Ex Parte Fewins et al

Patent Trial and Appeal Board

Mar 28, 2017

13569976 (P.T.A.B. Mar. 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.
13/569,976 08/08/2012 JON FEWINS CRNI. 169962 8390
46169 7590 03/30/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
BARRETT, RYAN S
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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 JON FEWINS, RYAN MOOG,
MARSHA LAIRD-MADDOX,
TODD JEFFREY REYNOLDS, BRADY TIMMERBERG,
and
NITISH AMRAJI
Appeal 2016-008655
Application 13/5 69,9761
Technology Center 2100
Before CARLA M. KRIVAK, HUNG H. BUI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Cemer Innovation, Inc. App. Br.
3.
Appeal 2016-008655
Application 13/569,976
Claimed Subject Matter
The claimed invention relates to “[sjystems, methods, computer-
readable media, and graphical user interfaces for facilitating integrated data
capture with an item group key” and populating case report forms with data
from an electronic medical record (EMR). Abstract.
Independent claims 1 and 18, reproduced below, illustrate the subject
matter on appeal.
1. A computer storage device having computer-executable
instructions embodied thereon, that when executed by one or
more computing devices, cause the one or more computing
devices to perform a method for facilitating integrated data
capture utilizing an item group key, the method comprising:
initiating an integrated data capture workflow from within
an Electronic Medical Record (EMR);
receiving from a user a selection of a group of items from
the EMR, wherein the group of items includes at least one item
indicative of the uniqueness of the group, and at least one item
which varies within the unique group;
assigning an item group key to at least one item of the
group of items which varies within the unique group, wherein the
item group key maintains congruity between the at least one item
which varies within the unique group and the data associated
with the at least one item which varies within the unique group;
gathering available data associated with the item group
key from the EMR;
receiving from a user a selection of available data to
include in a case report form; and
populating the case report form with the selection of
available data and associated with the item group key.
18. A computer storage device having computer-executable
instructions embodied thereon that, when executed, produce a
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graphical user interface (GUI) to facilitate integrated data capture
utilizing an item group key, the GUI comprising:
a workflow display area configured to display an
integrated data capture workflow;
an item group key display area configured to display a
group of items that are available to be selected as an item group
key;
an indicator display area configured to display an indicator
if alternate results for the item group key are available; and
an alternate results display area configured to display a
closed menu of the alternate results for the item group key.
Examiner’s Rejections and References
(1) Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 2—A.
(2) Claims 18—20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Doherty et al. (US 2004/0220836 Al; Nov. 4, 2004)
(“Doherty”). Final Act. 4—5.
(3) Claims 1—17 stand rejected under 35 U.S.C. § 103(a) as obvious
over Doherty and Patwardhan et al. (US 2009/0281835 Al; Nov. 12, 2009)
(“Patwardhan”). Final Act. 6—12.
ANALYSIS
Rejection under 35 U.S.C. § 101
Appellants argue claims 1—20 as a group. We select claim 1 as
representative. The remaining claims stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 1 recites a computer storage device having computer-
executable instructions that perform a method for facilitating integrated data
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capture utilizing an item group key, the method comprising six steps: (1)
initiating an integrated data capture workflow from within an Electronic
Medical Record (EMR); (2) receiving from a user a selection of a group of
items from the EMR; (3) assigning an item group key to at least one item of
the group of items; (4) gathering available data associated with the item
group key from the EMR; (5) receiving from a user a selection of available
data to include in a case report form; and (6) populating the case report form
with the selection of available data and associated with the item group key.
The six steps result in a case report form that is populated with data from the
EMR.
Appellants argue the Examiner erred in rejecting the claims under
35 U.S.C. § 101 because the Examiner failed to provide a “rationale for
characterizing the claims as directed to ‘medical bookkeeping’,’’ and
because “‘medical bookkeeping’ is not a recognized abstract idea within the
meaning of 35 U.S.C. § 101.” App. Br. 6 (citing 2014 Interim Guidance on
Patent Subject Eligibility, 79 Fed. Reg. 74618, 74622 (Dec. 16, 2014); July
2015 Update: Subject Matter Eligibility, 80 Fed. Reg. 45429 (July 30,
2015)); see also Reply Br. 2—4. In this regard, Appellants dispute the
Examiner’s characterization of the claims as being directed to the abstract
idea of “medical bookkeeping,” because (1) the claims do not recite this
language, (2) the Specification does not discuss “medical bookkeeping,” and
(3) the Examiner provides “no explanation of why the claims set forth or
describe ‘medical bookkeeping.’” App. Br. 6—7.
Appellants also assert the claims are not directed to an abstract idea or
a mental process because (1) the claims require “the one or more computing
devices to perform a method for facilitating integrated data capture utilizing
an item group key,” and (2) “it is not a normal mental process to assign an
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item group key to at least one item of [a] group of items ... the item group
key maintain[ing] congruity.” Reply Br. 3^4. We are not persuaded by
Appellants’ arguments.
In support of the § 101 rejection of claims 1—20, the Examiner finds
“the claims are directed to the abstract idea of medical bookkeeping, a
method of organizing human activity.” Final Act. 4; see also Ans. 3^4. The
Examiner reasons that “medical bookkeeping” is a proper characterization of
claim 1 because the claim is directed to populating a case report form with
data from an Electronic Medical Record (EMR), and Appellants’
Specification and Drawings are concerned with data capture in an EMR.
Ans. 3 (citing Spec. Figs. 7—15). We find no reversible error with the
Examiner’s findings and agree with the Examiner that claim 1 is directed to
an abstract idea.
Title 35 U.S.C. § 101 provides that a new and useful “process,
machine, manufacture, or composition of matter” is eligible for patent
protection. The Supreme Court has made clear that the test for patent
eligibility under Section 101 is not amenable to bright-line categorical rules.
See Bilski v. Kappos, 130 S. Ct. 3218, 3229-30 (2010). There are, however,
three judicially-created exceptions to the broad categories of patent-eligible
subject matter in § 101: laws of nature, natural phenomena, and abstract
ideas. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70 (2012).
In Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014), the Supreme Court applies Mayo’s “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of these
concepts.” Alice, 134 S. Ct. at 2355. The first step is to “determine whether
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the claims at issue are directed to one of those patent-ineligible concepts,”
such as an abstract idea. Id. If the claims are directed to a patent-ineligible
concept, the second step in the analysis is to “consider the elements of each
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.” Id. (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to “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.’” Id. (quotingMayo, 566 U.S. at 72—73)
(alteration in original).
Examining the claims as a whole, and using claim 1 as representative,
we agree with the Examiner’s finding that the claimed method of populating
a case report form with data from an EMR is a method of organizing human
activity and is, therefore, an abstract idea, because the finding is supported
by the language of the claim itself. Under Alice, abstract ideas embrace
“fundamental economic practice[s] long prevalent in our system of
commerce,” (quoting Bilski, 561 U.S. at 611), including “longstanding
commercial practice[s]” and “method[s] of organizing human activity.”
Alice, 134 S. Ct. at 2356.
Here, claim 1 recites “facilitating integrated data capture utilizing an
item group key” by “assigning an item group key to at least one item of the
group of items,” “gathering available data associated with the item group
key from the EMR,” and “populating the case report form with the selection
of available data and associated with the item group key” from the EMR.
The steps of claim 1 are directed to “organizing of human activity,” that is,
the activities associated with managing medical records and obtaining
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medical case reports—all mental exercises. Appellants have not
persuasively rebutted the Examiner’s findings and have not explained why
the use of the claimed “item group key” is not a mental process or a method
of organizing human activity. For example, Appellants do not contend that
the claims are directed to an improvement in any technology or technical
field; rather, Appellants argue only that using or assigning an item group key
is not an abstract idea or metal process. Reply Br. 3^4. However, the claims
and the Specification do not define the “item group key.” Rather, the
Specification provides discussion of non-limiting examples of “item group
keys,” which do not preclude the item group key assignment from being
performed mentally or without a computer. See Spec. ]Hf 36, 64.
Under step two of the Alice framework, we agree with and adopt the
Examiner’s findings on page 4 of the Answer. We determine that the
additional limitations, taken individually and as a whole in the ordered
combination, do not add significantly more than the abstract idea or
transform the abstract idea into patentable subject matter. Particularly, the
claims “do not include additional elements that are sufficient to amount to
significantly more than the abstract idea as they are seen to be mere
instructions to implement the abstract idea on a computer.” Ans. 4.
Appellants’ sole rebuttal of the Examiner’s findings relies on the claimed
item group key. Reply Br. 3^4. However, as discussed supra, we are not
persuaded that the item group key is not an abstraction that can be mentally
assigned to data.
We, therefore, sustain the rejection under 35 U.S.C. § 101 of claims
1-20.
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Rejection of Claims 18—20 under 35 U.S.C. § 102(b)
Appellants contend Doherty fails to teach “an item group key display
area configured to display a group of items that are available to be selected
as an item group key,” as recited in claim 18. App. Br. 8—12 (citing Doherty
1 66, Fig. 3); Reply Br. 4—5. In particular, Appellants argue that “[w]hen
‘item group key’ is properly interpreted consistent with the use of the phrase
in the specification, Doherty does not teach an item group key.” App. Br.
11—12 (citing Spec. Tflf 9, 36, 45).
The Examiner finds and we agree, Doherty discloses an
identification/selection of a database subset, which is commensurate with the
term “item group key” as claimed. Ans. 5 (citing Doherty Fig. 3); Final Act.
2. The Examiner finds Doherty’s user command identifies a subset of
records in a database, in order to access electronic patient healthcare record
processing information in the database as illustrated in Doherty’s Figure 3,
step 3300. Ans. 5; Final Act. 5; see also Doherty | 62 (describing data
derived in response to a user command, the data indicating a first number of
electronic patient healthcare records selected based on events occurring
during a predetermined time period). Appellants do not persuasively explain
why the claimed “item group key” is different from Doherty’s identification
of a database subset.
Appellants rely on paragraphs 63 and 64 of their Specification for
disclosing an “item group key” is assigned to at least one item of a group of
items representing data to be populated from an EMR into a case report
form, and contend their Specification “makes clear that assigning the item
group key is separate from selecting a subset of data” as taught by Doherty.
Reply Br. 5 (citing Spec. 63—64). These paragraphs in Appellants’
Specification, however, describe gathering from the EMR “available data
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associated with the item group key,” not unlike Doherty’s records’ data
identification based on criteria (e.g., predetermined time period criteria).
See Spec. 1 64; Doherty || 61—62, 66, Fig. 3. Appellants have not provided
sufficient evidence or reasoning to persuade us that Doherty’s selection of a
database subset is different from data capture using the claimed “item group
key,” particularly, as Appellants’ claim 18 is broad and does not recite the
argued “assigning the item group key is separate from selecting a subset of
data” (see Reply Br. 5).
In light of the broad terms recited in claim 18, Appellants have failed
to clearly distinguish their claimed invention over Doherty. Thus, we
sustain the rejection of claim 18 under 35 U.S.C. § 102(b) as anticipated by
Doherty.2 For the same reasons, we also sustain the rejection of dependent
2 In the event of further prosecution, we recommend the Examiner consider
whether the disputed limitations of claim 18 are directed to non-functional
descriptive material, which are not given patentable weight. We note that
claim 18 recites only a graphical user interface (GUI) provided with several
display areas for displaying different types of information, but none of the
information is used to provide any new and unobvious functional
relationship relative to the GUI or any storage device. As such, the
Examiner need not give patentable weight to descriptive material absent a
new and unobvious functional relationship between the descriptive material
and the substrate. See, e.g., In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); In reNgai, 367
F.3d 1336, 1338 (Fed. Cir. 2004); see also Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative) (“[Nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art.”), affd, 191 Fed. Appx. 959 (Fed. Cir.
2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (“Nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious.”), affd,
No. 06-1003 (Fed. Cir. 2006) (Rule 36).
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claims 19 and 20, which are not argued separately with particularity. App.
Br. 12.
Rejection of Claims 1—17 under 35 U.S.C. § 103(a)
Appellants argue Doherty and Patwardhan fail to teach or suggest an
item group key, and assigning an item group key to at least one item of the
group of items which varies within the unique group, wherein the item group
key maintains congruity between the at least one item which varies within
the unique group and the data associated with the at least one item which
varies within the unique group, as recited in claim 1. App. Br. 12—15; Reply
Br. 6—7. Appellants contend “the cited paragraphs of Doherty do not teach
or suggest an item group key,” and the cited portion of Patwardhan merely
“references a drop-down menu with sub-menus” without any “indication of
an assignment of an item group key, as that term is used in the specification,
or that an item group key maintains congruity” as claimed. App. Br. 13—14;
see also Reply Br. 7. We do not agree.
Rather, we agree with the Examiner that Patwardhan’s Figure 3
discloses the claimed item group key as the patient’s name, the claimed item
which varies within a unique group as the patient’s diagnosis criteria within
the illustrated group of data fields, and the claimed data associated with the
item which varies as the patient’s diagnosis classification. Ans. 6 (citing
Patwardhan Fig. 3, patient’s name at input box 31, patient’s diagnosis
criteria at input box 41, patient’s diagnosis classification at input boxes 42—
43). As further recognized by the Examiner, Patwardhan’s patient name
(item group key) “maintains congruity between the diagnosis criteria and the
diagnosis classification” to avoid medical record mix-ups. Ans. 6 (emphasis
added).
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Appellants respond that Patwardhan’s patient name cannot be the
claimed item group key because the patient name does not maintain
congruity between the patient’s diagnosis criteria and the patient’s diagnosis
classification. Reply Br. 6—7. Particularly, Appellants argue Patwardhan’s
patient name does not maintain the claimed congruity because “mismatched
diagnostic criteria and diagnostic classifications could occur within a single
patient’s medical record.” Reply Br. 7. Appellants’ argument is not
commensurate with the scope of claim 1, as the claim does not specify that
such mismatch (i.e., between the item which varies and the data associated
with the item which varies) cannot occur within the unique group whose
item group key maintains congruity.
Further, Appellants’ Specification describes “congruity” as joining
patient record fields based on date or time frame to prevent mix and match
results from different fields in the EMR. See Spec. ]Hf 34, 63. Patwardhan’s
patient’s name similarly prevents mixing data between patients because the
patient’s name (e.g., Myra Smith in Patwardhan’s Fig. 3) associates Myra’s
diagnosis criteria (pathological) with the correct diagnosis classification
(cardiovascular system hypertension) for Myra. Thus, Patwardhan’s
recording of patient information by patient’s name is commensurate with the
broad description of the item group key maintaining congruity in Appellants’
Specification.
We also are not persuaded by Appellants’ argument that there is no
reason to combine Doherty and Patwardhan because Doherty “would not
seem to require or benefit from the use of an item group key that maintains
congruity.” App. Br. 14—15 (citing Doherty | 62). The Examiner articulates
a reason with “a rational underpinning” for combining Doherty’s patient
healthcare report customization with Patwardhan’s individualized medical
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prescription scheduler, namely to accurately populate a patient’s report with
a selected subset of data and maintain compliance with medical information
handling rules (e.g., HIPAA legislation). Ans. 7 (citing Doherty 149); Final
Act. 7—8; see also Doherty | 62. We agree with the Examiner’s reasoning.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) over Doherty and Patwardhan. Thus, we
sustain the rejection of claim 1, and, for the same reasons, the rejection of
claims 2—13, which are not argued separately. App. Br. 15. For the same
reasons, we sustain the rejection of independent claim 14 argued for
substantially the same reasons as claim 1, and its dependent claims 15—17
not separately argued. App. Br. 12, 15.
DECISION
We affirm the Examiner’s decision rejecting claims 1—20 under 35
U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 18—20 under 35
U.S.C. § 102(b).
We affirm the Examiner’s decision rejecting claims 1—17 under
35 U.S.C. § 103(a).
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)(l)(iv).
AFFIRMED
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