Ex Parte Zivitz et al

Patent Trial and Appeal Board

Jun 21, 2018

13545512 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/545,512 07/10/2012
63049 7590 06/25/2018
F AEGRE BAKER DANIELS LLP I ROCHE
300 NORTH MERIDIAN STREET
SUITE 2700
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
Maury Zivitz
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.
ROCHE-P0004-0l 23175 1055
US2
EXAMINER
RIGGS II, LARRY D
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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):
BOB.NULL@faegrebd.com
inteas@faegrebd.com
pair_roche@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURY ZIVITZ and LOIS JOVANOVIC
Appeal2017-008453
Application 13/545,512 1
Technology Center 1600
Before DONALD E. ADAMS, JOHN G. NEW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1-19 (App. Br.
5). Examiner entered a rejection under 35 U.S.C. § 101. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify "Roche Diagnostics Operations, Inc.'~ as the real party
in interest (App. Br. 3).
Appeal2017-008453
Application 13/545,512
STATEMENT OF THE CASE
Appellants' disclosure "relates to a device and method that provides
insulin dosage alterations for various conditions" (Spec. i-f 2). Appellants'
claim 1 is representative and reproduced below:
1. A device for providing improved drug dosing advice to a
patient, the device being a portable, handheld and battery
powered device and the device comprising:
an evaluation and interpretation facility comprising a
processor for executing a program,
a memory for storing a program to be executed by the
processor and for storing and retrieving data used by the
program,
a display for displaying data and instructions to the user,
a human interface for entering data, and
instructions stored on the memory as part of the program
such that when the program is executed by the processor causes
the evaluation and interpretation facility to:
drug,
determine a first expected dose of the drug;
determine a first actually administered dose of the
determine whether the first actually administered
dose differs from a first expected dose of the drug,
determine a second expected dose of the drug;
determine a second actually administered dose of
the drug,
determine whether the second actually
administered dose differs from a second expected dose,
and
calculate a third expected dose on the basis of the
first actually administered dose and the second actually
administered dose when the first actually administered
dose is determined to differ from the first expected dose
and the second actually administered dose is determined
to differ from the second expected dose.
Appellants' claims 1-19 stand rejected under 35 U.S.C. § 101.
2
Appeal2017-008453
Application 13/545,512
ISSUE
Does the evidence of record support Examiner's finding that
Appellants' claimed invention is directed to patent ineligible subject matter?
ANALYSIS
Examiner finds that Appellants' claimed invention is directed to
patent ineligible subject matter (see Ans. 2-5). We agree.
The scope of 35 U.S.C. § 101 "is subject to an implicit exception for
'laws of nature, natural phenomena, and abstract ideas,' which are not
patentable." Intellectual Ventures I LLC v. Capital One Financial Corp.,
850 F.3d 1332, 1338 (Fed. Cir. 2017), citing Alice Corp. Pty. Ltd. v. CLS
Bankint'l., 134 S. Ct. 2347, 2355 (2014).
To determine whether the exception applies ... a court must
determine: (1) whether the claim is directed to a patent-
ineligible concept, i.e., a law of nature, a natural phenomenon,
or an abstract idea [(the "abstract idea" step)]; and if so, (2)
whether the elements of the claim, considered "both
individually and 'as an ordered combination,"' add enough to
"'transform the nature of the claim' into a patent-eligible
application [(the 'inventive concept' step)]."
(Intellectual Ventures, 850 F.3d at 1338, citing Alice Corp., 134 S. Ct. at
2355).
Applying the first step outlined above, Examiner finds that
Appellants' claims are directed to an abstract idea, specifically the
mathematical relationships set forth in Appellants' claims as determining
and calculating steps (see Ans. 3 and 6). We agree. "[A]n invention
directed to collection, manipulation, and display of data [is] an abstract
process." Intellectual Ventures, 850 F.3d at 1340; see generally id. at
1340-41; see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
13 66, 13 7 5 (Fed. Cir. 2011) ("The mere manipulation or reorganization of
3
Appeal2017-008453
Application 13/545,512
data ... does not satisfy the transformation prong"). Thus, collecting
information regarding first, second, etc. expected dosages of a drug, when
those dosages were administered, manipulating this information to determine
whether each dosage was administered when expected and when an
additional dose should be administered is an abstract process (see Ans. 3--4).
Therefore, we find no error in Examiner's finding that Appellants' claimed
invention is directed to a patent-ineligible concept, specifically an abstract
idea (see Ans. 2--4).
Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "If a
claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory." Parker v. Flook,
437 U.S. 584, 595[] (1978) (internal quotations omitted).
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); see also Fair Warning IP, LLC v. Iatric Systems, Inc., 839
F.3d 1089, 1093 (Fed. Cir. 2016) ("analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more," are
"essentially mental processes within the abstract-idea category").
Turning to the second, inventive concept, step, Examiner finds that
the remaining elements in Appellants' "claims encompass a general purpose
device that recites generic limitations of a processor, memory, display and
human interface encompassed on any general purpose [computer]" (Ans. 7).
"[M]ere recitation of a generic computer[, however,] cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S.
Ct. at 2358; see also Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S.Ct. 1289, 1301 (2012) ("[S]imply implementing a
4
Appeal2017-008453
Application 13/545,512
mathematical principle on a physical machine, namely a computer, [is] not a
patentable application of that principle"). We also agree with Examiner's
finding that the steps of Appellants' method "do not purport to improve the
functioning of [a] computer itself' or "improve[] computer technology" (see
Ans. 3--4). Thus, as Examiner explains, "[t]he hardware recited by
[Appellants'] ... claims do not offer a meaningful imitation beyond
generally linking 'the use of the method to a particular technological
environment,' that is, implementing via computers' (Ans. 4). See Alice, 134
S. Ct. at 2360.
We recognize Appellants' contention that Examiner's rejection is at
"odds with the holding of' Cal. Inst. of Tech. v. Hughes Communs., Inc., 59
F. Supp. 3d 974 (CACD 2014) and assertion that Appellants' claimed
"consideration of [doses] is not performed to describe preexisting
relationships, but rather creates relationships that generate meaningful
information to impact future recommended doses" (Br. 13-14). We are not
persuaded. Notwithstanding Appellants' contentions to the contrary, the
Cal. Inst. Court found patent eligibility after performing the two-step
approach set forth in Alice and found that the claims, although directed to
abstract ideas, were patent-eligible because they contained additional
limitations that provided an inventive concept, i.e., they met the
requirements of Alice's second step. See Cal. Inst., 59 F. Supp. 3d at 993-
94. In contrast to Cal. Inst., the claims on this record fail to meet the
requirements of Alice's second step, for the reasons set forth above, and,
therefore, do not amount to significantly more than the abstract idea itself.
Notwithstanding Appellants' contention to the contrary, Examiner
provided reasons for rejecting every claim on Appeal (see Ans. 2-5; cf Br.
5
Appeal2017-008453
Application 13/545,512
15 ("no discussion of the dependent claims is provided with respect to the
rejection under § [] 101 ")). In addition, although Appellants separately
identify the limitations of each rejected claim (see Br. 15-18), Appellants
fail to provide separate arguments for each claim or separately address
Examiner's rejection as it applies to each claim on Appeal. Cf In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board [has] reasonably
interpreted Rule 41.3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.") Accordingly,
the claims stand or fall together.
CONCLUSION
The evidence of record supports Examiner's finding that Appellants'
claimed invention is directed to patent ineligable subject matter. The
rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Claims 2-19 are not
separately argued and fall with claim 1.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
6