Thomas A. Howell et al.

Patent Trials and Appeals Board

Jul 30, 2019

13358588 - (D) (P.T.A.B. Jul. 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.
13/358,588 01/26/2012 Thomas A. Howell IPVDP003D1 1027
34071 7590 07/30/2019
IPVENTURE, INC.
4010 Moorpark Avenue
Suite 211
San Jose, CA 95117
EXAMINER
GILLIGAN, CHRISTOPHER L
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
07/30/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS A. HOWELL, ANGELINE HADIWIDJAJA,
C. DOUGLASS THOMAS, and PETER P. TONG
____________________

Appeal 2018-002961
Application 13/358,588
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants indicate the real party in interest is IpVenture, Inc. App. Br. 1.
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Illustrative Claim
Illustrative claims 1, 2, 9, 10, and 12 under appeal read as follows
(emphasis, formatting, and bracketed material added):
1. A method for monitoring skin conditions for a user,
said method comprising:
(a) receiving digital picture data pertaining to at least one
photo at a processing facility, the at least one photo being a
photo of at least one region of the user’s skin that can have a
suspect skin condition;
(b) electronically processing the digital picture data to
organize the digital picture data;
(c) electronically storing the organized digital picture
data so as to be associated with the user;
(d) electronically evaluating the organized digital picture
data to determine whether medical personnel should review the
organized digital picture data associated with the user; and
(e) requesting medical personnel to review the organized
digital picture data associated with the user, if medical
personnel should review the data upon said determining (d).
2. A method as recited in claim 1, wherein said receiving
(a) results from a person physically delivering the digital
picture data or a representation of the digital picture data to a
company.
9. A method as recited in claim 1, wherein the at least
one photo was acquired using a monitoring device.
10. A method as recited in claim 9, wherein the
monitoring device includes at least an image acquisition device.
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12. A method as recited in claim 10,
wherein the image acquisition device comprises[:]
[i.] a camera and
[ii.] a housing, and
wherein the housing includes at least:
[i.] a camera interface suitable for being coupled to
a camera, the camera interface including an
opening to allow images to be captured by
the camera; and
[ii.] a skin surface interface suitable for being
coupled to a skin surface of the user, the
skin surface interface including an opening
that provides a picture border for pictures
being taken.
References2
Green et al. US 2004/0087836 A1 May 6, 2004
Skladnev et al. US 2004/0267102 A1 Dec. 30, 2004
Yu et al. US 2005/0019425 A1 Jan. 27, 2005
Rakowski et al. US 2005/0144029 A1 June 30, 2005
Pak US 2005/0251415 A1 Nov. 10, 2005
Altshuler et al. US 2008/0147054 A1 June 19, 2008
Landwehr et al. US 7,496,228 B2 Feb. 24, 2009

2 All citations herein to these references are by reference to the first named
inventor only.
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Rejections3
A. 35 U.S.C. § 101
The Examiner rejects claims 1–23 under 35 U.S.C. § 101 because “the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more,” i.e.,
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 3–5.
Appellants argue claims 1 and 19 together (App. Br. 10). We select
claim 1 as representative.
Appellants argue dependent claims 2–18 and 20–23 together (App.
Br. 11). We select claim 2 as representative. Appellants’ assertions as to
claims 2–18 and 20–23 do not comply with the requirements for making
separate arguments so as to treat separately any individual ones of claims 2–
18 and 20–23. 37 C.F.R. § 41.37(c)(1)(iv) (“Under each heading identifying
the ground of rejection being contested, any claim(s) argued separately or as
a subgroup shall be argued under a separate subheading that identifies the
claim(s) by number”). As to claim 2, Appellants assert “[t]here was no
apparent consideration for claim[] 2[], apart from independent claims 1 and
19,” i.e., Appellants merely assert they do not agree Examiner’s
consideration of claim 1 also covers claim 2. We find Appellants’
dependent claim 2 assertion does not rise to the level of a substantive
argument. Without more, this fails to constitute an argument on the merits.
See 37 C.F.R. § 41.37(c)(1)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011).

3 All citations to the “Final Action” or “Final Act.” are to the Final Action
mailed on December 8, 2016.
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Except for our ultimate decision, we do not discuss the § 101 rejection
of claims 2–23 further herein.
B. 35 U.S.C. § 1034
B.i.
The Examiner rejects claims 1, 3–7, 9–11, and 19–23 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Pak and Rakowski.
Final Act. 5–9.
We select claim 1 as representative for claims 3–7, 9–11, 19, and 23.
Appellants do not present substantively separate arguments for claims 1, 3–
7, 9–11, 19, and 23. As for claim 19, Appellants merely assert claim 19 is
patentably distinct “for similar reasons as noted above regarding claim 1.”
App. Br. 15. Thus, the rejection of claim 19 turn on our decision as to claim
1. As for claim 23, Appellants merely assert claim 23 is patentably distinct
“for at least the same reasons as noted above pertaining to claim 19.” App.
Br. 18. Thus, the rejection of claim 23 turn on our decision as to claim 1.
We select claim 20 as representative for claims 20–22. Appellants do
not present substantively separate arguments for claims 21 and 22. To the
extent that Appellants discuss claim 22 (App. Br. 17–18), Appellants merely
repeat for claim 22 the arguments directed to claim 20. Such a repeated
argument is not an argument for “separate patentability.”
Except for our ultimate decision, we do not discuss the § 103 rejection
of claims 3–7, 9–11, 19, and 21–23 further herein.

4 For simplicity, we label any rejection under 35 U.S.C. § 103(a), as a
rejection under § 103.
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B.ii.
The Examiner rejects claim 2 under 35 U.S.C. § 103 as being
unpatentable over the combination of Pak, Rakowski, and Landwehr. Final
Act. 9–10.
Appellants do not present substantive arguments for claim 2.
Appellants merely assert claim 2 is patentably distinct “for at least the same
reasons as noted above pertaining to claim 1.” App. Br. 18. Thus, the
rejection of claim 2 turns on our decision as to claim 1. Except for our
ultimate decision, we do not address the § 103 rejection of claim 2
further herein.
B.iii.
The Examiner rejects claim 8 under 35 U.S.C. § 103 as being
unpatentable over the combination of Pak, Rakowski, and Greene. Final
Act. 10–11.
B.iv.
The Examiner rejects claims 12, 13, 15, and 18 under 35 U.S.C. § 103
as being unpatentable over the combination of Pak, Rakowski, and
Skladnev. Final Act. 11–13.
Appellants merely recite the particular language of claims 12, 13, 15,
and 18, and assert the cited prior art references do not disclose the claim
limitations. App. Br. 20–23. Without more, this fails to constitute an
argument on the merits. See 37 C.F.R. § 41.37(c)(1)(iv); In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). Thus, the rejection of claims 12, 13, 15
and 18 turns on our decision as to claim 1. Except for our ultimate decision,
we do not address the § 103 rejection of claims 12, 13, 15, and 18
further herein.
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B.v.
The Examiner rejects claim 14 under 35 U.S.C. § 103 as being
unpatentable over the combination of Pak, Rakowski, Skladnev, and Yu.
Final Act. 13.
B.vi.
The Examiner rejects claims 16 and 17 under 35 U.S.C. § 103 as
being unpatentable over the combination of Pak, Rakowski, Skladnev,
and Altshuler. Final Act. 13–15.
We select claim 16 as representative for claims 16 and 17. Appellants
do not present substantively separate arguments for claim 17. Except for our
ultimate decision, we do not discuss the § 103 rejection of claim 17
further herein.
C. 35 U.S.C. § 112(b)5
The Examiner rejects claim 12–18 under 35 U.S.C. § 112(b), as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention. Final Act. 2.
Appellants do not present separate arguments for claims 12–18. We
select claim 12 as representative for claims 12–18. Except for our ultimate
decision, we do not address the § 112(b) rejection of claims 13–18
further herein.

5 For simplicity, we label any rejections under 35 U.S.C. § 112, second
paragraph, as a rejection under § 112(b).
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Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1, 8, 14, and 16 as being
obvious?
Did the Examiner err in rejecting claim 12 as being indefinite?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
Appeal Brief arguments that the Examiner has erred. As to the rejections
under § 101 and § 103, we disagree with Appellants; and except as noted
below, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief arguments. Also, as to the rejections under § 101
and § 103, we concur with the conclusions reached by the Examiner; and we
highlight the following points. As to the rejection under § 112(b), we agree
with Appellants.
A. Section 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.
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).
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In determining whether a claim falls within an excluded category, we
are guided by 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, 67 (1972)). Concepts
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 waterproof 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 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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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. (citation omitted) (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 (quotation marks 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. (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.
B. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. USPTO’s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”). Under that guidance,
we first look to whether the claim recites:
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(1) (see 2019 Memorandum Step 2A – Prong One) 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) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).6
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:
(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 2019 Memorandum Step 2B.

