Ex parte Hess
| Decision Date | 28 March 2018 |
| Docket Number | Application 11/957,Appeal 2016-007801,171 |
| Court | Patent Trial and Appeal Board |
| Parties | Ex parte JOHN M. HESS Technology Center 3600 |
FILING DATE: 12/14/2007
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and BRADLEY B. BAY AT Administrative Patent Judges.
DECISION ON APPEAL [1]
BAY AT, Administrative Patent Judge.
STATEMENT OF THE CASE
John M Hess ("Appellant")[2] appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-8 and 15-20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1. Claims 1-8 are rejected under 35 U.S.C. § 101 as directed to judicially-excepted subject matter.
2. Claims 1-8 and 15-20 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite.
3. Claims 15-20 are rejected under 35 U.S.C. § 102(b) as anticipated by Ginter et al. (US 5, 892, 900, issued Apr. 6, 1999) ("Ginter").
4. Claims 1-8 and 15-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mayaud (US 5, 845, 255, issued Dec. 1, 1998), Ginter, and Midgdey et al. (US 5, 485, 606, issued Jan. 16, 1996) ("Midgdey").
Ground of Rejection under 35 U.S.C. §101
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'l, 134 S.Ct. 2347, 2354 (2014) (internal quotation marks and citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Incorporated, 566 U.S. 66, 82-84 (2012), "for distinguishing 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. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. If the claims are not directed to a patent-ineligible concept, e.g., to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "individually and 'as an ordered combination'" to determine whether there are additional elements that '"transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. 66, 79, 78).
Applying the framework in Alice, and as the first step of that analysis, the Examiner determines that claim 1 "is directed to an abstract idea of an algorithm and can be performed manually." Final Act. 5. The Examiner maintains that:
the method is directed to standard pharmacy transactions where a pharmacist or technician receives a request to fill a prescription, the patient is identified and the specific profile information of that patient is accessed, opened and read, whether the specific information is in regards to a prior dispensing pharmacist, medical code for treatment received or sought or a patient's drug abuse, and based on the sensitivity of the patient's information and where it would be stored based on the sensitivity of the patient's file, accessing that information would require further authorization, the information is then retrieved and the patient receives a receipt of the transaction and information detailing their prescription.
Ans. 9. According to the Examiner, "Applicant seeks to automate an algorithm directed to accessing patient information." Id. Proceeding to the second step of the Alice framework, the Examiner finds that:
the limitations "identifying", "reading", "determining", "decoding" and "retrieving" are each mental steps and "opening" while requiring a computer is still from the perspective of a person, do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Final Act. 5. The Examiner also finds that claim 1 "is silent in the recitation of a computer performing the steps and can be directed to a person performing the steps" (Ans. 8-9) and that "[t]he steps can be performed with use of a wireless device or a generic computer, a computer is already capable of receiving a command, showing the location of information, opening a file, searching for a specific piece of information, translating information, outputting what it derives and displaying results." Id. at 9-10. The Examiner has applied this analysis to all the claims in the rejection.
As an initial matter, we note that Appellant argues claims 1-8 as a group, and argues claim 1 as exemplary. See Br. 10-20. We select independent claim 1 as the representative claim for this group and, thus, the remaining claims 2-8 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Addressing these arguments, in turn, we do not find any to be persuasive of error in the rejection thereof.
Turning to the first step of Alice, Appellant argues that the Examiner erred in rejecting claim l under 35 U.S.C. § 101 because "the Examiner has failed to provide any proof that pharmacy benefit adjudication is an abstract concept." Br. 11. According to Appellant, "the Examiner only provides an opinion as to what is an abstract concept." Id. Appellant cites Ex parte Renald Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015) in support of the contention that the Examiner was required to provide factual support for the conclusion that the claim is directed to an abstract idea (Br. 11, 16-17). Appellant also argues that the Examiner has put forth no evidence that the claims are directed to "a building block of economic activity or any other form of building block of human activity." Id. at 12. According to Appellant, abstract ideas are "limited to mathematical algorithms, fundamental economic practices, or longstanding commercial practices" (id. at 12-13) and "the Examiner has provided no authority for the expansion of categories for abstract ideas to encompass" an algorithm that can be performed mentally.
A plain reading of the rejection and response to arguments in the Answer shows the Examiner reviewed the claim as a whole with all its limitations. See Final Act. 5; see also Ans. 8-10. Appellant does not cite any authority as to what kind "proof the Examiner is required to provide in making a determination as to the abstract idea under 35 U.S.C. § 101. See, MPEP § 2106.07(a) III (2018). Moreover, we note that Poisson is not a precedential decision and, therefore, we are not bound by it. Nevertheless, we have reviewed Poisson and do not consider it to be pertinent to the issue in this appeal. In Poisson, the Patent Trial and Appeal Board ("Board") rejected the Examiner's conclusion that the claims were directed to an abstract idea of a new set of rules for playing a card game. Poisson, Appeal 2012-011084, slip op. at 5. Instead, the Board found that the claim involved playing a game of football "using a table and cards." Id. The Board reversed the Examiner's rejection because the Examiner did not provide adequate findings of fact "on which to base the Alice analysis." Id. Thus, the Board concluded that the facts and evidence relied upon by the Examiner did not support a finding that the claim was an ineligible abstract idea. Id. Here, the Examiner made adequate findings of fact, as discussed above, that the claimed method is directed to an abstract idea.
Appellant's argument is unpersuasive at least because abstract ideas are not limited to building blocks of economic activity or building blocks of human activity. "The 'abstract idea' step of the inquiry calls upon us to look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 1257-68 (Fed. Cir. 2016 (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). There is no definitive rule to determine what constitutes an "abstract idea." Rather, the Federal Circuit has explained that "both [it] and the Supreme Court have found it sufficient to compare claims at issue to...
To continue reading
Request your trial