Perry L. Johnson et al.

Patent Trials and Appeals Board

Dec 12, 2019

12547661 - (D) (P.T.A.B. Dec. 12, 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.
12/547,661 08/26/2009 Perry L. Johnson PJI0117PUS 5681
22045 7590 12/12/2019
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
NGUYEN, TRANG T
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PERRY L. JOHNSON, MANUEL A. CARRILLO,
and MOHAMMED ROHIM UDDIN
____________

Appeal 2018-005891
Application 12/547,661
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 2, 2018) and Reply Brief (“Reply Br.,” filed May 21, 2018),
and the Examiner’s Answer (“Ans.,” mailed March 20, 2018) and Final
Office Action (“Final Act.,” mailed May 30, 2017). Appellant identifies the
real party in interest as Perry Johnson and Associates, Inc. Appeal Br. 2.
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CLAIMED INVENTION
The claimed invention relates to a system and method for transcribing
medical information (Spec. Title).
Claims 1, 7, and 13 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A system for transcribing medical information
comprising:
one or more computers configured to
[(a)] receive input assigning each of a plurality of
user profiles to at least one of a plurality of work pools
each having criteria defining experience requirements
driven by medical information content to be processed by
the work pool such that the user profiles lacking the
experience requirements for a particular one of the work
pools are not assigned to the particular one of the work
pools,
[(b)] receive a plurality of jobs each including
demographic information, a priority indicator, and a
digital audio file of patient medical information,
[(c)] assign each of the jobs to one of the plurality
of work pools based on the job’s priority indicator and
demographic information,
[(d)] distribute each of the assigned jobs to one of
the assigned user profiles active within the assigned job’s
work pool based on the assigned job's priority indicator,
[(e)] receive, for each of the assigned jobs, a
transcription of the job’s digital audio file input by a user
associated with the job’s assigned user profile,
[(f)] generate, for a selected user profile, quality
metrics indicative of an accuracy of transcriptions input by
the user associated with the selected user profile and
derived from the transcriptions input by the user
associated with the selected user profile, and
[(g)] output a visual representation of the quality
metrics.
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REJECTIONS
Claims 1–13 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Jilk et al. (US 7,155,400 B1, issued Dec. 26, 2006) (“Jilk”), Bryce et al.
(US 8,971,520 B1, issued Mar. 3, 2015) (“Bryce”), Davis et al.
(US 2007/0250317 A1, published Oct. 25, 2007) (“Davis”), Othmer et al.
(US 2004/0064317 A1, published Apr. 1, 2004) (“Othmer”), and
Marquette et al. (US 2009/0271192 A1, published Oct. 29, 2009)
(“Marquette”).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group (Appeal Br. 4). 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
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
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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]ssigning jobs to the work pool,
distributing jobs to user[s] for transcribing medical information[,] and
generating quality metrics indicative of an accuracy of [the] transcriptions”
— a concept that the Examiner reasoned is similar to other concepts that the
courts have had abstract (Final Act. 3–4). 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 4–5).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance 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.
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
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.
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We are not persuaded by Appellant’s arguments that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 4). 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 the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
Claim 1, reproduced above, recites a system of transcribing medical
information comprising one or more computers configured to: (1) assign
each of a plurality of users to at least one of a plurality of work pools based
on user profile criteria, i.e.,
receive input assigning each of a plurality of user
profiles to at least one of a plurality of work pools each
having criteria defining experience requirements driven by
medical information content to be processed by the work
pool such that the user profiles lacking the experience
requirements for a particular one of the work pools are not
assigned to the particular one of the work pools
(step (a)); (2) “receive a plurality of jobs each including demographic
information, a priority indicator, and a digital audio file of patient medical
information” (step (b)); (3) “assign each of the jobs to one of the plurality of
work pools based on the job’s priority indicator and demographic
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information” (step (c)); (4) distribute each of the assigned jobs to one of the
users within the assigned work pool based on the job’s priority indicator,
i.e., “distribute each of the assigned jobs to one of the assigned user profiles
active within the assigned job’s work pool based on the assigned job's
priority indicator” (step (d)); (5) for each of the assigned jobs, receive a
transcription of the job’s digital audio file and assess the quality of the
transcription, i.e.,
receive, for each of the assigned jobs, a transcription
of the job’s digital audio file input by a user associated
with the job’s assigned user profile, [and]
generate, for a selected user profile, quality metrics
indicative of an accuracy of transcriptions input by the
user associated with the selected user profile and derived
from the transcriptions input by the user associated with
the selected user profile
(steps (e) and (f)); and (6) display an indication of the quality of the
transcription, i.e., “output a visual representation of the quality metrics”
(step (g)). These limitations, when given their broadest reasonable
interpretation, recite assigning a medical transcription job to a
transcriptionist based on the transcriptionist’s qualifications and experience
relative the job requirements; assessing the quality of the work product, i.e.,
the transcription; and displaying an indication of the work product quality.
Although claim 1 recites the use of “one or more computers,” the underlying
processes recited in the claim are all acts that could be performed by a
human, e.g., mentally or manually, using pen and paper, without the use of a
computer or any other machine. For example, a person, using pen and paper
or via oral communication, could assign users to work pools based on the
users’ profiles, e.g., qualifications and experience, and criteria defining the
work pools; assign medical transcription jobs to the work pools; and
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distribute the jobs to users within the assigned work pools. Such a person
also could assess the quality of the work product, i.e., the transcriptions,
either mentally or using pen and paper, and output an indication of the work
product quality, via either written or oral communication. Simply put,
claim 1 recites a mental process, i.e., a concept performed in the human
mind, including an evaluation or judgment, and therefore, an abstract idea.
See 2019 Revised Guidance, 84 Fed. Reg. at 52. See also CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011)
(holding that method steps that can be performed in the human mind, or by a
human using a pen and paper, are unpatentable mental processes).
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 only additional elements recited in claim 1, beyond the abstract
idea, are the “one or more computers” — elements that, as the Examiner
observes (Final Act. 3), are described in the Specification as generic
computer components (see, e.g., Spec. 11–12). We find no indication in the
Specification, nor does Appellant direct us to any indication, that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
assertedly 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
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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 that attributes an
improvement in technology and/or a technical field 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 2019 Revised
Guidance.2
Appellant argues that the claims are directed to “improvements of
systems and methods for transcribing medical information” (Appeal Br. 4).
But, Appellant does not identify the improvements to which the claims
allegedly are directed. And although Appellant asserts that “[t]he claims, for
example, provide improved algorithms for producing quality metrics related
to transcribed medical information” (id.), there is no recitation in claim 1 (or,
for that matter, in either of independent claims 7 and 13) of any “algorithms
for producing quality metrics,” whether improved or otherwise. Instead,
claim 1 merely recites “generat[ing] . . . quality metrics indicative of an
accuracy of transcriptions input by the user” without any technical details
regarding how the quality metrics are generated. Appellant, by its argument,

