QUEST DIAGNOSTICS INVESTMENTS INCORPORATED

Patent Trials and Appeals Board

Sep 3, 2020

2018004935 (P.T.A.B. Sep. 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.
14/149,646 01/07/2014 John Koehl 340005-2007.1 1820
20999 7590 09/03/2020
HAUG PARTNERS LLP
745 FIFTH AVENUE - 10th FLOOR
NEW YORK, NY 10151
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/03/2020 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):
docket@haugpartners.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN KOEHL, SUDHEENDRA V. GALGALI,
WENDY A. NEU, and WILLIAM J. WYNNE
____________________

Appeal 2018-004935
Application 14/149,646
Technology Center 3600
____________________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 2–7 and 9–11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s disclosure “involves the transfer of data in electronic
messages with no loss of semantic data and/or other metadata or other

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 Quest
Diagnostics Investments Incorporated. Appeal Br. 1.
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meaning associated with the data, with application to the transfer of medical
data.” Spec. ¶ 4. Below, we reproduce independent claim 2 as illustrative of
the appealed claims.
2. A method of duplicating data, comprising:
receiving an electronic message that comprises at least
one reference that uniquely specifies one or more electronic
records that represent a set of data;
presenting the electronic message to a recipient at a first
computer system;
in response to input to the first computer system, using
the at least one reference to automatically retrieve one or more
of the electronic records;
based on the retrieved records, presenting at the first
computer system some or all of the data comprised by the set of
data, the recipient lacking access privileges to read or copy the
electronic records but for the existence of the electronic
message and further lacking access privileges to read or copy
the electronic records except through one or more of the
references; and
in response to further input to the first computer system,
creating a persistent copy of some or all of the electronic
records.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:2
I. Claims 2–7 and 9–11 under 35 U.S.C. § 101 as reciting only
patent-ineligible subject matter; and
II. Claims 2–7 and 9–11 under 35 U.S.C. § 103(a) as unpatentable
based on Weidner3 and Heere.4

2 Although the Non-final Office Action includes an indefiniteness rejection,
the Examiner withdraws this rejection in the Answer. Non-final Action 6–7;
Answer 3.
3 Weidner et al., US 2005/0108058 A1, published May 19, 2005.
4 Heere et al., US 2005/0148849 A1, published July 7, 2005.
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PRINCIPLES OF LAW CONCERNING 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 has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[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) (citation omitted).
In determining whether a claim falls within an excluded category, the
Supreme Court’s two-step framework, described in Mayo and Alice, guides
us. See 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.” Id. 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 that the courts 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,
67 (1972)). Concepts that the courts 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
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(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, although the claim at issue recited a mathematical formula,
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 187; 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.”).
Nonetheless, 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 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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.
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2019 Revised Patent Subject Matter Eligibility Guidance
In early 2019, the U.S. Patent and Trademark Office published revised
guidance on the application of § 101. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
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 i) a fundamental economic
practice, or ii) managing personal behavior or relationships or
interactions between people, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)
(9th Ed., Rev. 08.2017, Jan. 2018)).
A practical application “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.” Guidance, 84 Fed. Reg. at 54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim either:
(3) adds a specific limitation beyond the judicial
exception which is not “well-understood, routine, [or]
conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See generally Guidance.
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ANALYSIS
Rejection I—Eligibility rejection of claims 2–7 and 9–11
Initially, we note that Appellant argues against the Examiner’s § 101
rejection of the claims as a group. Appeal Br. 5–11. We choose independent
claim 2 for our analysis, and the remaining claims stand or fall with claim 2.
See 37 C.F.R. § 41.37 (c)(1)(iv). For the following reasons, based on our
review of the record, we sustain the Examiner’s rejection of the claims as
patent-ineligible.
We determine that in accordance with point (1) of the Guidance
referenced above, independent claim 2 recites at least one judicial exception,
including an abstract idea. More specifically, as described in further detail,
the abstract idea includes certain methods of organizing human activity, in
particular managing personal behavior or relationships or interactions
between people.
As set forth in Appellant’s Specification, the “invention relates to the
use of electronic messages to transfer data. “Many forms of electronic
messaging are well known, e.g., electronic mail (or email) and instant
messaging. For example, depending on the system, email may comprise a
system for sending asynchronous messages to one or more users.” Spec. ¶ 6.
A person may use a computer to send an electronic message to another
person, who reviews the message on a computer. E.g., id. ¶ 15. Thus,
Appellant’s Specification describes the abstract idea of managing the
behavior of a person accessing records, as well as interactions between a
person creating a record and a person accessing the record, through the
sending and receiving of electronic messages. Id. ¶¶ 7–8.
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This abstract idea of managing personal behavior or relationships or
interactions between people is set forth in independent claim 2. Claim 2
recites a “method of duplicating data” (Appeal Br., Claims App. (Claim 2))
comprising: (1) providing a reference to a specific record (i.e., “receiving an
electronic message that comprises at least one reference that uniquely
specifies one or more electronic records that represent a set of data”) (id.);
(2) presenting that reference to a person who, as set forth below, otherwise
lacks permission to access the specific record (i.e., “presenting the electronic
message to a recipient at a first computer system”) (id.); (3) having that
person use the reference to retrieve the specific record (i.e., “in response to
input to the first computer system, using the at least one reference to
automatically retrieve one or more of the electronic records”) (id.);
(4) permitting the person to read or copy data in the specific record only
because the person has the reference (i.e., “based on the retrieved records,
presenting at the first computer system some or all of the data comprised by
the set of data, the recipient lacking access privileges to read or copy the
electronic records but for the existence of the electronic message and further
lacking access privileges to read or copy the electronic records except
through one or more of the references”) (id.); and allowing the person to
copy some data in the record (i.e., “in response to further input to the first
computer system, creating a persistent copy of some or all of the electronic
records”) (id.).
Accordingly, claim 2 describes a method of organizing human
activity, by managing the behavior of a person accessing records, and
managing interactions between a person accessing a record and the person
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who created or sent the record, which is an abstract idea. See MPEP
§ 2106.04(a)(2)(II)(A) and the supporting case law cited therein.
In accordance with point (2) of the Guidance referenced above,
claim 2 does not recite any additional element that integrates the judicial
exception into a practical application—i.e., something that “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.” Guidance
at 54; see also Alice, 573 U.S. at 223–24. Aside from the abstract idea
described above, the claim only generically recites the use of certain
physical hardware—a first computer system—and, thus, this hardware does
not meaningfully limit the claim. Further, in the Specification, Appellant
does not describe the first computer system in such a way as to indicate that
the hardware is anything other than generic. Instead, Appellant describes the
computer system as including generic, well-known components. For
example, Appellant’s Specification describes that the computer system “may
support interaction with the user interface by well-known means for
interacting with computer systems, which may comprise accepting user
input via a pointing device such as a mouse and a keyboard and displaying
output on a computer monitor.” Spec. ¶ 72.
Thus, claim 2 does not integrate the non-abstract portion of the claim
into a practical application, and does not affect an improvement in any
technology or technical field.
Therefore, for the above reasons, independent claim 2 is directed to
the above-discussed abstract idea, and does not integrate the judicial
exception into a practical application.
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In accordance with points (3) and (4) of the Guidance referenced
above, claim 2 fails to recite a specific limitation beyond the judicial
exception which is not well understood, routine, and conventional in the
field, but instead simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Taking the claim elements separately,
the claimed hardware and the functions performed by the claimed hardware
are purely conventional. Specifically, claim 2 does not recite anything other
than using known, conventional components to perform their known, basic
functions. Although, arguably, the actual information differs, the claim
recites the hardware only at a high level of generality. Restated, here the
claim recites only well-understood, routine, and conventional functions. See
In re Katz, 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.”).
Further, when considered as an ordered combination, claim 2’s
limitations do not add anything that is not already present when we consider
the steps separately. The hardware and its technological configuration
remain the same before, during, and after duplicating data. Thus, the claim
amounts to nothing significantly more than instructions to apply the abstract
idea with conventional hardware, and does not require an improved version
or arrangement of the recited hardware. Accordingly, the claim recitations
are insufficient to transform the abstract idea into a patent-eligible invention.
See Alice, 573 U.S. at 225–26.
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We have considered all of Appellant’s arguments in the Briefs, but
Appellant does not persuade us that the claim recites patent-eligible subject
matter. See Appeal Br. 5–11; see Reply Br. 2–6. To the extent that the
above discussion does not address particular arguments made by Appellant
in the Briefs, we now address certain arguments below.
Appellant’s arguments with reference to BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), are not
persuasive of error. See Appeal Br. 8–10. In BASCOM, the Federal Circuit
did indicate that it is sometimes possible for “an inventive concept” to reside
in “the non-conventional and non-generic arrangement of known,
conventional pieces,” such as “a set of generic computer components.”
BASCOM, 827 F.3d at 1350. However, as explained above, there is nothing
in Appellant’s Specification or claim to indicate that the computer
component recited in Appellant’s claim 2—a first computer system— is
arranged in anything other than a conventional and generic manner.
Appellant’s arguments with respect to Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016) also are unpersuasive. Appeal Br. 6, 8–9.
Unlike Appellant’s claims, the claims in Enfish recited a “specific
improvement to the way computers operate”—i.e., an improved database
configuration that permitted faster and more efficient searching. Id.
at 1330–33, 1336. The Federal Circuit later explained that the claims in
Enfish “did more than allow computers to perform familiar tasks with
greater speed and efficiency” but “actually permitted users to launch and
construct databases in a new way.” Finjan, Inc. v. Blue Coat Sys., Inc., 879
F.3d 1299, 1305 (Fed. Cir. 2018). The Federal Circuit also explained that
the claims in Enfish “focused on an improvement to computer functionality
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itself, not on economic or other tasks for which a computer is used in its
ordinary capacity.” Secured Mail Sols. LLC v. Universal Wilde, Inc., 873
F.3d 905, 910 (Fed. Cir. 2017). In contrast, Appellant’s claim 2 may
improve the abstract idea of duplicating data, but Appellant’s claim does not
recite an improvement in the way the non-abstract hardware performs such a
task.
Rejection II—Obviousness rejection of claims 2–7 and 9–11
With respect to independent claim 2, Appellant argues that the
Examiner’s rejection is in error for the following reasons:
Specifically, no reference teaches or suggests, as
[independent] claim 2 recites, receiving an electronic message
that comprises at least one reference that uniquely specifies one
or more electronic records that represent a set of data. Nor does
any reference teach or suggest, as claim 2 further recites:

the recipient lacking access privileges to read or
copy the electronic records but for the existence of
the electronic message and further lacking access
privileges to read or copy the electronic records
except through one or more of the references.
Appeal Br. 13; see also id. 13–15; see also Reply Br. 2–5. Based on our
review of the record, however, Appellant does not persuade us that the
Examiner errs.
Specifically, Appellant does not persuade us that Weidner’s
paragraph 48 fails to disclose the above claim recitations. See, e.g.,
Answer 12. This portion of Weidner states, in relevant part,
With a contact selected, a user can compose an email and
include an attachment . . . . By including an attachment, the
recipient will be allowed to review the patient record which is
attached. The actual patient record need not be physically
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attached to the email. Rather, the attachment of the email
provides access/authorization to the particular patient record.
That is, the attachment can be an authorization
code/password/ID to access other dentist’s records. The
authorization can be a code/password/ID or metadata attached
to the particular patient record that recognizes that the recipient
can access that particular patient record.
Weidner ¶ 48. Accordingly, we sustain the Examiner’s obviousness rejection
of claims 2–7 and 9–11.
CONCLUSION
We AFFIRM the Examiner’s § 101 rejection of claims 2–7 and 9–11.
We AFFIRM the Examiner’s § 103(a) rejection of claims 2–7
and 9–11.
In summary:
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.
§ 41.50(f).
AFFIRMED

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
2–7, 9–11 101 Eligibility 2–7, 9–11
2–7, 9–11 103(a) Weidner, Heere 2–7, 9–11
Overall
Outcome:
2–7, 9–11