Todd Reed. Henderson et al.Download PDFPatent Trials and Appeals BoardJul 31, 201913169602 - (D) (P.T.A.B. Jul. 31, 2019) 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. 13/169,602 06/27/2011 TODD REED HENDERSON CRNI.162173 2251 46169 7590 07/31/2019 SHOOK, HARDY & BACON L.L.P. (Cerner Corporation) Intellectual Property Department 2555 GRAND BOULEVARD KANSAS CITY, MO 64108-2613 EXAMINER SEREBOFF, NEAL ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 07/31/2019 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): BPARKERSON@SHB.COM IPRCDKT@SHB.COM docketing.shb@clarivate.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TODD REED HENDERSON and MARK DAVID GROMOWSKY1 ____________________ Appeal 2018-004621 Application 13/169,602 Technology Center 3600 ____________________ Before JENNIFER S. BISK, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Non- Final Rejection of claims 1, 6–10, and 14–18, which are all claims pending in the application. Appellants have canceled claims 2–5, 11–13, 19, and 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as Cerner Innovation, Inc. Br. 3. Appeal 2018-004621 Application 13/169,602 2 BACKGROUND2 Appellants’ disclosed embodiments and claimed invention relate to “employing dynamic blind counts for dispen[s]ing medications from a medication dispensing apparatus.” Spec. ¶ 4. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. One or more non-transitory computer storage media storing computer-useable instructions that, when used by one or more computing devices, cause the one or more computing devices to perform a method, the method comprising: [(1)] providing a dynamic blind count setting for a medication at a medication dispensing apparatus; [(2)] determining, based on the dynamic blind count setting, a schedule for requiring blind counts at medication dispensing events for the medication as a function of one or more refill parameters for the medication including one or more selected from the following: maximum level, refill level, critical level, and current system count, the schedule requiring a blind count at two or more medication dispensing events between two refill events, the two or more medication dispensing events comprising only a portion of the medication dispensing events between the two refill events such that a blind count is not required at every medication dispensing event between the two refill events; [(3)] identifying initiation of a current medication dispensing event to dispense the medication from the medication dispensing apparatus; 2 Throughout this Decision we have considered the Specification filed June 27, 2011 (“Spec.”), the Non-Final Rejection mailed June 7, 2017 (“Non- Final Act.”), the Appeal Brief filed December 7, 2017 (“Br.”), and the Examiner’s Answer mailed January 25, 2018 (“Ans”). Appeal 2018-004621 Application 13/169,602 3 [(4)] determining, based on the schedule for requiring blind counts at medication dispensing events for the medication, whether a blind count is required for the current medication dispensing event; [(5)] if it is determined that a blind count is not required for the current medication dispensing event, controlling the medication dispensing apparatus to dispense the medication without requiring a blind count; and [(6)] if it is determined that a blind count is required for the current medication dispensing event, requiring a blind count before dispensing the medication from the medication dispensing apparatus. Br. 20–21 (Claims App’x) (limitation numbering added). REJECTION Claims 1, 6–10, and 14–18 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Non-Final Act. 3–7. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We have considered all of Appellants’ arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Appeal 2018-004621 Application 13/169,602 4 Rejection of Claims 1, 6–10, and 14–18 under 35 U.S.C. § 101 Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long recognized an implicit exception to this section: “‘Laws of nature, natural phenomena, and abstract ideas are not patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is “directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then examine “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.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive concept,” “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). The Patent Office recently issued guidance regarding this framework. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide whether a claim is “directed to” an abstract idea, we evaluate whether the claim (1) recites subject matter falling within an Appeal 2018-004621 Application 13/169,602 5 abstract idea grouping listed in the Revised Guidance and (2) fails to integrate the recited abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea, as noted above, we then determine whether the claim recites an inventive concept. The Revised Guidance explains that when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not well- understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry.” Revised Guidance, 84 Fed. Reg. at 56. For purposes of the § 101 rejection, Appellants argue claims 1, 6–10, and 14–18 together as a group. See Br. 6–18. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv), we limit our discussion to independent claim 1. Independent claims 10 and 15 and dependent claims 6–9, 14, and 16–18 stand or fall with independent claim 1. With these principles in mind, we turn to the Examiner’s § 101 rejection. The Judicial Exception—Abstract Idea The Examiner determined the claims are directed to “the abstract idea of allowing the pharmacy department to set a dynamic blind count setting to select items for medication dispensing apparatuses.” Non-Final Act. 3. For the reasons explained below, Appellants have not persuaded us that the Examiner erred. Claim 1 recites limitations [1]–[6] reproduced in full above. Each of at least limitations [1] through [4] recites an act that people can perform in their minds or using pen and paper. Appeal 2018-004621 Application 13/169,602 6 Starting with limitations [1] and [3], limitation [1] recites “providing a dynamic blind count setting for a medication at a medication dispensing apparatus.” Br. 20 (Claims App’x). The Specification notes that a dynamic blind count setting may be “required at random or scheduled intervals” or “a set point may be established for a medication such that blind counts are required when the system count for the medication reaches the set point.” Spec. ¶ 4. Limitation [3] recites “identifying initiation of a current medication dispensing event to dispense the medication from the medication dispensing