Ex Parte NOLTE et al

Patent Trials and Appeals Board

Feb 28, 2019

12567174 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/567,174 09/25/2009
46169 7590 03/04/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
MARK ALLEN NOLTE
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.149862 3782
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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 MARK ALLEN NOLTE, DAMON MATTHEW HERBST,
RY AN CHRISTOPHER CALDER, and PAUL CANNON
Appeal2017-010092 1
Application 12/567,1742
Technology Center 3600
Before NINAL. MEDLOCK, BART A. GERSTENBLITH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3, 5, 8, 14--19, and 21-24. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
Jan. 31, 2017) and Reply Brief ("Reply Br.," filed July 21, 2017), and the
Examiner's Answer ("Ans.," mailed May 30, 2017) and Final Office Action
("Final Act.," mailed Sept. 6, 2016).
2 Appellants identify Cemer Innovation, Inc. as the real party in interest.
App. Br. 3.
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Application 12/567, 174
CLAIMED INVENTION
Appellants' claimed invention is "generally directed to the integration
of devices for measuring patient location with the patient's electronic health
records." App. Br. 3; see also Spec. ,r 1 (describing that various sources in a
healthcare environment capture monitored values of a patient, such as
locations of a person, and identifying a need to integrate these sources into a
single solution). Claims 1, 14, and 24 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. Non-transitory computer-readable media storing
computer-executable instructions that, when executed, cause a
computing device to perform operations comprising:
receiving from a medical device a first event indication,
which describes an alarm-triggering event detected by the
medical device, the first event indication including a patient
identifier of a patient associated with the medical device in a
patient-to-device datastore, wherein the alarm-triggering event
indicates that a location of the patient has changed;
transforming the first event indication to a standard format
by conforming a Java class name of the first event indication;
determining that a notification is associated with the
alarm-triggering event by referencing a rules engine to retrieve a
rule associated with the alarm-triggering event, wherein the rule
specifies that the notification is to be provided to a first
notification recipient when the alarm-triggering event is
detected, a patient medical condition of the patient satisfies a
medical-condition criterion, and the location of the patient has
changed, and wherein the rule further specifies that the
notification is stored to a repository when the alarm-triggering
event is detected, the patient medical condition of the patient
does not satisfy the medical-condition criterion, and the location
of the patient has changed;
retrieving the patient medical condition from a datastore
maintaining an electronic medical record of the patient, wherein
the patient identifier is used to locate the patient medical
condition in the electronic medical record stored in the datastore;
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determining whether the patient medical condition
satisfies the medical-condition criterion by comparing the patient
medical condition to the medical-condition criterion;
providing the notification to the first notification recipient
when the alarm-triggering event has been detected, the patient
medical condition satisfies the medical condition criterion, and
the location of the patient has changed; and
not providing the notification to the first notification
recipient and storing the notification in the repository when the
alarm-triggering event has been detected, the patient medical
condition does not satisfy the medical-condition criterion, and
the location of the patient has changed.
REJECTION
Claims 1, 3, 5, 8, 14--19, and 21-24 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue the pending claims as a group. See App. Br. 8-20;
see also Reply Br. 2-11. We select independent claim 1 as representative.
The remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, 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, 573 U.S. at 217. The
first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination'"
to determine whether there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to a process for determining whether
a patient medical condition satisfies a medical condition criterion by
comparing the patient medical condition to the medical criterion. Ans. 2.
The process recites steps for receiving a first event indication, transforming
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the first event indication into a standard format, determining that a
notification is associated with the alarm-triggering event, retrieving the
patient medical condition that satisfies the medical condition, and providing
notification. Id. at 2-3. The Examiner concluded that Appellants' claims
are similar to claims for collecting and analyzing information, and
displaying certain results of the collection and analysis that the Federal
Circuit has held to be patent ineligible. Id. at 3 ( citing Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner also
determined that the claims do not include any additional elements, alone or
in combination, that amount to significantly more than the underlying
abstract idea of collecting information, analyzing it, and displaying certain
results of the collection and analysis. 3 Id. at 3--4.
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp., 790 F.3d at 1346). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
3 The mailing of the Examiner's Answer and the filing of Appellants' Reply
Brief occurred prior to the USPTO issuing its latest guidance on patent
eligibility. See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). We review the
presently appealed rejection in light of recent relevant court decisions and
the Revised Guidance.
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We are not persuaded that the Examiner erred in determining that the
claims are directed to an abstract idea. Reply Br. 2-8; see also App. Br. 9-
12. The Specification is titled "PROCESSING EVENT INFORMATION
OF VARIOUS SOURCES." The Specification describes that in a healthcare
environment, "various sources capture, communicate and store information,
such as monitored values of a patient, locations of a person or a device,
[and] equipment utilization." Spec. ,r 1. "Exemplary sources of information
include medical devices that monitor patients, real-time locator systems,
nurse-call systems, patient-bedside systems, communication systems ( e.g.,
in-house phone, mobile device, pager, etc.), and a healthcare information
system." Id. ,r 1. However, the sources are typically not integrated with one
another in a manner that allows information from one source to be combined
with information of other sources. Id. Appellants' invention seeks to
integrate the sources into a single solution. Id.
Claim 1 is a non-transitory computer-readable media claim storing
computer-executable instructions. When executed, the computer-executable
instructions cause a computing device to perform the following operations:
receiving from a medical device a first event indication that describes an
alarm-triggering event detected by the medical device; transforming the first
event indication to a standard format; determining that a notification is
associated with the alarm-triggering event by referencing a rules engine to
retrieve a rule; retrieving the patient medical condition from a datastore
maintaining an electronic medical record of the patient; determining whether
the patient medical condition satisfies the medical condition criterion;
providing the notification to the first notification recipient when the alarm-
triggering event has been detected; and not providing the notification to the
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first notification recipient and storing the notification in the repository when
the alarm triggering event has been detected. Considered in light of the
Specification, the purported advance over the prior art is, thus, an improved
way of receiving and processing event information in a healthcare
environment. In that context, claim 1 is directed to collecting data ( e.g., first
event indication, patient medical), analyzing the data ( e.g., transforming the
event indication to a standard format, determining that a notification is
associated with the alarm-triggering event by referencing a rules engine to
retrieve a rule, determining whether the patient medical information satisfies
the medical condition), and presenting the results ( e.g., providing a
notification, not providing a notification). Therefore, we are not persuaded
that the Examiner erred in determining that claim 1 is directed to
determining whether a patient medical condition satisfies a medical
condition criterion by comparing the patient medical condition to the
medical criterion, which is managing personal behavior (including following
rules or instructions)- i.e., a method of organizing human activity, and
therefore, an abstract idea.
The Federal Circuit has consistently held that abstract ideas include
the concepts of collecting data, analyzing the data, and displaying the results
of the collection and analysis, including when limited to particular content.
See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting,
displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
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analyzing information, without more, as matters within the realm of abstract
ideas); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) ("As many cases make clear, even if a process of collecting
and analyzing information is 'limited to particular content' or a particular
'source,' that limitation does not make the collection and analysis other than
abstract." (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases)).
Appellants contend that the combination of elements improves the
function of a computer or another technology. Reply Br. 8-9; see also App.
Br. 12-16. Specifically, Appellants assert that conventional methods of
alerting medical professionals of a patent's movement suffered from locator
systems not integrating with electronic medical systems. Reply Br. 8.
Appellants' claimed invention purportedly solves this problem, enabling a
patient movement alerts to be based on information in the patient's heath
record, as well as the patient's location. Id. at 8-9. Appellants thus
conclude that the claims "present a technological solution to a technological
problem." Id. at 9. Yet, in this regard, claim 1 recites "transforming the first
event indication to a standard format by conforming a Java class name of the
first event indication," which does little more than conform the event
indication to a Java class format, which falls within precedent of finding
generic computer components insufficient to add an inventive concept to an
otherwise abstract idea. See Alice, 573 U.S. at 225-26. A general statement
of transforming data to a "standard format" using a Java class, as recited in
claim 1, does not suffice to show a technological improvement. See In re
TL! Commc'ns Patent Litig., 823 F.3d 607,615 (Fed. Cir. 2016) ("vague
functional descriptions ... are insufficient to transform the abstract idea into
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a patent-eligible invention); see also Spec. ,r,r 38, 41 (suggesting the
conventional use of a Java class name).
We are not persuaded by Appellants' argument that the claims are tied
to a machine that plays a significant role in the claims. See App. Br. 11-12.
Appellants point to limitations in the claims that require technology and
assert that "the steps cannot be performed mentally." Id. But the limitations
Appellants identify as tying the claims to a machine relate to limiting the
source of the information collected and analyzed to a particular source, but
this is not enough to make the collection and analysis other than abstract.
See SAP Am., 898 F.3d at 1168 (quoting Elec. Power Grp., 830 F.3d at
1353, 1355). Here, claim 1 is not tied to any particular novel machine or
apparatus, and can be implemented using only generic computer
components. See, e.g., Spec. ,r,r 17-23, 26, 29. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.").
We are not persuaded that the claims are analogous to the patent-
eligible claims at issue in McRO and DDR Holdings. App. Br. 12-16.
Appellants assert that the claims "enable[] a more efficient combination and
use of captured patient location information than any conventional solution
for this problem" by integrating the locator system with the electronic health
records. Id. at 14--15. Yet, the claims at issue inMcRO described an
improvement to a 3-D computer generated lip synchronization animation by
using specific rules to define output morph weight set stream as a function of
phoneme sequence and time of the phoneme sequence. McRO, 837 F.3d at
1310. Using these specific rules allows a computer to produce accurate and
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realistic synchronization in animated characters, which previously required
human animators or artists to produce. Id. at 1313. Here, Appellants have
not persuaded us that claim 1 recites comparable specific rules or a
comparable improvement to technology.
For much the same reason, we are not persuaded that the claims are
analogous to those at issue in DDR Holdings. There, the claims changed the
routine, conventional functioning of Internet hyperlink protocol to retain
website visitors. DDR Holdings, 773 F.3d at 1257. Specifically, the claims
modified the conventional web browsing experience by directing a user of a
host website, who clicks an advertisement, to a "store within a store" on the
host website, rather than to the advertiser's third-party website. Id. at 1257-
58. The court determined that "the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet."
Id. at 1257. The court also determined that the invention was "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," and did not simply use
computers to serve a conventional business purpose. Id. Rather, there was a
change to the routine, conventional functioning of Internet hyperlink
protocol. Id. Here, in contrast, there is no indication that a computer
network, or the Internet, in particular, or any other technology is used other
than in its normal, expected, and routine manner.
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claim 1 invoke any assertedly
inventive programming, require any specialized computer hardware or other
inventive computer components, or that the claimed invention is
implemented using other than generic computer components to perform
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generic computer functions. We also find no indication in the Specification
that the claimed invention effects a transformation or reduction of a
particular article to a different state or thing. Nor do we find anything of
record, short of attorney argument, that attributes any improvement in
technology and/or a technical field to the claimed invention or that otherwise
indicates that the claimed invention integrates the abstract idea into a
"practical application," as that phrase is used in the USPTO's "2019 Revised
Patent Subject Matter Eligibility Guidance," 84 Fed. Reg. 50, 55 (January 7,
2019). 4
Turning to step two of the Mayo/Alice framework, Appellants argue
that the Examiner erred in rejecting the claims under 35 U.S.C. § 101,
because the claims recite an inventive concept that is sufficient to ensure that
the claims amount to significantly more than the abstract idea. App. Br. 16-
19. In this regard, Appellants contend that the claims are analogous to those
at issue in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016), and Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). Appellants ostensibly
4 In accordance with the USP TO' s revised guidance, a claim will be
considered "directed to" an abstract idea if ( 1) the claim recites subject
matter falling within one of the following groupings of abstract ideas:
(a) mathematical concepts; (b) certain methods of organizing human
interactions, e.g., fundamental economic principles or practices, commercial
or legal interactions; and ( c) mental processes, and (2) the claim does not
integrate the abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 54--55. "A claim that integrates a judicial
exception into a practical application will apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limitation on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Id. at 54.
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maintain that the present claims are analogous to those in BASCOM and
Amdocs because the claims recite a "specific technological solution to a
problem in healthcare technology" that address an "inability for patient
locator systems or other medical devices to communicate with stored patient
medical records" and, thus, an "inability to automatically determine if an
alert should be provided to a recipient." App. Br. 19 ( citing Spec. ,r 1 ). Yet,
unlike the situation in those claims, Appellants' claim 1 merely recites
desired functional results without specifying how the results are acheived:
transforming the first event indication to a standard format. Accordingly, we
are not persuaded that claim 1, like the claims in Amdocs, achieves any
improvement in computer functionality or that the operations recited in
claim 1 require known components to operate in an unconventional manner.
Likewise, we are not persuaded that claim 1 achieves any improvement to
computer technology analogous to the ordered combination described in
BASCOM.
To the extent Appellants maintain that claim 1 recites limitations that
are not well-understood, routine, and conventional activities, because
claim 1 is novel and/or non-obvious in view of the prior art, Appellants'
argument is not persuasive. App. Br. 18. Although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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, 573 U.S. at 217-18 ( alteration
in original) (quoting Mayo, 566 U.S. at 72-73). A novel and non-obvious
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claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of claim 1, and claims 3, 5, 8, 14--19, and
21-24, which fall with claim 1.
DECISION
The Examiner's rejection of claims 1, 3, 5, 8, 14--19, and 21-24 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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