Martin, Nathaniel G. et al.

Patent Trials and Appeals Board

Dec 9, 2019

12132227 - (D) (P.T.A.B. Dec. 9, 2019)

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.
12/132,227 06/03/2008 Nathaniel G. Martin 20070871-US-NP 7297
81368 7590 12/09/2019
GIBB & RILEY, LLC
Frederick W. Gibb, III, Esq.
537 Ritchie Highway
Suite 2F
Severna Park, MD 21146
EXAMINER
LE, LINH GIANG
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/09/2019 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):
support@gibbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHANIEL G. MARTIN and STEVEN J. HARRINGTON
Appeal 2018-000850
Application 12/132,227
Technology Center 3600
BEFORE ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 6–10 and 15–19. Final Act. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection in accordance
with 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as “Xerox
Corporation, Norwalk, CT.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to “method and apparatus embodiments that
use communications between document processing devices to automatically
provide results of lab tests in a format that is the most appropriate for the
office that prescribed the lab tests.” Spec. ¶ 1. Claim 6, reproduced below,
is illustrative of the claimed subject matter:
6. A method comprising:
scanning a document printed by a first document
processing device using a second document processing device
separate from said first document processing device, said
document comprising machine readable code, said machine
readable code comprising information of a patient, information
of at least one lab test to be performed, and delivery method
information;
identifying, using said second document processing
device, said lab test to be performed on said patient based only
on said machine readable code, and by reading said lab test to be
performed from said machine readable code;
delivering to a lab technician, using said second document
processing device, an identification of said patient and an
identification of said lab test to be performed;
after said lab test has been performed on said patient using
lab testing equipment operatively connected to said second
document processing device, formatting lab test results
according to a format required by said first document processing
device to create formatted lab test results, using said second
document processing device, said formatting being performed
based only on said delivery method information from said
machine readable code, and by reading said delivery method
information from said machine readable code; and
delivering said formatted lab test results from said second
document processing device to said first document processing
device based only on said delivery method information.
Claims Appendix (Appeal Br. 17).
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REJECTION
The Examiner rejects claims 6–10 and 15–19 under 35 U.S.C. § 101.
Final Act. 2.
OPINION
Legal Framework
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, our
inquiry focuses on the Supreme Court’s two-step framework, described in
Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citations omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
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the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Office recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”), 84 Fed. Reg. 50.
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental
economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See generally Memorandum.
Analysis
Applying the guidance set forth in the Memorandum, we conclude
that claims 6–10 and 15–19 are not directed to a judicial exception and are
therefore patent eligible under § 101.
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Revised Step 2A, Prong One–Directed to a Judicial Exception
The Memorandum instructs us first to determine whether each claim
recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The
Memorandum identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. Id. at 52.
Claim 6 recites a method that includes, for example, “scanning a
document . . . using a second document processing device,” “identifying,
using said second document processing device, said lab test . . . based only
on said machine readable code” and various other actions using the second
document processing device. The Specification provides that the second
document processing device may include “printing engines,” “scanners,”
and other components. Spec. ¶ 45. The Specification describes a scenario
that the second document processing device “produces a scanned image and
the second processor automatically processes the scanned image to identify
the lab test to be performed on the patient, based on the machine readable
markings.” Id. ¶ 46. Claim 6 requires the recited steps to be carried out by
“using a second document processing device” and is therefore not directed to
a mathematical concept, a fundamental economic practice, or a mental
process. See 84 Fed. Reg. at 52; see also Final Act. 3 (acknowledging that
the claims are directed to “identifying a lab test” and “formatting lab test
results”).
Because claim 6 is not directed to a judicial exception, we reverse the
rejection under § 101. The rejection of dependent claims 7–10 is likewise
reversed.
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Independent claim 15 recites a system and is not directed to an
abstract idea for the reasons supra. The rejection of claims 15–19 under
§ 101 is reversed.
NEW GROUND OF REJECTION
The Board, in a prior opinion, rejected certain claims drawn to both a
device and a method for using the device under 35 U.S.C. § 112, second
paragraph. Ex parte Martin, Appeal 2013-007030, 7–9 (Patent Trial and
Appeal Board, March 25, 2016) (“2016 Decision”). More specifically, the
Board concluded previous claim 11 recites both a “‘document processing
device comprising’ several physical components, including ‘a processor
operatively connected’ to ‘computer-readable storage media,’ ‘a scanner
operatively connected to said processor,’ and ‘a communications port
operatively connected to said processor’” as well as method steps such as
“‘said processor processing said scanned image to identify lab test to be
performed.’” Id. at 7. The Board held that hybrid claims such as those on
that appeal reciting both an apparatus and a method are indefinite under 35
U.S.C. § 112, second paragraph and entered a new ground of rejection as a
result. Id. at 8.
Independent claim 15 which is pending before us for the instant
appeal again recites a system having document processing devices as well as
method steps such as “said second document processing device . . .
executing instructions” to carry out various acts. Moreover, claim 16,
dependent from the system recited in claim 15, further recites a method step
of “said second communications port delivering said formatted lab test
results . . . .” Dependent claim 17 recites a method step of “said second
communications port delivering said formatted lab test results . . . , said first
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processor delivering said EMR to an EMR system . . .” whereas dependent
claim 18 recites a method step of “said first document processing device
identifying said patient . . . and selecting said lab test to be performed using
said EMR system.”
Consistent with the 2016 Decision, claims 15–19 are rejected under
35 U.S.C. § 112, second paragraph. See 2016 Decision at 8 (citing IPXL
Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (a
claim to “both a system and the method for using that system . . . does not
apprise a person of ordinary skill in the art of its scope, and it is invalid”
under 35 U.S.C. § 112, second paragraph) and citing In re Katz Interactive
Call Processing Patent Litigation, 693 F.3d 1303, 1308 (Fed. Cir. 2011)
(Claims “directed both to systems and to actions performed” by users of
such systems “fall squarely within the rationale of IPXL and are
indefinite.”)).
CONCLUSION
The Examiner’s rejection of claims 6–10 and 15–19 is reversed.
A new ground of rejection is entered for claims 15–19.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)Basis Affirmed Reversed New
Ground
6–10, 15–
19
101   Eligibility 6–10, 15–
19

15–19 112,
second
paragraph
Infiniteness 15–19
Overall
Outcome
6–10, 15–
19
15–19
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this
subpart.

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R. § 41.50(b)