apparatus.” Br. 20 (Claims App’x). A person can identify a dynamic blind count setting by simply choosing one of the finite number of values preferred. Moreover, a person can identify the initiation of a current medication dispensing event simply by reading information from a display or otherwise taking note of the status of the current medication dispensing machine. Cf. CyberSource, 654 F.3d at 1372 (explaining that a claim step that “requires ‘obtaining information about other transactions that have utilized an Internet address that is identified with the [ ] credit card transaction’—can be performed by a human who simply reads records of Internet credit card transactions from a preexisting database”). Even if these limitations required physical steps such as typing on a keyboard, these limitations would not make claim 1 patent eligible as they merely gather data. See id. (“Moreover, as discussed above, even if some physical steps are required to obtain information from the database (e.g., entering a query via a keyboard, clicking a mouse), such data-gathering steps cannot alone confer patentability.”). Turning to limitations [2] and [4], limitation [2] recites, in part, “determining, based on the dynamic blind count setting, a schedule for Appeal 2018-004621 Application 13/169,602 7 requiring blind counts at medication dispensing events for the medication as a function of one or more refill parameters for the medication including one or more selected from the following: maximum level, refill level, critical level, and current system count . . . ” and limitation [4] recites “determining, based on the schedule for requiring blind counts at medication dispensing events for the medication, whether a blind count is required for the current medication dispensing event.” Br. 20 (Claims App’x). The claim language indicates that these limitations encompass determining a schedule for blind counts based on a specified algorithm and, using that schedule, determining whether a particular event requires a blind count prior to the dispensing of medication. For example, limitation [2] recites “the schedule requiring a blind count at two or more medication dispensing events between two refill events, the two or more medication dispensing events comprising only a portion of the medication dispensing events between the two refill events such that a blind count is not required at every medication dispensing event between the two refill events.” Br. 20 (Claims App’x); see also Spec. ¶ 21 (stating “[S]cheduled blind counts may be a function of . . . refill level.”). This language, however, indicates that these limitations encompass basic relational calculations that people can perform in their minds or using pen and paper. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“[W]e continue to ‘treat[ ] analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.’” (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016))). Appeal 2018-004621 Application 13/169,602 8 In sum, limitations [1]–[4] recite a process that people can perform in their heads or using pen and paper. The recited process is not meaningfully different from other processes that courts have determined are mental processes. See, e.g., CyberSource, 654 F.3d at 1372 (determining that a claim whose “steps can be performed in the human mind, or by a human using a pen and paper” is directed to an unpatentable mental process). This is true even though the preamble to claim 1 recites that the claimed process is performed by “one or more computing devices” executing “computer- useable instructions” stored on “[o]ne or more non-transitory computer storage media.” Br. 20 (Claims App’x). “Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see also Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”). We, therefore, conclude that claim 1 recites mental processes, one of the abstract idea groupings in the Revised Guidance. See Revised Guidance, 84 Fed. Reg. at 52. Claim 1 thus recites an abstract idea. Integration of the Judicial Exception into a Practical Application If a claim recites a judicial exception, we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating Appeal 2018-004621 Application 13/169,602 9 those additional elements individually and in combination to determine whether they integrate the exception into a practical application. If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. Here, claim 1 recites the additional elements of “one or more computing devices,” “controlling the medication dispensing apparatus to dispense the medication without requiring a blind count,” and “requiring a blind count before dispensing the medication from the medication dispensing apparatus.” Br. 20–21 (Claims App’x). Considering claim 1 as a whole, the additional elements do not apply or use the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The Supreme Court guides that the “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). Appellants contend the Examiner failed to establish a prima facie case of patent ineligibility because the Examiner “has not shown it is more likely than not that claim elements do not add significantly more to the claims.” Br. 9. We disagree. The Federal Circuit has repeatedly noted 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 Examiner satisfies the burden of establishing a prima facie case under Appeal 2018-004621 Application 13/169,602 10 35 U.S.C. § 132 by setting forth a rejection in a sufficiently articulate and informative manner. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). If the Examiner “adequately explain[s] the shortcomings . . . the burden shifts to the applicant to rebut the prima facie case with evidence and/or argument.” Hyatt, 492 F.3d at 1370. The Non-Final Office Action adequately explains the § 101 rejection. See Non-Final Act. 3–4. The Examiner’s statements satisfy § 132(a) because they apply the Alice analytical framework and apprise Appellants of the reasons for the § 101 rejection under that framework. Appellants have not responded by alleging a failure to understand the rejection. To the contrary, Appellants clearly identify the abstract idea identified by the Examiner. See Br. 6. As for the “one or more computing devices,” the Specification makes clear that these may be generic computing devices: Referring to the drawings in general, and initially to FIG. 1 in particular, an exemplary computing system environment, for instance, a medical information computing system, on which embodiments of the present invention may be implemented is illustrated and designated generally as reference numeral 10. It will be understood and appreciated by those of ordinary skill in the art that the illustrated medical information computing system environment 10 is merely an example of one suitable computing environment and is not intended to suggest any limitation as to the scope of use or functionality of the invention. Neither should the medical information computing system environment 10 be interpreted as having any dependency or requirement relating to any single component or combination of components illustrated therein. The present invention may be operational with numerous other general purpose or special purpose computing system environments or configurations. Appeal 2018-004621 Application 13/169,602 11 Spec. ¶¶ 25–26. As for limitations [5] and [6], which refer to controlling the medication dispensing apparatus, we find these to be insignificant postsolution activity because, as noted by the Examiner, the Specification makes no reference to how such control is implemented and, as such, presumes that such control is outside the scope of the invention. See Ans. 7 (“The invention is directed toward making settings. The direct control of a dispensing apparatus is outside the scope of the disclosure.”), 9 (noting that the Specification does not disclose “how the invention interconnected with a dispensing apparatus”). In fact, the Examiner correctly explains, “there is nothing [in the claim language or Specification] that prevents a user [from] manually controlling the dispensing apparatus by manually entering the settings provided by the instant invention.” Id. at 9. We do not agree with Appellants’ contentions to the contrary. Br. 15–17. Although Appellants disagree (Br. 7), we agree with the Examiner (Non-Final Act. 3; Ans. 4), that the claims here have many similarities to those found ineligible in Flook. Parker v. Flook, 437 U.S. 584 (1978). The claims at issue in Flook recite “a method of updating alarm limits,” including the steps of calculating an updated alarm-limit value and adjusting the actual alarm limit to the updated value. Id. at 585. Here, analogizing the blind count requirement to Flook’s alarm, limitation [2] (determining the blind count schedule) is similar to Flook’s step of updating alarm limits, and limitations [5] and [6] (conditionally either requiring the blind count or not prior to dispensing medication) are similar to Flook’s step of adjusting the actual alarm limit. Both processes involve using an algorithm to determine a setting for a machine. And, as with Flook, the steps recited to take place Appeal 2018-004621 Application 13/169,602 12 after applying the algorithm here—controlling the medication dispensing apparatus to either require a blind count or not—cannot “transform an unpatentable principle into a patentable process” if it is “conventional or obvious in itself.” Id. at 590. Appellants’ arguments have not persuaded us claim 1 is “directed to” a patent-eligible concept. For Example, Appellants argue “the claims recite a particular way to control a medication dispensing apparatus to dispense medication.” Br. 13. As discussed above, however, neither the claim language nor the Specification address the details of controlling a medication dispensing apparatus. Appellants do not point us to any other discussion in the Specification that explains sufficient technical details as to how to implement the invention such that a person of ordinary skill in the art would recognize the claimed invention as providing an improvement in the conventional functioning of a computer, or upon conventional technology or technological processes. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263–64 (Fed. Cir. 2016). Accordingly, even in combination with all the other recited elements, the addition of “one or more computing devices,” “controlling the medication dispensing apparatus to dispense the medication without requiring a blind count,” and “requiring a blind count before dispensing the medication from the medication dispensing apparatus” does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. For these reasons, we determine that claim 1 does not integrate the recited abstract idea into a practical application. Appeal 2018-004621 Application 13/169,602 13 Inventive Concept Because we agree with the Examiner’s conclusion that claim 1 is “directed to” an abstract idea, we consider whether an additional element (or combination of elements) adds a limitation that is not well-understood, routine, conventional (“WURC”) activity in the field or whether the additional elements simply append WURC activities previously known to the industry, specified at a high level of generality, to the judicial exception. The Examiner’s finding that an additional element (or combination of elements) is WURC activity must be supported with a factual determination. Id. (citing MPEP § 2106.05(d), as modified by the Berkheimer Memorandum3). Whether the additional elements (i.e., “one or more computing devices,” “controlling the medication dispensing apparatus to dispense the medication without requiring a blind count,” and “requiring a blind count before dispensing the medication from the medication dispensing apparatus”) are WURC activity is a question of fact. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well- understood, routine, and conventional to a skilled artisan . . . is a factual determination.”). On the record before us, Appellants have not persuasively shown that the claims on appeal add a specific limitation beyond the judicial exception that is not “well-understood, routine, and conventional” in the field (see MPEP § 2106.05(d)). In fact, Appellants’ Specification demonstrates the 3 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”). Appeal 2018-004621 Application 13/169,602 14 WURC nature of the recited “one or more computing devices,” “controlling the medication dispensing apparatus to dispense the medication without requiring a blind count,” and “requiring a blind count before dispensing the medication from the medication dispensing apparatus,” because it indicates they may be implemented with generic devices. Spec. ¶¶ 25–34. For these reasons, we conclude that claim 1, considered as a whole, does not include an inventive concept. Therefore, we sustain the Examiner’s § 101 rejection of independent claim 1. We also sustain the Examiner’s § 101 rejection of claims 6–10 and 14–18, for which Appellants rely on the same arguments made with respect to claim 1. Br. 6–18. CONCLUSION We conclude Appellants have not demonstrated the Examiner erred in rejecting claims 1, 6–10, and 14–18 under 35 U.S.C. § 101. DECISION We affirm the Examiner’s rejection of claims 1, 6–10, and 14–18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation