Baxter Corporation EnglewoodDownload PDFPatent Trials and Appeals BoardJan 29, 20212020003628 (P.T.A.B. Jan. 29, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/734,944 06/09/2015 Dennis Tribble P6415USAN2 BX2015T02343 1084 118075 7590 01/29/2021 K&L Gates LLP-Baxter P.O. Box 1135 Chicago, IL 60690-1135 EXAMINER SOREY, ROBERT A ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 01/29/2021 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DENNIS TRIBBLE and JOEL A. OSBORNE ____________ Appeal 2020-003628 Application 14/734,944 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Baxter Corporation Englewood. (Appeal Br. 1.) Appeal 2020-003628 Application 14/734,944 2 CLAIMED SUBJECT MATTER Appellant’s invention relates “to data transmission capture that permits data configuration in support of medication preparation” (Spec. 1, ll. 14–15), or, more simply, “selectively trapping data streams intended for a pharmacy” (id. at 3, ll. 3–4). Claims 1 and 5 are the independent claims on appeal. Claim 1 is illustrative. It recites: 1. A system for automated transfer and processing of a medication dose order for an intravenous medication, an oral liquid medication, or a chemotherapy medication from an electronic order entry system to a medication preparation workstation in a pharmacy, comprising: a memory; a listener software module loaded in the memory, wherein the listener software module is executable by a processor to configure the processor to receive data for the medication dose order for an intravenous medication, an oral liquid medication, or a chemotherapy medication from the electronic order entry system; and a parser software module loaded in the memory and executable by a processor to configure the processor to parse the received data for the medication dose order in accordance with a set of configuration rules, test the received data for the medication dose order to determine whether the medication dose order is suitable for handling at the medication preparation workstation, and, if suitable, send the medication dose order to the medication preparation workstation for handling, wherein a record corresponding to the medication dose order is saved in a database accessible from the medication preparation workstation, and metadata regarding the medication dose order is associated with the record in the database, and wherein a viewer of the medication preparation workstation visually displays only medication dose orders that are suitable for handling at the medication preparation Appeal 2020-003628 Application 14/734,944 3 workstation and that are to be prepared at the medication preparation workstation. REJECTION Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. Section 101, however, “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (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, 573 U.S. at 217. Under the two-step framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’ Appeal 2020-003628 Application 14/734,944 4 sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79). With regard to step one of the Alice framework, we apply a “directed to” two-prong test to: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] 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 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”). The Examiner determines that claim 1 “covers functions performable in the mind or with a pen and paper” and that the claim “falls within the ‘Mental Processes’ grouping of abstract ideas.” (Final Action 3.) Appellant argues that “the claimed systems do not cover pen and paper solutions. Rather, the claimed invention ‘provides a software interface that enables a network device to emulate a printer that is attached to a network serial port in order to trap and filter serial data for automated handling by downstream equipment.’” (Appeal Br. 5 (quoting Spec. ¶ 19).)2 Under step one of the Alice framework, we “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 Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). 2 At the outset, we note that claim 1 does not refer to either emulating a printer or a network serial port. Appeal 2020-003628 Application 14/734,944 5 The “directed to” inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon . . . . Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In other words, the first step of the Alice framework “asks whether the focus of the claims is on the specific asserted improvement in [the relevant technology] or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335–36; see also 2019 Guidance at 54–55. The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that the invention relates “to data transmission capture that permits data configuration in support of medication preparation.” (Spec. 1, ll. 14–15.) Claim 1 provides further evidence. Claim 1 recites “[a] system for automated transfer and processing of a[n] . . . order . . . from an electronic order entry system to a medication preparation workstation . . . comprising: a memory,” “a listener software module . . . to configure the processor to receive data for the . . . order,” “a parser software module . . . to configure the processor to parse the received data . . . , test the received data . . . , and, if suitable, send the . . . order to the . . . workstation,” “wherein a record corresponding to the . . . order is saved in a database,” “and wherein a viewer of the . . . workstation visually displays only . . . orders that are suitable for handling at the . . . workstation and that are to be prepared at the . . . workstation.” Appeal 2020-003628 Application 14/734,944 6 In short, the claim limitations recite a system for receiving data, i.e., an order, parsing, analyzing, and