Liotta, Lance A. et al.

Patent Trials and Appeals Board

Feb 24, 2020

13026346 - (D) (P.T.A.B. Feb. 24, 2020)

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.
13/026,346 02/14/2011 Lance A. Liotta IMMU 200076US04 4710
27885 7590 02/24/2020
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
SOREY, ROBERT A
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
02/24/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LANCE A. LIOTTA and TYSON LIOTTA
____________

Appeal 2018-0048321
Application 13/026,346
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 2, 9–11, 13, 14 and 16–29. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies INSTANTDX, LLC, as the real party
in interest. (Appeal Br. 1.)

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THE INVENTION
Appellant claims a system and method for real-time delivery of
medical tests and related data from laboratories or similar sources to portable
communication devices. (Spec. ¶ 2).
Claim 1 is representative of the subject matter on appeal.
1. A method, performed by one or more processors, for use
in a medical network, comprising:
receiving medical test data related to a plurality of
different tests and patients, the medical test data from a
plurality of medical laboratories in response to orders of a
physician and each test of the plurality of different tests
includes a lab result severity;
in response to receipt of the medical test data, storing
said medical test data on a memory of a medical data server,
and notifying said physician that said medical test data are
available on said medical data server;
after the notifying, sending said medical test data to a
portable communications device controlled by said physician
wirelessly, the medical test data sent to the physician embedded
within a webpage;
after said sending, transferring information to said
portable communications device to display to said physician
one of:
(i) a first list comprising patient names of patients for
which the medical test data has been sent to said portable
communications device, the patient names being individually
selectable to display further information regarding
corresponding selections; and
(ii) a second list comprising test names of the different
tests for which the medical test data have been sent to said
portable communications device;
prioritizing the one of the first list and the second list
based on lab result severity;
determining if an input drug dosage amount is
inappropriate; and
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requiring confirmation of the drug dosage amount when
the drug dosage amount is determined to be inappropriate; and
in response to a determination that said physician
typically specifies dispense as written (DAW), presenting a
DAW option as a default.
Appeal Br. 22 (Claims Appendix).

