejection of claim 20 under 35 U.S.C.
§ 112(b).
We reverse the Examiner's rejection of claims 1-7, 10-13, and 15-20
under 35 U.S.C. § 101.
We affirm the Examiner's rejections of claims 1-7, 10-13, and 15-20
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
25