transmitting data, storing data, and displaying data. Receiving, parsing, analyzing, transmitting, storing and displaying data have been determined to be directed to an abstract idea. See, e.g., Content Extraction and Transmission LLC v. Well Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (treating as an abstract idea “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data”), FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining “that the ‘realm of abstract ideas’ includes ‘collecting information, including when limited to particular content’” as well as analyzing and presenting information), Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) (determining parsing, comparing, and storing data to be directed to an abstract idea), Bridge and Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019) (obtaining information, analyzing the information, and presenting customized information based on the analyzed information determined to be directed to an abstract idea). The limitations of claim 1 do not recite technological implementation details for any of the elements. Claim 1 merely recites functional results to be achieved by any means, e.g., claim 1 does not recite how the system receives data, how the system parses data, how the system tests data, how the system transmits data, how the system saves data in the database, or how the workstation displays data. “[W]ith the exception of generic computer- implemented steps, there is nothing in the claims themselves that foreclose[s] them from being performed by a human, mentally or with pen and paper.” Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, Appeal 2020-003628 Application 14/734,944 7 1318 (Fed. Cir. 2016); see also Versata Development Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”). The 2019 Guidance identifies “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)” as mental processes, and a category of abstract ideas. (2019 Guidance at 52 (footnote omitted).) Claim 1 is “focused on providing information to [the user] . . . , not on improving computers or technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). “Like Electric Power, the purported advance ‘is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.’ 830 F.3d at 1354. We thus conclude that the claim[ is] directed to an abstract idea.” Id. at 1385. In cases involving software innovations, such as we have here, the inquiry as to whether the claims are directed to an abstract idea “often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC, 822 F.3d at 1335–36). Here, the computing devices, i.e., memory, processor(s), database, and workstation viewer, are invoked merely as tools. Appeal 2020-003628 Application 14/734,944 8 Nonetheless, Appellant seeks to analogize claim 1 to the claims in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018). (Appeal Br. 6.) Appellant argues that “[a]s in Core Wireless, Appellant’s claims disclose a specific manner of displaying a limited set of information to the claimed medication preparation workstation and recite a specific improvement over prior systems.” (Appeal Br. 6.) We do not find this argument persuasive. In Core Wireless, the claims were directed to improved functionality in a user interface. Core Wireless, 880 F.3d at 1362. Specifically: Claim 1 of the ‘476 patent requires “an application summary that can be reached directly from the menu,” specifying a particular manner by which the summary window must be accessed. The claim further requires the application summary window list a limited set of data, “each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application.” This claim limitation restrains the type of data that can be displayed in the summary window. Finally, the claim recites that the summary window “is displayed while the one or more applications are in an un-launched state,” a requirement that the device applications exist in a particular state. These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. Id. at 1362–63 (emphasis added). Contrary to Appellant’s argument, claim 1 does not recite a specific manner of displaying information. Claim 1 merely recites “a viewer of the medication preparation workstation visually displays only medication dose orders that are suitable for handling at the medication preparation workstation and that are to be prepared at the medication preparation workstation.” In other words, the asserted improvement is to the Appeal 2020-003628 Application 14/734,944 9 information displayed, not to the manner of displaying the information. But an improvement to the information is not equivalent to an improvement in functionality. See, e.g., BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018) (“[A]n improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality.”). And “[a]s many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). The “character of [the] information simply invokes a separate category of abstract ideas.” Id. In other words, Appellant’s asserted improvement “lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” Id. at 1163. Further, we do not find any indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record that attributes an improvement in computer technology or functionality to the claimed invention or that otherwise indicates that the claimed invention “appl[ies], rel[ies] on, or use[s] 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 Guidance at 54–55.) Thus, under prong one of the two prong test in the 2019 Guidance, claim 1 recites an abstract idea, i.e., mental processes; and, under prong two, additional elements in claim 1 do not “apply, rely on, or use the judicial Appeal 2020-003628 Application 14/734,944 10 