Ex Parte Schneider et al

Patent Trial and Appeal Board

Dec 15, 2017

12190378 (P.T.A.B. Dec. 15, 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.
12/190,378 08/12/2008 CHARLES SCHNEIDER CRNI.143167 8696
46169 7590 12/19/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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 CHARLES SCHNEIDER, ELIZABETH BARLOW,
and KHALOD KELANTAN PELEGRIN
Appeal 2016-0044241
Application 12/190,3782
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
MEDLOCK, 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—7, 9-13, 19, and 21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed September
25, 2015), and the Examiner’s Answer (“Ans.,” mailed March 11, 2016),
and Final Office Action (“Final Act.,” mailed May 1, 2015).
2 Appellants identify Cemer Innovation, Inc., as the real party in interest.
Br. 3.
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Application 12/190,378
CLAIMED INVENTION
Appellants’ claimed invention relates to “a computer-implemented
method for associating one or more prior therapies with one or more current
therapies.” (Spec. 11).
Claims 1 and 13 are the independent claims on appeal. Claim 1,
reproduced below with bracketed numerals added, is illustrative of the
claimed subject matter:
1. One or more non-transitory computer-readable storage
media having, embodied thereon computer-useable instructions
that, when executed, implement a method for creating an
electronic association between therapies used to treat a patient’s
clinical problem and utilizing the electronic association when
generating discharge instructions for the patient, the method
comprising:
[1] receiving a first set of therapies prescribed for the
patient prior to the patient being admitted to a current care venue;
[2] accessing the patient’s electronic medical record to
identify a second set of therapies prescribed for the patient while
admitted to the current care venue;
[3] automatically identifying, using a rules engine, at
least a first therapy of the first set of therapies and at least a first
therapy of the second set of therapies as therapies that are used
to treat the same clinical problem;
[4] creating and storing in the patient’s electronic
medical record an electronic association between the at least the
first therapy of the first set of therapies and the at least the first
therapy of the second set of therapies identifying them as
therapies for treating the same clinical problem in the patient;
[5] receiving an indication that the patient is going to
be discharged;
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[6] incident to receiving the indication, communicating
for display on a user interface the electronic association of
therapies, wherein communicating for display on the user
interface comprises visually grouping together in the same
viewable area of the user interface the at least the first therapy of
the first set of therapies and the at least the first therapy of the
second set of therapies;
[7] receiving a discharge input from the user for the
electronic association of therapies, the discharge input
comprising at least one of an input to resume the at least the first
therapy of the first set of therapies or an input to continue the at
least the first therapy of the second set of therapies;
[8] generating discharge instructions for the patient
based on the discharge input received; and
[9] storing the discharge instructions for the patient in
the patient’s electronic medical record.
REJECTIONS
Claims 1, 3—7, 9-13, 19, and 21 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 3—7, 9-13, 19, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Goodman et al. (US 2008/0052124 Al, pub. Feb. 28,
2008) (“Goodman”) and Haitin et al. (US 2007/0088461 Al, pub. Apr. 19,
2007) (“Haitin”).
ANALYSIS
Non-Statutory Subject Matter
Appellants argue claims 1, 3—7, 9-13, 19, and 21 as a group (Br. 7—
14). We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(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.”
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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. See, e.g., Alice Corp. Pty. Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
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 Corp., 134 S. Ct. at
2355. 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 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, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
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Here, in rejecting the pending claims under § 101, the Examiner finds
that the claims are
directed to the abstract idea of creating and storing in the
patient’s electronic medical record an electronic association
between the at least the first therapy of the first set of therapies
and the at least the first therapy of the second set of therapies
identifying them as therapies for treating the same clinical
problem in the patient, is a method of organizing human
activities.
(Final Act. 5). In other words, the Examiner finds that the claims are
directed to creating associations between therapies that treat the same
clinical problem, i.e., a method of organizing human activities and,
therefore, an abstract idea (Final Act. 5; see also Ans. 2—5). The Examiner
further finds that this idea is similar to the concept of comparing new and
stored information and using rules to identify options (Ans. 2), which the
Federal Circuit concluded, in SmartGene, Inc. v. Advanced Biological Labs.,
SA, 555 F. App’x 950, 955 (Fed. Cir. 2014), is an abstract idea. Under the
second step of the Mayo!Alice framework, the Examiner finds that the
additional elements or combination of elements in the claims, other than the
abstract idea, amount to no more than “generic computer functions that are
well-understood, routine and conventional activities know [sic] to the
industry” (Final Act. 2; Ans. 4).
Appellants do not appear to dispute the Examiner’s characterization of
what the claims are directed to. Rather, Appellants assert that the abstract
idea identified by the Examiner is “so narrow that it fails to rise to the level
of a basic tool of scientific and technological work” and thus “there is no
danger that the claims will preempt any building block of human ingenuity”
(Br. 7—8; see also Br. 12—14).
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There is no dispute that the Supreme Court has described “the concern
that drives this exclusionary principle [i.e., the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” Alice Corp.,
134 S. Ct. at 2354. But, characterizing pre-emption as a driving concern for
patent eligibility is not the same as characterizing pre-emption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct.
at 2354). “[Preemption may signal patent ineligible subject matter, [but] the
absence of complete preemption does not demonstrate patent eligibility.” Id.
We also cannot agree with Appellants’ assertion that “the Office has
failed to establish a prima facie case of patent ineligibility.” (Br. 8).
Appellants complain that “the Office has provided no rationale or supporting
documentation in support of its conclusion that the elements recited in each
of the claims, both independent and dependent, amount to an abstract idea”
(id. at 9). According to Appellants, “the Office should follow the example
set by the Supreme Court in Alice and provide evidence supporting its
assertion” (id.). Appellants also argue that the Examiner has not provided
evidence to support the Examiner’s analysis under the second step of the
Alice framework (id. at 11).
As an initial matter, we find nothing in Alice that requires the Office
to identify specific references to support a finding that a claim is directed to
an abstract idea. Nor are we aware of other controlling authority that
imposes such a requirement. Instead, the Federal Circuit has repeatedly
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observed that “the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Thus, all that is required of the Office is that it set forth the statutory basis of
the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
Appellants do not contend here that the § 101 rejection was not
understood or that the Examiner otherwise failed to comply with the notice
requirements of § 132. And for all the criticism of a lack of evidentiary
support, Appellants put forward no rebuttal evidence to demonstrate that the
claimed subject matter is not an abstract idea or involves significantly more
than an abstract idea.
Turning to the second step of the Mayo!Alice framework, Appellants
contend that the claims “recite computer functions [or steps] that are not
generic (i.e., not well-understood, routine, and conventional activities
previously known in the industry)” (Br. 11) (quoting the language of
claim 1, specifically limitations [3], [4], and [8]). Instead, according to
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Appellants, the claims “are directed to a new and useful application
embodied through the specific combination of novel, non-generic (i.e., not
well known, routine, or conventional) computer functions” that when
executed by one or more processors, perform “a novel method for accurately
reconciling previously- and currently-prescribed therapies that are used to
treat the same clinical problem in a patient” {id. at 12).
Appellants’ argument is not persuasive at least because a finding of
novelty or non-obviousness does not automatically lead to the conclusion
that the claimed subject matter is patent-eligible. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n. for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2117 (2013). 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
[patent-ineligible concept] itself.’” Alice Corp., 134 S. Ct. at 2355. A novel
and nonobvious claim directed to a purely abstract idea is, nonetheless,
patent-ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr,
450 U.S. 175, 188—89 (1981) (“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 categories of possibly
patentable subject matter.”).
Appellants further summarily assert that the claims involve functions
that go well beyond merely “‘using a computer to obtain data, adjust account
balances, and issue automated instructions’” and that the “higher level
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actions” performed by the claim elements constitute significantly more than
the abstract idea itself (Br. 12). Yet, Appellants offer no persuasive
argument or technical reasoning to support that position.
We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection. We also sustain the
rejection of claims 3—7, 9-13, 19, and 21, which fall with claim 1.
Obviousness
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claims 1 and 13 under 35 U.S.C. § 103(a) because
Haitin, on which the Examiner relies, does not disclose or suggest “creating
and storing in the patient’s electronic medical record an electronic
association between [two therapies] identifying them as therapies for treating
the same clinical problem in the patient” as recited in claim 1, and similarly
recited in claim 13 (Br. 17, 19-20).
Haitin is directed to “a system and method for administering
medications to a plurality of patients in a medication institution” (Haitin,
116). Haitin discloses a medicine cabinet that provides instructions to an
authorized user for dispensing medication to each patient, as well as patient
specific information including a physician order for each patient (id. ).
In rejecting independent claims 1 and 13 under 35 U.S.C. § 103(a),
the Examiner cites paragraphs 100 and 143 and Figures 11 and 12 of Haitin
as disclosing the argued limitation (Final Act. 6—9). According to the
Examiner, “Fig. 11, shows a list of prescriptions for the patients which
includes Azactam and Fortum, which are both antibiotics so they treat the
same clinical problem” (Final Act. 3). The Examiner, thus, finds that Haitin
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discloses the claimed association between two therapies in its association
between Azactam and Fortum.
We have reviewed the cited portions of Haitin, and we find nothing
there that discloses or suggests storing an association between two therapies
that identifies them as therapies for treating the same clinical problem in the
patient, as called for in claims 1 and 13.
Figure 11 of Haitin shows a list of medications for a patient wherein
“the physician may then choose to review the patient’s current prescriptions
and his/her respective details by selecting the RX tab” (Haitin, 198). The
screen of Figure 11 displays the patient’s current prescriptions in a list,
without regard to the clinical problem treated by the medications. Although
the Examiner may be correct that Azactam and Fortum “are both antibiotics
so they treat the same clinical problem” (Final Act. 3), there is no indication
that any such association is stored in the Haitin system.
Directing our attention to Figure 12 of Haitin, and as an alternative
rationale, the Examiner “interprets the brand name as first therapy and the
generic medications is interpreted as second therapy, therefore broadly
interpreted reads on the identifying step of first and second therapy and also
creating and storing in the patient’s electronic medical record.” (Ans. 6
(citing paragraph 100 and Figure 12 of Haitin; see also Final Act. 3)).
Figure 12 of Haitin is used by a physician to select a new medication
to prescribe to the patient. Generic medications are displayed in a “Generic
Names” tab, while brand name medications are listed in a “Commercial
Names” tab. A physician, using the interface of Figure 12, selects a new
medication for the patient based on the physician’s own knowledge of the
patient’s needs and medication properties (Haitin 1100). The physician is
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free to prescribe either a generic or brand name medication, but the
physician must select the appropriate tab to find the desired medication.
Although the Examiner may be correct that a brand name and generic
equivalent “both can be used to treat the same clinical problem” (Ans. 7),
there is no indication that any electronic association between equivalent
generic and brand names is stored in the Haitin system. Figure 12 merely
discloses displaying generic and brand name medications in different tabs,
without regard to the clinical problem treated by the medications. For
example, there is no indication that when a physician selects a brand name
drug in the “Commercial Names” tab, the system can then suggest a generic
equivalent (or vice versa).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 13 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner’s rejection of dependent
claims 3—7, 9—12, 19, and 21. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed.
Cir. 1992) (“dependent claims are nonobvious if the independent claims
from which they depend are nonobvious”).
DECISION
The Examiner’s rejection of claims 1, 3—7, 9—13, 19, and 21 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 3—7, 9-13, 19, and 21 under
35 U.S.C. § 103(a) is reversed.
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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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