13455537 (P.T.A.B. Sep. 21, 2018)

Ex Parte Tamis et al

Patent Trial and Appeal BoardSep 21, 2018

13455537 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/455,537 04/25/2012 24998 7590 09/25/2018 Blank Rome LLP 1825 EYE STREET NW Washington, DC 20006-5403 FIRST NAMED INVENTOR Robert H. Tamis 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. Z9996.2997 /P2997-A 2952 EXAMINER NAJARIAN, LENA ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 09/25/2018 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): W ashingtonDocketing@blankrome.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte ROBERT H. TAMIS, MARC A. TAMIS, and MARCIA K. HORN Appeal2017-000295 Application 13/455,537 Technology Center 3600 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and MATTHEWS. MEYERS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. Â§ 134 of the Examiner's final decision rejecting claims 1-13. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). Appellants appeared for Oral Hearing on September 10, 2018. 1 Appellants identify International Cancer Advocacy Network as the real party in interest. Brief 1. Appeal2017-000295 Application 13/455,537 BACKGROUND Appellants' invention is directed to a method and system for matching individuals having a disease with clinical trial facilities. Spec. 1, ,r 2. Claim 1 is illustrative: 1. A medical record system comprising: a database storing information about participating clinical trial facilities that provide treatment for one or more disease classifications; at least one system processor; and a memory operatively coupled to said system processor, said memory storing plural disease-specific question sets, and wherein the memory stores program instructions which, when executed by said system processor, cause said system processor to: receive at least one individual's disease classification; subsequently, based on the individual's disease classification, identify a disease-specific question set from among the plural disease-specific question sets; provide the disease-specific question set to a user processor associated with the individual, the user processor being different from said system processor; receive disease-specific information relating to the individual from the user processor, said disease-specific information being responsive to the disease-specific question set; and enable a clinical trial facility from among said participating clinical trial facilities to become aware of said individual by matching a disease classification and other interests of said clinical trial facility with said individual's disease classification and the disease-specific information relating to the individual. The Examiner relies on the following prior art reference as evidence of unpatentability: Iliff Rappaport US 2001/0012913 Al US 2002/0007285 Al 2 Aug.9,2001 Jan. 17,2002 Appeal2017-000295 Application 13/455,537 Knight Rao Deakter US 2002/0099570 Al US 2003/0130871 Al US 2007/0106531 Al Appellants appeal the following rejections: July 25, 2002 July 10, 2003 May 10, 2007 Claims 1-13 under 35 U.S.C. Â§ 101 as being directed to an abstract idea. Claims 1, 11, and 12 under 35 U.S.C. Â§ I02(b) as anticipated by Deakter. Claims 2-5 under 35 U.S.C. Â§ I03(a) as unpatentable over Deakter in view of Rappaport. Claims 6 and 8-10 under 35 U.S.C. Â§ I03(a) as unpatentable over Deakter in view of Rao. Claim 7 under 35 U.S.C. Â§ I03(a) as unpatentable over Deakter in view of Iliff. Claim 13 under 35 U.S.C. Â§ I03(a) as unpatentable over Deakter in view of Rao, and further in view of Knight. PRINCIPLES OF LAW An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpreted Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 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. Id. at 2355 (citing Mayo 3 Appeal2017-000295 Application 13/455,537 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-78 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 ("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."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk .... "); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the Â§ 101 categories of possibly patentable subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978) ("Respondent's application simply provides a new and presumably better method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) ("They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals."). The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diamond, 450 U.S. at 182 n.7, "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores," and a process for manufacturing flour, Gottschalk, 409 U.S. at 69. 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 4 Appeal2017-000295 Application 13/455,537 combination-to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. 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. In addition, the Federal Circuit has held that if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent-eligible under Â§ 101. Cy her Source Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible underÂ§ 101."). Claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claims that recite an improvement to a particular computer technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) ( determining claims not abstract because they "focused on a specific asserted improvement in computer animation"). 