2 The 2019 Revised Guidance references the MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e) in describing
the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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suggests such details exist, but those details are not reflected in the claim.
Instead, “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).
We also are not persuaded of Examiner error by Appellant’s further
argument that the claims “contemplate a transformation of the type
recognized to fall within the bounds of 35 U.S.C. 101” (Appeal Br. 4).3
Appellant argues that “[d]ata regarding transcriptions is [sic] transformed
into information regarding accuracy of the transcriptions, which is then
displayed” (id.; see also Reply Br. 2). But this alleged transformation is, at
best, merely a manipulation of data, which is not sufficient to meet the
transformation prong under 35 U.S.C. § 101. See Gottschalk v. Benson,
409 U.S. 63, 71–72 (1972) (a computer based algorithm that merely
transforms data from one form to another is not patent eligible).
It also is not controlling that the claims present no risk of preemption
(Reply Br. 2). 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

3 We understand Appellant to be referring to the Supreme Court’s decision
in in Bilski v. Kappos, 561 U.S. 593 (2010). The Supreme Court in Bilski
noted that the machine-or-transformation test is a “useful and important
clue” for determining patent eligibility. Id. at 604. However, the Court, in
Mayo, emphasized that “satisfying the machine-or-transformation test, by
itself, is not sufficient to render a claim patent-eligible, as not all
transformations or machine implementations infuse an otherwise ineligible
claim with an ‘inventive concept.’” DDR Holdings, 773 F.3d at 1255–56
(citing Mayo, 566 U.S. at 84).
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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
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim are no more than generic components used as tools to perform
the recited abstract idea. As such, they do not integrate the abstract idea into
a practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly
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.’” (quoting
Mayo, 566 U.S. at 77)). 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,
whether claim 1 adds specific limitations beyond the judicial exception that
are not “well-understood, routine, conventional” activity in the field, or
simply appends well-understood, routine, conventional activities previously
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known to the industry, specified at a high level of generality, to the judicial
exception.
As described above, the only claim elements beyond the abstract idea
are the “one or more computers.” Appellant cannot reasonably maintain, nor
does Appellant, that there is a genuine issue of material fact regarding
whether operation of these components 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 generic computer components to perform
generic computer functions, e.g., receiving, processing, and transmitting
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) (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
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sustain the Examiner’s rejection of claim 1, and claims 2–13, which fall with
claim 1.
Obviousness
We are not persuaded by Appellant’s arguments that the Examiner
erred in rejecting independent claims 1, 7, and 13 under 35 U.S.C. § 103(a)
(Appeal Br. 5; see also Reply Br. 2). The cited references, in our view, are
properly combinable. And, consistent with the guidelines set forth in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), the Examiner has
provided articulated reasoning with some rational underpinning to support
the obviousness determination (Final Act. 7–10; see also Ans. 5–7) .
Appellant argues that the Examiner’s assertions do not provide the
required articulated reasoning (Appeal Br. 5) and ostensibly maintains that a
person of ordinary skill in the art would not have combined the references,
as the Examiner proposes, absent impermissible hindsight (Reply Br. 2).
But Appellant does not persuasively address the substance of the Examiner’s
rationale.
We are not persuaded, on the present record, of error on the part of the
Examiner. Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 7, and 13 under 35 U.S.C. § 103(a). We also sustain the rejection
of dependent claims 2–6 and 8–12, which are not argued separately.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–13 Eligibility 1–13
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–13 103(a) Jilk, Bryce,
Davis,
Othmer,
Marquette
1–13
Overall
Outcome
1–13
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