Ex parte Whitsitt

FILING DATE: 04/22/2014

Before HUBERT C. LORIN, NINA L. MEDLOCK, and MATTHEW S. MEYERS, Administrative Patent Judges.

DECISION ON APPEAL

MEYERS, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Appellant^[2] appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

CLAIMED INVENTION

Appellant's claimed invention relates to "synchronizing healthcare data across multiple, disparate data centers." Spec. ¶ 5.

Claims 1, 11, and 17 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations and indentation added, is illustrative of the claimed subject matter:

1. A computer-implemented system for synchronizing healthcare data across geographically-disparate data centers, the computer-implemented system comprising

[a] a data collector service operable to

[b] receive healthcare data from a plurality of healthcare data sources, and

[c] communicate the healthcare data to a first staging platform associated with a first data center, wherein the first data center is remote from the plurality of health care data sources

[d] the first staging platform associated with the first data center operable to

[e] store the healthcare data in association with a first long-term storage data store located at the first data center;

[f] communicate the healthcare data to one or more processing nodes associated with the first data center; and

[g] communicate the healthcare data to a second staging platform associated with a second geographically-disparate data center,

[h] the second staging platform operable to

[i] store the healthcare data in association with a second long-term storage data store located at the second data center and

[j] communicate the healthcare data to one or more processing nodes associated with the second data center.

REJECTIONS

1. Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.

2. Claims 1-20 are rejected under 35 U.S.C. § 103 as unpatentable over Borrnann et al. (US 2005/0071194 A1, pub. Mar. 31, 2005) and Joao (US 2002/0032583 A1, pub. Mar. 14, 2002).

ANALYSIS

Patent-Ineligible Subject Matter

Appellant argues claims 1-20 as a group (see Appeal Br. 11-27; see also Reply Br. 2-9). We select independent claim 1 as representative. Claims 2-20 stand or fall with independent claim 1. See 37 C.F.R. §41.37(c)(1)(iv).

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. 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).

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. Alice, 573 U.S. 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 id. 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, 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); "tanning, dyeing, making water-proof 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 (Gottschalk, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).

If the claim is "directed to" an abstract idea, we turn to the second step of the Mayo/Alice 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, 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.

The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). Under that guidance, we first look to whether the claim recites:

(1) 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) additional elements that integrate the judicial exception into a practical application, i.e., that "apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53; see also MPEP § 2106.05(a)-(c), (e)-(h).

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 Revised Guidance, 84 Fed. Reg. at 56.

On pages 11-14 of the Appeal Brief, Appellant discusses Supreme Court and Federal Circuit cases generally, without specifically addressing the case before us on appeal.

Next, Appellant argues that the Examiner's rejection is in error because the Examiner fails to establish a prima facie case of subject matter ineligibility (see Appeal Br. 14-17 and 21-23; see also Reply Br. 2-8). Appellant's arguments are not persuasive.

In rejecting the pending claims under 35 U.S.C. § 101, the Examiner analyzes the claims using the Mayo/'Alice two-step framework (see Final Act. 14-17; see also Ans. 16-24). The Examiner states that independent claim 1 recites that

healthcare data is received from a plurality of healthcare sources, organized and stored using a first and a second staging platform, both of which are associated with geographically disparate data centers, and communicated and/or transmitted to either said first or second staging platforms based on processing nodes associated with their respective data centers.

(Final Act. 15). The Examiner considers this to be an abstract idea, inasmuch as it is similar to abstract ideas identified by the Federal Circuit, including the abstract idea of "using categories to organize, store and transmit information" in Cyberfone Systems v. CNN Interactive Group, 558 Fed.Appx. 988 (Fed. Cir. 2014) and the abstract idea of "collecting information, analyzing it, and displaying certain results of the collection and analysis" in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (see Ans. 16; see also Final Act. 15). See also Ans. 22 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011)). The Examiner further states that independent claim 1 does not include additional elements or a combination of elements sufficient to transform the claim into a patent-eligible application of the abstract idea (see Final Act. 15; see also Ans. 16-18). The Examiner, thus, has followed the two-part framework specified by the Supreme Court in Mayo/Alice consistent with Office guidelines.

In this regard, the Examiner has articulated the reasons for the rejection and has notified Appellant of the reasons for the rejection "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." 35 U.S.C. § 132.^[3] And we find that, in doing so, the Examiner sets forth a prima facie case of subject matter ineligibility. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection."). And, when viewed through the lens of the 2019 Revised Guidance, the Examiner's analysis depicts the claimed subject matter as one of the ineligible "methods of organizing human activity" or "[m]ental processes" under Prong One of Revised Step 2A. See 2019 Revised Guidance, 84 Fed. Reg. at 51-52.

We...