Ex Parte Keen et al

Patent Trial and Appeal Board

Dec 10, 2018

12014758 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/014,758 01/15/2008
141363 7590 12/12/2018
LOZA & LOZA, LLP/Allscripts
Peter Zura, Esq.
305 N. Second Avenue #127
Upland, CA 91786-6064
FIRST NAMED INVENTOR
Ronald Keen
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.
ALLS-1034 1150
EXAMINER
GORT, ELAINE L
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
docketing@lozaip.com
peter@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte RONALD KEEN, THOMAS BISSONETTE, and
STANLEY CRANE 1
Appeal2017---010694
Application 12/014,758
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, 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 Final
Rejection of claims 22, 24, 25, 27-29, 31, 32 and 36-40, which are all
claims pending in the application. Appellants have canceled claims 23, 25,
26, 30, and 33-35. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE the rejection of claims 22, 24, 25, 27-29, 31, 32, and
36-40 and pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a
new ground of rejection for these claims.
1 According to Appellants, the real party in interest is Allscripts Healthcare
Solutions, Inc. App. Br. 3.
Appeal2017---010694
Application 12/014,758
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
"the field of electronic health records. In particular, the present invention is
directed to a universal application integrator for automatically populating an
electronic health record, and driving workflow automation to and from
multiple clinical applications and devices that interface with the patient."
Spec. ,r 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to indicate hybrid nature of claim):
1. A networked electronic health record (EHR)
computer system enabling electronic access to patient data of
electronic health records (EHRs) by patient care devices
(PCDs ), services, and applications, the system comprising:
(I) a plurality of PCDs each comprising one or more
sensors for measuring one or more vital statistics of a patient,
each PCD being configured to obtain patient diagnostic data in
the form of one or more measurements for a patient captured
utilizing its one or more sensors;
(II) one or more computer readable media containing
(a) an EHR database, which stores EHRs for a
plurality of patients;
(b) an EHR module, which,
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed April
21, 2017); Reply Brief ("Reply Br.," filed Aug. 16, 2017); Examiner's
Answer ("Ans.," mailed June 16, 2017); Final Office Action ("Final Act.,"
mailed Oct. 18, 2016); and the original Specification ("Spec.," filed Jan. 15,
2008).
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(i) reads patient data from and writes patient
data to EHRs in the EHR database, and
(ii) provides access to patient data of EHRs by
client computers for accessing EHRs by
users;
( c) a device interface module which is configured to
(i) receive, from the plurality of PCDs in
different respective formats, patient
diagnostic data, and
(ii) standardize the received patient diagnostic
data to a format of the EHRs stored in the
EHR database;
( d) a context manager, which provides context
information to and receives context information from each
of the plurality of PCDs, applications, and services, wherein
the determination of context for a particular communication
is based at least in part on the respective PCD, respective
application, or respective service of the communication;
( e) a service module, which provides information to
each of a plurality of services for supporting performance of
the respective service, the information provided to a
particular service being in a format usable by the service;
(f) an application module, which,
(i) electronically provides patient data from the
EHRs to each of a plurality of applications,
the patient data electronically provided to a
particular application being in a format that
usable by the application, and
(ii) receives patient data from each of the
plurality of applications for saving in the
EHRs of the EHR computer system; and
(g) a user interface module, which enables
configuration of the networked EHR computer system by a
user;
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Application 12/014,758
(III) wherein the system is configured for performance
of a method comprising
(a) receiving, at a first PCD of the plurality of PCDs, a
first instance of context information provided by the context
manager, the first instance of context information
comprising at least one of patient bibliographic data,
procedure codes, and billing information for a particular
patient;
(b) automatically configuring the first PCD utilizing
the received first instance of context information;
( c) obtaining, by the configured first PCD, patient
diagnostic data for the particular patient;
( d) receiving, at the device interface module, the
obtained patient diagnostic data, and saving, in a respective
EHR for the particular patient that is stored in the EHR
database, by writing of the patient diagnostic data by the
EHR module to the respective EHR for the particular
patient; and
( e) setting a flag indicating that the EHR of the
particular patient has been updated by patient data;
(IV) wherein the device interface module comprises an
application driver layer or framework that enables a
standardized method for integrating data from a plurality of
PCDs into an EHR;
whereby the automatic saving of patient diagnostic data
from PCDs and patient data from applications enables health
care providers to access current information when making
diagnoses and treatment decisions for patients, and whereby
services are timely performed based on information provided by
the service module.
Rejection on Appeal
Claims 22, 24, 25, 27-29, 31, 32, and 36-40 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2.
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Application 12/014,758
ISSUE
Appellants argue (App. Br. 8-20; Reply Br. 2--4) 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 our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to the rejected claims for the specific reasons discussed below. We highlight
and address specific findings and arguments for emphasis as follows.
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
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technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice Corp., 134 S. Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice Corp., 134 S. Ct. at 2354 (internal quotation marks,
citation, and bracket omitted). First, we "determine whether the claims at
issue are directed to [a] patent-ineligible concept[]." Id. at 2355. Ifso, we
"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." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79).
Although the two steps of the Alice framework are related, the "Supreme
Court's formulation makes clear that the first-stage filter is a meaningful one,
sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court
"has not established a definitive rule to determine what constitutes an
'abstract idea"' for the purposes of step one. Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct at 2357).
Regarding the first step of the Alice analysis the Examiner concludes
the rejected claims are all directed to an abstract idea. Final Act. 2. The
Examiner specifically concludes claim 22 is directed to an abstract idea
because
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(1) it is analogous to the court-defined abstract idea in
SmartGene in that it compares new ( context information and
patient diagnostic data) and stored (patient data in EHR)
information and uses rules () to identify options setting flag for
updated information.
(2) it is analogous to the court-defined abstract idea in
Cyberfone in that it uses categories ( context information and
patient diagnostic data) to organize, store, and transmit
information.
Final Act. 3.
The Examiner further concludes the steps of claim 22 "correspond[] to
concepts identified as abstract ideas by the courts, such as 'Fundamental
economic practices, certain method of organizing human activates, an idea
of itself and/ or Mathematical relationships/formulas,' as referenced in Alice
Corp." Ans. 4.
Even assuming the Examiner were correct in the conclusion that
claim 22 is directed to an abstract idea, and if we were to agree that claim 22
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea (See Elec. Power Grp., 830 F.3d at 1354), we find Appellants raise a
dispositive issue under our governing case law regarding step two of the
Alice analysis.
Regarding the second step of the Alice analysis, the Examiner finds
the claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception, because:
When viewed as a whole, the claims do not include additional
limitations that are sufficient to amount to significantly more
than the judicial exception because the claims recite processes
that are routine and well-understood in the art of healthcare
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communication systems and simply implement the process or
processes on a computer(s), which is not enough to qualify as
"significantly more" as described herein.
Final Act. 3--4
The Examiner also finds: "Therefore, the PCDs in combination with
the other recited structure does not result in significantly more; and B)
functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry (i.e., configuring, receiving,
setting etc.)." Final Act. 5 (emphasis added).
Appellants argue:
[T]he Examiner has offered no evidence that these features are
indeed conventional. Applicant notes in this regard that
although a judge or jury acting as trier of fact may be able to
hold activities as routine and conventional without offering any
evidence, there is a large difference between a judge or jury
acting as a trier of fact, and a patent examiner who also acts as a
party with a burden of establishing a prima facie case of patent
ineligibility.
App. Br. 12.
Appellants further argue "The Examiner has not only offered no
evidence that these additional features are conventional, but has in fact
acknowledged that claim 22 is patentable over the known prior art." App.
Br. 13.
According to the Federal Circuit, " [ w ]hether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination." See Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018) (emphasis added). Responsive to the
Berkheimer decision, we reproduce below the mandatory changes to
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examination practice, as set forth in the April 19, 2018 USPTO Berkheimer
Memorandum (3--4):
A. Formulating Rejections: In a step 2B analysis, an additional
element ( or combination of elements) is not well-understood, routine or
conventional unless the examiner finds, 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). A
specification demonstrates the well-understood, routine,
conventional nature of additional elements when it
describes the additional elements as well-understood or
routine or conventional ( or an equivalent term), as a
commercially available product, or in a manner that
indicates that the additional elements are sufficiently
well-known that the specification does not need to
describe the particulars of such additional elements to
satisfy 35 U.S.C. § 112(a). A finding that an element is
well-understood, routine, or conventional cannot be
based only on the fact that the specification is silent with
respect to describing such element.
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). An appropriate publication could include a
book, manual, review article, or other source that
describes the state of the art and discusses what is well-
known and in common use in the relevant industry. It
does not include all items that might otherwise qualify as
a "printed publication" as used in 35 U.S.C. § 102.[]
Whether something is disclosed in a document that is
considered a "printed publication" under 35 U.S.C. § 102
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is a distinct inquiry from whether something is well-
known, routine, conventional activity. A document may
be a printed publication but still fail to establish that
something it describes is well-understood, routine,
conventional activity. See Exergen Corp., 2018 WL
1193529, at *4 (the single copy of a thesis written in
German and located in a German university library
considered to be a "printed publication" in Hall "would
not suffice to establish that something is 'well-
understood, routine, and conventional activity previously
engaged in by scientists who work in the field"'). The
nature of the publication and the description of the
additional elements in the publication would need to
demonstrate that the additional elements are widely
prevalent or in common use in the relevant field,
comparable to the types of activity or elements that are so
well-known that they do not need to be described in
detail in a patent application to satisfy 35 U.S.C.
§ 112(a). For example, while U.S. patents and published
applications are publications, merely finding the
additional element in a single patent or published
application would not be sufficient to demonstrate that
the additional element is well-understood, routine,
conventional, unless the patent or published application
demonstrates that the additional element are widely
prevalent or in common use in the relevant field.
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s). This option should be used only
when the examiner is certain, based upon his or her
personal knowledge, that the additional element( s)
represents well-understood, routine, conventional activity
engaged in by those in the relevant art, in that the
additional elements are widely prevalent or in common
use in the relevant field, comparable to the types of
activity or elements that are so well-known that they do
not need to be described in detail in a patent application
to satisfy 35 U.S.C. § 112(a). Procedures for taking
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official notice and addressing an applicant's challenge to
official notice are discussed in MPEP § 2144.03.
Based upon our review of the record, and as guided by the mandatory
changes to patent examination practice, as set forth in the April 19, 2018
USPTO Berkheimer Memorandum, we are persuaded by and agree with
Appellants argument that the Examiner has not set forth a sufficient
evidentiary basis to find the additional element ( or combination of elements)
of claim 22 is/are well-understood, routine, or conventional.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claims 22, 24, 25, 27-29, 31, 32 and 36-40 under 35
U.S.C. § 101, as being directed to patent-ineligible subject matter.
NEW GROUND OF REJECTION
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter a new
ground of rejection of claims 22, 24, 25, 27-29, 31, 32 and 36-40 under 35
U.S.C. § 112(b), as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.
We conclude the scope of claim 22 is indefinite because it is a hybrid
claim, which recites both a computer system and steps performed by a user
of the system. See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d
1377, 1384 (Fed. Cir. 2005) (a claim reciting both a system and a method for
using that system held indefinite). "A single claim which claims both an
apparatus and the method steps of using the apparatus is indefinite under 35
U.S.C. § 112, second paragraph." Manual of Patent Examining Procedure
(hereinafter "MPEP") § 2173.05(p)(II) (9th ed. 2018).
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Consequently, we enter a new ground of rejection under 35 U.S.C.
§ 112(b) for indefiniteness for independent claim 22 and claims 24, 25, 27-
29, 31, 32 and 36-40, which depend therefrom and inherit the same
deficiencies as their base claim.
CONCLUSION
The Examiner erred with respect to patent-ineligible subject matter
Rejection of claims 22, 24, 25, 27-29, 31, 32 and 36-40 under 35 U.S.C.
§ 101, and we reverse the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 22, 24, 25, 27-
29, 31, 32 and 36-40.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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). See 37
C.F.R. § 41.50(±).
REVERSED
37 C.F.R. § 4I.50(b)
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