Baxter Corporation Englewood

Patent Trials and Appeals Board

Jan 29, 2021

2020003628 (P.T.A.B. Jan. 29, 2021)

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.)
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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
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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” ’
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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.
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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.”
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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,
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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.
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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
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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
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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.
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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
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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
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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

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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