5 Appeal2017-000295 Application 13/455,537 ANALYSIS Rejection under 35 U.S.C. Â§101 The Examiner determines that the claims are directed to becoming aware of an individual matching one or more disease classifications, which is a method or organizing human activity. Final Act. 2. The Examiner also determines that the claims are directed to comparing new and stored information and using rules to identify options. Ans. 12. The Examiner finds that the claim recitations of a system processor, a memory, a user processor, a first and second processor, and a medical information network, do not add meaningful limitations beyond generally linking the system to a particular technological environment, that is, implementation via computers. Final Act. 3. We agree with the Examiner that the claims are directed to an abstract idea and that the claims do not include significantly more than the abstract idea. We are not persuaded that the Examiner erred in determining that the claims are directed to an abstract idea because this determination is not supported by evidence. Consideration of evidence in making a determination under the first step of the Alice framework has merit. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016). But there is no requirernent that examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings. Evidence may be helpful in certain situations where, for instance, facts are in dispute. But it is not always necessary. It is not necessary in this case because it is clear on their 6 Appeal2017-000295 Application 13/455,537 face that the claims are directed to comparing new and stored information and using rules to identify options. \Ve do not agree with Appellants that the Examiner has not identified any abstract idea to which claims l----13 are directed to. As we stated above, the Examiner deterrnines that the claims are directed to matching one or more disease classifications, which is a method for organizing human activity, and to comparing new and stored information and using rules to identify options. We are also not persuaded of error on the part of the Examiner by Appellants' argument that the claims do not preempt the idea of becoming aware of an individual matching one or more disease classifications. Brief 8. "\Vhile preemption may signal patent ineligible subject matter, the absence of compfote preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362- 63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."), cert. denied, 136 S. Ct. 701 (2015). And, "[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the ]vfayo framework, as they are in this case, preemption concerns are fully addressed and made moot" Ariosa, 788 F.3d at 1379. We are not persuaded of error on the part of the Examiner by Appellants' argument that there is little connection between the actual limitations of claims 1-13 and the idea of comparing new and stored information and using rules to identify options. Reply 3. In support of this 7 Appeal2017-000295 Application 13/455,537 argument, the Appellants direct our attention to the recitation describing the information that is stored, i.e., information about the clinical trial facilities, disease information, and disease specific questions. However, each of these recitations relates to the type of information that is stored, but still relate to storing information. We are not convinced that the claimed invention is analogous to the '--' claimed invention in lvfcRO as argued by the Appellants. Reply 4. The claims in AfcRO were directed to a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. McRO, 837 F.3d at 1313. By contrast, the independent claims under appeal recite only collecting data regarding patients and diseases and matching disease classifications with the interests of a clinical trial facility. Unlike AfcRO, the claims here are not directed to an improvement that previously could only be produced through subjective decisions by human users. See McRO, 837 F.3d at 1313. In view of the foregoing, we will sustain the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 101. \Ve will also sustain the rejection as it is directed to the remaining claims subject to this rejection because the Appellants have not argued the separate eligibility of these claims. Prior art rejections \Ve will not sustain the prior art rejections because we agree with the Appellants that the prior art does not disclose the interaction with the user processor as claimed. Brief 11. The Examiner relies on paragraphs 33----36 of Deakter for teaching this subject matter. \Ve find that Deakter teaches matching patients with c1 inical trials, but does not disclose interaction with a 8 Appeal2017-000295 Application 13/455,537 user processor. Therefore, we agree with the Appellants that there is no opportunity in Deakter for individualized buy-in by patients or their representatives. Each of the claims on appeal requires receiving disease specific information from a user processor or a second processor operated by an individual and the Examiner relies on paragraphs 33-36 of Deakter for teaching this subject matter for each of the rejections. In view of the foregoing, we will not sustain the Examiner's rejections under 35 U.S.C. Â§Â§ 102 and 103. DECISION We affirm the Examiner's 35 U.S.C. Â§ 101 rejection. We do not affirm the Examiner's 35 U.S.C. Â§Â§ 102(b) and 103(a) rejections. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l) (2009). ORDER AFFIRMED 9