In Re GALE

I
Case: 20-2270    Document: 32     Page: 1   Filed: 05/18/2021




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                  ______________________

                  IN RE: BRIAN GALE,
                         Appellant
                  ______________________

                        2020-2270
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. 12/408,686.
                   ______________________

                  Decided: May 18, 2021
                  ______________________

    THEODORE SABETY, Sabety & Associates PLLC, New
 York, NY, for appellant.

    MICHAEL S. FORMAN, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, for
 appellee Andrew Hirshfeld. Also represented by KAKOLI
 CAPRIHAN, THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA
 YASMEEN RASHEED.
                 ______________________

   Before MOORE, TARANTO, and HUGHES, Circuit Judges.
 HUGHES, Circuit Judge.
     Brian Gale appeals a decision of the Patent Trial and
 Appeal Board rejecting all noncancelled claims from his pa-
 tent application as ineligible under 35 U.S.C. § 101.
Case: 20-2270     Document: 32     Page: 2    Filed: 05/18/2021




 2                                                 IN RE: GALE




 Because we agree with the Board that the claims are di-
 rected to an abstract idea and lack an inventive concept,
 we affirm.
                               I
      Mr. Gale filed U.S. Patent Application No. 12/408,686
 (the ’686 application) titled “Verification Monitor for Criti-
 cal Test Delivery Systems” on March 21, 2009. The ’686 ap-
 plication is generally directed to monitoring and
 assembling metadata related to critical test result delivery
 systems in the medical field. Ex Parte Brian Gale, 

2020 WL
4345857

, at *1 (P.T.A.B. July 20, 2020) (Decision) (quoting
 J.A. 40). The application explains that, in the medical test-
 ing world, timely reporting of diagnostic testing results is
 crucial. J.A. 40. To address this concern, the application
 describes a method for ensuring that reporting of diagnos-
 tic test information occurs consistently and continually.
 J.A. 41.
     Claim 1 is representative:
     1. A method of verification monitoring of a critical
     test result message management system per-
     formed by a computer system comprised of at least
     one computers comprising:
             receiving into the computer system at
         least one data messages embodying a cor-
         responding at least one critical test result
         messages, said at least one data messages
         having an associated at least one timing
         data;
             determining by using the computer
         system to read from a computer data stor-
         age device data that represents the re-
         ceived at least one data messages, at least
         one test result message metadata corre-
         sponding to the received at least one mes-
         sage, said determined metadata describing
Case: 20-2270       Document: 32     Page: 3    Filed: 05/18/2021




 IN RE: GALE                                                  3



            at least one of a transmission time, a re-
            ceipt time, a retrieval time, a response
            time, or an interval between two times, by
            further using the timing data correspond-
            ing to the at least one data messages asso-
            ciated with the at least one critical test
            result messages;
                using the computer system to calculate
            data representing a usage pattern using
            the determined at least one test result mes-
            sage metadata; and
                using the computer to automatically
            determine a logical condition using the
            data representing the usage pattern, said
            logical condition comprising either the
            state of compliance or the state of non-com-
            pliance of the calculated usage pattern
            with a pre-defined usage pattern require-
            ment of the critical test result message
            management system.
 J.A. 33.
     Thus, claim 1 describes a method in which a computer
 system: (1) receives critical test result messages with asso-
 ciated timing-related metadata, (2) reads the timing-re-
 lated metadata, (3) calculates a usage pattern from the
 metadata, and (4) determines whether the calculated usage
 pattern is compliant by comparing it to a predetermined
 usage pattern requirement.
     The Board found that the claims of the ’686 application
 were ineligible under 35 U.S.C. § 101 because they were
 directed to an abstract idea without significantly more. De-
 cision, 

2020 WL 4345857

, at *9. Mr. Gale now appeals.
Case: 20-2270     Document: 32      Page: 4    Filed: 05/18/2021




 4                                                  IN RE: GALE




                               II
      Patent eligibility is a question of law that may contain
 underlying issues of fact. Berkheimer v. HP Inc.,
 

881 F.3d 1360

, 1368 (Fed. Cir. 2018). We review patent el-
 igibility under 35 U.S.C. § 101 under the two-part test es-
 tablished by the Supreme Court in Alice Corp. Pty. Ltd. v.
 CLS Bank Int’l, 

573 U.S. 208

, 217–18 (2014). “We must
 first determine whether the claims at issue are directed to
 a patent-ineligible concept.”

Id. at 218.

If they are, we “con-
 sider the elements of each claim both individually and ‘as
 an ordered combination’ to determine whether the addi-
 tional elements ‘transform the nature of the claim’ into a
 patent-eligible application.”

Id. at 217

(quoting Mayo Col-
 laborative Servs. v. Prometheus Labs., Inc., 

566 U.S. 66

,
 78–79 (2012)).
     We agree with the Board that Mr. Gale’s claims are di-
 rected to the abstract idea of (1) collecting information
 (here, receiving messages and reading their metadata), (2)
 analyzing the information (here, calculating a usage pat-
 tern and determining its compliance with a predetermined
 usage pattern), and (3) reporting the results. Decision,
 

2020 WL 4345857

at *5.
     We have previously held that similar claims are di-
 rected to abstract ideas. See e.g. SAP Am., Inc. v. InvestPic,
 LLC, 

898 F.3d 1161

, 1167 (Fed. Cir. 2018) (“[S]electing cer-
 tain information, analyzing it using mathematical tech-
 niques, and reporting or displaying the results of the
 analysis” is abstract.); Intellectual Ventures I LLC v. Cap.
 One Fin. Corp., 

850 F.3d 1332

, 1341 (Fed. Cir. 2017)
 (“[O]rganizing, displaying, and manipulating data of par-
 ticular documents” is abstract.); FairWarning IP, LLC v.
 Iatric Sys., Inc., 

839 F.3d 1089

, 1093 (Fed. Cir. 2016)
 (“[T]he realm of abstract ideas” includes “collecting infor-
 mation,” “analyzing information,” and “presenting the re-
 sults.”); Elec. Power Grp., LLC v. Alstom S.A., 

830 F.3d
1350

, 1354 (Fed. Cir. 2016) (“[The] process of gathering
Case: 20-2270    Document: 32     Page: 5    Filed: 05/18/2021




 IN RE: GALE                                               5



 and analyzing information of a specified content, then dis-
 playing the results” is abstract.).
     Among other arguments, Mr. Gale contends that the
 Board oversimplified the claims of the ’686 application,
 which he alleges are more specific than the claims consid-
 ered in our prior caselaw. Mr. Gale argues that his claims
 focus on a narrow, enumerated portion of the metadata as-
 sociated with timing. But “a claim is not patent eligible
 merely because it applies an abstract idea in a narrow
 way.” BSG Tech LLC v. Buyseasons, Inc., 

899 F.3d 1281

,
 1287 (Fed. Cir. 2018). The recitation of certain timing-re-
 lated metadata fields in the claims does not make the
 claims any less abstract.
     We also disagree with Mr. Gale’s argument that his
 claims are not abstract simply because they include meas-
 urements that are “fed into a computer that repeatedly re-
 calculates [an output].” Diamond v. Diehr, 

450 U.S. 175

,
 178 (1981)). The claims in Diehr, directed to a process of
 molding raw synthetic rubber into cured precision prod-
 ucts, were patent-eligible because “they improved an exist-
 ing technological process, not because they were
 implemented on a computer,” 

Alice, 573 U.S. at 223

, or be-
 cause they involved measurements. Conversely, Mr. Gale’s
 claims are directed to a method for monitoring the report-
 ing of diagnostic test results, not to any technological im-
 provement. Nor are Mr. Gale’s claims technological in
 nature simply because the claimed method is implemented
 on a computer.
     Having determined that the claims are directed to an
 abstract idea, we also agree with the Board that there is no
 inventive concept that transforms to claims into a patent-
 eligible application. Decision, 

2020 WL 4345857

, at *8–9.
 As the Board found, the only additional element beyond the
 abstract idea is a generic computer system to perform the
 method, the use of which is well-understood, routine, and
 conventional.

Id. at *9.

Case: 20-2270     Document: 32      Page: 6   Filed: 05/18/2021




 6                                                 IN RE: GALE




     Mr. Gale’s argument that the claims include an in-
 ventive concept because the Board did not reject the claims
 under 35 U.S.C. § 103 is unconvincing. “[M]erely reciting
 an abstract idea by itself in a claim—even if the idea is
 novel and non-obvious—is not enough to save it from ineli-
 gibility.” Solutran, Inc. v. Elavon, Inc., 

931 F.3d 1161

, 1169
 (Fed. Cir. 2019). There is no inconsistency in rejecting a
 claim under § 101 despite the lack of a rejection under
 § 103.
     Mr. Gale’s other arguments regarding Alice step two
 are similarly unavailing. It was not error for the Board to
 focus only on the claimed computer system at step two, be-
 cause the Board properly determined that the remainder of
 the claims simply recited the abstract idea itself. And we
 disagree with Mr. Gale’s attempt to analogize to Amdocs
 (Israel) Ltd. v. Openet Telecom, Inc., because Amdocs in-
 volved “an unconventional technological solution . . . to a
 technological problem” in which “generic components oper-
 ate[d] in an unconventional manner.” 

841 F.3d 1288

, 1300–
 01 (Fed. Cir. 2016). Mr. Gale’s claims contain no such tech-
 nological solution, nor the unconventional operation of ge-
 neric computer components.
                              III
      We have considered Mr. Gale’s remaining arguments
 and find them unpersuasive. Because we agree with the
 Board that the claims are directed to ineligible subject mat-
 ter, we affirm.
                         AFFIRMED

Add comment

By

Recent Posts

Recent Comments