THE REJECTION
Claims 1, 2, 9–11, 13, 14 and 16–29 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1, 2, 9–11, 16, 17, 22–24, and 26–28 are rejected under pre-
AIA 35 U.S.C. 103(a) as being unpatentable over Shabot (5,942,986, issued
Aug. 24, 1999), in view of Tubbs (US 6,567,855 Bl, issued May 20, 2003),
in view of Chiasson (US 2002/0002513 Al, published Jan. 3, 2002), in view
of Portwood (US 6,305,377 Bl, issued Oct. 23, 2001), further in view of
Mayaud (US 2003/0144884 Al, published July 31, 2003).
Claims 13, 18, 19, and 25 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over Shabot, in view of Tubbs, in view of
Chiasson, further in view of Mayaud.
Claims 14, 20, and 21 are rejected under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Shabot, in view of Mayaud, further in view of
Chiasson.
Claim 29 is rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Shabot, in view of Mayaud, in view of Chiasson, further
in view of Portwood.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 2, 9–11, 13, 14 and 16–29
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under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the
elements of each claim both individually and “as
an ordered combination” to determine whether the
additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The
Court] described step two of this analysis 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 Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. 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.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). 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
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are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019) (“Guidance”).
In the briefing, Appellant refers to prior USPTO guidance regarding
§ 101, including, for example: July 2015 Update on Subject Matter
Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015) (“the 2015 Update”).
(Appeal Br. 18). However, the 2015 Update and other prior guidance,
including: (1) 2014 Interim Guidance on Patent Subject Matter Eligibility,
79 Fed. Reg. 74,618 (December 16, 2014); (2) May 2016 Subject Matter
Eligibility Update, 81 Fed. Reg. 27,381 (May 6, 2016); and (3)
Memorandum on Subject Matter Eligibility Decisions dated Nov. 2, 2016
have been superseded by the 2019 Revised Guidance. See Guidance, 84 Fed.
Reg. at 52. As such, our analysis will not address the sufficiency of the
Examiner's rejection against the cited prior guidance. Rather, our analysis
will comport with the 2019 Guidance as discussed below.
The Examiner determines that the claims are directed to using
categories to organize (i.e. receiving medical test data related to a plurality
of difference tests and patients), store (i.e. storing said medical test data) and
transmit information (i.e. sending said medical test data). (Final Act. 3)
(referring to Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558
F.App’x 988 (Fed. Cir. 2014)). The Examiner determines that the claims are
also directed to prioritizing a transferred patient name or test name list based
on a lab result severity and determining drug dosage appropriateness which
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is comparing new and stored information (i.e. prioritizing a transferred
patient name or test name list based on a lab result severity) and using rules
to identify options (i.e. determining drug dosage appropriateness). The
Examiner finds the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the claimed one or more processors, medical network, server,
memory of the medical data server, and portable communications device, are
generic components that are configured to perform activities that are well-
understood, routine, and conventional activities previously known to the
industry. The Examiner further finds that the additional elements are recited
at a high level of generality and provide conventional functions that do not
add meaningful limits to practicing the abstract idea. (Final Act. 3).
The Specification discloses that the present invention enables
physicians to access test results remotely as soon as they become available
by exchanging information with portable devices. (Spec. ¶ 2). The
Specification also discloses that with particular reference to mobile
telephones, no prior systems are known to exist for receiving and
transmitting medical information and/or transaction data. (Spec. ¶ 7). The
Specification summarizes the invention as a method for delivery and use of
medical test data which includes receiving medical test data related to at
least one patient. The test data is stored on a medical server and the
physician is notified that the test data are available and the test data is sent to
the communications device of the physician. (Spec. ¶ 9). As such, the
disclosure in the Specification supports the determination of the Examiner
that the claims are directed to using categories to organize (i.e. receiving
medical test data related to a plurality of difference tests and patients), store
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(i.e. storing said medical test data) and transmit information (i.e. sending
said medical test data).
The Specification discloses, as depicted in Figure 15, that the
physician is presented with an overview of lab results for his/her patients in
the form of a list which lists patients in order of lab result severity. (Spec. ¶
51). As depicted in Figure 16, after a physician selects a patient, the lab
results are presented in order of severity. (Spec. ¶ 52). As such, the
disclosure in the Specification supports the determination of the Examiner
that the claims are directed to comparing new and stored information and
using rules to identify options.
Consistent with these disclosures, claim 1 recites “receiving medical
test data,” “storing said medical test data,” “sending said medical test data,”
“transferring information to said portable communications device to
display,” which supports the Examiner’s determination that the claims are
directed to receiving/sending data, storing data, notifying, displaying data,
prioritizing lists, determining, and requiring confirmation. In addition, claim
1 recites “transferring information . . . to display. . . one of,” “a second list
comparing test names of the different tests,” “prioritizing the first and
second list based on lab result severity.” Therefore, claim 1 is also
consistent with the Examiner’s determination that the claims are directed to
comparing new and stored information and using rules to identify options.
Claim 1 recites the steps of receiving and storing medical test results
