Liotta, Lance A. et al.Download PDFPatent Trials and Appeals BoardFeb 24, 202013026346 - (D) (P.T.A.B. Feb. 24, 2020) Copy Citation 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.) Appeal 2018-004832 Application 13/026,346 2 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 Appeal 2018-004832 Application 13/026,346 3 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 Appeal 2018-004832 Application 13/026,346 4 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 Appeal 2018-004832 Application 13/026,346 5 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 Appeal 2018-004832 Application 13/026,346 6 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 Appeal 2018-004832 Application 13/026,346 7 (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 Appeal 2018-004832 Application 13/026,346 8 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.”). Appeal 2018-004832 Application 13/026,346 9 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)). Appeal 2018-004832 Application 13/026,346 10 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 Appeal 2018-004832 Application 13/026,346 11 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. Appeal 2018-004832 Application 13/026,346 12 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 Appeal 2018-004832 Application 13/026,346 13 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, Appeal 2018-004832 Application 13/026,346 14 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- Appeal 2018-004832 Application 13/026,346 15 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 Appeal 2018-004832 Application 13/026,346 16 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 Appeal 2018-004832 Application 13/026,346 17 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 Appeal 2018-004832 Application 13/026,346 18 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). Appeal 2018-004832 Application 13/026,346 19 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 Copy with citationCopy as parenthetical citation