Ex Parte Jones et al

Patent Trial and Appeal Board

Aug 14, 2018

13836118 (P.T.A.B. Aug. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/836,118 03/15/2013 Larry E. Jones
63893 7590 08/16/2018
DOUGLAS J. VISNIUS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HPOFUSl 4838
EXAMINER
18024 Falcon Green Court NAJARIAN, LENA
ORLANDO, FL 32820-2712
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/16/2018 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):
apexmasterworks@gmail.com
sfnlhafnap@yahoo.com
dvisnius@bellsouth.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY E. JONES and PRANAM BEN
Appeal2017-004574
Application 13/836,118 1
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is HPOF Holdings, LLC.
App. Br. 1.
Appeal2017-004574
Application 13/836,118
INVENTION
Appellants' application relates to "the field of computer systems, and,
more particularly, to health care management using computer systems."
Spec. 1. Claim 1 is illustrative of the appealed subject matter and reads as
follows:
1. A system comprising:
a server including a computer processor;
medical provider availability data, payment data, medical
provider expertise data, patient clinical data, medical provider
physical location data, patient data, and patient status data
supplied by each of a plurality of medical providers and a
patient to the server;
a referral module accessible by a user and the patient to
communicate with the plurality of medical providers and to
provide from the server the medical provider availability data,
payment data, medical provider expertise data, patient clinical
data, medical provider physical location data, patient data, and
patient status data to the user; and
a scheduling module in communication with the server to
schedule any of the plurality of medical providers based upon
the medical provider availability data, payment data, medical
provider expertise data, patient clinical data, medical provider
physical location data, patient data, and patient status data, the
scheduling module outputting verification data to the patient the
user, and one of the plurality of medical providers.
Claims App'x; App. Br. 13.
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter.
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Green, Jr. et al. (US 2011/0301982 Al; published
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Dec. 8, 2011) ("Green") and Knowlton (US 2004/0172291 Al;
Sept. 2, 2004).
ANALYSIS
Rejection of Claims 1-20 under 35 U.S. C. § 1 OJ
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. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Alice, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
76-77 (2012)). In accordance with that framework, we first determine
whether the claim is "directed to" a patent-ineligible abstract idea. See
Alice, at 2356.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. (internal quotations and
citation omitted). The Court acknowledged in Mayo that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
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phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to
whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Appellants contend the Examiner failed to establish a prima facie case
of patent ineligibility under § 101 because the Examiner has not identified
on what case law the § 101 rejection determination is based, and because the
rejection fails to consider2 the recited "referral module." App. Br. 5---6.
We disagree. The Federal Circuit has repeatedly explained that "the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The Examiner carries the burden of establishing a prima facie case when its
rejection satisfies 35 U.S.C. § 132 by setting forth a rejection in a
sufficiently articulate and informative manner. In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011). If the Examiner "adequately explain[s] the
shortcomings ... the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument." Hyatt, 492 F.3d at 1370.
2 Appellants argue the Examiner failed to follow an "all-limitation" rule set
forth in Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co., 520
U.S. 17 (1997). App. Br. 6. We are not persuaded Warner-Jenkinson is
germane to the issues before us, as that case considered the doctrine of
equivalents, a means by which a patentee may raise a claim of infringement
even though each and every element of the patented invention is not
identically present in the allegedly infringing product. Patent infringement
is not an issue in this appeal.
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Application 13/836,118
The Final Office Action adequately explains the§ 101 rejection. See
Final Act. 2-3. The Examiner's statements satisfy§ 132(a) because they
apply the Mayo/Alice analytical framework and apprise Appellants of the
reasons for the § 101 rejection under that framework. Appellants have not
responded by alleging a failure to understand the rejection. App. Br. 5-7,
Reply Br. 5-10. To the contrary, Appellants clearly identify the abstract
ideas. See, e.g., Reply Br. 9-10.