by a physician and prioritizing the test results according to the severity of the
test results. Analyzing medical test results and prioritizing the patients with
the most severe medical test results and further prioritizing the test results
for each patient in accordance to the most severe test result is a method that
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can be done, and has been done historically in the mind of a physician with
or without the aid of a pen and paper.
Therefore, we determine that the steps of claim 1 constitute analyzing
information by steps people go through in their minds which without more,
is essentially mental processes within the abstract-idea category. Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see
also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(claims directed to certain arrangements involving contractual relations are
directed to abstract ideas). Thus, we determine that claim 1 recites a mental
process. A mental process is a judicial exception. Guidance 84 Fed. Reg.
52.
Turning to the second prong of the “directed to test”, claim 1 merely
requires a “processors,” “memory of a medical data server,” and “portable
communications device.” These recitations do not impose “a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” 2019 Revised Patent
Subject Matter Eligibility Guidance at 53. We find no indication in the
Specification, nor do Appellant directs us to any indication, that the
operations recited in independent claim 1 invoke any inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. 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.”).
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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 computer technology and/or
functionality 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 revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitations do not affect an improvement in the
functioning of the processors, memory of a medical data server or portable
communications device or other technology, do not recite a particular
machine or manufacture that is integral to the claims, and do not transform
or reduce a particular article to a different state or thing. Id. Thus, claim 1 is
directed to a judicial exception that is not integrated into a practical
application and thus is directed to an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
the claim 1 is directed to an abstract idea, claim 1 must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
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The introduction of the processors such as the medical data server and
portable communications devices into the claims does not alter the analysis
at Alice 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
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.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the 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 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
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well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “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.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
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The claims do not, for example, purport to improve the functioning of
the medical data server or the portable communications device. As we
stated above, claim 1 does not affect an improvement to any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of information access under different scenarios. (See, e.g., Spec.
¶¶ 34, 35). Thus, claim 1 amounts to nothing significantly more than
instructions to apply the abstract idea of information access using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 226.
We have reviewed all the arguments (Appeal Br. 10–20; Reply Br. 5–
16) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claimed invention improves battery life,
allows a physician to make selections more quickly and minimizes memory
usage on portable communication devices. (Appeal Br. 13–14). We agree
with the Examiner’s response to this argument found on pages 6 and 7 of the
Answer. In this regard, any alleged improvement to the battery life, speed of
the physician to make selections and portable communications device
memory arises out of the conventional advantages of using the claimed
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computer components as tools, and not a particular improvement to the
computer components themselves (see Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[M]erely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea”)). In this
regard, there is no improvement to the battery or memory themselves
disclosed or recited.
We also are not persuaded of error on the part of the Examiner by
Appellant's argument found on pages 16-17 of the Appeal Brief that the
claims recite significantly more. Appellant directs our attention to the
recitations of storing data and sending data and argues that these recitations
are significantly more than the abstract idea. In making this argument
Appellant relies on the ineligible concept itself to establish that the claims
recite an inventive concept. But “[i]t has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC, 899 F.3d at 1290.
Moreover, “[n]o matter how much of an advance in the finance field the
claims recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” SAP
America, Inc., 898 F.3d at 1163; see also id. at 1168.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument, relying on Enfish that the claims recite specific
features of computer networking technology. (Appeal Br. 17). Appellant
directs our attention to Figure 2 and the corresponding portions of the
Specification that describe the features of the invention. We note, initially,
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that there is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. Indeed, the Federal Circuit applied
this distinction in Enfish in rejecting a § 101 challenge because the claims at
issue focused on a specific type of data structure, i.e., a self-referential table
for a computer database, designed to improve the way a computer carries out
its basic functions of storing and retrieving data, and not merely on asserted
advances in uses to which existing computer capabilities could be put.
Enfish, 822 F.3d at 1335–36.
We find no parallel here between the claims before us and the claims
in Enfish nor any comparable aspect in the claims before us that represents
“an improvement to computer functionality,” i.e., an improvement in the
