Ex Parte Ofek et al

Patent Trial and Appeal Board

Nov 28, 2018

12840806 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/840,806 07/21/2010 Ziv Ofek
12973 7590 11/30/2018
Medley, Behrens & Lewis, LLC
6100 Rockside Woods Blvd.
Suite 440
Independence, OH 44131
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.
1158.602 1795
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
admin-docketing@medleybehrens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZIV OFEK, SHIRI BEN-TAL, YURI ACKERMAN,
YCHONATAN MAZAR, YINON ZOHAR, DMITRY SIGALOV,
OHAD YOUNG, ZIV GOME, BORIS GITERMAN, and DAVID BOAZ
Appeal 2018-007 831
Application 12/840,806
Technology Center 3600
Before JAMES R. HUGHES, JOHN A. EV ANS, and JASON M. REPKO,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of Claim 20. App. Br. 3. Appellants state Claims
1---6 and 9-40 stand pending and finally rejected; Claims 7 and 8 have been
canceled. Id.
We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants state the real party in interest is Allscripts Healthcare Solutions,
Inc. App. Br. 3.
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Application 12/840,806
We AFFIRM. 2
STATEMENT OF THE CASE
The claims relate to a health information exchange system. See
Abstract.
INVENTION
Claims 1, 2, 13, and 14 are independent. An understanding of the
invention can be derived from a reading of Claims 20, 19 and 143, which are
reproduced below:
14. A computer program product, comprising a non-
transitory computer usable storage medium having computer
readable program code embodied therein, said computer
readable program code adapted to be executed to implement a
health information exchange method comprising:
defining and storing link elements linking between
individual health care information items within a first
population of health care information items;
receiving a second population of health care information
items and for associating at least some individual items in said
second population, with corresponding individual items within
said first population of health care information items; and
responding to queries regarding particular information
items in said second population including translating said
particular information items into items in said first population
corresponding to said particular information items and using
link elements linking said items in said first population
2 Rather than reiterate the arguments of the Appellants and the Examiner, we
refer to the Appeal Brief (filed January 16, 2018, "App. Br."), the Reply
Brief (filed July 25, 2018), the Examiner's Answer (mailed May 25, 2018,
"Ans."), the Final Action (mailed June 15, 2017, "Final Act."), and the
Specification (filed July 21, 2010, "Spec.") for their respective details.
3 Claim 20 depends from Claims 19 and 14.
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Joao
corresponding to said particular information items to generate
data pertaining to said particular information items in said
second population.
19. A product according to claim 14 wherein said
second population of health care information items comprises
multiple sets of health care information items each expressed in
a different local terminology and wherein said multiple sets
each expressed in a different local terminology are each
mapped to a baseline terminology in which said first population
of health care information items are expressed, to enable
terminology interoperability at least when responding to
quenes.
20. A product according to claim 19 wherein said
baseline terminology is semantically enriched by associating
semantic information therewith, the method also comprising
generating conclusions about health information expressed in at
least one local terminology by using said semantic information
rather than by defining semantic relations for said local
terminology.
References and Rejections
Stead, et al.,
Abousy, et al.,
US 2002/0032583 Al Mar. 12, 2002
US 2006/0287890 Al Dec. 21, 2006
US 2009/0177495 Al July 9, 2009
The claims stand rejected as follows:
1. Claims 1---6 and 9-40 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception. Final Act. 3--4.
2. Claims 1---6 and 9-40 stand rejected under
35 U.S.C. § I03(a) as obvious over Abousy and Stead. Final Act. 5-
12.
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3. Claims 19, 20, and 36-40 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Abousy and Joao. Final Act. 12-15.
ANALYSIS
We have reviewed the rejections of Claim 20 in light of Appellants'
arguments that the Examiner erred. We have considered in this Decision
only those arguments Appellants actually raised in the Brief. Any other
arguments which Appellants could have made but chose not to make in the
Brief are deemed to be waived. See 37 C.F.R. § 41.37( c )(1 )(iv). We are not
persuaded that Appellants identify reversible error.
Upon consideration of the arguments presented in the Appeal Brief,
we do not agree with Appellants that the claims are patentable under
35 U.S.C. § 101. With respect to the rejection under§ 101, we adopt as our
own the findings and reasons set forth in the rejection from which this
appeal is taken and in the Examiner's Answer, to the extent consistent with
our analysis below. We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellants' arguments seriatim, as they are presented in the Appeal
Brief, pages 8-19.
APPEALED CLAIMS.
Claims 1---6 and 9-40 are pending and stand rejected. Final Act 3--4.
Appellants enumerate only Claim 20 for review. App. Br. 3. 37 CPR
§ 41.31 ( c) states, in part, "An appeal, when taken, is presumed to be taken
from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office." Here,
Appellants have not filed an amendment cancelling the claims that
Appellants do not wish to appeal. Thus, this appeal is presumed to be taken
from the rejection of all pending claims under rejection regardless of
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whether Appellants identify fewer or more than all pending claims under
rejection in the appeal brief. Accord MPEP § 1204 II (9th ed. Rev. 08.2017,
Jan. 2018). Also, Appellants have not provided any argument in the appeal
brief directed to Claims 1---6, 9--19, and21--40. See App. Br. Therefore, we
summarily affirm the rejections of those claims. See MPEP § 1204 II ("If an
appellant does not file an amendment cancelling claims that the appellant
does not wish to appeal, but then also fails to provide any argument in the
appeal brief directed to those claims, any challenge to that ground of
rejection has been waived, and the Board has discretion to simply affirm any
rejections against such claims.") (citing Hyatt v. Dudas, 551 F.3d 1307,
1314 (Fed. Cir. 2008)).
CLAIM 20: NON-STATUTORY SUBJECT MATTER.
Preemption.
Appellants contend Claim 20 does not pose any risk of preempting, or
monopolizing, any idea the Office may identify as abstract. See App. Br.
12-17.
While preemption may denote patent ineligibility, its absence does not
demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We conduct
such an analysis below.
Prima facie case.
Appellants contend the Examiner failed to established a prima facie
case of patent-ineligible subject matter under 35 U.S.C. § 101 because
Appellants were denied an opportunity to meaningfully respond because the
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Office Action failed to identify the particular abstract idea that the Examiner
believes the claims to be directed to and at risk of monopolizing. App. Br.
18.
We disagree. The Federal Circuit has explained repeatedly 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.
Mayo-Alice Step 1.
The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355. At the first step, we determine whether
the claims at issue are "directed to" a patent-ineligible concept. Id.
The Examiner finds the claims are directed to the particular abstract
idea of "comparing new and stored information and using rules to identify
options." Final Act. 3; Ans. 20 (citing generally SmartGene). The
Examiner further finds the claims are directed to abstract ideas analogous to
those of Content Extraction, Digitech, and Cyberfone which recite concepts
related to "processes of organizing information that can be performed
mentally." Id.
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Appellants contend the Examiner's finding that the claim is directed
to "comparing new and stored information and using rules to identify
options," is supported neither by the specification nor by the claims
themselves. Reply Br. 3. Thus Appellants argue, the Examiner
"describe[ es] the claim[] at such high level of abstraction and untethered
from the language of the claims [and] all but ensures that the exceptions to
§ 101 swallow the rule. Id. (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016)).
Claim 14 (from which Claim 20 ultimately depends) recites, inter
alia:
• "a health information exchange method comprising: defining and
storing link elements linking between individual health care
information items within a first population of health care information
items"·
'
• "receiving a second population of health care information items
and for associating at least some individual items in said second
population, with corresponding individual items within said first
population of health care information items"; and
• "responding to queries regarding particular information items in said
second population ... ".
Claim 20 further recites, inter alia: "wherein said baseline terminology is
semantically enriched by associating semantic information therewith, the
method also comprising generating conclusions."
In agreement with the Examiner, we find that the claims are directed
to the abstract idea of "comparing new and stored information and using
rules to identify options." See Ans. 18 (citing SmartGene). We further
agree with the Examiner that the claims are also directed to "collecting
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information, analyzing it, and displaying certain results of the collection and
analysis" analogous to the findings of Electric Power Group. Id.
Appellants contend Claim 20 recites inventive technology because:
a "plurality of populations of health care information items are
expressed in different local terminology based on [from] where
the population of health care information items derive ... ,
wherein each population of health care information items are
translated into a baseline terminology defined by the local
terminology of a first population of health care information
items and further wherein the baseline terminology is
associated with semantic information to allow for the
generation of conclusions about health information expressed in
local terminology.
Reply Br. 4.
We disagree that the cited recitation invokes a technological solution.
Mayo-Alice Step 2.
Where, as here, the claims are found to be "directed to" a patent-
ineligible concept, we then "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298).
This analysis has been characterized as the search for an "inventive
concept"- something sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. (quoting Mayo, 132
S.Ct. at 1294).
Appellants contend "an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces."
App. Br. 15 (quoting BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)).
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We are not persuaded Claim 20 recites a "non-conventional and non-
generic arrangement of known, conventional pieces." BASCOM, 827 F.3d,
1350.
The courts have used the phrase "an idea of itself' to describe an idea
standing alone such as an uninstantiated concept, plan or scheme, as well as
a mental process ( thinking) that "can be performed in the human mind, or by
a human using a pen and paper." CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). "[M]ethods which can be
performed mentally, or which are the equivalent of human mental work, are
unpatentable abstract ideas--the 'basic tools of scientific and technological
work' that are open to all."' CyberSource, 1371 (citing Gottschalkv.
Benson, 409 U.S. 63 (1972)). Although Claim 20 recites a computer, we are
not persuaded that the claimed method is one that cannot be performed
mentally, but requires a computer.
CLAIM 20: OBVIOUSNESS OVER ABOUSY AND JOAO.
Appellants contend that Abousy, with either Joao or Stead, fails to
teach a method in which a "second population of health care information
items comprises multiple sets of health care information items each
expressed in a different local terminology" and the "multiple sets each
expressed in a different local terminology are each mapped to a baseline
terminology in which said first population of health care information items
are expressed, to enable terminology interoperability at least when
responding to queries." App. Br. 9. Appellants argue the Examiner finds
this functionality is taught by Joao (solely), but Appellants contend Joao
fails to teach or suggest as found. App. Br. 10.
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The Examiner finds the disputed limitation is taught by Abousy in
view of Joao, particularly by Joao's disclosure that the "present invention
can be utilized to create and maintain comprehensive patient databases
which can be accessed via a network environment and/ or otherwise, to ...
provide healthcare and/or healthcare-related treatment plans or programs,
and/or to provide healthcare and/or healthcare-related treatment progress
reports and/or evaluations." Ans. 17 (citing Joao, ,r 28). To further teach the
disputed limitation, the Examiner further cites Abousy in view of J oao, and
in particular Joao's disclosure that "data and or information, described as
being stored in the various databases utilized ... can be continuously updated
so as to store the latest values for the data and/or information and can be
stored and made available for future processing routines." Id. ( citing Joao,
i155).
Appellants contend the health information systems of Abousy and
J oao are not trained to generate conclusions about health information
expressed using semantic information rather than by defining semantic
relations, and therefore this rejection should be reversed. Reply Br. 6.
Claim 20 recites, inter alia, "wherein said baseline terminology is
semantically enriched by associating semantic information therewith."
Appellants' Specification provides an extensive discussion of ontology-
based approaches to achieve semantic interoperability for the exchange of
clinical information. See Spec., Background. In neither Abousy, nor Joao,
do we find any disclosure of either "ontology" or "semantic." Moreover, the
Examiner fails to so direct our attention. We, therefore are constrained by
the Record before us to reverse the rejection of Claim 20 under§ 103.
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DECISION
The rejection of Claim 20 under 35 U.S.C. § 101 is AFFIRMED.
The rejection of Claims 1---6, 9--19 and 21--40 under 35 U.S.C. § 101
is AFFIRMED.
The rejections of Claims 1---6, 9--19 and 21--40 under 35 U.S.C. § 103
are AFFIRMED.
The rejection of Claim 20 under 35 U.S.C. § 103 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. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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