6 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of 2019 Memorandum). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of 2019 Memorandum). See 2019
Memorandum.
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C. Examiner’s § 101 Rejection - Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines claim 1
recites an abstract idea:
Claim[] 1 is[] directed to[:]
receiving picture data pertaining to a photo of a region of
skin,
processing the data to organize the data, storing the
organized data,
evaluating the organized data to determine whether
personnel should review the organized data, and
requesting the personnel to review the data.
Final Act. 3 (emphasis, formatting, and bracketed material added).
The Examiner further determines:
This is similar to the court-recognized abstract ideas of using
categories to organize, store, and transmit information
(Cyberfone) and comparing new and stored information and
using rules to identify options (SmartGene). For example, the
claims include receiving a skin region category of information,
organize, and store the received information. The claims also
require comparing new and stored information to trigger
personnel review and use rules to identify options of requesting
review of the picture data. The claims are also similar to the
court-recognized abstract idea of collecting information,
analyzing the information, and displaying results of the analysis
(Electric Power Group) because the claims recite functions of
collecting picture data, analyizing [sic] the data by organizing
and evaluating it, and outputting results of the collecting and
analysis by requesting personnel to review the data based on the
analysis.
Final Act. 3 (emphasis added).
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C.2. 2019 Memorandum Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 1 is directed to an abstract idea.
[T]he additional elements amount to no more than generic
computer components that serve to merely link the abstract idea
to a particular technological environment (i.e. electronic storage,
electronic evaluation, non-transitory computer readable
medium) . . . . While claims 9-18 recite additional elements that
are generic computer components, these elements are, at most,
directed to being a source of the digital photograph and are not
recited to be integrated into the method of claim 1. Therefore,
these additional elements can be fairly characterized as being
directed to insignificant extra-solution activity. . . . Looking at
the limitations as an ordered combination adds nothing that is not
already present when looking at the elements taken individually.
There is no indication that the combination of elements improves
the functioning of a computer or improves any other technology.
Their collective functions merely provide conventional computer
implementation.
Final Act. 4–5.
C.3. 2019 Memorandum Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
[T]he additional elements amount to no more than generic
computer components that serve to merely . . . perform[] routine
and conventional activities that are well-understood in the
healthcare industry (i.e. receiving information, organizing and
evaluating information, storing information, requesting
information). Furthermore, Applicant’s specification describes
conventional computer hardware for implementing the above
described functions including “host server 702 couples to a data
network 710 . . . home network device 712 can be a personal
computer . . .” (see paragraph 00074).
Final Act. 4.
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D. Appellants’ § 101 Arguments & Panel’s Analysis
D.1. 2019 Memorandum Step 2A, Prong 1
The Examiner correctly determines that claim 1 recites the following
limitations:
[A.] receiving picture data pertaining to a photo of a region of
skin,
[B.] processing the data to organize the data, storing the
organized data,
[C.] evaluating the organized data to determine whether
personnel should review the organized data, and
[D.] requesting the personnel to review the data.
Final Act. 3 (bracketed material added). In short, the Examiner correctly
determines that claim 1 recites a method of “evaluating the organized data”
“similar to the court-recognized abstract idea [in] Electric Power Group”
(Final Act. 3), in which case the court held “selecting information, by
content or source, for collection, analysis, and display” was not
differentiated “from ordinary mental processes” (Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)). Further,
evaluation is one the mental processes identified in the 2019 Memorandum,
and thus is an abstract idea. 84 Fed. Reg. at 52.
Appellants argue “[t]he claims are certainly not directed to ‘the
abstract idea of organizing human activities obtaining and reviewing medical
pictures’ as asserted at pages 3-4 of the Office Action.” App. Br. 8. We are
unpersuaded by Appellants’ argument because such language does not
appear in the December 8, 2016 Final Action upon which the appeal is
based.
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D.2. 2019 Memorandum Step 2A, Prong 2
Having determined that claim 1 recites an abstract idea, we now turn
to whether claim 1 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application.
D.2.a.
Appellants particularly contend:
The Examiner also offered no consideration of
preemption. However, it is clear that preemption is a relevant
and important consideration.
App. Br. 10 (emphasis added).
Appellants’ argument is not persuasive because although “preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We are
instructed that “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . . , preemption
concerns are fully addressed and made moot.” Id.
D.2.b.
Appellants also contend:
[S]ufficient structure or tangible matter is recited in these
claims, such that these claims cannot be reasonably considered
to be drawn to patent ineligible subject matter. Claim 1 recites
use of photos pertaining to a user’s skin, a processing facility,
and interaction with medical personnel.
App. Br. 10 (emphasis added).
We are not persuaded by Appellants’ arguments. First, we conclude
that “receiving picture data pertaining to a photo of a region of skin” of
claim 1 does not integrate the judicial exception into a practical application.
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Rather, this merely adds insignificant extra-solution activity to the judicial
exception. See MPEP 2106.05(g). The step of receiving is mere data
gathering to obtain information to which to apply the evaluating step.
Second, we conclude “a processing facility” merely recites the
environment where the “receiving” occurs. The Supreme Court 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.” Diehr, 450 U.S. at 191 (citation omitted)
(citing Benson and Flook).
Third, we conclude the interaction with the medical personnel is
merely “requesting” that the medical personnel perform their ordinary
mental processes of reviewing the organized digital picture data associated
with the user.
D.2.c.
We agree with the Examiner that, as to the steps of claim 1, “[t]here is
no indication that the combination of elements improves the functioning of a
computer or improves any other technology.” Final Act. 6. In view of
Appellants’ Specification, and consistent with the Examiner’s
determinations, we conclude that claim 1 does not integrate the judicial
exception into a practical application. We determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
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different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that
claim 1 is directed to a judicial exception; it does not integrate the judicial
exception into a practical application.
D.3. 2019 Memorandum Step 2B
Discussing claim 1, the Examiner points out:
[T]he additional elements amount to no more than generic
computer components that serve to. . . perform[] routine and
conventional activities that are well-understood in the healthcare
industry (i.e. receiving information, organizing and evaluating
information, storing information, requesting information).
Final Act. 4.
We agree with the Examiner that use of electronic (e.g., computer)
components to perform evaluating is well-understood, routine and
conventional. This is evidenced by Appellants’ reference to prior art devices
for performing such evaluations:
If the electronic evaluation indicates one or more suspected
regions, medical personnel can be summoned. Different
embodiments have been described in electronically determining
problematic images of skin problems in U.S. Patent Publications,
[Maschke] 2005/0119551 A2 and [Momma] 2004/0218810 A1,
both of which are hereby incorporated herein by reference.
Spec. ¶ 67.
Because claim 1, in addition to the abstract idea, recites only a well-
understood, routine, conventional element/combination previously known in
the industry, we conclude the case law shows there is no genuine issue of
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material fact regarding step two of the Examiner’s Alice/Mayo analysis.
Therefore, we are unpersuaded by Appellants’ argument that further
evidence is required. In view of Appellants’ Specification, and consistent
with the Examiner’s determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
E. Appellants’ § 103 Arguments
E.1. Claim 1
E.1.a.
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because Pak and Rakowski fail to teach or suggest
electronic evaluation of digital picture data. Particularly:
While Rakowski may teach storing and using images of
user’s skin for purposes of visualizing aesthetic improvements
that might be performed on a user, that is distinctly different from
claim 1. Namely, among other things, claim 1 recites:
“electronically evaluating the organized digital picture data to
determine whether medical personnel should review the
organized digital picture data associated with the user” (claim 1,
lines 10-11). However, nothing in Rakowski teaches or suggests
that there is any electronic evaluation of its before and after
images pertaining to aesthetic improvements. Furthermore,
Rakowski also fails to offer any teaching or suggestion for using
such electronic evaluation to determine whether medical
personnel should review picture data associated with a user, as is
also recited in claim 1.
App. Br. 13 (emphasis modified).
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As to Appellants’ above contention, we are not persuaded the
Examiner erred. First, Appellants are mistaken as to their argument that
nothing in Rakowski teaches or suggests that there is any electronic
evaluation. App. Br. 13. Rakowski at paragraph 59 describes using the
Marquardt analysis system (“U.S. Pat. No. 5,867,588 and U.S. Pat. No.
5,659,625 disclose and claim the Marquardt beauty analysis system, and are
fully incorporated by reference herein.”). Contrary to Appellants’ argument,
the Marquardt analysis system is a computer based (i.e., electronic)
evaluation.
E.1.b.
Appellants also contend that the Examiner erred in rejecting claim 1
because there is no motivation or suggestion to combine Pak and Rakowski.
Particularly:
Contrary to the position taken in the Office Action, it is
unreasonable to conclude that one skilled in the art could
modify Pak to inject the use of before and after pictures for
aesthetic improvements, even if organized and stored, as
allegedly disclosed in Rakowski. That is, Pak already makes
use of photos, which have been uploaded and sent to a
teledermatologist, see Pak, [0011]. Hence, having before and
after pictures of different people that have a similar aesthetic
improvement is not advantageous for a treatment plan for a skin
disorder, as rendered by Pak.
App. Br. 13 (emphasis modified).
As to Appellants’ above contention, we are not persuaded the
Examiner erred. Appellants’ contention is not supported by citations to the
Final Action showing where the Examiner has relied on Rakowski as
showing “before and after pictures” as argued by Appellants. Rather, the
Examiner relies on the more general teachings of Rakowski as follows:
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Rakowski teaches organizing and electronically evaluating the
organized digital picture data regarding a patient’s skin (see
paragraph 0056). Rakowski further teaches determining whether
personnel should follow up based on electronic evaluations (see
paragraph 0068; collected diagnostic data is reviewed to
determine a recommended improvement plan).
Final Act. 6. Essentially Appellants’ argument is premised on a “physical”
or “bodily” incorporation of Rakowski’s entire “before and after pictures”
processing into Pak’s skin monitoring process. This is not the standard.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”).
The Examiner did not suggest Rakowski’s entire “before and after
pictures” processing should be bodily incorporated into the method of Pak.
Rather, the Examiner relied on Rakowski to show it is known in the prior art
to organize and electronically evaluate the organized digital picture data
regarding a patient’s skin. Final Act. 6. Appellants go beyond this to
incorporate limitations from Rakowski which were not relied upon by the
Examiner. Appellants then argue the limitations the Examiner did not rely
upon. We are unpersuaded by this form of argument.
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E.1.c.
Appellants further contend that the Examiner erred in rejecting
claim 1 because there is no motivation or suggestion to combine Pak
and Rakowski. Particularly:
The Examiner’s assertion that “determining whether personnel
should review picture data” is somehow allegedly associated
with “database-driven comparisons” of paragraph [0045] of
Rakowski is nowhere supported by the record. Rakowski, at
paragraph [0045], has nothing to say about “database-driven
comparisons.” Instead, paragraph [0045] of Rakowski merely
notes that a database can be used in relating “user-specific
information and the advice sought by specific users.”
App. Br. 14 (emphasis added).
As to Appellants’ above contention, we are not persuaded the
Examiner erred. We disagree with Appellants assertion that “Rakowski, at
paragraph [0045], has nothing to say about ‘database-driven comparisons.’”
App. Br. 14. At paragraph 45, Rakowski states:
Consistent with the invention, a method may also include
accessing a database containing information reflecting
relationships between categories of user-specific information
and aesthetic improvement advice. The purpose of accessing
such a database is to ascertain the relational basis between the
user-specific information and the advice sought by specific users.
Emphasis added. In turn, Pak describes advice in the form of an evaluation
decision to get a consult (i.e., second opinion). Pak ¶ 11. We conclude there
is sufficient motivation or suggestion to combine Pak and Rakowski within
the portions thereof cited by the Examiner. See also Pak ¶ 7.
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E.2. Claim 8
Appellants also contend that the Examiner erred in rejecting claim 8
under 35 U.S.C. § 103 because:
On page 10 of the Office Action, the Examiner rejected
claim 8 by reliance on paragraph [0011] of Pak for the
determining (f) operation. Unfortunately, this assertion is false.
Paragraph [0011] of Pak talks of a patient visiting a primary-care
physician, and that the primary care physician or a consult
manager there can operate to capture photographic images of the
