Gale, Brian

Patent Trials and Appeals Board

Jul 20, 2020

2019003805 (P.T.A.B. Jul. 20, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/408,686 03/21/2009 Brian Gale BG-2 9971
59830 7590 07/20/2020
TED SABETY, c/o Sabety +associates, PLLC
733 Third Avenue
16th Floor
New York, NY 10017
EXAMINER
KIM, STEVEN S
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
TED@SABETY.NET
docket@sabety.net
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN GALE
____________

Appeal 2019-003805
Application 12/408,686
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3–6, 12, 14, 21–24, 26, and 28–35. An oral
hearing in this appeal was held June 2, 2020. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
The claimed invention “relates to computer information systems, and
more particularly . . . to a system and method for monitoring and assembling
metadata related to critical test result delivery systems” (Spec. 1).
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of verification monitoring of a critical test
result message management system performed by a computer
system comprised of at least one computers comprising:
[(a)] receiving into the computer system at least one data
messages embodying a corresponding at least one critical test
result messages, said at least one data messages having an
associated at least one timing data;

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief
(“Appeal Br.,” filed January 7, 2019) and Reply Brief (“Reply Br.,” filed
April 15, 2019), and the Examiner’s Answer (“Ans.,” mailed February 14,
2019) and Final Office Action (“Final Act.,” mailed June 7, 2018). We note
that the pages of Appellant’s Appeal Brief are not numbered; we refer to the
title page as page 1 and treat the pages that follow as though consecutively
numbered. Appellant identifies Baker Scott Holdings, LLC as the real party
in interest (Appeal Br. 2).
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[(b)] determining by using the computer system to read
from a computer data storage device data that represents the
received at least one data messages, at least one test result
message metadata corresponding to the received at least one
message, said determined metadata describing at least one of a
transmission time, a receipt time, a retrieval time, a response
time, or an interval between two times, by further using the
timing data corresponding to the at least one data messages
associated with the at least one critical test result messages;
[(c)] using the computer system to calculate data
representing a usage pattern using the determined at least one test
result message metadata; and
[(d)] using the computer to automatically determine a
logical condition using the data representing the usage pattern,
said logical condition comprising either the state of compliance
or the state of non-compliance of the calculated usage pattern
with a predefined usage pattern requirement of the critical test
result message management system.
REJECTIONS
Claims 1, 3–6, 12, 14, 21–24, 26, and 28–35 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1, 3–6, 12, 14, 21–24, 26, and 28–35 are rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.2

2 The Examiner has withdrawn the rejection of claims 3, 14, 21, 22, 24, and
28–31 under 35 U.S.C. § 112, first paragraph, as failing to disclose a
sufficient algorithm (Ans. 15).
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Claims 1, 3–6, 12, 14, 21–24, 26, and 28–35 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter that Appellant regards as the
invention.
Claims 1, 3–5, 12, 14, 21–24, 26, and 28–35 are rejected under
35 U.S.C. § 103(a) as unpatentable over Laumann et al.
(US 2007/0299703 A1, published Dec. 27, 2007) (“Laumann”) and
White et al. (US 2008/0103720 A1, published May 1, 2008) (“White”).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Laumann, White, and Matsumoto et al. (US 2004/0082845 A1, published
Apr. 29, 2004) (“Matsumoto”).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group (Appeal Br. 18–25).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
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patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “a process in which data [are]
analyzed in determining a usage pattern and determining whether the
determined usage pattern is compliant or non-compliant,” i.e., to an abstract
idea similar to other concepts that the courts have held abstract (Final
Act. 11–12). The Examiner also determined that the claims do not include
additional elements or a combination of elements sufficient to amount to
significantly more than the abstract idea itself (id. at 12–13).
