Ex Parte McLaren et al

Patent Trial and Appeal Board

Aug 31, 2017

13708725 (P.T.A.B. Aug. 31, 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.
13/708,725 12/07/2012 Jeffrey Lee McLaren 080415.0115 4570
5073 7590 09/05/2017
RAKFR ROTTST T P
EXAMINER
2001 ROSS AVENUE PAULS, JOHN A
SUITE 700
DALLAS, TX 75201-2980 ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
ptomaill @bakerbotts.com
ptomai!2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY LEE McLAREN and WILLIAM DYER RODES II
Appeal 2016-000738
Application 13/708,7251
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1,2, 5—13, 16—24, and 27—33.2 3We
have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Medaxion LLC.
(Appeal Br. 3.)
2 In several locations in the Final Action, the Examiner refers to claims “1,
2, 5—13, 16—23, and 26—33” as pending or rejected. (See, e.g., Final Action
3, 4.) Because claims 1, 2, 5—13, 16—24, and 27—33 are pending (see id.
at 1), we treat references in the Final Action to claims “1,2, 5—13, 16—23,
and 26—33” as typographical errors and that these references should recite
claims “1, 2, 5—13, 16—24, and 27—33.” Appellants appear to have also
recognized these as typographical errors. (See Appeal Br. 10.)
Appeal 2016-000738
Application 13/708,725
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “relates generally to managing medical
data, and more specifically to managing medical records and charts for one
or more medical practices.” (Spec. 1,11. 8—10.)
Claims 1, 12, and 23 are the independent claims on appeal. Claim 12
is illustrative. It recites:
12. A method comprising:
presenting, on a display capable of receiving touch-
responsive user input, a patient monitoring worksheet displaying
medical information relating to the delivery of medical care to a
patient, the patient monitoring worksheet having a maximum
viewable time range selected from the range of thirty minutes to
four hours and equally divided into a plurality of time intervals,
and wherein the patient monitoring worksheet comprises a
plurality of simultaneously viewable display sections comprising
a drugs display section, a fluids display section, a vital signs
display section, and a physiological data display section;
the drugs display section having a column listing a
plurality of drugs and, for each of the drugs, a row capable of
tracking of an amount of the drug administered for each of the
time intervals, and wherein if a number of the drugs exceeds a
drug list threshold, the drugs display section is vertically
scrollable in response to touch-screen gesture control;
the fluids display section having a column listing of
a plurality of fluids and, for each of the fluids, a row capable of
tracking of an amount of the fluid administered or expelled for
each of the time intervals, and wherein if a number of the fluids
exceeds a fluid list threshold, the fluids display section is
vertically scrollable in response to touch-screen gesture control;
the vital signs display section having a column
indicating a scale and capable of tracking, for each of the equally
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Application 13/708,725
distributed subintervals of time, a heart rate and a blood pressure
of the patient charted on the scale; and
the physiological data display section having a
column listing a plurality of physiological data items and, for
each of the physiological data items, a row capable of tracking a
value for the physiological data item for each of the time
intervals, and wherein if a number of the physiological data items
exceeds a physiological data item list limit, the physiological
data display section is vertically scrollable in response to touch­
screen gesture control;
wherein each of the time intervals of each of the
display sections is a subsection;
detecting a beginning of a new time interval;
determining selected ones of the subsections set for auto­
population of values;
determining values for the selected auto-population
subsections;
presenting, using the display, the determined values for the
auto-population subsections;
determining, for each subsection, whether information
tracked during that subsection is incomplete;
presenting, using the display, visual emphasis for the ones
of the subsections with incomplete information;
in a first mode of operation, permitting edit popups only
for the ones of the subsections with incomplete information;
in a second mode of operation, permitting edit popups for
any of the subsections; and
toggling between the first mode of operation and the
second mode of operation in response to user input.
REJECTIONS
Claims 1, 2, 5—13, 16—24, and 27—33 are provisionally rejected for
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1—33 of copending Application No. 13/708,680.
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Application 13/708,725
Claims 1, 2, 5—13, 16—24, and 27—33 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
ANALYSIS
The Provisional Nonstatutorv Obviousness-type Double Patenting Rejection
Claims 1, 2, 5—13, 16—24, and 27—33 are provisionally rejected for
obviousness-type double patenting. (Final Action 2.) Appellants do not
substantively address this rejection in the Appeal Brief. (See Appeal Br. 10.)
Therefore, we summarily affirm the provisional obviousness-type double
patenting rejection of claims 1, 2, 5—13, 16—24, and 27—33.
The f101 rejection
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part 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.
Under the two-part 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
part 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).
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Application 13/708,725
The Examiner determines that all of the pending claims are directed to
the abstract idea of “displaying medical information in sections, determining
sections to be auto-populated, determining and highlighting missing
information and providing a pop-up toggle function; (i.e. using categories to
organize, store and transmit data).” (Final Action 4, emphasis omitted.) The
Examiner also determines that “the specificity of an abstract idea does not
make it less abstract. Essentially the claims recite a sequence of abstract
ideas, executed on conventional devices, the combination of which is still
abstract.” (Answer 3.)
Appellants argue that “[e]ven assuming this articulation of the abstract
idea is correct (which Appellants do not agree with), the Examiner fails to
provide any reasoning as to why Appellants’ claims create any risk of tying
up any building block of human ingenuity, much less disproportionately
doing so.” (Appeal Br. 11.) In particular, Appellants argue that
“Appellants’ ordered combination of elements—including various highly
specific functions—does not rise to the level of preempting the basic tools of
scientific and technological work that the Supreme Court is concerned with.”
(Id.)
Under part 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. DirectTV, 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.”
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In this case, the Specification discloses that the claimed invention
relates to “a mobile electronic chart.” (Spec. 3,1. 2.) Claim 12 recites
“presenting, on a display ... a patient monitoring worksheet;” “the drugs
display section having a column;” “the fluids display section having a
column;” “the vital signs display section having a column;” “the
physiological data display section having a column;” “determining . . .
subsections set for auto-population of values;” “determining values for the
selected auto-population;” “determining, for each subsection, whether
information ... is incomplete;” “presenting, using the display, visual
emphasis for the ones of the subsections with incomplete information;” and
“permitting edit popups.” In short, the claims are directed to
collecting/organizing, storing, and displaying data.
In Electric Power Grp., LLC v. Alstom S.A., “[t]he focus of the
asserted claims ... is on collecting information, analyzing it, and displaying
certain results of the collection and analysis.” Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). “[W]e have treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas.” Id.
In view of the above, we are not persuaded that the Examiner erred in
determining that the pending claims are directed to an abstract idea. The
additional steps of a first mode permitting editing of some data and a second
mode permitting editing of additional data does not change our
determination that the claims’ character as a whole is directed to an abstract
idea, i.e., collecting/organizing, storing, and displaying data. See id.
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With regard to Appellants’ preemption argument, we note that
preemption 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 Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013), affd, 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.
Part 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 than a patent upon the [ineligible concept] itself.’” Alice, 134 S. Ct.
at 2355 (citing Mayo, 132 S. Ct. at 1294).
The introduction of a computer into the claims does not alter the
analysis at step two.
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[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 “implement[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption 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. Claim 12 relates to
collecting/organizing and presenting data on “a display capable of receiving
touch-responsive user input.” Claim 1 relates to an apparatus for
collecting/organizing, storing, and presenting data having a similar display,
and having a memory and a processor. Appellants argue that
[a]s in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1258 (Fed. Cir. Dec. 5, 2014), “the claimed solution is
necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer
networks” and associated systems. Here, the claims solve the
problem of displaying specific patient monitoring data in a
particular manner such that it can be viewed and manipulated on
a handheld apparatus that may have limited screen space.
(Appeal Br. 14; see also Reply Br. 6.)
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We disagree. 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.'1'’ 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. In this case, the claims implement the abstract idea of using
categories to collect/organize, store, and display data, with routine,
conventional activity.
Taking the claim elements separately, the function performed by the
display in claim 12 and by the display, memory and processor in claim 1 is,
at each step of the process, purely conventional. Using a processor to
display information, determine sections to be auto-populated, highlight
missing information, and provide for editing are basic functions of a
computer and display system. All of these functions are well-understood,
routine, conventional activities previously known to the industry. (See
Answer 9—10.) In short, each step does no more than require a generic
computer to perform generic computer functions.
Considered as an ordered combination, the computer 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 computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
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abstract idea of using categories to collect/organize, store, and display data
using some unspecified, generic computer. That is not enough to transform
an abstract idea into a patent-eligible invention. See id. at 2360. For the
above reasons, we are not persuaded that the Examiner erred in rejecting
independent claims 1 and 12 under § 101. Appellants do not separately
argue independent claim 23 or dependent claims 2, 5—11, 13, 16—22, 24, and
27—33. Claims 2, 5—11, 13, 16—24, and 27—33 fall with claims 1 and 12. See
37C.F.R. §41.37(c)(l)(iv).
DECISION
The Examiner’s provisional rejection of claims 1,2, 5—13, 16—24, and
27—33 for nonstatutory obviousness-type double patenting is affirmed.
The Examiner’s rejection of claims 1, 2, 5—13, 16—24, and 27—33
under 35U.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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