In the first step of the analysis set forth in Alice, the Examiner
concluded claims 1-20 are directed to the abstract idea of scheduling as a
method of organizing human activity (Final Act. 2) and do not recite
limitations that are "significantly more" than this abstract idea because the
additional elements or combination of elements in the claims amount to no
more than a server and a computer processor (id. at 2-3). The Examiner
further concluded claims 1-20 are directed to the abstract idea of comparing
new and stored information and using rules to identify options. Ans. 10.
Specifically, the Examiner concluded the steps of supplying data, providing
data, scheduling providers based on the data and outputting verification data
correspond to concepts identified as abstract ideas by the courts. Ans. 11.
We agree with the Examiner that limitations of claim 1 are directed to
a series of steps related to the communication of healthcare data, i.e.,
supplying data, scheduling providers based on the data and outputting
verification data. Final Act. 2-3; Ans. 11. We also agree that
communicating healthcare data is similar to the concept of comparing new
and stored information and using rules to identify options, which is an
abstract idea. Ans. 11; see SmartGene Inc. v. Adv. Bio. Labs. SA, 555 F.
App'x 950 (Fed. Cir. 2014) (nonprecedential).
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In SmartGene, the Federal Circuit concluded claims were patent
ineligible because they did "no more than call on a 'computing device,' with
basic functionality for comparing stored and input data and rules, to do what
doctors do routinely." SmartGene, 555 F. App'x at 954. In the instant case,
the recited "medical provider availability data, payment data, medical
provider expertise data, patient clinical data, medical provider physical
location data, patient data, and patient status data" are nothing more than
data used in an algorithm process that uses a central system (i.e., "server
including a computer processor") to adjust the data using mathematical
comparisons and rule-based processes. The claims at issue in SmartGene
relied upon "expert rules" for "'evaluating and selecting' from a stored
'plurality of different therapeutic treatment regimens."' SmartGene, at 955.
The "expert rules" in SmartGene are analogous to at least the "scheduling
module" used to schedule medical providers based on the data and to output
verification data to "the patient the user" in claim 1.
For these reasons, we are not persuaded of error in the Examiner's
conclusion that the claims are directed to the abstract idea of comparing new
and stored information and using rules to identify options. Ans. 11.
Turning to the second step of the Alice analysis, we find nothing
sufficient to remove the claims from the abstract idea exception that is
ineligible for patenting. See Alice, 134 S. Ct. at 2354.
There is no indication in the record that any specialized computer
hardware or other "inventive" computer components are required in claim 1.
Claim 1 merely employs generic computer components to perform generic
computer functions, i.e., collecting, storing, and processing information,
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which is not enough to transform an abstract idea into a patent-eligible
invention. Appellants provide no persuasive argument to the contrary.
For these reasons, we affirm the Examiner's 35 U.S.C. § 101 rejection
of representative claim 1, as well as grouped claims 2-20, not argued
separately. See App. Br. 5.
Rejection of Claims 1-20 under 35 U.S.C. § 103(a)
In rejecting claim 1 for obviousness, the Examiner found Green
teaches or suggests all of the limitations of claim 1, except "a referral
module accessible by the patient," for which the Examiner relied on
Knowlton. See Final Act. 4.
Appellants contend the Examiner failed to establish a prima facie case
of obviousness because the rejection does not state why one of ordinary skill
in the art would have had a reasonable expectation of success in combining
Green and Knowlton. App. Br. 9.
An obviousness determination requires not only the existence of a
motivation to combine elements from different prior art references, but also
that a skilled artisan would have perceived a reasonable expectation of
success in making the combination. Medichem S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006). Although the definition of "reasonable
expectation" is somewhat vague, it does not require a certainty of success.
Id. at 1165 (citing In re O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988)
("Obviousness does not require absolute predictability of success. . . . [ A ]11
that is required is a reasonable expectation of success.")). Evidence showing
there was no reasonable expectation of success may support a conclusion of
nonobviousness. In re Rinehart, 531 F.2d 1048 (CCPA 1976).
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The Examiner established a prima facie case of obviousness of
independent claim 1 by identifying the legal basis for the rejection
(obviousness under 35 U.S.C. § 103), identifying each element of the claim
in the combined teachings of Green and Knowlton, and articulating reasons
the ordinarily skilled artisan would have been motivated to combine the
references. See In re Jung, 637 F.3d at 1363. The Examiner applied similar
combined disclosures of Green and Knowlton in rejecting similar limitations
of independent claims 11 (Final Act. 6-7) and 19 (id. at 8-9). Having
established a prima facie case of obviousness, the burden shifts to
Appellants to persuasively rebut the Examiner's case. See Jung at 1365.
Here, Appellants present no persuasive substantive argument or objective
evidence to rebut the Examiner's factual findings and conclusions.
Therefore, we are not persuaded by Appellants' arguments.
Appellants further argue Green does not expressly teach the referral
module is accessible by the patient, as claim 1 requires. App. Br. 9.
Appellants' argument is not persuasive because Appellants argue the
prior art references separately. The Examiner cited Knowlton, not Green,
for teaching a referral module accessible by the patient. Final Act. 4.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413,425 (CCPA 1981).
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Appellants also argue the Examiner's proposed combination would
change the principle of operation of Green and would render Green
unsatisfactory for its intended purpose. App. Br. 10-11. In particular,
Appellants argue a new firewall within the "'single database'" of Green
would be required. Id. at 10.
Appellants' arguments are not persuasive. "[A] combination of
familiar elements according to known methods is likelv to be obvious when
~ ~
it does no more than yield predictable results." KSR Jnt'l Co. v. Teleflex
Inc., 550 U.S. 398, 401 (2007). Moreover, substitution of components does
not destroy the principle of operation where it does not destroy the overall
principle of operation of the device. In re Mouttet, 686 F.3d at 1332.
Appellants have not shown that the invention as recited in claim 1 is
"more than the predictable use of prior art elements according to their
established functions" so as to be non-obvious under KSR, 550 U.S. at 417.
Appellants have presented no persuasive evidence that it would not have
been within the skill of an ordinarily skilled artisan to combine the cited
teachings of Green and Knowles. See KSR, at 417 ("[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill" (citations omitted)). Appellants also have not persuaded us that
combining the respective familiar elements of the cited references in the
manner proffered by the Examiner would have been "uniquely challenging
or difficult for one of ordinary skill in the art" at the time of Appellants'
invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, at 418). Moreover, we find the Examiner
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provides "articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006); see Final Act. 4--5.
Appellants further argue the Examiner erred because "the rejection
has supplied no objective evidence from the cited reference that all the claim
recitations and/or relationships are found [in Knowlton], or to support the
theory of equivalence for all the recited claim recitations." 3 App. Br. 12.
We are not persuaded because Appellants again argue the references
separately. Here, Appellants attack Knowlton individually, even though the
Examiner relied on the combination of Green and Knowlton in rejecting
claim 1. In re Mouttet, 686 F.3d at 1332 (citing In re Keller, 642 F.2d 413,
425 (CCPA 1981)) ("[T]he test for obviousness is what the combined
teachings of the references would have suggested to those having ordinary
skill in the art."). Moreover, the Examiner does not contend, nor is the
Examiner required to demonstrate, that the identical text of rejected claim 1
appears in the cited references. In re Bond, 910 F.2d 831, 832 (Fed. Cir.
1990).
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Green and Knowlton teaches or suggests the disputed
limitations of claim 1. Nor are we persuaded the Examiner erred in
combining the teachings of Green and Knowlton.
3 Appellants cite Graver Tank & Mfg. Co. v. Linde Air Products Co., 339
U.S. 605 (1950). App. Br. 11. We are not persuaded Graver Tank is
germane to the issues before us, as that case considered the doctrine of
equivalents in the context of patent infringement. Patent infringement is not
an issue in this appeal.
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Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claim 1, as well as the Examiner's§ 103(a) rejection of
independent claims 11 and 19, which Appellants argue are patentable for
similar reasons. App. Br. 7, 11. We also sustain the Examiner's rejection of
dependent claims 2-10, 12-18, and 20, not argued separately.
DECISION
We affirm the decision of the Examiner rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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