Todd Reed. Henderson et al.

Patent Trials and Appeals Board

Jul 31, 2019

13169602 - (D) (P.T.A.B. Jul. 31, 2019)

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.
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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”).
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[(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.
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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
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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.
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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
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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))).
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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
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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
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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.
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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
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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.
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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”).
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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