way a computer carries out its basic functions. Id. The alleged advantages
that Appellant touts do not concern an improvement to computer
capabilities, but instead relate to an alleged improvement in medical test data
processing, for which a computer is used as a tool in its ordinary capacity––
that is, providing processing technology to execute computer programs that,
in turn, receive and manipulate the selected data.
We are not persuaded of error on the part of the Examiner because the
claims do not preempt the field. (Appeal Br. 19). While preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert,
denied, 136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
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commerce setting do not make them any less abstract.”). And, “[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, 788 F.3d at 1379.
We do not agree with Appellant that the instant claims are similar to
the claims in Core Wireless Licensing S.A.R.L., v. LG Electronics, In.., LG
Electronics Mobilecomm U.S.A., Inc. (Fed. Cir., January 25, 2018) because
the claimed invention allows a physician to more quickly enter a
prescription. (Reply Br. 7).
In Core Wireless the court held that claims which recited an interface
were patent eligible as the claims recited specific limitations of the interface
such as: an application summary that can be reached through a menu, the
data being in a list and being selectable to launch an application, and
additional limitations directed to the actual user interface displayed and how
it functions. Core Wireless, 880 F.3d at 1363. The court found that the
claims were directed to an improved user interface and not the abstract
concept of an index as the claim “limitations disclose a specific manner of
displaying a limited set of information to the user, rather than using
conventional user interface methods to display a generic index on a
computer.” Id. There is no improvement to technology recited in claim 1.
Further, an improvement in efficiency alone does not render it patent eligible
“While the claimed system and method certainly purport to accelerate the
process of analyzing audit log data, the speed increase comes from the
capabilities of a general-purpose computer, rather than the patented method
itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012) (‘[T]he fact that the required
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calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.’).”
FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016).
In view of the foregoing, we will sustain this rejection of claim 1. We
will also sustain the rejection as it is directed to claims 2, 9–11, 13, 14, 16–
21, and 23–29 because Appellant has not argued the separate eligibility of
these claims.
In regard to claim 22, Appellant argues that the claims recites an
improvement to technical functioning because storing the preferences for
display remotely minimizes memory usage at the portable communication
device. (Appeal Br. 14). This is similar to the argument made in regard to
the eligibility of claim 1 and is unpersuasive for the same reason discussed
above.
35 U.S.C. §103(a) REJECTION
We will not sustain this rejection because we agree with Appellant
that the prior art does not disclose “in response to a determination that said
physician typically specifies dispense as written (DAW), presenting a DAW
option as a default.” (Appeal Br. 10–11). The Examiner considers the fact
that the defaulted option presented is labeled as “dispense as written
(DAW)” is nonfunctional descriptive material as it could easily be swapped
out with other option without changing the functioning of the invention.
(Ans. 4). While it may be true that the option may be swapped out with
other options in the presentation to the physician, claim 1 clearly recites “in
response to a determination that said physician typically specifies dispense
as written.” Therefore, claim 1 requires a determination that is not
nonfunctional descriptive material. The Examiner has not shown that this
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subject matter is disclosed in the prior art.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 1 and claims 2, 9–11, 16, 17, and 22–24 and 26 dependent
therefrom.
We will not sustain the rejection as directed to claims 18, 19, 25, 27,
and 28, which are dependent on claim 13 because claim 13 recites “in
response to said physician typically specifying dispense as written” and
therefore also includes a determination related to the physician typical
actions.
Claim 14 recites simply “presenting, as a default, a dispense as written
(DAW) option to said physician.” There is no recitation of a determination
that the physician typically specifies DAW as in claim 1. Therefore, we
agree with the Examiner that the actual words used on the option (dispense
as written (DAW) is nonfunctional material because the actual steps of the
method are not affected by what the option presented is. In this regard,
Maynaud in Figure 9 and paragraphs 260–263 discloses and depicts
presenting default options to the physicians. Therefore the difference
between the prior art and the claimed invention is simply what options are
presented. Nonfunctional descriptive material cannot lend patentability to
an invention that would have otherwise been anticipated or rendered obvious
by the prior art. See In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862,
1864 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ
401,404 (Fed. Cir. 1983) “(when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability).”
In view of the foregoing, we will sustain the Examiner’s rejection of
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claim 14 and claims 20, 21 and 29 dependent therefrom under 35 U.S.C.
§103(a).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 2, 9–11,
13, 14 and 16–29 under 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 14, 20, 21
and 29 under 35 U.S.C. §103(a).
We conclude the Examiner did err in rejecting claims 1, 2, 9–11, 13
and 16–29 under 35 U.S.C. §103(a).

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DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 9–11,
13, 14, 16–
29
101 Eligibility 1, 2, 9–11,
13, 14, 16–
29

1, 2, 9–11,
16, 17, 22–
24, 26–28
103 Shabot, Tubbs,
Chiasson,
Portwood, Mayaud
1, 2, 9-11,
16, 17, 22-
24, 26-28
13, 18, 19,
25
103 Shabot, Tubbs,
Chiasson, Mayaud
13, 18, 19,
25
14, 20, 21 103 Shabot, Mayaud,
Chiasson
14 20, 21
29 103 Shabot, Mayaud,
Chiasson,
Portwood
29
Overall
Outcome
1, 2, 9–11,
13, 14, 16–
29

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED