Smith, Sidney P.

Patent Trials and Appeals Board

Aug 30, 2019

14188271 - (D) (P.T.A.B. Aug. 30, 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.
14/188,271 02/24/2014 Sidney P. Smith AMK-5708-23 2395
23117 7590 08/30/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIDNEY P. SMITH
____________

Appeal 2018-007613
Application 14/188,2711
Technology Center 3600
____________

Before ERIC S. FRAHM, KRISTEN L. DROESCH, and SCOTT E. BAIN,
Administrative Patent Judges.

BAIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 5–13, 18, and 19, which constitute all claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies Complete Consent, LLC as the real party in interest.
Br. 3.
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BACKGROUND
The Claimed Invention
The invention relates to “automated quality control” for specimens
being tested in medical laboratories. Abstract; Spec. ¶¶ 3–4. Specifically,
the invention includes, for example, “scan codes” and other “safeguards” to
ensure proper completion of laboratory testing and follow-up. Id. at ¶ 5.
Claims 1 and 18 are independent. Claim 1 is illustrative of the invention and
the subject matter in dispute, and reads as follows:
1. A computer-implemented method of pathological quality
assurance comprising:
(a) generating a label for a specimen, the label including
patient demographics and a proposed diagnosis;
(b) electronically sending with network communication
hardware the patient demographics and the proposed diagnosis
to a quality assurance module;
(c) providing a lab receiving the specimen with access to
the quality assurance module;
(d) receiving a specialist diagnosis and a
recommendation code from the lab, generating a combined
code based on the specialist diagnosis and the recommendation
code, and importing the combined code to the quality assurance
module, wherein the combined code comprises an additional
procedure section that specifies any additional procedures
needed and a time parameter section that specifies time
parameters for completion of the additional procedures; and
(e) the quality assurance module automatically
identifying time metrics, in addition to the time parameters in
the time parameter section of the combined code, for a follow-
up activity based on the specialist diagnosis and the
recommendation code.
App. Br. 14 (Claims Appendix).
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The Rejections on Appeal
Claims 1–3, 5–13, 18, and 19 are rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 4–7; Ans. 3–5.
DISCUSSION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, and for the reasons discussed
below, we are not persuaded the Examiner erred.
The Examiner determined that the claims are directed to the abstract
idea of generating a code for a lab specimen, based on a specialist diagnosis
and recommendation, which is method of organizing human activity. Ans.
3; Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-
step framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”). Further, the Examiner found that
additional elements in the claims merely constituted “generic components”
of a network such as communication hardware and a computer. Ans. 4–5.
Accordingly, the Examiner concluded that the claims constitute ineligible
subject matter.
Appellant argues that the claims represent an advance in “technology”
and therefore are not abstract. Reply Br. 1. Appellant further contends that
the claims include additional elements that are not well-understood, routine,
or conventional, and therefore are patent-eligible even if encompassing an
abstract idea. Id. at 2–3.
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After the Briefs were filed and Answer mailed in this case, the
USPTO published “Revised Subject Matter Eligibility Guidance”
synthesizing case law and providing agency instruction on the application of
§ 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(“Step 2A, Prong Two”).
See Guidance, 84 Fed. Reg. at 54–55.
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 id. at 56 (collectively “Step 2B”).
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We begin our de novo review with Step 2A, Prong One of the
Guidance.2 Appellant’s claim 1 recites a method of “quality assurance”
comprising the following steps: (1) generating a label (for a specimen); (2)
sending information to a “module;” (3) providing a lab with “access” to the
module; (4) receiving a diagnosis and “code” from the lab, and generating a
combined “code;” (5) identifying data (time metrics and time parameters)
for a “follow-up activity.” App. Br. 14. Each of these steps pertain to the
idea of tracking a lab specimen sample through the use of codes and other
data. Data tracking is a fundamental economic or commercial practice, both
of which are methods of organizing human activity deemed to be an abstract
idea under the Guidance. See Bilski v. Kappos, 561 U.S. 593 (2010); Alice,
573 U.S. 208.
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. Appellant argues that claim 1 recites an
improvement in “computer technology” and therefore is patent-eligible.
App. Br. 10 (citing Research Corp. v. Microsoft, 627 F.3d 829 (Fed. Cir.
2010)).
Improving the functioning of a computer can reflect integration of an
idea into a “practical application.” Guidance Sect. III. Appellant, however,
does not explain, and we do not discern, any improvement in technology
from the claimed invention. Unlike the claims in Research Corp., which

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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were directed to improving printer technology by a particular half tone
rendering process, Appellant’s claims involve generation of codes merely
using generic computer equipment. See, e.g., Spec. Fig. 5, ¶¶ 51–53
(describing generic computer components).
Appellant also does not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
Rather, claim 1 recites generating data (such as a “label” and “code”),
receiving data (such as a “specialist diagnosis and a recommendation code”),
and outputting data (such as “time metrics . . . for a follow-up activity”).
App. Br. 14 (Claims App’x.). Reciting a result-oriented solution that lacks
any details as to how the computer performed the modifications is the
equivalent of the words “apply it.” Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2015) (citing Elec.
Power Grp., LLC, v. Alstrom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)
(cautioning against claims “so result focused, so functional, as to effectively
cover any solution to an identified problem”)); see also CyberSource v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (mere data
gathering does not make a claim patent-eligible). The data gathering and
processing steps in claim 1 do not add meaningfully to the recited method of
organizing human activity.
Finally, under Step 2B of the Guidance we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
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Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
We agree with the Examiner’s finding that simply using standard
computer elements to implement rules and generate data for tracking
laboratory specimens (including generating a label and codes) is well-
understood, routine, and conventional. Ans. 4–5. Appellant argues that the
“code itself . . . has physical attributes” (analogous to a “3D printed object”)
and that Examiner’s findings are insufficient under Berkheimer, Reply Br.
2–3, but the fact that the code may represent some physical attribute does
not mean that generation of the code is accomplished in an unconventional
way. Rather, as discussed above, Appellant’s Specification confirms that
generic computing equipment performing its conventional functions is used
for all of the steps in the invention.
Accordingly, we conclude that the Examiner did not err in concluding
that claim 1 constitutes ineligible subject matter. Appellant does not argue
the remaining claims separately from claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). We, therefore, sustain the rejection of claims 1–3, 5–13,
18, and 19 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s decision rejecting claims 1–3, 5–13, 18,
and 19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
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AFFIRMED