patient’s dermatological disorder. However, this fails to teach or
suggest any sort of “(f) determining whether the user should be
provided with a medical monitoring device” (claim 8, lines 2-3).
App. Br. 19 (emphasis added).
Appellants’ assertion is not persuasive. Appellants does not dispute
that the Examiner also finds “Green teaches initiating physical mailing of a
medical monitoring device to a user (see paragraph 0042).” Final Act. 10.
It is contemplated that such notification information will be used
by a diagnostic monitoring device supplier for delivery (i.e.,
dispensing) of a prescribed diagnostic monitoring device to a
patient.
Green ¶ 42 (emphasis added). This portion of Green teaches or suggests
both the claimed determining (i.e., “prescribed”) and providing by mail (i.e.,
“delivery”).
Moreover, Appellants’ arguments do not rebut the Examiner’s
findings regarding the combined teachings of Pak, Rakowski, and Green.
Final Act. 10–11. Instead, Appellants attack the Pak reference singly for
lacking a teaching that the Examiner relied on a combination of references to
show. It is well-established that one cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 425 (CCPA
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1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
References must be read, not in isolation, but for what they fairly teach in
combination with the prior art as a whole. Merck, 800 F.2d at 1097.
E.3. Claim 14
Appellants also contend that the Examiner erred in rejecting claim 14
under 35 U.S.C. § 103 because:
[C]laim 14 is not merely claiming a ruler or photograph of a ruler
as a reference. Furthermore, contrary to claim 14, the ruler in Yu
is not disclosed or suggested as being part of a housing of an
image acquisition device, let alone as being included on an inner
surface of a skin surface interface of the housing.
App. Br. 23–24 (emphasis added).
Appellants’ assertion is not persuasive. The Examiner cites to
paragraph 13 of Yu (Final Act. 13), which states:
On each day of photograph shooting, a photograph is also taken
of a ruler with clear markers under the same conditions and
serves as a reference.
Emphasis added. We conclude there is sufficient suggestion in the
Examiner cited portion of Yu to attach a ruler to the housing of the prior art.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see
also id. at 418–20.
E.4. Claim 16
Appellants also contend that the Examiner erred in rejecting claim 16
under 35 U.S.C. § 103 because:
Altshuler, at paragraph [0111] describes that a user's
selection can change magnification using a zoom lens assembly
having a movable lens. However, having a movable lens does
not teach or suggest a lens that is movable “to provide at least
first and second predetermined distances from the skin surface
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interface” as recited in claim 16, where the first predetermined
distance is for close-up pictures and the second predetermined
distance being for non-close-up pictures.
App. Br. 25 (emphasis added).
Appellants’ assertion is not persuasive. Contrary to Appellants’
argument, we conclude the “zoom lens” of Altshuler is sufficient suggestion
to use the claimed lens that is movable to provide at least first and second
predetermined distances. KSR, 550 U.S. at 418–21.
F. Appellants’ § 112(b) Arguments
Appellants contend that the Examiner erred in rejecting claim 12
under 35 U.S.C. § 112(b) because:
Although claims 12-18 do recite structural limitations, that does
not make a method claim also an apparatus claim. Here, claims
12-18 further detail the image acquisition device which is the
monitoring device (claims 9-10) that is used in method claim 1
to acquire the images/photos that are received and processed in
the method. There is, therefore, no basis to assert that claims 12-
18 are apparatus claims, as opposed to method claims.
As in Ultimatepointer, L.L.C. v. Nintendo Co., Ltd., 816
F.3d 816, 827-28 (Fed. Cir. 2016) (Lourie, J), “the claims do not
recite functionality divorced from the cited structure. Therefore,
the claims do not reflect an attempt to claim both an apparatus
and a method . . . .” Instead, the claims are method claims “with
particular capabilities.” Id. at 828.
App. Br. 6.
We agree with Appellants’ above contention.

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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1–23 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
(2) The Examiner has not erred in rejecting claims 1–23 as being
unpatentable under 35 U.S.C. § 103.
(3) Appellants has shown the Examiner erred in rejecting claims 12–
18 under 35 U.S.C. § 112, second paragraph, as being indefinite.
(4) Claims 1–23 are not patentable.

DECISION
The Examiner’s rejection of claims 1–23 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter, is affirmed.
The Examiner’s rejections of claims 1–23 as being unpatentable under
35 U.S.C. § 103 are affirmed.
The Examiner’s rejection of claims 12–18 under 35 U.S.C. § 112,
second paragraph, as being indefinite is reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).

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).

AFFIRMED