2021000694 (P.T.A.B. Oct. 28, 2021)

MERGE HEALTHCARE SOLUTIONS INC.

Patent Trials and Appeals BoardOct 28, 2021

2021000694 (P.T.A.B. Oct. 28, 2021)

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. 15/475,930 03/31/2017 Murray A. Reicher 026436-9161-US10 1207 137160 7590 10/28/2021 MICHAEL BEST & FRIEDRICH LLP (Merge/IBM) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER MISIASZEK, AMBER ALTSCHUL ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 10/28/2021 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): mkeipdocket@michaelbest.com svlipl@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MURRAY A. REICHER, CAROL G. SLOYER, and TAREK EL RASHIDY ____________ Appeal 2021-000694 Application 15/475,930 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 2, 4–9, 11–16, and 18–21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as International Business Machines Corporation. (Appeal Br. 2.) Appeal 2021-000694 Application 15/475,930 2 CLAIMED SUBJECT MATTER Appellant’s “invention relates to scheduling of medical exams, and more particularly, to systems and methods for scheduling of medical exams with customer configured notifications, such as questions, warnings, and information.” (Spec. ¶ 2.) Claims 2, 9, and 16 are the independent claims on appeal. Claim 2 is illustrative. It recites: 2. A computer-implemented method for scheduling a patient for a medical exam, the method comprising: by one or more processors executing program instructions: providing a dynamically updateable graphical user interface configured to display information to a user, receive inputs from the user, and update the information displayed to the user in response to the inputs received from the user; receiving, via the user interface, one or more exam parameters associated with a medical exam to be scheduled for a patient, wherein the one or more exam parameters include at least one of: patient information, an indication of a medical history, an indication of a facility, an indication of an exam modality, an indication of an insurance type, an experience level of the user, or an indication of a medical procedure; selecting, from a notification data structure storing a plurality of notification rules and based at least in part on the one or more exam parameters, one or more notifications for display to the user, wherein: the notification rules includes [sic] at least associations between exam parameters and respective notifications, at least one of the one or more notifications comprises, based on the notification rules, a question that requires an acceptable response from the user before scheduling of the medical exam may be completed, and Appeal 2021-000694 Application 15/475,930 3 at least one of the one or more notifications, based on the notification rules, comprises a warning that requires an acknowledgement from the user before scheduling of the medical exam may be completed; providing, via the user interface, the one or more notifications including the question and the warning; automatically determining whether the question has received an acceptable response from the user; automatically determining whether the warning has received an acknowledgement from the user; and in response to determining that the question did not receive an acceptable response from the user or the warning did not receive an acknowledgement from the user, automatically preventing completion of the exam scheduling. REJECTION Claims 2, 4–9, 11–16, and 18–21 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. Section 101, however, “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 Appeal 2021-000694 Application 15/475,930 4 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. Under the two-step framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79). With regard to step one of the Alice framework, we apply a “directed to” two-prong test to: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] 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.” See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”). The Examiner determines that the claims are “directed to scheduling a patient for a medical exam, which is considered a mental process.” (Answer 6.) The Examiner also determines that it “could be considered certain methods of organizing human activity.” (Id.) Appellant argues that “the claims are directed to a graphical user interface that represent[s] improved technology for navigating and using a scheduling system” and that the claims “provide a new and improved Appeal 2021-000694 Application 15/475,930 5 interface to a scheduling system that results in more efficient use of the scheduling system.” (Reply Br. 3.) Under step one of the Alice framework, we “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). The “directed to” inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon . . . . Rather, 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.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In other words, the first step of the Alice framework “asks whether the focus of the claims is on the specific asserted improvement in [the relevant technology] or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335–36; see also 2019 Guidance at 54–55. The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that the “invention relates to scheduling of medical exams, and more particularly, to systems and methods for scheduling of medical exams with customer configured notifications, such as questions, warnings, and information.” (Spec. ¶ 2.) Claim 2 provides further evidence. Claim 2 recites “[a] computer- implemented method for scheduling a patient for a medical exam, the Appeal 2021-000694 Application 15/475,930 6 method comprising: by one or more processors executing program instructions: providing a dynamically updateable graphical user interface . . . to display information . . . , receive inputs . . ., and update the information displayed,” “receiving . . . one or more exam parameters,” “selecting . . . one or more notifications for display,” “providing, via the user interface, the one or more notifications,” “automatically determining whether [a] question has received an acceptable response from the user,” “automatically determining whether [a] warning has received an acknowledgement from the user,” “and in response to determining” that an acceptable response was not received “automatically preventing completion of the exam scheduling.” In other words, claim 2 recites a screening procedure to be completed in scheduling a patient for a medical examination. Appellant does not argue that Appellant invented screening a patient in scheduling a medical examination. The claim limitations recite receiving data, selecting data, displaying data (e.g., “providing, via the user interface, the one or more notifications”), and analyzing data (e.g., “automatically determining” and “automatically preventing completion”). Receiving, selecting, displaying, and analyzing data have been determined to be directed to an abstract idea. See, e.g., Univ. of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019) (claims “directed to the abstract idea of ‘collecting, analyzing, manipulating, and displaying data’”), FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining “that the ‘realm of abstract ideas’ includes ‘collecting information, including when limited to particular content’” as well as analyzing and presenting information), Content Extraction and Transmission LLC v. Wells Fargo Appeal 2021-000694 Application 15/475,930 7 Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (treating as an abstract idea “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data”), Bridge and Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019) (obtaining information, analyzing the information, and presenting customized information based on the analyzed information determined to be directed to an abstract idea). Claim 2 does not recite how the processor(s) provide the dynamically updateable graphical user interface, how the user interface receives the exam parameters, how the processor(s) select notification(s) for display from the notification data structure, how the user interface provides the notification(s), how the processor(s) determine whether an acceptable response and warning notification acknowledgement were received (i.e., applies the notification rules), or how the processor(s) automatically prevent completion of the exam scheduling. “Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017). The inquiry as to whether the claims are directed to an abstract idea “often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC, 822 F.3d at 1335–36). In this case, the asserted improvement is to the information provided and rules applied, i.e., the information presented on the user interface, and the rules followed based on Appeal 2021-000694 Application 15/475,930 8 the responsive information received. The processor(s), graphical user interface, and notification data structure are invoked merely as tools performing the generic computer functions of receiving, selecting, analyzing, and displaying data. The receiving step is simply a data gathering step. The selecting and analyzing/determining steps merely recite data analysis, a basic computer function. The displaying step merely describes the generic computer function of outputting data to a display device, in this case a generically recited “dynamically updateable graphical user interface.” The recited steps of claim 2 do not improve the operation of the computing devices themselves. Appellant, however, argues that “[n]one of the recited claim limitations relate[s] to concepts performed in a human mind as all of the claimed subject matter is performed by one or more processors.” (Appeal Br. 10.) We do not find this argument persuasive. The 2019 Guidance identifies “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)” as mental processes, and a category of abstract ideas. (2019 Guidance at 52 (footnote omitted).) “Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). Here, the recited actions include receiving information (observation, information gathering), selecting information (evaluation, judgment), providing information (presenting information), determining (evaluation, judgment), and preventing completion based on response (applying evaluation, Appeal 2021-000694 Application 15/475,930 9 judgment). (See 2019 Guidance at 52.) We find nothing in the claim that forecloses it “from being performed by a human, mentally or with pen and paper.” See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). The claim limitations recite receiving medical exam parameters, selecting and providing to the user notifications based at least in part on the exam parameters, determining the acceptability of the responses, and, as appropriate, preventing completion of the exam scheduling. These all recite steps to establish a commercial interaction, i.e., managing relationships or interactions between people, in this case, in a medical context.2 “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.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). The “character of [the] information simply invokes a separate category of abstract ideas.” Id. Moreover, “[a] claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed. Cir. 2021). Nor does a “[g]roundbreaking, innovative, or even brilliant discovery . . . by itself satisfy the § 101 inquiry.” Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). 2 Although we and the Examiner describe, at different levels of abstraction, to what the claims are directed, it is recognized that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does not, “impact the patentability analysis.” Id. at 1241. Appeal 2021-000694 Application 15/475,930 10 We do not find any 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 that attributes an improvement in computer technology or functionality to the claimed invention or that otherwise indicates that the claimed invention “appl[ies], rel[ies] on, or use[s] 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.” (See 2019 Guidance at 54–55.) Nonetheless, Appellant argues that the recited “technology improves an individual user’s access to medical treatment and information, this technology also introduces complexities that current systems cannot handle” including “an improved user interface for scheduling patients that is dynamically updated with specific questions based on the inputs received through the user interface.” (Appeal Br. 11–12.) Appellant argues that “this type of improved user interface aligns with the decision in Core Wireless Licensing v. LG Electronics.” (Id. at 12.) We do not find this argument persuasive. In Core Wireless Licensing S.A.R.L. v. LG Electronics., Inc., 880 F.3d 1356 (Fed. Cir. 2018), the claims were “directed to an improved user interface.” Core Wireless, 880 F. 3d at 1362. Specifically: Claim 1 of the ‘476 patent requires “an application summary that can be reached directly from the menu,” specifying a particular manner by which the summary window must be accessed. The claim further requires the application summary window list a limited set of data, “each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application.” This Appeal 2021-000694 Application 15/475,930 11 claim limitation restrains the type of data that can be displayed in the summary window. Finally, the claim recites that the summary window “is displayed while the one or more applications are in an un-launched state,” a requirement that the device applications exist in a particular state. These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. Id. at 1362–63 (emphasis added). In contrast, Appellant’s argument is that the content of the medical data presented constitutes the improvement. (See, e.g., Appeal Br. 12.) Appellant also seeks to analogize claim 2 to the claims in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). (Id. at 15–16.) Appellant argues that “like the claims at issue in McRO, the currently pending claims recite a specific process for selecting notifications (both in number and type) displayed within a user interface that allows users to schedule medical procedures in an efficient and accurate manner.” (Id. at 15.) We do not find this argument persuasive. Claim 2 simply uses a generic processor, graphical user interface, and memory (“notification data structure”)3 to perform the abstract idea. (See Spec. ¶¶ 26–28.) It does not improve the processor, graphical user interface, or memory. As noted above, the asserted improvement here is to the content of the data presented. (See, e.g., Appeal Br. 16.) “The claimed improvement [in McRO] was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed improvement in [the abstract idea] with no improved display mechanism.” SAP Am., Inc., 898 F.3d at 1167. 3 Figure 1 shows the notification data structure as part of a generic mass storage device, i.e., memory. (Figure 1; see also Spec. ¶ 26.) Appeal 2021-000694 Application 15/475,930 12 In view of the above, we determine that claim 2 sets forth a method for a screening procedure to be completed in scheduling a patient for a medical examination. The claim steps recite observation, evaluation, and judgment. Under the 2019 Guidance, these are identified as mental processes, and thus, an abstract idea. (See 2019 Guidance at 52.) Additionally, claim 2 recites steps to establish a commercial interaction, i.e., managing relationships or interactions between people. Under the 2019 Guidance, these are identified as certain methods of organizing human activity, and thus, an abstract idea. (See id.) In short, claim 2 is “focused on providing information to [the user] . . . , not on improving computers or technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). “Like Electric Power, the purported advance ‘is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.’” Id. at 1385 (quoting Elec. Power Grp., 830 F.3d at 1354). “The advance is only at the abstract level of computerization because [the claim] fails to set forth specific techniques for processing the data, instead reciting known computer techniques for automation of known processes.” Enco Sys., Inc. v. Davincia, LLC, 845 F. App’x 953, 957 (Fed. Cir. 2021) (citing Univ. of Florida Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1368 (Fed. Cir. 2019)). Therefore, under prong one of the two prong test in the 2019 Guidance, claim 2 recites an abstract idea; and, under prong two, additional elements in claim 2 do not “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that Appeal 2021-000694 Application 15/475,930 13 the claim is more than a drafting effort designed to monopolize the judicial exception.” (See 2019 Guidance at 54.) As such, under step one of the Alice framework, the claim is directed to an abstract idea, and we move to step two. Step two of the Alice framework has been described “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, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under step two, we examine, inter alia, whether a claim element or combination of elements “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present.” (2019 Guidance at 56.) Taking the claim elements separately, the functions performed in claim 2 by the generic processor(s), graphical user interface, and memory/notification data structure to receive, select, display, and analyze data are purely conventional. Receiving data, selecting data, displaying data, and analyzing data are well-understood, routine, and conventional functions previously known to the industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims “do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept . . . .”); see also Versata Dev. Group, Inc., 793 F.3d at 1335 (determining claims requiring “arranging, storing, retrieving, sorting, eliminating, determining” to “involve Appeal 2021-000694 Application 15/475,930 14 the normal, basic functions of a computer” and to be “conventional, routine, and well-known”), 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.”). Considered as an ordered combination, the generic processor(s), graphical user interface, and memory/notification data structure add nothing that is not already present when the limitations are considered separately. For example, claim 2 does not purport to improve the functioning of the processor(s), graphical user interface, or memory themselves. Nor does it effect an improvement in any other technology or technical field. Instead, claim 2 amounts to nothing significantly more than an instruction to apply the abstract ideas using generic computer components performing routine computer functions. That is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. We are not persuaded that the Examiner erred in rejecting claim 2. Claims 4–9, 11–16, and 18–21 are not separately argued and fall with claim 2. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-000694 Application 15/475,930 15 CONCLUSION The Examiner’s rejection of claims 2, 4–9, 11–16, and 18–21 under 35 U.S.C. § 101 is affirmed. Specifically: Claims Rejected 35 U.S.C. § Reference/Basis Affirmed Reversed 2, 4–9, 11–16, 18–21 101 Eligibility 2, 4–9, 11–16, 18–21 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