Ex Parte Haskell et al

Patent Trial and Appeal Board

Mar 28, 2018

12433471 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/433,471 0413012009
46169 7590 03/30/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Robert Emmons Haskell
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.224497 9172
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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 ROBERT EMMONS HASKELL, CARMELA ANNE COUDERC,
SUSAN ANNETTE MATNEY, MARY ELLEN DLUGOS, and
REBECCA RAE DaDAMIO
Appeal2016-003471
Application 12/433,471 1
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-5 and 7-28. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Cemer Innovation,
Inc. (Appeal Br. 3.)
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Application 12/433,471
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates to "[a] processing device
implemented system [that] provides a plan of care for a patient." (Spec. p. 2,
1. 15.)
Claims 1, 16, and 2 8 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A processing device implemented system supporting
providing a plan of care for a patient, comprising:
at least one computer system comprising:
at least one repository comprising:
data representing a plurality of different non-
patient specific, clinical application independent,
disease non-specific, interdisciplinary plans of care,
each interdisciplinary plan of care having a plurality
of problems; and
clinical application specific selectable
attribute properties providing operating instruction
to a respective clinical application independent plan
of care application directing operation of the
clinical application independent plan of care
application for a specific clinical function;
a data processor configured to search data in said at
least one repository to: (i) identify one or more candidate
disease non-specific, interdisciplinary plans of care from
the plurality of disease non-specific, interdisciplinary
plans of care; and (ii) associate a selected plan of care with
at least one of said plurality of problems in response to
user entry of data identifying said at least one of said
plurality of problems by searching data in said at least one
repository for an identifier associated with said at least one
of said plurality of problems and employing the clinical
application specific attribute properties in adapting a
clinical application independent, disease non-specific,
interdisciplinary plan of care for a specific clinical
application;
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a display processor configured to generate display
data including said one or more candidate disease non-
specific, interdisciplinary plans of care, and
an edit processor configured to edit, responsive to
one or more editing user inputs, a template plan of care
accessed from said at least one repository to create a new
template plan of care for storage in said at least one
repository,
wherein said data processor searches data in said at
least one repository to identify the at least one of said
plurality of problems in response to user entered data
identifying an expected outcome of patient treatment
according to a plan of care, and
said edit processor is configured to edit, responsive
to the one or more editing user inputs, values representing
orders for treatment to be administered to a patient in said
template plan of care to create said new template plan of
care.
REJECTION
Claims 1-5 and 7-28 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347 (2014). Alice applies a two-step framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., 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, 134 S. Ct. at 2355.
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Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that "the independent claims are directed to developing care
plans, which is merely the mental process a physician should follow when
developing a plan of care for a patient, which is merely an abstract idea of a
method of organizing human activities." (Answer 4.) More specifically, the
Examiner determines that
[ t ]he independent claims are directed to a system that searches
data in various repository [sic] to identify a candidate plan of care
that has a plurality of problems, identify one of said plurality of
problems in response to user input of data, associate a selected
plan of care with at least one of said plurality of problems
utilizing data from the repositories, display the candidate plan of
care, and provide editing functionality of a template plan of care
and values input into the template plan of care.
(Id. at 3--4.)
Appellants disagree and argue that the claim
limitations include a data processor that searches data to identify
one or more candidate disease non-specific, interdisciplinary
plans of care from a plurality of disease non-specific
interdisciplinary plans of care and associates a selected plan of
care with at least one of said plurality of problems in response to
user entry of data identifying at least one of the problems by
searching the repository for an identifier associated with said at
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Application 12/433,471
least one of said plurality of problems and employing the clinical
application specific attribute properties in adapting a clinical
application independent, disease non-specific, interdisciplinary
plan of care for a specific clinical application.
(Appeal Br. 9.)
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)).
Thus, although we consider the claim as a whole, the "directed to" inquiry
focuses on the claim's "character as a whole."
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to "[a] processing device implemented system [that] provides a plan of care
for a patient." (Spec. p. 2, 1. 15.) Claim 1 recites "[a] ... system ...
comprising: ... at least one repository comprising: data," "a data processor
configured to search data in said at least one repository to: (i) identify one
or more candidate disease ... plans of care; and (ii) associate a selected plan
of care with at least one of said plurality of problems in response to user
entry of data identifying said ... problems," "a display processor configured
to generate display data including ... plans of care," and "an edit processor
configured to edit ... a template plan of care accessed from said ...
repository to create a new template plan of care," "wherein said data
processor searches data in said at least one repository," "and said edit
processor is configured to edit ... values representing orders for treatment
" (Claim 1.)
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Without the processor elements, nothing remains in the claim but the
abstract idea of searching in "at least one repository to: (i) identify one or
more candidate disease ... plans of care," "(ii) associate a selected plan of
care with at least one of said plurality of problems in response to user"
identified problems, "display ... plans of care," and edit "a template plan of
care accessed from said ... repository to create a new template plan of
care." As in Alice, we need not labor to delimit the precise contours of the
"abstract idea" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
"collecting information, including when limited to particular content (which
does not change its character as information)," "analyzing information by
steps people go through in their minds, or by mathematical algorithms," and
"presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation)," Elec. Power Grp., 830 F.3d at 1353-54, and the concept of
identifying/collecting plans of care, associating/analyzing a plan of care with
user identified problems, and displaying/presenting the results. The
additional step of allowing a user to edit and input a new template plan of
care does not change our analysis.
Although we describe what the claims are directed to at a different
level of abstraction than the Examiner and the Appellants, we note that "[a Jn
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016).
However, that need not and, in this case does not, "impact the patentability
analysis." See id. at 1241.
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Appellants further argue that the claims are not directed to an abstract
idea because "the claims do not seek to preempt others from generating
interdisciplinary care plans." (Appeal Br. 13.) Preemption, however, is not
a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
"significantly more" to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73].
CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), aff'd, 134 S. Ct. 2347 (2014). Moreover,
"[ w ]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, "preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
In view of the above, we are not persuaded that the Examiner erred in
determining that claim 1 is directed to an abstract idea.
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
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than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 72-73).
The introduction of a computer or processor into the claim does not
alter the analysis at step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it' " is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea " 'to a particular technological environment.' "
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer implementation
is not generally the sort of "additional featur[ e ]" that provides
any "practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself."
Id. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 2359. They do not.
Appellants argue that "the claims, as a whole, are 'necessarily rooted'
in and address a technological challenge 'confined to a computer
technology."' (Appeal Br. 13, citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014).) Specifically, Appellants argue that
"the claims address the technological challenge of not being able to easily
share data across systems that do not use common and semantically
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consistent definitions, and not promoting consistent data usage across a
healthcare enterprise or different enterprises." (Id.)
As an initial matter, we note that Appellants' argument is not
commensurate with the scope of claim 1 and thus, we do find it persuasive
of error. We also do not find this argument persuasive of error because,
unlike the claims here, the claims in DDR Holdings "specify how
interactions with the Internet are manipulated to yield a desired result - a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink." DDR Holdings, 773 F.3d
at 1258 (emphasis added). In other words, the invention claimed in DDR
Holdings does more than "simply instruct the practitioner to implement the
abstract idea with routine, conventional activity." See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also DDR Holdings, 773
F.3d at 1259.
Here, taking the claim elements separately, the function performed by
the processor at each step is purely conventional. Collecting, analyzing, and
presenting information are basic computer functions. Moreover, the
Specification discloses that the invention can be implemented using generic
computer components. (See, e.g., Spec. p. 7, 1. 1-p. 11, 1. 21.) In short, each
step does no more than require a generic processor to perform routine
processing functions.
Considered as an ordered combination, the processing components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The claims do not, for example, purport to
improve the functioning of the processor itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
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at issue amount to nothing significantly more than an instruction to apply the
abstract idea using generic processing circuitry. That is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360.
Appellants further argue that "the claims of the present Application
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 .... " (Appeal Br. 16-17.) "The 'novelty' of any element or steps
in a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981 ). Thus, in this case, we do not find the evidence of an absence of a
prior art rejection to be persuasive of error.
Nor do we find persuasive of error Appellants' argument that the
computer function is not routine or conventional because "the recited
processors must be programmed to perform the specific functions." (Appeal
Br. 17-18.) "These claims in substance [are] directed to nothing more than
the performance of an abstract business practice ... using a conventional
computer. Such claims are not patent-eligible." DDR Holdings, 773 F.3d
1245, 1256 (Fed. Cir. 2014).
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under§ 101. Claims 2-5 and 7-28 are not separately
argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
The Examiner's rejection of claims 1-5 and 7-28 under 35 U.S.C.
§ 101 is affirmed.
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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