Mario Quintanillo

Patent Trials and Appeals Board

Nov 3, 2020

2020003666 (P.T.A.B. Nov. 3, 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.
14/225,458 03/26/2014 Mario Quintanillo 102-0003US 8307
103396 7590 11/03/2020
SPRADLEY, PLLC
11318 Lazarro Ln
Richmond, TX 77406
EXAMINER
WINSTON III, EDWARD B
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
marife@myidealaw.com
patents@myidealaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARIO QUINTANILLO
____________

Appeal 2020-003666
Application 14/225,458
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
BRADLEY B. BAYAT, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–17. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a system and method for updating medical records
of a Third-party Medical Provider over a Computer Network. (Spec. ¶ 1,
Title).
Claim 1 is representative of the subject matter on appeal.
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1. A system for updating medical records of a third-party medical
provider over a computer network comprising:
a server memory that stores a client profile;
session information related to each of said virtual care
website; and
a server processor that according to instructions from
said virtual care website
captures said session information generated from a web-
based medical consultation between a physician and a patient
through a virtual chat application, wherein said patient is related
with said client profile;
queries third-party medical provider records to match
patient information with said patient, wherein said patient
information is associated with one or more medical records; and
stores said session information under said medical
records of said patient that matches said client profile.

Appeal Br. 18, Claims App.

REFERENCES
The Examiner relies on the following prior art references:
Name Reference Number Date
Lavine US 2006/0149708 A1 July 6, 2006
Chaturvedi et al. US 2012/0078609 A1 March 29, 2012
Kozicki et al. US 2014/0156293 A1 June 5, 2014
Grant US 2015/0310573 A1 October 29, 2015

THE REJECTION
Claims 1–17 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–11, 13, and 15–17 are rejected under 35 U.S.C. § 103 as
being unpatentable Kozicki in view of Grant.
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable
Kozicki in view of Grant further in view of Chaturvedi.
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Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable
Kozicki in view of Grant further in view of Lavine.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–17 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 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.
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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”).
The Examiner determines that the claims are directed to “capturing
session information generated from medical consultation between a
physician and a patient through a chat; querying a third-party medical
provider records to match patient information with said patient, wherein said
patient information associated to one or more medical records; and storing
said session information under said medical records of said patient that
matches said client profile.” (Final Act. 2 (emphasis omitted)). The
Examiner determines that the claims are directed to collecting information,
analyzing it and displaying certain results of the collection and analysis. The
Examiner finds the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because additional elements when considered both individually and as an
ordered combination do not amount to significantly more than the abstract
idea. (Id. at 3).
The Specification discloses that a server memory stores a client
profile, session information, and a virtual care website. The server processor
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captures session information between a physician and a patient through a
virtual chat application. The virtual care website queries a third-party
medical provider to match patient information with the patient. The patient
information is associated with one or more medical records. The virtual care
website stores the session information under the medical records of the
patient that matches the client profile. (Spec. ¶ 7). As such the
Specification discloses collecting information, storing information and
analyzing information.
Consistent with this disclosure, claim 1 recites “a server processor that
according to instructions from said virtual care website,” “captures said
session information . . . through a virtual chat application,” and “queries
third-party medical provider records to match patient information with said
patient.”
We thus agree with the Examiner’s findings that claim 1 is directed to
collecting information and analyzing information. The claim 1 steps
constitute “analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, as 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 claim 1 recites the judicial exception of a mental
process.
Turning to the second prong of the “directed to test”, claim 1 requires
a “server memory,” “a server processor” and “a virtual website.” The
recitation of these computer components does not impose “a meaningful
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limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” Guidance, 84 Fed.
Reg. at 53. We find no indication in the Specification, nor do 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 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 effects 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 recitations do not affect an improvement in the
functioning of the recited computer components, or other technology, do not
recite a particular machine or manufacture that is integral to the claims, and
do not transform or reduce a particular article to a different state or thing.
Id. Thus, claim 1 is directed to a judicial exception that is not integrated into
a practical application and thus claim 1 recites an “abstract idea.”
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Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea claim 1 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 idea itself. See Alice, 573
U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of computer components 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 223–224 (alterations in original) (citations omitted).
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Instead, “the relevant question is whether . . . claim[ 1] do[es] more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computer components 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 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 claim 1 adds 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, display,
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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 claims do not, for example, purport to improve the functioning of
the server memory, server processor or the virtual care website. As we
stated above, claim 1 does not affect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail. (See, e.g., Spec.
¶ 29). In this regard, the Specification’s only description of the server is that
it is capable of performing computational tasks and storing data information
which is a function that any general purpose computer can perform. Thus,
claim 1 at issue amounts to nothing significantly more than instructions to
apply the abstract idea of information access 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. 13–152; Reply
Br. 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.
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Appellant argues that the Examiner has recited no proper category for
the judicial exception. We do not agree. The Examiner clearly stated that
the claims recite collecting information, analyzing it and displaying results
of the collection. (Final Act. 3). As we discuss above, collecting
information and analyzing it are steps people go through in their minds, or
by mathematical algorithms. These steps involve evaluation and judgement
and therefore these steps are part of a mental process. Guidance, 84 Fed.
Reg. at 52).
We are not persuaded of error on the part of the Examiner by
Appellant’s arguments that the process of the claims cannot be practically
performed in the mind and that the claims recite a practical application
because Appellant does not explain why the claim process cannot be
performed in the human mind or why the claims recite a practical
application.
We are lastly not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims do not monopolize capturing,
analyzing and displaying information. “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015), cert. denied,
136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). And, “[w]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
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addressed and made moot.” Ariosa, 788 F.3d at 1379.
In view of the foregoing, we will sustain this rejection as it is directed
to 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.

REJECTIONS UNDER 35 U.S.C. §103
We will not sustain the rejection of claim 1 because we agree with
Appellant that the prior art does not disclose that the server processor
“queries third-party medical provider records to match patient information
with said patient.” In each of the rejections under 35 U.S.C. §103, the
Examiner relies on paragraph 42 of Kozicki for teaching this subject matter.
(Final Act. 7). We find that paragraph 42 of Kozicki discloses that a session
management facility may select only health care practitioners licensed to
practice in the state which the user resides for inclusion in the practitioner
pool. As such this paragraph discloses details of matching a patient with a
health care practitioner not matching a medical records with a patient.
In view of the foregoing, we will not sustain the rejection as it is
directed to claim 1 and claims 2–8 dependent therefrom. The remaining
claims also include the subject matter we have found lacking in Kozicki.
Therefore, we will also not sustain the rejections as directed to the remaining
claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–17 under
35 U.S.C. § 101.
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We conclude the Examiner did err in rejecting claims 1–17 under
35 U.S.C. §103.

CONCLUSION
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–17 101 Elgibility 1–17
1–11, 13,
15–17
103 Kozicki, Grant 1–11, 13,
15–17
12 103 Kozicki, Grant,
Chaturved,
12
14 103 Kozicki, Grant,
Lavine
14
Overall
Outcome
1–17

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