Ex Parte Eletreby et al

Patent Trial and Appeal Board

Aug 28, 2017

12324288 (P.T.A.B. Aug. 28, 2017)

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.
12/324,288 11/26/2008 Magdy A. ELETREBY CRNI. 144692 9355
46169 7590 08/30/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
SOREY, ROBERT A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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 MAGDY A. ELETREBY and MOHAMMED N. ELETREBY
Appeal 2016-005594
Application 12/324,2881
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and JOHN D. HAMANN,
Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—9, 19, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
THE CLAIMED INVENTION
Appellants’ claimed invention relates to health care management,
including providing comprehensive pharmaceutical care to patients. See
1 According to Appellants, the real party in interest is Cemer Innovation,
Incorporated. Br. 3.
Appeal 2016-005594
Application 12/324,288
Spec. 13. Claim 1 is illustrative of the subject matter of the appeal and is
reproduced below.
1. One or more non-transitory computer storage media
having computer-readable instructions embodied thereon, that,
when run by a computer, cause the computer to perform a method
of clinician disease management, the method comprising:
creating a current drug therapy plan for a patient using a
clinical database;
evaluating the current drug therapy plan with clinical
queries based on a relationship between (1) the current drug
therapy plan, (2) one or more medical conditions of the patient,
and (3) any existing disease states associated with the patient, the
clinical queries including a patient-based query, a disease-based
query, a drug-based query, a drug-class-based query, and an
adverse-reaction-based query,
(i) wherein the patient-based query is configured to, upon
selection of an identification of the patient and a disease state of
said patient, present one or more possible drug treatments for the
selected disease state of the patient and provide one or more
clinical alerts based on conflicts between each of the one or more
possible drug treatments and one or more co-existing conditions
of the patient,
(ii) wherein the disease-based query is configured to, upon
selection of an identification of a disease, present one or more
possible drug treatments for the disease and provide at least one
clinical alert due to hypothetical co-existing conditions not
attached to a specific patient,
(iii) wherein the drug-based query is configured to, upon
selection of an identification of a drug, present a set of
prescribing information associated with the drug,
(iv) wherein the drug-class-based query is configured to,
upon selection of an identification of a drug class, present a set
of comparative clinical information associated with one or more
drugs in the drug class, and
(v) wherein the adverse-reaction-based query is
configured to, upon selection of an identification of an adverse
reaction, present a set of reaction information associated with one
or more therapeutic classes of drugs;
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identifying and presenting problem areas of patient non-
compliance based on the evaluation of the current drug therapy
plan with the clinical queries;
receiving a selection of one of the problem areas of patient
non-compliance;
identifying and presenting actions for enhancing the
patient’s compliance;
receiving a selection of the actions that represent the
pharmacist intervention; and
constructing an optimization plan to optimize the current
drug therapy plan and enhance patient compliance.
REJECTION ON APPEAL
The Examiner rejected claims 1—9, 19, and 20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants.
We disagree with Appellants’ arguments and we incorporate herein
and adopt as our own the findings, conclusions, and reasons set forth by the
Examiner in the (1) February 3, 2015 Final Office Action (“Final Act.” 2—5)
and (2) February 25, 2016 Examiner’s Answer (“Ans.” 2—7). We highlight
and address, however, specific findings and arguments below for emphasis.
Appellants contend the Examiner improperly rejected claims 1—9, 19,
and 20 under 35 U.S.C. § 101. See Br. 7—15. As to the specific findings and
arguments we emphasized below, Appellants argue the rejected claims as a
group. Thus, we decide the appeal of the § 101 rejection on the basis of
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representative claim 1, and refer to the rejected claims collectively herein as
“the claims.” See 37 C.F.R. § 41.37(c)(l)(iv); In re King, 801 F.2d 1324,
1325 (Fed. Cir. 1986).
According to Appellants, the claims do not concern an abstract idea,
and even if they did, the claims would be patent eligible because the claims
amount to significantly more than an abstract idea. Br. 7—15. We find
Appellants’ arguments unpersuasive.
Section 101 of the Patent Act provides that “[wjhoever 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. The Supreme Court has explained that this
provision is subject to a long-standing, implicit exception: “[ljaws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014) (internal quotation
marks and citation omitted). The Court has set forth a two-part inquiry to
determine whether this exception applies. First, we must determine if the
claim at issue is directed to one of those patent-ineligible concepts. Alice,
134 S. Ct. at 2355. Second, if the claim is directed to one of those patent-
ineligible concepts, we must consider the elements of the claim “both
individually and as an ordered combination to determine whether the
additional elements transform the nature of the claim into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (internal quotation marks omitted)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
72 (2012)).
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(1) Abstract idea
We first consider whether the Examiner properly concluded that each
of the claims are directed to one or more abstract ideas. For example, the
Examiner concluded that each of the claims on appeal is:
directed toward [the] claimed abstract idea of (1) optimizing a
current drug therapy plan, which correlates to the court identified
abstract ideas of (A) comparing new and stored information and
using rules to identify options, and/or the court identified abstract
idea of (B) using a formula for updating alarm limits. While the
claims do not explicitly recite the court identified abstract ideas
(A) and/or (B), the concepts are described by the claimed
evaluating data (comparing new and stored information),
providing an alert (updating alarm limits), determining whether
intervention is necessary by comparing data (comparing new and
stored information), identifying actions (using rules to identify
options), and constructing the optimization plan (identified
options).
Ans. 3.
Appellants have not persuaded us that the Examiner erred. The
Federal Circuit has explained that the abstract-idea inquiry requires “looking
at the ‘focus’ of the claims, their ‘character as a whole’” to determine if the
claims are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Claim 1 recites “a method of
clinician disease management” that is embodied as computer readable
instructions on non-transitory computer storage media. Br. 16.
Appellants assert “that ‘optimizing a current drug therapy plan’ is not
like any of the . . . abstract idea examples associated with methods of
organizing human activities decided by the courts.” Br. 7—8 (citations
omitted). Appellants also argue “the Examiner has failed to look at the
combination of elements,” in that the Examiner “ignores many specific
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features recited in the claims” (e.g., “evaluating the current drug therapy
plan with clinical queries that include a patient-based query, a disease-based
query, a drug-based query, a drug class-based-query, and an adverse-
reaction-based query”). Br. 9.
We agree with the Examiner that the claims are directed to an abstract
idea of optimizing a plan, which includes comparing new and stored
information, updating limits, using rules to identify options, and reporting
same. In this regard, the claims of the instant application are similar to the
claims in Electric Power, which did “not go beyond requiring the collection,
analysis, and display of available information in a particular field, stating
those functions in general terms, without limiting them to technical means
for performing the functions that are arguably an advance over conventional
computer and network technology.” 830 F.3d at 1351. Specifically, our
reviewing Court held that “collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas” and that “analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category.” Id.
at 1353—54 (citations omitted).
As in Electric Power, the combination of various abstract ideas
relating to optimizing the plan is itself an abstract idea. This is sufficient to
establish that the claims are directed to an abstract idea. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (explaining that
when determining whether claims are directed to an abstract idea, “both this
court and the Supreme Court have found it sufficient to compare [the] claims
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at issue to those claims already found to be directed to an abstract idea in
previous cases”).
(2) Inventive concept
We next consider whether the Examiner correctly concluded the
claims do not include 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, 134 S. Ct. at 2355 (internal quotation marks omitted) (quoting
Mayo, Inc., 566 U.S. at 72—73). The Examiner explained:
The claimed additional elements such as “[o]ne or more
non-transitory computer storage media having computer-usable
instructions embodied thereon” are generic components that are
configured to perform activities that are well-understood,
routine, and conventional activities previously known to the
industry (e.g., evaluating data, providing an alert, determining
whether intervention is necessary by comparing data, identifying
actions, and constructing the optimization plan).
Ans. 5. The Examiner concluded that the “[t]he claimed elements do not
add meaningful limitations to the claims beyond generally] linking to a . . .
generic computer environment [ — ‘the claims do not address the
functioning of the computer itself]. Hence, [in] considering the additional
elements claimed individually, or as an ordered combination,” the claims do
not amount to significantly more than the abstract idea. Id.
Appellants argue the claims recite an inventive concept because the
claims:
include elements or computer functions that are not well-
understood, routine and conventional in the field, as evidenced
by the absence of prior-art-based rejections in the Final Office
Action mailed February 3, 2015. Thus, the claims have been
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found to be novel and nonobvious in view of the prior art, and as
such, necessarily include elements or computer functions that are
not well-understood, routine and conventional in the field,
because the prior art fails to teach the recited elements.
Br. 12. Appellants also argue the claims do not use a generic computer
because it is not capable of performing the claimed functions. Br. 13.
“Rather, the recited processor and memory must be programmed to perform
this specific function, making the computer a special-purpose computer that
is programmed in a special way.” Br. 13—14.
We agree with the Examiner that the claims do not amount to
significantly more than the abstract idea. Appellants’ reliance on the lack of
a prior art rejection is misplaced (i.e., a lack of an art rejection is not
persuasive evidence of novelty or non-obviousness), and fails to refute the
Examiner’s finding, with which we agree, that the claims “perform activities
that are well-understood, routine, and conventional activities previously
known to the industry,” rather than being an inventive concept. See
Ultramercial, 772 F.3d at 716 (internal quotation marks omitted) (quoting
Alice, 134 S. Ct. at 2357) (finding using known elements to perform
“conventional steps, specified at a high level of generality, which is
insufficient to supply an inventive concept”). Furthermore, the claims do
not specify a special purpose computer, but rather describe routine and
conventional steps to be carried out by a generic computer (i.e., “. . . ‘apply
it with a computer’”), and, thus, fail to provide an inventive concept. See
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332 (Fed. Cir.
2015) (quoting Alice, 134 S. Ct. at 2358) (finding an inventive concept
“requires more than simply stating an abstract idea while adding the words
‘apply it’ or ‘apply it with a computer’”). The fact that a generic computer
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requires relevant programming does not change the programmed generic
computer into a special purpose computer. See id.
We are also unpersuaded by Appellants’ argument (Br. 14—15) that
the claims pose no risk of preempting the abstract idea itself, and, thus,
provide an inventive concept. A lack of preemption does not make a claim
patent eligible. SeeAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362—63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
For the above reasons, we sustain the Examiner’s rejection of claims
1-9, 19, and 20 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s decision rejecting claims 1—9, 19, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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