Ex Parte CROSS

Patent Trials and Appeals Board

Mar 25, 2019

11422907 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/422,907 06/08/2006
46169 7590 03/27/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
LORIN. CROSS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CRNI.127507 4907
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORIN. CROSS
Appeal2017-010276
Application 11/422,907 1
Technology Center 3600
Before ERIC S. FRAHM, LARRY J. HUME, and CATHERINE SHIANG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1-17, 19-22, and 24--29, which are all claims
pending in the application. Appellant has canceled claims 18 and 23. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is Cemer Innovation, Inc.
Br. 3.
Appeal2017-010276
Application 11/422,907
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
computerized methods and systems for automatically documenting fluid
intake and output events for a patient." Spec. 25 ("Abstract").
Exemplary Claims
Claims 1 and 9 reproduced below, are representative of the subject
matter on appeal (emphases added to contested prior-art limitations):
1. One or more computer-readable media having
computer-executable instructions embodied thereon for causing
a computing device to perform a method for automatically
documenting a fluid balance event for a patient, the method
compnsmg:
receiving a signal indicating that a fluid balance event
associated with an impact value impacts a patient's overall fluid
balance, wherein the impact value is a physical quantity
associated with fluid intake and output, and wherein the overall
fluid balance is a numerical measure of the net fluid intake of
the patient;
automatically and without user interaction extracting the
fluid balance event for a patient from clinical event
documentation;
receiving the impact value associated with the fluid
balance event that indicates the magnitude of influence that a
2 Our decision relies upon Appellant's Appeal Brief ("Br.," filed
Jan. 17, 2017); Examiner's Answer ("Ans.," mailed May 26, 2017); Non-
Final Office Action ("Non-Final Act.," mailed Aug. 16, 2016); and the
original Specification ("Spec.," filed June 8, 2006). We note Appellant did
not file a Reply Brief in response to the factual findings and legal
conclusions in the Examiner's Answer.
2
Appeal2017-010276
Application 11/422,907
particular fluid balance event has on a patient's overall fluid
balance;
automatically and without user interaction populating a
database with the fluid balance event and the impact value; and
automatically and without user interaction updating an
overall fluid balance for the patient utilizing the impact value.
9. The media of claim 1, wherein the method further
comprises determining the fluid balance event is a standard
fluid balance event and wherein receiving the impact value
includes receiving a standard impact value from a database.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Mattson et al.
("Mattson")
US 2002/0132214 Al Sept. 19, 2002
Schoenberg et al. US 2005/0125256 Al June 9, 2005
("Schoenberg")
Rejections on Appeal
RI. Claims 1-17, 19-22, and 24--29 3 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Non-Final Act. 3.
R2. Claims 1-17, 19-22, and 24--29 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Schoenberg and
Mattson. Non-Final Act. 6.
3 It appears that there is a typographical error in the explicit statement of
Rejection RI, which indicates that claims "1-17, 19-22, and 24--19" are
rejected. Non-Final Act. 3 (emphasis added). We take this as harmless
error, and the correct statement of Rejection RI is as indicated above.
3
Appeal2017-010276
Application 11/422,907
CLAIM GROUPING
Based on Appellant's arguments (Br. 6-23) and our discretion under
37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible subject
matter Rejection RI of claims 1-17, 19-22, and 24--29 on the basis of
representative claim 1; we decide the appeal of obviousness Rejection R2 of
claims 1-8, 10-17, 19-22, and 24--29 on the basis of representative claim 1;
and we decide the appeal of separately argued obviousness Rejection R2 of
claim 9, infra. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to obviousness
Rejection R2 of claims 1-8, 10-17, 19-22, and 24--29 and, unless otherwise
noted, we incorporate by reference herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellant's arguments.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4
Appeal2017-010276
Application 11/422,907
However, based upon our review of the record, we find a
preponderance of the evidence supports particular arguments advanced by
Appellants with respect to obviousness Rejection R2 of claim 9 for the
specific reasons discussed below.
Further, in light of Appellant's arguments and US PTO Guidance
concerning Section 101 rejections discussed herein, we review Rejection RI
of claims 1-17, 19-22, and 24--29 de nova, and reverse this rejection.
We highlight and address specific findings and arguments regarding
claims 1 and 9 for emphasis as follows.
1. § 101 Rejection RI of Claims 1-17, 19-22, and 24--29
Issue 1
Appellant argues (Br. 6-17) the Examiner's rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in
error. These contentions present us with the following issue:
Under the US PTO' s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
"Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo." SiRF Tech., Inc. v. Int'! Trade Comm 'n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
5
Appeal2017-010276
Application 11/422,907
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.5
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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 Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 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. Kappas, 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, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under § 101.
6
Appeal2017-010276
Application 11/422,907
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
However, the Federal Circuit has held claims ineligible as directed to
an abstract idea when claimed in a certain way such that they merely collect
electronic information, display information, or embody mental processes
that could be performed by humans. Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1353-54 (Fed. Cir. 2016) (collecting cases). At the same time, "all
inventions at some level embody, use, reflect, rest upon, or apply laws of
7
Appeal2017-010276
Application 11/422,907
nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71.
Abstract ideas may include, but are not limited to, fundamental economic
practices, methods of organizing human activities, and mathematical
formulas or relationships. Alice, 573 U.S. at 217-221. Under this guidance,
we must therefore ensure at step one that we articulate what the claims are
directed to with enough specificity to ensure the step one inquiry is
meaningful. Id. at 217 ("[W]e tread carefully in construing this exclusionary
principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo 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, 573 U.S. 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. (quoting Mayo, 566 U.S. at 77,
(alteration in original)). "[M]erely requir[ing] generic computer
implementation[] fail[ s] to transform that abstract idea into a patent-eligible
invention." Id.
B. USPTO Revised Guidance
The PTO recently published revised policy guidance in the Federal
Register concerning the application of§ 101. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Revised Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
8
Appeal2017-010276
Application 11/422,907
Under the Revised 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); 6 and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP
§§ 2106.0S(a}-(c), (e}-(h)). 7
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 are not "well-understood, routine, conventional"
in the field (see MPEP § 2106.0S(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. 8
See Revised Guidance.
Step 2A(i) ~ Abstract Idea
Informed by our judicial precedent, the recent Revised Guidance
extracts and synthesizes key concepts identified by the courts as abstract
6 Referred to as "Revised Step 2A, Prong l" in the Guidance (hereinafter
"Step 2A(i)").
7 Referred to as "Revised Step 2A, Prong 2" in the Guidance (hereinafter
"Step 2A(ii)").
8 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
9
Appeal2017-010276
Application 11/422,907
ideas to explain that the abstract idea exception includes the following
groupings of subject matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity -
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
Section III.C.
10
Appeal2017-010276
Application 11/422,907
Step 2A(ii) ~ Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05( c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
( 6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
10 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer
to revision [R-08.2017].
11
Appeal2017-010276
Application 11/422,907
Step 2B - "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 11 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception ( e.g., because the additional elements were
unconventional in combination). 12 Therefore, if a claim has been
determined to recite a judicial exception under Revised Step 2A, we must
evaluate the additional elements individually and in combination under Step
2B to determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself). 13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
12
Appeal2017-010276
Application 11/422,907
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 14
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s ).
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05( d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s ).
14 In accordance with existing Step 2B guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
13
Appeal2017-010276
Application 11/422,907
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s).
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
14
Appeal2017-010276
Application 11/422,907
ANALYSIS
Step 1
Claim 1 recites "[ o ]ne or more computer-readable media," which is
one of the enumerated categories of eligible subject matter in 35 U.S.C.
§ 101, i.e., a "manufacture." Therefore, the issue before us is whether
claim 1 recites a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined the claims are
directed to extracting the fluid balance event (new information),
receiving the impact value (new information), automatically
populating a database (stored information), and updating an
overall fluid balance ( comparing new and stored information
and using rules to identify options). This similar to the abstract
ideas of comparing new and stored information and using rules
to identify options (SmartGene) because the claims use rules to
identify options of extracting the fluid balance event (new
information), receiving the impact value (new information),
automatically populating a database (stored information), and
updating an overall fluid balance ( comparing new and stored
information and using rules to identify options).
Non-Final Act. 4. The Examiner modified this determination in the Answer.
"Claims 1-17, 19-22 and 24--29 is/are directed to the abstract idea of
'automatic documentation of patient intake and output events in a
computerized healthcare environment', etc.," and "are directed to
information processing . . . . [which] is a fundamental building block of
human ingenuity ... [and which] is an abstract idea." Ans. 10.
We find claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate whether claim 1 recites
15
Appeal2017-010276
Application 11/422,907
an abstract idea based upon the Revised Guidance. We conduct our review
for abstractness de nova.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention solves
problems related to "automatically documenting a patient's I/0 and
including traditionally undocumented I/0 events, such as laboratory
procedures and radiological procedures, which would not rely on manual
entry." Spec. ,r 6.
Appellants' Abstract provides additional description of the invention:
The present invention relates to computerized methods
and systems for automatically documenting fluid intake and
output events for a patient. In one method, a fluid balance event
is extracted, an impact value associated with the fluid balance
event is received, and a database is populated with the fluid
balance event and associated impact value. In another method, a
clinical event is received and analyzed to determine whether the
event has an impact on the patient's overall fluid balance. If the
event is determined to have an impact on the fluid balance, the
event is managed as a fluid balance event and an impact value
is received for the event. A fluid balance is then updated for the
patient using the received impact value.
Spec. 25.
Claim 1 recites "[ o ]ne or more computer-readable media having
computer-executable instructions embodied thereon for causing a computing
device to perform a method for automatically documenting a fluid balance
event for a patient, wherein the method includes the steps of:
( 1) "receiving a signal indicating that a fluid balance
event associated with an impact value impacts a patient's
overall fluid balance, wherein ... the overall fluid balance is a
numerical measure of the net fluid intake of the patient."
16
Appeal2017-010276
Application 11/422,907
(2) "automatically and without user interaction extracting
the fluid balance event for a patient from clinical event
documentation."
(3) "receiving the impact value associated with the fluid
balance event that indicates the magnitude of influence that a
particular fluid balance event has on a patient's overall fluid
balance."
( 4) "automatically and without user interaction
populating a database with the fluid balance event and the
impact value."
( 5) "automatically and without user interaction updating
an overall fluid balance for the patient utilizing the impact
value."
Claims App'x.
Under the broadest reasonable interpretation standard, 15 and aside
from the recitations of "automatically and without user interaction," we
conclude limitations ( 1) through ( 5) recite steps that would ordinarily occur
when documenting patient intake and output events. See Non-Final Act. 5;
Ans. 10.
15 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
17
Appeal2017-010276
Application 11/422,907
For example, extracting fluid balance event information from patient
documentation (limitation (2)), receiving or determining an impact value 16
associated with the fluid balance event (limitation (3)), populating a record
( e.g., a database) with the fluid balance event and impact value (limitation
( 4)), and updating the overall fluid balance utilizing the impact value
(limitation ( 5)) are operations that occur when documenting a fluid balance
event for a patient.
Thus, under Step 2A(i), we generally agree with the Examiner that
claim 1 recites abstract ideas, and we particularly conclude claim 1 recites
mental processes as concepts that may be performed in the human mind,
including observations, evaluations, judgments, and opinions, and that may
be performed using pen and paper. This type of activity, i.e., reviewing
patient records to extract fluid balance event information from clinical
documentation and updating the patient record based upon a fluid balance
event includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 17
16 An impact value is described as, e.g., volumes, masses, weights, flow
rates, densities, concentrations and other physical quantities associated with
fluid intake and output. See Spec. ,r 23.
17 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241.
18
Appeal2017-010276
Application 11/422,907
We conclude claim 1, as a whole, under our Revised Guidance, recites
a judicial exception of mental processes, i.e., concepts that may be
performed in the human mind, including observations, evaluations,
judgments, and opinions, and thus an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the "practical application" Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
In addition to the abstract steps recited in limitations (2) through (4) 18
identified in Step 2A(i), supra, claim 1 recites (1) "receiving a signal
indicating that a fluid balance event associated with an impact value impacts
a patient's overall fluid balance, wherein ... the overall fluid balance is a
numerical measure of the net fluid intake of the patient."
We conclude limitation ( 1 ), "receiving," recites insignificant data
gathering. See MPEP § 2106.05(g). Data gathering, as performed by the
steps or function in Appellants' claims, is a classic example of insignificant
extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed.
Cir. 2008) (en bane), ajf'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
18 We identified these steps as abstract, supra, except for the portions of the
limitations that recite carrying out the actions "automatically and without
user intervention."
19
Appeal2017-010276
Application 11/422,907
However, for the reasons discussed below, we conclude limitations
(2), (4), and (5), especially in light of the portions that recite "automatically
and without user intervention," integrate the abstract idea into a practical
application as determined under at least the MPEP sections cited above. 19
Appellant's Specification discloses:
Embodiments of the present invention are directed to
systems and methods for automatic documentation of patient
intake and output events in a computerized healthcare
environment. The present invention allows for the fluid balance
impact of various clinical events to be automatically
documented for a clinical patient so as to avoid omission of
these events, such as can occur with a manual fluid balance
documentation process. Other embodiments of the present
invention specifically provide for automatic documentation of
fluid intake and output in settings such as a radiology
environment or laboratory environment, where fluid balance is
typically not documented today.
Spec. ,r 20. Appellant argues:
[T]he claims of the present Application address a
technological problem. In particular, the claims address a
problem of maintaining an accurate electronic account of a
patient's fluid balance. As explain in the Specification, in the
realm of computerized health care systems, fluid intake and
output are traditionally performed by manually entering the data
into a particular fluid balance portion of a patient's electronic
medical record, which can lead to errors from omitted or
inaccurate data entry. [ J For example, many procedures from
disparate healthcare departments may have an impact on a
patient's fluid balance but are not traditionally documented
with respect to the electronic record of the patient's fluid
balance. [ J Even though the impact for a single event may be
19 For example, See MPEP § 2106.0S(a) "Improvements to the Functioning
of a Computer or To Any Other Technology or Technical Field," and
§ 2106.0S(e) "Other Meaningful Limitations."
20
Appeal2017-010276
Application 11/422,907
small, such as with blood draws and collection of urine
samples, these events may accumulate to have a significant
impact on the patient's fluid balance. [ J Though a patient's
electronic record may include the data relating to an impact
value for these events, such data is not utilized with respect to
fluid balance. The claimed invention solves these problems by
providing an approach to electronically track the patient's fluid
balance by extracting fluid balance event information from
various electronic sources.
As such, Appellant respectfully submits that the claims
recite an inventive system and method to automatically
document the fluid balance impact of a fluid balance event.
Br. 14 ( citing to Spec. ,r,r 4, 5) ( emphasis added).
We find Appellants' argument persuasive that "automatically and
without user intervention" carrying out the steps of: (2) "extracting the fluid
balance event for a patient from clinical event documentation;"
( 4) "populating a database with the fluid balance event and the impact
value;" and ( 5) "updating an overall fluid balance for the patient utilizing the
impact value" provide improvements to the underlying technology or
technical field, namely, computerized health care systems. See MPEP
§ 2106.05(a) or, alternatively,§ 2106.05(e) "Other Meaningful Limitations."
With respect to these other meaningful limitations, Appellants argue:
[T]he claims include features that are not directed to
merely implementing an abstract idea on a computer. Instead,
the claims recite an inventive concept by including features that
recite an inventive concept directed to how to automatically
document fluid balance events. As in DDR, the features of the
claims are necessarily rooted in technology and provide an
improvement to a technological process. As in Bascom, the
patent application "describes how its particular arrangement of
elements is a technical improvement over prior art ways."[ J
Accordingly, the claims at issue recite an inventive concept in
21
Appeal2017-010276
Application 11/422,907
the ordered combination of claim limitations that transform any
abstract idea into a practical application, thus providing patent-
eligible claims.
Br. 15 (citing DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014)
and Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016)).
We find guidance in the Manual for Patent Examining Procedure
section 2106.05(e), which summarizes and relies upon our reviewing court's
holdings in Diamond v. Diehr, cited supra, and Classen Immunotherapies,
Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (decision on remand
from the Supreme Court, which had vacated the lower court's prior holding
of ineligibility in view of Bilski v. Kappas).
In Diamond, the Court evaluated the additional non-abstract
limitations, and found them to be meaningful, because they sufficiently
limited the use of the [ abstract idea] mathematical equation to the practical
application of molding rubber products. MPEP § 2106( e) ( citing Diamond,
450 U.S. at 184, 187).
In Classen, the Court held that, although the analysis step was an
abstract mental process that collected and compared known information, the
[practical application] immunization step was meaningful because it
integrated the results of the analysis into a specific and tangible method that
resulted in the method "moving from abstract scientific principle to specific
application." MPEP § 2106(e) (citing Classen, 659 F.3d at 1066-68).
We find these other meaningful limitations identified above provide a
technological improvement to computerized healthcare management.
Br. 16. Accordingly, we conclude, when the claim is considered as a whole,
22
Appeal2017-010276
Application 11/422,907
the recited judicial exception is integrated into a practical application as
determined under either MPEP sections 2106.06(a) or 2106.0S(e) cited
above, such that the claim is patent-eligible.
Because the claims are directed to a patent-eligible concept, this
concludes the patent-eligibility inquiry.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are drawn to patent-eligible subject matter, such that we do not
sustain the § 101 rejection of claim 1, and grouped claims 2-17, 19-22, and
24--29, which stand therewith. See Claim Grouping, supra.
2. § 103(a) Rejection R2 of Claims 1-8, 10-17, 19-22, and 24--29
Issue 2
Appellant argues (Br. 17-21) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of
Schoenberg and Mattson is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests"[ o ]ne or more computer-readable media having computer-
executable instructions embodied thereon for causing a computing device to
perform a method for automatically documenting a fluid balance event for a
patient," wherein the method includes, inter alia, the steps of
(a) "automatically and without user interaction extracting the fluid balance
event for a patient from clinical event documentation," and
(b) "automatically and without user interaction populating a database with
the fluid balance event and the impact value," as recited in claim 1?
23
Appeal2017-010276
Application 11/422,907
Analysis
The Examiner finds Schoenberg teaches or suggests limitations (a)
and (b) because Schoenberg teaches a medical information system that
receives patient information from a wide variety of sources, for example,
patient monitoring equipment. Non-Final Act. 6 (citing Schoenberg
Abstract, ,r,r 3, 9, 12, 18, 19, 41, and 47). The Examiner further relies upon
Mattson as teaching or suggesting fluid balance monitoring, i.e., evaluating a
fluid balance and an impact value for a fluid balance event for the patient, as
one type of patient monitoring incorporated into the teachings of
Schoenberg. Non-Final Act. 7 (citing Mattson ,r,r 7, 10, 378, and 4029).
Appellant contends "[t]here is no mention in Shoenberg [sic] of
populating any information related to a fluid balance event or the impact
value into the database" (Br. 19), and "Mattson merely makes references to
training modules involving 'Fluid Balance' that are often used to educate
dialysis patients." Id. "Appellant has found nothing in Mattson that teaches
an overall fluid balance as being a numerical measure of the net fluid intake
of a patient or teaching automatically and without user interaction updating
the overall fluid balance for the patient utilizing the impact value." Br. 20.
Appellant's contention does not persuade us of error on the part of the
Examiner because the Appellant is responding to the rejection by attacking
the references separately, even though the rejection is based on the
combined teachings of the references. N onobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
24
Appeal2017-010276
Application 11/422,907
Moreover, in response to Appellant's contentions, the Examiner finds,
"Mattson ... is in the field of Appellant's endeavor and/or is reasonably
pertinent to the particular problem with which Appellant is concerned ....
[because it] is directed to 'systems and methods for medical patients directed
to achieving desirable patient outcomes."' Ans. 6. The Examiner further
finds:
The ( training) systems and methods and/ or modules of Mattson
et al. would necessarily teach (a patient) that a fluid balance
event associated with an impact value impacts a patients [sic]
overall fluid balance, indicate ( to a patient) the magnitude of
influence that a particular fluid balance event has on a patient's
overall fluid balance, and teach (a patient) that one possible
impact value is a physical quantity associated with fluid intake
and output, and wherein the overall fluid balance is a numerical
measure of the net fluid intake of the patient , etc. as part of an
education system to produce desired outcomes for a patient.
The capabilities and teachings of the systems and methods of
Mattson et al. could easily and readably be combined with the
automated systems and methods of Schoenberg et al. by one of
reasonable skill in the art at the time of Appellant's invention
producing expected results.
Br. 7 ( emphases omitted).
The Examiner further finds (id.) motivation to combine Schoenberg
with Mattson in the manner suggested because the claimed invention is
merely a combination of old elements. See KSR Int 'l Co. v. Teleflex, Inc.,
550 U.S. 398 (2007). In KSR, the Court stated "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR, 550 U.S. at 416.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
25
Appeal2017-010276
Application 11/422,907
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill .... [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
We agree with the Examiner's findings and legal conclusions that the
combination of Schoenberg and Mattson teach or suggest the contested
limitations of representative claim 1. We further note Appellant does not
file a Reply Brief to rebut the Examiner's findings and legal conclusions.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
3. § 103(a) Rejection R2 of Claim 9
Issue 3
Appellant argues (Br. 21-22) the Examiner's rejection of claim 9
under 35 U.S.C. § 103(a) as being obvious over the combination of
Schoenberg and Mattson is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the media of claim 1, "wherein the method further comprises
determining the fluid balance event is a standard fluid balance event and
26
Appeal2017-010276
Application 11/422,907
wherein receiving the impact value includes receiving a standard impact
value from a database," as recited in claim 9 ( emphasis added)?
Analysis
Appellant's Specification discusses the concept of a "standard fluid
balance event" as follows:
The fluid balance events stored in database cluster 24 can
be standard fluid balance events, which have standard
associated impact values that are also stored in database cluster
24. For example, packed red blood cells (PRBCs) may come in
standard 125 mL bags. Thus, a standard fluid balance event of
transfusion of one 125 mL bag of PRBCs can have an
associated standard impact value of 125 mL of fluid intake.
Spec. ,r 24; and see Spec. ,r 38 for examples of "standard fluid balance
events." Appellant further points out, "[t]he Specification defines a standard
fluid balance event as a fluid balance event that has an associated standard
impact value. [ J For example, particular laboratory tests require a standard
quantity of blood or fluid taken, making those events standard output
events." Br. 21 ( citation omitted).
The Examiner generally cites to several portions of Schoenberg as
teaching or suggesting the contested limitation of claim 9. Non-Final Act. 9
(citing Schoenberg Abstract, ,r,r 3, 9, 12, 18, 19, 41, and 47).
However, we have searched the cited portion of Schoenberg, as well
as Schoenberg and Mattson in their entirety, and find no teaching or
suggestion of "determining the fluid balance event is a standard fluid
balance event and wherein receiving the impact value includes receiving a
standard impact value from a database" as recited in dependent claim 9.
27
Appeal2017-010276
Application 11/422,907
Based upon the findings above, on this record, we are persuaded of
error in the Examiner's reliance on the cited prior art combination to teach or
suggest the disputed limitation of claim 9 such that we do not sustain the
Examiner's obviousness rejection of dependent claim 9.
CONCLUSIONS
(1) Under the Revised Guidance and our governing case law, we do
not sustain Rejection RI of claims 1-17, 19-22, and 24--29 under 35 U.S.C.
§ 101.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1-8, 10-17, 19-22, and 24--29 under 35 U.S.C. § I03(a) over
the cited prior art combination of record, and we sustain the rejection.
(3) The Examiner erred with respect to obviousness Rejection R2
of claim 9 under 35 U.S.C. § I03(a), and we do not sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-8, 10-17,
19-22, and 24--29.
We reverse the Examiner's decision rejecting claim 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED-IN-PART
28