After the Final Office Action was mailed, the U.S. Patent and
Trademark Office (the “USPTO”) published revised guidance on January 7,
2019 for use by USPTO personnel in evaluating subject matter eligibility
under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
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procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.3,4
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or

3 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
4 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 18–23). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “VERIFICATION MONITOR FOR
CRITICAL TEST RESULT DELIVERY SYSTEMS,” and describes, in the
Background section, that although medical testing and imaging technologies
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and procedures are playing an increasingly critical role in diagnostic
decision-making, not all findings are reported or provided to clinicians in a
sufficiently timely and accurate manner so as to enable proper diagnosis and
treatment (Spec. 1). The Specification describes that “[c]ritical test result
management (CTRM) is a set of computer-executable procedures that
automates delivery, stor[age,] and confirmation of test results from reporting
physicians, who perform diagnostic test[s], . . . to clinical physicians[,] who
use the test results to perform diagnoses” (id. at 2). These CTRM systems
purportedly “do an outstanding job of monitoring the performance of the
clinical physician with regard to how quickly results are retrieved and acted
upon,” but, they do not monitor the performance of the reporting physician,
who may sit on test results for an unduly long time or bypass the CTRM
system entirely in reporting test results (id. at 3–4).
The claimed invention is intended to address this issue “by providing
a mechanism whereby the compliance of reporting physicians . . . with
prescribed CTRM procedures[,] and [their regular] usage . . . of a CTRM
[system,] . . . may be verified” (Spec. 4). Information concerning critical
test result messages from one or more reporting physicians, i.e., “test result
metadata,” is, thus, captured from a CTRM system and used to calculate
usage metrics; these usage metrics are then analyzed to determine whether
usage of the CTRM system has fallen below a predetermined threshold (id.).
Consistent with this disclosure, claim 1 recites a method of
verification monitoring of a critical test result message management system
comprising: (1) receiving a medical critical test result message having
associated timing data, i.e., “receiving into the computer system at least one
data messages embodying a corresponding at least one critical test result
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messages, said at least one data messages having an associated at least one
timing data” (step (a)); (2) extracting test result message metadata
(describing at least one of a transmission time, a receipt time, a retrieval
time, a response time, or an interval between two times) from the received
message, and using the metadata to calculate a usage pattern, i.e.,
determining by using the computer system to read from a
computer data storage device data that represents the received at
least one data messages, at least one test result message metadata
corresponding to the received at least one message, said
determined metadata describing at least one of a transmission
time, a receipt time, a retrieval time, a response time, or an
interval between two times, by further using the timing data
corresponding to the at least one data messages associated with
the at least one critical test result messages; [and]
using the computer system to calculate data representing a
usage pattern using the determined at least one test result
message metadata
(steps (b) and (c)); and (3) determining whether the calculated usage pattern
complies with a predefined usage pattern requirement, i.e.,
using the computer to automatically determine a logical
condition using the data representing the usage pattern, said
logical condition comprising either the state of compliance or the
state of non-compliance of the calculated usage pattern with a
predefined usage pattern requirement of the critical test result
message management system
(step (d)). These limitations, when given their broadest reasonable
interpretation, recite verifying the compliance of health professionals with
usage metrics by: (1) collecting information, i.e., critical test result
messages, including timing data; (2) analyzing the information, i.e.,
extracting test result metadata and calculating a usage pattern using the
metadata; and (3) reporting the results of the collection and analysis, i.e.,
determining whether the calculated usage pattern complies with a predefined
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usage pattern requirement. Simply put, claim 1 recites a method of
managing personal behavior or relationships or interactions between people,
which is a method of organizing human activity and, therefore, an abstract
idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
The Federal Circuit has held similar concepts abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include merely
collecting data, analyzing the data, and displaying the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“As many cases make clear, even if a process of collecting
and analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.”) (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing
cases)). Determining whether a calculated usage pattern complies with a
predefined usage pattern requirement, i.e., a comparison process, also is
substantially similar to other concepts that courts have held abstract. See,
e.g., Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018)
(concluding that parsing, comparing, storing, and editing data are abstract
ideas); SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950
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(Fed. Cir. 2014) (comparing new and stored information and using rules to
identify options is an abstract idea).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and
(e) in non-exhaustively listing considerations indicative that an additional
element or combination of elements may have integrated the recited judicial
exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. For example, an additional element may have integrated the judicial
exception into a practical application if the additional element (1) reflects an
improvement in the functioning of a computer or an improvement to other
technology or technical field; (2) implements the judicial exception with, or
uses the judicial exception with, a particular machine or manufacture
integral to the claim; or (3) effects a transformation or reduction of an article
to a different state or thing. Id. However, merely using a computer as a tool
to perform an abstract idea, adding insignificant extra-solution activity to a
judicial exception, or only generally linking the use of the judicial exception
to a particular technological environment or field are not sufficient for a
practical application. Id.
Addressing Step 2A, Prong Two of the 2019 Revised Guidance,
Appellant asserts, “there is nothing so ‘practical’ as an invention that
mitigates the risk that a medical practitioner could cause the death of a
patent by failing to adequately use a ‘critical test result messaging’ system”
(Appeal Br. 19). Yet we find no indication here, nor does Appellant direct
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us to any indication, that claim 1 includes additional elements or a
combination of elements that integrates the abstract idea into a “practical
application,” as that phrase is used in the 2019 Revised Guidance.
The only additional element recited in claim 1, beyond the abstract
idea, is “a computer system comprised of at least one computer[ ]” — an
element that, as the Examiner observes, is recited at a high level of
generality as performing generic computer functions (Final Act. 12). We
find no indication in the Specification, that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any allegedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor has Appellant explained persuasively how the
claimed invention reflects an improvement in technology and/or a technical
field or otherwise integrates the abstract idea into a “practical application,”
within the meaning of the 2019 Revised Guidance.
Appellant attempts to draw an analogy between claim 1 and the
patent-eligible claims at issue in DDR Holdings (Appeal Br. 9–11). But, we
can find no parallel between claim 1 and the claims in DDR Holdings.
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There, the claims were directed to retaining website visitors, and in
particular to a system that modified the conventional web browsing
experience by directing a user of a host website, who clicks an
advertisement, to a “store within a store” on the host website, rather than to
the advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257–58.
The court determined that “the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet.”
Id. at 1257. The court also determined that the invention was “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id.
Appellant maintains here that, as in DDR Holdings, “Appellant’s
solution to the problem is ‘rooted in computer technology’ because it utilizes
. . . ‘metadata’ in the form of ‘timing data’ associated with [a] critical test
result data message to ‘calculate . . . a usage pattern’ and to ‘automatically
determine . . . using the data representing the usage pattern . . . either the
state of compliance or the state of non-compliance’” (Appeal Br. 23). Yet,
we are not persuaded that verifying the compliance of health professionals
with usage metrics is a problem “rooted in computer technology.” The
problem of ensuring that test reports are reported to medical clinicians in a
timely manner existed before, and still exists, outside the realm of computers
and computer technology. And the purported solution here involving, at
best, generic computer components performing generic computer functions,
is not necessarily rooted in computer technology. Unlike the situation in
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DDR Holdings, there is no indication here that the claimed computer
components are used other than in their normal, expected, and routine
manner for receiving, storing, and processing information.
We also are not persuaded of Examiner error to the extent Appellant
maintains that claim 1 is patent eligible because there is no risk of
preemption (Appeal Br. 23). Although the Supreme Court has described
“the concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
claim does not include additional elements or a combination of elements that
integrates the abstract idea into a practical application. Accordingly, we
agree with the Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
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whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant charges here that the § 101 rejection cannot be sustained
because the Examiner has provided no evidence that “the elements of the
claims are ‘conventional’ or ‘routine’” (Appeal Br. 24). That argument is
not persuasive.
There is no dispute that an examiner must show — with supporting
facts — that certain claim elements are well-understood, routine, and
conventional when the examiner has made such a finding. See Berkheimer,
881 F.3d at 1368 (holding that the 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). Indeed, shortly
after the Federal Circuit issued its decision in Berkheimer, the USPTO
issued an April 19, 2018 Memorandum to the Patent Examining Corps
entitled, “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (the “Berkheimer Memo”),5 in which the Office instructed that “[i]n a
step 2B analysis [i.e., an analysis under step two of the Mayo/Alice

5 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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framework], an additional element (or combination of elements) is not well-
understood, routine or conventional unless the examiner finds and expressly
supports a rejection in writing with one or more of” (1) a “citation to an
express statement in the specification or to a statement made by an applicant
during prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s)”; (2) a “citation to one or
more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting
the well-understood, routine, conventional nature of the additional
element(s)”; (3) a “citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional element(s)”; and
(4) a “statement that the examiner is taking official notice of the well-
understood, routine, conventional nature of the additional element(s).” Id.
at 3–4.
The Examiner determined here, and we agree, that the only additional
element beyond the abstract idea is “a computer system comprised of at least
one computer[ ],” i.e., a generic computer component (Final Act. 12) — a
determination amply supported by, and fully consistent with the
Specification (see, e.g., Spec. 10 (“In this disclosure[,] ‘computer system’ is
meant to include one or more computers or other devices that are operably
connected by means of such inter-process communication, or other data
exchange protocols.”; id. at 12 (“The method described herein can be
executed on a computer system, generally comprised of a central processing
unit (CPU) that is operatively connected to a memory device, data input and
output circuitry (IO) and computer data network communication
circuitry.”)). Appellant cannot reasonably maintain that there is insufficient
factual support for the Examiner’s determination that the operation of the
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computer system is well-understood, routine, or conventional, where, as
here, there is nothing in the Specification to indicate that the operations
recited in claim 1 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using other than a
generic computer component to perform generic computer functions, e.g.,
receiving, storing, and processing information. Indeed, the Federal Circuit,
in accordance with Alice, has “repeatedly recognized the absence of a
genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer v. HP Inc., 890 F.3d
1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (internal citations
omitted); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291
(Fed. Cir. 2018) (“BSG Tech does not argue that other, non-abstract features
of the claimed inventions, alone or in combination, are not well-understood,
routine and conventional database structures and activities. Accordingly, the
district court did not err in determining that the asserted claims lack an
inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 3–6, 12, 14, 21–24,
26, and 28–35, which fall with claim 1.
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding
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Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But, the specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, the inventors were
in possession of the claimed invention. See id.
Independent Claims 1 and 12 and Dependent Claims 3–6, 14, 21–24, 26,
and 28–35
In rejecting independent claims 1 and 12 as failing to comply with the
written description requirement, the Examiner first notes that claim 1 recites:
receiving into the computer system at least one data
messages embodying a corresponding at least one critical test
result messages, said at least one data messages having an
associated at least one timing data
and
determining by using the computer system to read from a
computer data storage device data that represents the received at
least one data messages, at least one test result message metadata
corresponding to the received at least one message, said
determined metadata describing at least one of a transmission
time, a receipt time, a retrieval time, a response time, or an
interval between two times, by further using the timing data
corresponding to the at least one data messages associated with
the at least one critical test result messages
(Final Act. 15–16), and that claim 12 includes substantially similar language
(id. at 16). And the Examiner takes the position that the claims are properly
rejected under § 112, first paragraph, because “[t]here is no description [in
the Specification] that the determined metadata describ[es] a receipt time, a
response time, and an interval between two times” and also “no description
of receiving/receive into the computer system/critical test result management
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system at least one critical test result messages, said messages having at least
one associated timing data” (id.).
Addressing each of the alleged deficiencies in turn, we agree with
Appellant that the Specification provides the requisite written description
support at least at page 7 and Figure 3 for “metadata describing at least one
of a transmission time, a receipt time, a retrieval time, a response time, or an
interval between two times” (Appeal Br. 25). We also agree with Appellant
that the Specification provides adequate written description support for
“receiving . . . at least one data messages embodying a corresponding at least
one critical test result messages, said at least one data messages having an
associated at least one timing data” at least at page 3 (id. at 26).
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
3–6, 12, 14, 21–24, 26, and 28–35 on these bases.
Dependent Claims 28–30
In further rejecting claims 28–30 under 35 U.S.C. § 112, first
paragraph, the Examiner takes the position that the Specification fails to
provide adequate written description support for:
where the step of calculating the data representing a usage
pattern is comprised of calculating, for each of the at least one
critical test result messages, a corresponding at least one
interval of times between a first time and a second time, said
first time being a transmission time and said second time being
a retrieval time, and adding the at least one calculated intervals
of times and dividing the sum by the number of critical test
result messages[,]
as recited in claim 28;
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where the step of calculating the data representing a usage
pattern is comprised of calculating, for each of the at least one
critical test result messages, a corresponding at least one
interval of time between a first time and a second time, said
first time being a receipt time and said second time being a
retrieval time, and adding the at least one calculated intervals of
times and dividing the sum by the number of critical test result
messages[,]
as recited in claim 29; or
where the step of calculating the data representing a usage
pattern is comprised of calculating, for each of the at least one
critical test result messages, a corresponding at least one
interval of time between a first time and a second time, said
first time being a transmission time and said second time being
a response time, adding the at least one calculated intervals of
times and dividing the sum by the number of critical test result
messages[,]
as recited in claim 30 (Final Act. 17).
We agree with Appellant that the requisite written description support
is provided at least at page 8 of the Specification (Appeal Br. 26–27).
Therefore, we do not sustain the Examiner’s rejection of claims 28–30 on
this basis.
Indefiniteness
Independent Claims 1 and 12 and Dependent Claims 3–6, 14, 21–24, 26,
and 28–35
In rejecting independent claims 1 and 12 under 35 U.S.C. § 112,
second paragraph, as indefinite, the Examiner observes that claim 1 recites:
determining by using the computer system to read from a
computer data storage device data that represents the received at
least one data messages, at least one test result message metadata
corresponding to the received at least one message, said
determined metadata describing at least one of a transmission
time, a receipt time, a retrieval time, a response time, or an
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interval between two times, by further using the timing data
corresponding to the at least one data messages associated with
the at least one critical test result messages
(Final Act. 18–19), and that claim 12 includes substantially similar language
(id. at 19). And the Examiner opines that “it is unclear what is modified by
‘to read from a computer data storage device data that represents the
received at least one data message’” and also unclear “what is modified by
[sic] ‘by further using the timing data corresponding to the at least one data
messages associated with at least one critical test result messages’” (id.; see
also Ans. 16).
We agree with Appellant that a person of ordinary skill in the art
would understand what is claimed, when the claim language is read in light
of the Specification, namely that at least one test message metadata
corresponding to a received at least one data message is determined by
reading, from a computer data storage device, data that represent the
received data message, and further using the timing data associated with the
data message (Reply Br. 20).
Therefore, we do not sustain the Examiner’s rejection of claims 1, 3-6,
12, 14, 21–24, 26, and 28–35 under 35 U.S.C. § 112, second paragraph, on
this basis. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C.
§ 112, second paragraph is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.”).
Independent Claim 12 and Dependent Claims 14, 24, 26, and 32–35
Addressing independent claim 12, the Examiner takes the further
position that claim 12 is indefinite because “the recited structure(s) are not
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organized and correlated in such a manner as to present a complete operative
device” (Final Act. 19; see also Ans. 16). The Examiner asserts that “the
claim merely describes the high level functions of said system rather than
the structure of the system, e.g.[,] how at least one computers are [sic]
correlated in such manner to present the desired functions of the said
system” (Final Act. 19). The Examiner also maintains that “it is unclear
whether the recited critical test result message management system is part of
the computer system” and unclear “which one of the previously recited
system[s] refers to ‘said system’ in ‘said system adapted by logic to’” (id.).
The Examiner’s rejection, as best understood, is that claim 12 does
not reflect an acceptable claim format. We do not agree that claim 12 is
unacceptably formatted; nor do we agree that the claim is otherwise unclear
such a person of ordinary skill in the art would be unable to determine the
scope of the claim, when read in light of the Specification.
Therefore, we do not sustain the Examiner’s rejection of claims 12,
14, 24, 26, and 32–35 under 35 U.S.C. § 112, second paragraph, on this
basis.
Dependent Claims 24, 26, and 32–35
The Examiner further rejects claims 24, 26, and 32–35 under
35 U.S.C. § 112, second paragraph, on the ground that it is unclear “which
one of the previously recited computers represent[s] ‘the computer’” (Final
Act. 19).
Appellant acknowledges that the claims are unclear in this regard, and
states, “Appellant will submit . . . an amendment when it is timely” (Reply
Br. 21). Accordingly, we sustain the Examiner’s rejection of claims 24, 26,
and 32–35 under 35 U.S.C. § 112, second paragraph, on this basis.
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Dependent Claims 28–35
In rejecting dependent claims 28–35 under 35 U.S.C. § 112, second
paragraph, the Examiner notes that independent claims 1 and 12 recite that
the determined metadata describes “at least one of a transmission time, a
receipt time, a retrieval time, a response time, or an interval between two
times” (Final Act. 19–20). And the Examiner takes the position that
claims 28–35 contradict the independent claims by “specifically describing
[a] combination requiring two aspect[s] of time” (id. at 20).
The independent claims recite that the metadata describe “at least one
of” the recited “aspects of time,” i.e., at least one of a transmission time, a
retrieval time, a response time, or an interval between two times.
Claims 28–35 do not contradict the independent claims by describing the use
of two of these time aspects.
Therefore, we do not sustain the Examiner’s rejection of claims 28–35
under 35 U.S.C. § 112, second paragraph, on this basis.
Obviousness
Independent Claims 1 and 12 and Dependent Claims 3–5, 14, 21–24, 26,
and 28–35
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 12 under 35 U.S.C. § 103(a) at least
because neither Laumann or White, whether considered individually or in
combination, discloses or suggests
determining by using the computer system to read from a
computer data storage device data that represents the received at
least one data messages, at least one test result message metadata
corresponding to the received at least one message, said
determined metadata describing at least one of a transmission
time, a receipt time, a retrieval time, a response time, or an
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interval between two times, by further using the timing data
corresponding to the at least one data messages associated with
the at least one critical test result messages;
using the computer system to calculate data representing a
usage pattern using the determined at least one test result
message metadata; [and]
using the computer to automatically determine a logical
condition using the data representing the usage pattern, said
logical condition comprising either the state of compliance or the
state of non-compliance of the calculated usage pattern with a
predefined usage pattern requirement of the critical test result
message management system[,]
i.e., limitations (b) through (d), as recited in independent claim 1, and
similarly recited in independent claim 12 (Appeal Br. 28–32).
The Examiner cites paragraphs 4, 16, 17, 19–23, 25, and 27–30 of
Laumann as disclosing the argued limitations (Final Act. 20–21). But, the
Examiner acknowledges that Laumann does not specifically teach that the
data message is related to a critical test result (id. at 21). The Examiner cites
White to cure this deficiency (id. (citing White ¶¶ 15, 26, Abstract)); and the
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of Appellant’s invention to “apply the performance
evaluation system and technique [of Laumann] to any available healthcare
system and processes, including the system that is used to communicate
critical test results as taught by White” (id.).
Laumann is directed to a method for sharing healthcare benchmarks in
which event data, status information, and measures from process instances
of information systems of a local healthcare institution are monitored and
shared with other healthcare institutions (Laumann ¶ 5). Laumann discloses
that the event data, which the Examiner ostensibly equates to the claimed
“test result message metadata,” includes a start and end timestamp from
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which the duration of a workflow task is determined (id. ¶ 23), i.e., how long
a person takes to complete a particular task. But, as Appellant observes,
there is nothing in the cited portions of Laumann that discloses or suggests
tracking “a transmission time, a receipt time, a retrieval time, a response
time, or an interval between two times,” as called for in claims 1 and 12
(Appeal Br. 28).
White discloses a method and system that “enables pathologists,
laboratory technicians, and laboratory staff to communicate . . . clinical
information (such as lab results) [to ordering physicians] in real-time”
(White Abstract). White discloses that one embodiment of its invention is a
method operative in a computer system that provides a hosted service. In
accordance with this method, a first entity (e.g., a laboratory clinician)
generates a message, comprising an identifier associated with at least a
second entity (e.g., a shift nurse), together with at least one result associated
with a given clinical test (id. ¶ 15). The service automatically notifies the
second entity of the message, e.g., via an email, an SMS, a telephone call, a
page, a desktop alert, or the like, and when the second entity contacts the
service, the message (which includes the lab result) is provided to the second
entity (id.).
White discloses that the second entity is prompted to verify the result,
preferably by providing the result back via an input device; upon
confirmation that the second entity has provided the result accurately, the
system notifies the first entity that the second entity has verified proper
receipt of the result, and the system enables the second entity to take a
further action, e.g., communicate the message to the ordering physician
(White ¶ 15). If, on the other hand, the system cannot confirm that the
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second entity knows the result (e.g., because the second entity has not
provided the result, or has provided an incorrect value), the system notifies
the first entity of this read-back discrepancy and inhibits the second entity
from taking further action (id.).
The Examiner takes the position, as described above, that it would
have been obvious to a person skilled in the art at the time of Appellant’s
invention to apply the performance evaluation system and technique of
Laumann to a system used to communicate critical test results as taught by
White. But the Examiner does not explain why a person of ordinary skill in
the art would have had an apparent reason, absent hindsight, to combine
Laumann, which, at best, discloses tracking the amount of time that a user
spends in completing a workflow task, and White, which discloses a method
and system for verifying that a critical test result has been accurately
received, to arrive at the claimed invention, including determining, using test
result message metadata, how long it took for a critical test result to be
reported, i.e., a usage pattern, as called for in the independent claims.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 12 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 3–5, 14,
21–24, 26, and 28–35. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) (“dependent claims are nonobvious if the independent claims from
which they depend are nonobvious”).
Dependent Claim 6
Claim 6 depends from independent claim 1. The rejection of claim 6
does not cure the deficiency in the rejection of claim 1. Therefore, we do
not sustain the rejection of claim 6 under 35 U.S.C. § 103(a).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6, 12,
14, 21–24,
26, 28–35
101 Eligibility 1, 3–6, 12,
14, 21–24,
26, 28–35

1, 3–6, 12,
14, 21–24,
26, 28–35
112, first
paragraph
Written
Description
1, 3–6, 12,
14, 21–24,
26, 28–35
1, 3–6, 12,
14, 21–24,
26, 28–35
112, second
paragraph
Indefiniteness 24, 26, 32–
35
1, 3–6, 12,
14, 21–23,
28–31
1, 3–5, 12,
14, 21–24,
26, 28–35
103(a) Laumann, White 1, 3–5, 12,
14, 21–24,
26, 28–35
6 103(a) Laumann, White,
Matsumoto
6
Overall
Outcome
1, 3–6, 12,
14, 21–24,
26, 28–35

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)(1)(iv).
AFFIRMED