Judy SPIEGEL

Patent Trials and Appeals Board

Jan 6, 2022

2021002233 (P.T.A.B. Jan. 6, 2022)

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. 14/629,180 02/23/2015 Judy SPIEGEL 5840-4/360610 6270 27799 7590 01/06/2022 COZEN O''CONNOR 3WTC, 175 Greenwich Street 55th Floor NEW YORK, NY 10007 EXAMINER HEIN, DEVIN C ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 01/06/2022 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): patentdocket@cozen.com patentsecretary@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUDY SPIEGEL ____________ Appeal 2021-002233 Application 14/629,180 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JAMES P. CALVE, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant claims a method and apparatus for monitoring a user and providing a schedule for a user and more particularly to a monitoring system for monitoring an individual and providing a reminder system for the individual. (Spec. 2, Title). Appeal 2021-002233 Application 14/629,180 2 Claim 1 is representative of the subject matter on appeal. 1. A multipurpose device comprising: a processor and a memory, the multipurpose device configured to run an application to compile and ensure compliance by a caregiver with a patient care schedule to improve patient care for a care recipient, causing the multipurpose device to: receive an input to compile the patient care schedule for the care recipient comprising at least one scheduled activity; provide a user, who is the caregiver, with discreet reminders implemented by a third party to maintain the schedule for the care recipient; prompt the caregiver to perform the at least one scheduled activity for the care recipient, wherein the scheduled activity includes at least one of a start time and an elapsed time for the caregiver to complete the at least one scheduled activity; receive from the caregiver at least a first input verifying completion of the at least one scheduled activity; prompt the caregiver to provide at least a second input comprising at least one media file to verify performance of the at least one scheduled activity; receive the at least one media file includes meta data, wherein the meta data comprises at least one of a time stamp and geo location; provide the at least one media file including the meta data to the third party to analyze the at least one scheduled activity, the media file, and the meta data to verify actual completion of the at least one scheduled activity by the caregiver for the care recipient; receive from the third party an indication acknowledging the actual completion of the at least one scheduled activity by the caregiver based on an analysis of the media file and the meta data; acknowledge, on the patient care schedule, the actual completion of the at least one scheduled activity for the care Appeal 2021-002233 Application 14/629,180 3 recipient by the caregiver including the verification from the third party; and track caregiver compliance with the patient care schedule over time to improve patient care and compliance and correct caregiver performance. THE REJECTION Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1-7, 10-16, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Junqua (US 2017/0164945 A1, published June 12, 2014), Ellis (US 2014/0297348 A1, published Oct. 2, 2014), and Kutzik (US 2008/0084296 A1). Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Junqua, Ellis, Kutzik, and Csoma (US 2013/0085758 A1, Apr. 3, 2013). Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Junqua, Ellis, Kutzik, and Walker (US 2014/0257852 A1, published Sept. 11, 2014). Claim 17-19 are rejected under 35 U.S.C. § 103 as being unpatentable over Junqua, Ellis, Kutzik, and Dhuna (US 2011/0237226 A1, published Sept. 29, 2011). ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1-20 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that Appeal 2021-002233 Application 14/629,180 4 claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent- eligible application. . . . [The Court] described step two of this analysis as 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.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 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. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50, pp. 50-57 (Jan. 7, 2019) (“Guidance”). Appeal 2021-002233 Application 14/629,180 5 The Examiner determines that the claims recite a process of creating a schedule of activities, reminding and prompting a user to perform activities on the schedule, verifying completion of activities on the schedule, updating the schedule and tracking compliance with the schedule. (Final Act. 4). The Examiner determines that the invention is simply the process of organizing the human activity of creating a schedule, activities related to the schedule, verifying performance of the activities, updating the schedule and tracking compliance for the intended use of improving patient care and compliance and correcting caregiver performance. The Examiner finds the claims’ additional elements other than the abstract idea when considered both individually and as an ordered combination amount to generally linking the abstract idea to a particular technological environment and adding the words “apply it” and therefore do not integrate the abstract idea into a practical application. (Final Act. 5). The Examiner finds that the claims do not recite significantly more because the additional elements simply append generic computer structure (i.e. a multi-purpose device, a processor, memory) performing generic computer functions that are well-understood, routine and conventional activities previously known to the pertinent industry (i.e. running an application, receiving information and displaying/providing/prompting information). The Specification discloses that the invention in its general application is a method that guides a user through a daily schedule including such activities as shopping, doctor appointments, gym visits, hair salons, and the like. Each scheduled activity is preferably accompanied by a walk- through that prompts the user to perform activities or ask specific questions. (Spec. 3). The invention also sends reminders which can be task or Appeal 2021-002233 Application 14/629,180 6 appointment specific. For example, if the care recipient has a stress test with a cardiologist, several reminders can be generated. Before the appointment, the reminder can be “do you need to take exercise clothes?” During the appointment, the reminder can be “do you need to update your medicine list?” or prompt the care recipient to ask a specific care related question. After the appointment, the reminder can prompt the user to schedule the next appointment. (Spec. 6). In one embodiment, a caregiver is monitored. This monitoring is accomplished by the caregiver recording photographic evidence of completing a task. For example, if a medication is to be administered at a specific time or physical therapy is to be administered, the caregiver records a picture or video of the patient taking the medicine or getting the therapy. If a patient is able, the patient can also record the photographic evidence. The photographic evidence is stored on the device on which the application is being used. The photographic evidence can also be uploaded. (Spec. 6). Therefore, the Specification supports the Examiner’s determination that the invention is a process of creating a schedule of activities, reminding and prompting to perform activities on the schedule, verifying completion of activities on the schedule and updating the schedule and tracking compliance with the schedule. Consistent with this disclosure, claim 1 recites “provide a user . . . with discreet reminders implemented by a third party,” “prompt the caregiver to perform the at least one scheduled activity for the care recipient,” “ receive . . . first input verifying completion of the at least one scheduled activity,” “prompt the caregiver to provide at least a second input,” “receive from the third party an indication acknowledging the actual Appeal 2021-002233 Application 14/629,180 7 completion of the at least one schedule activity,” and “receive from the third party an indication acknowledging the actual completion of the at least one schedule activity.” We thus agree with the Examiner’s findings that the claim 1 is directed to controlling the behavior of persons concerning adherence to a specific schedule and is a method of organizing human behavior. Also, we find that causing a multipurpose device to “receive an input, . . .” “provide a user. . . with discreet reminders,” “prompt . . . to perform the . . . scheduled activity,” “receive . . . a first input,” “prompt. . . to provide . . . a second input,” “receive . . . one media file,” “receive the at least one media file,” “provide . . one media file,” and “receive . . . an indication,” constitute “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.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that the claims recite the judicial exception of methods of organizing human activity and in the alternative, a mental process. Turning to the second prong of the “directed to test”, claim 1 requires a “processor and a memory.” These recitations do not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance at 52. We find no indication in the Specification, nor does Appellant directs us to any indication, that the operations recited in independent claim 1 invoke any inventive programming, require any specialized computer hardware or other Appeal 2021-002233 Application 14/629,180 8 inventive computer components, i.e., a particular machine, 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 affects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitation does not affect an improvement in the functioning of a processor, memory or other technology, does not recite a particular machine or manufacture that is integral to the claim, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 1 recites a judicial exception that is not integrated into a practical application and thus claim 1 is directed to an “abstract idea.” Turning to the second step of the Alice analysis, because we find that claim 1 is directed to abstract ideas, the claim must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract ideas. See Alice, 573 U.S. at Appeal 2021-002233 Application 14/629,180 9 217-18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). The introduction of a processor and memory into the claim does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Instead, “the relevant question is whether claim 1 here does more than simply instruct the practitioner to implement the abstract ideas . . . on a generic computer.” Id. at 225. It does not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval-one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Appeal 2021-002233 Application 14/629,180 10 Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “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.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, displaying, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. The claim does not, for example, purport to improve the functioning of the processor and memory. As we stated above, claim 1 does not affect an improvement in any other technology or technical field. The Appeal 2021-002233 Application 14/629,180 11 Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the abstract ideas. (See, e.g., Spec. 64-65). Thus, claim 1 at issue amounts to nothing significantly more than instructions to apply the abstract idea of creating a schedule of activities, and reminding and prompting to perform activities on the schedule using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 4-8; Reply Br. 1-2). Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of emphasis, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that taken as a whole, Appellant’s claimed device and method would be considered by one of ordinary skill in the art to be an improvement to the technical field of monitoring and correcting performance and therefore integrates any judicial exception into a practical application. (Appeal Br. 5; Reply Br. 2). We agree with the Examiner’s response to this argument found on pages 5 to 6 of the Answer and adopt same as our own. Specifically, we agree that tracking patient care is not considered a technological field. Rather, as the Examiner determines, the advance purported is in the process of gathering, providing and analyzing information of a specified content for a specified reason and not any particular asserted Appeal 2021-002233 Application 14/629,180 12 inventive technology for performing those functions. In this regard, as we stated above, there is no improvement to the functioning of a processor, memory or other technology, no particular machine or manufacture that is integral to the claim recited, and no transformation or reduction of a particular article to a different state or so. Guidance at 55. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the Examiner overgeneralized the claims by determining that the claims are directed to collecting and analyzing information. (Appeal Br. 6). Appellant’s argument is not persuasive because the Examiner characterized claim 1 not only as gathering, providing and analyzing information but as a process of creating a schedule of activities, reminding and prompting to perform activities on the schedule, verifying completion of activities on the schedule, updating the schedule and tracking compliance with the schedule. (Final Act. 4). The Examiner’s characterization of the claimed subject matter is fully consistent with the Specification, as discussed above. In any case the fact that independent claim 1 may include more words than the phrase the Examiner used to articulate the abstract idea to which the claim is directed is an insufficient basis to persuasively argue that the claim language has been mischaracterized or that the Examiner has otherwise failed to consider all of the limitations of the claim because there is no requirement that the Examiner’s formulation of the abstract idea copy the claim language. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Appellant argues that the instant claimed subject matter is directed to an improvement of an existing technology in the marketplace i.e. tracking patient care and solves the problem in the context of ensuring that a health Appeal 2021-002233 Application 14/629,180 13 plan is being adhered to. (Appeal Br. 6). But, at best, this is an argument that the asserted improvement is an improvement to the abstract idea of creating a schedule, reminding to perform activities related to the schedule, verifying performance of the activities, updating the schedule and tracking compliance. And “[n]o matter how much of an advance in the . . . field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). Appellant argues that the claims recite a non-generic arrangement of conventional operations which is significantly more than an abstract idea. (Appeal Br. 7). This argument is not persuasive because other than restating some requirements of claim 1, Appellant does not explain how the operations of the processor and memory recited in claim 1 are arranged non- conventionally. Appellant argues that in the present case, the device does not demonstrate the conventional nature of the element, Appellant has made no admission with respect to the instant claimed subject matter, and that the Examiner has not cited Court Decision or taken Official Notice. (Appeal Br. 8). We agree with the Examiner’s response to this argument found on pages 7 to 9 and adopt same as our own. Specifically, we find that the Specification at pages 64 to 65 is implicit evidence that claim 1does not recite significantly more than the abstract idea as it discloses that conventional hardware like a general-purpose computer can be used to practice the invention. In view of the foregoing, we will sustain this rejection of the Appeal 2021-002233 Application 14/629,180 14 Examiner of claim 1. We will also sustain the rejection as it is directed to the remaining claims because Appellant does not argue the separate eligibility of these claims. REJECTION OF CLAIMS 1-7, 10-16, AND 20 UNDER 35 U.S.C. §103 The Examiner finds that Junqua teaches the bulk of the invention but relies on Ellis for teaching a user providing at least a second input comprising at least one media file to verify performance of the at least one scheduled activity and on Kutzik for teaching compliance by a caregiver. (Final Act.10-15). We are not persuaded of error on the part of the Examiner by Appellant’s argument that none of the cited references disclose three discrete parties and tracking caregiver compliance over time and improve caregiver performance. (Appeal Br. 9). In making this argument, Appellant argues that Junqua is unrelated to ensuring compliance by a caregiver and fails to disclose multiple parties providing care. In regard to Kutzik and Ellis, Appellant merely states what these references disclose in the Appellant’s opinion but Appellant does not offer specific arguments related to these references. More importantly, Appellant does not address the combined teachings of the references. However, the rejection is based on a combination of the teachings of Junqua, Kutzik and Ellis. Appellant's argument is an attack on the individual references and not on the combined teachings of the references. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appeal 2021-002233 Application 14/629,180 15 In view of the foregoing, we will sustain this rejection. REJECTIONS OF CLAIMS 8, 9, AND 17-19 Appellant argues the patentability of the remaining claims that are rejected under § 103 based on their dependency on claim 1. Appeal Br. 19. Because we sustain the rejection of claim 1, this argument is not persuasive and we also will sustain the rejections of these claims. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-20 under 35 U.S.C. §§ 101 and 103. CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-20 101 Eligibility 1-20 1-7, 10-16, 20 103 Junqua, Ellis, Kutzik 1-7, 10-16, 20 8 103 Junqua, Ellis, Kutzik, Csoma 8 9 103 Junqua, Ellis, Kutzik, Walker 9 17-19 103 Junqua, Ellis, Kutzik, Dhuna 17-19 Overall Outcome 1-20 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