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 Guidance at 54.) As such, under step one of the Alice framework, claim 1 is directed to an abstract idea, and we move to step two. Step two of the Alice framework has been described “as a search for an ‘ “inventive concept” ’ –i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Taking the claim elements separately, the functions performed in claim 1 by a generic memory, software to configure a generic processor to receive data, software to configure a generic processor3 to parse, test, and send data, a generic database in which data are stored, and a generic workstation viewer are purely conventional. Receiving data, parsing data, testing/analyzing data, sending data, storing data, and displaying data are well-understood, routine, and conventional functions previously known to the industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims “do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept . . . .”); see also Versata Development Group, 3 It is unclear in claim 1 if the listener software module executes on the same processor as the parser software module (“the listener software module is executable by a processor” and “the parser software module . . . [is] executable by a processor”). Independent claim 5 is similarly unclear. Appeal 2020-003628 Application 14/734,944 11 Inc., 793 F.3d at 1335 (determining claims requiring “arranging, storing, retrieving, sorting, eliminating, determining” to “involve the normal, basic functions of a computer” and to be “conventional, routine, and well- known”), In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”). Considered as an ordered combination, the generic computer components of Appellant’s claimed invention add nothing that is not already present when the limitations are considered separately. For example, claim 1 does not purport to improve the functioning of the computer components themselves. Nor does it effect an improvement in any other technology or technical field. Instead, claim 1 amounts to nothing significantly more than an instruction to apply the abstract ideas using generic computer components performing routine computer functions. That is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. Nonetheless, Appellant argues that claim 1 “recites an improvement over conventional systems (e.g., sending all of the data to label printers) and therefore includes significantly more than the abstract idea of collecting, analyzing, and displaying information” (Appeal Br. 7), and that the “claimed tasks are distinguishable from the routine or conventional use of computers” (id. at 8). We do not find this argument persuasive. “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC, 899 F.3d Appeal 2020-003628 Application 14/734,944 12 at 1290. The claimed invention is, at most, an improvement to the performance of the abstract idea. (See supra; see also 2019 Guidance at 52.) Appellant also seeks to analogize the present claims to those in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). (Appeal Br. 9.) Appellant argues that, similar to Amdocs, “the processing required at individual workstations, associated with determining whether medication data [are] suitable for handling, is offloaded from the workstations themselves” and that “[t]he system ensures centralized parsing, testing, and sending of information to various locations, thus improving overall efficiency by reducing congestion across the network of individual medication preparation workstations and users to ensure that suitable medication data [are] provided to suitable locations.” (Id.) In relevant part, claim 1 of Amdocs recites “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Amdocs, 841 F.3d at 1299 (emphasis added). In an earlier opinion, Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 761 F.3d 1329 (Fed. Cir. 2014) (Amdocs I), the court had “construed ‘enhance’ as meaning ‘to apply a number of field enhancements in a distributed fashion.’ [Amdocs I] at 1340. We took care to note how the district court explained that ‘[i]n this context, “distributed” means that the network usage records are processed close to their sources before being transmitted to a centralized manager.’ [Amdocs I] at 1338.” Amdocs, 841 F.3d at 1300. In view of the above claim interpretation of the term “enhance,” we do not find Appellant’s argument persuasive. As an initial matter, we note that Appellant’s argument of improved efficiency is not supported by any Appeal 2020-003628 Application 14/734,944 13 citation to the Specification. It is merely attorney argument. Moreover, the asserted inventive concept is simply the general idea of testing data and sending “suitable” data to a viewer of a workstation. (See Claim 1.) Claim 1 does not recite the “use of anything but entirely conventional, generic technology” to perform the recited functions. Elec. Power Grp., 830 F.3d at 1356. Indeed, the Specification discloses the listener software module executing on a “first machine” and the parser software module executing on a “second machine,” with the option of the modules “execut[ing] on the same machine,” without providing a description of the “machine” such that one would understand the “machine” to be more than a generic processor performing generic processor functions. (Spec. 4, ll. 1– 11.) In view of the above, we are not persuaded that the Examiner erred in rejecting claim 1. Independent claim 5, and dependent claims 2–4 and 6–20 are not separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 is affirmed. Specifically: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 Appeal 2020-003628 Application 14/734,944 14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation