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NOTE: This disposition is nonprecedential.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
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2020-2270
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/408,686.
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Decided: May 18, 2021
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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.
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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