Ex Parte Ash et alDownload PDFPatent Trial and Appeal BoardJun 23, 201711359012 (P.T.A.B. Jun. 23, 2017) 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. 11/359,012 02/22/2006 Michael A. Ash CRNI.120351 8044 46169 7590 06/27/2017 SHOOK, HARDY & BACON L.L.P. (Cerner Corporation) Intellectual Property Department 2555 GRAND BOULEVARD KANSAS CITY, MO 64108-2613 EXAMINER COLEMAN, CHARLES P. ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 06/27/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPDOCKET@SHB.COM IPRCDKT@SHB.COM BPARKERSON @ SHB .COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL A. ASH and JOHN Q. DEVERTER Appeal 2016-005810 Application 11/359,012 Technology Center 3600 Before JAMES R. HUGHES, NORMAN H. BEAMER, and JASON M. REPKO, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1—9, 12—20, 23—27, and 33. Claims 10, 11, 21, 22, and 28—32 have been canceled. Final Act. 1—2; Br. 1, 35, 37—38.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to Appellants’ Specification (“Spec.”) filed Feb. 22, 2006 and Appeal Brief (“Br.”) filed Sept. 28, 2015. We also refer to the Examiner’s Answer (“Ans.”) mailed Mar. 11, 2016, and Final Office Action (Final Rejection) (“Final Act.”) mailed Mar. 31, 2015. Appeal 2016-005810 Application 11/359,012 Appellants ’ Invention The invention generally relates to clinical orders and clinical computing systems, in particular, recordable computer-storage media and methods for modifying clinical orders utilizing clinical computing systems. The method includes receiving a clinical order, prescribed to a patient, having a first component associated with a first phase and a second component associated with a second phase, and the first and second components have a first attribute in common, utilizing a first computing process. The first phase and the second phase are separated by one or more days. Each phase is a sub-plan within a healthcare plan including multiple orders for the treatment of the patient. The method further recites receiving an indication to modify the first attribute of the first component utilizing a second computing process after the clinical order is prescribed to the patient and modifying the first attribute of the first component and the second component in the same way utilizing a third computing process. Spec. 8— 13; Abstract. Representative Claim Independent claim 1, reproduced below, further illustrates the invention: 1. A method in a clinical computing environment for modifying a clinical order, the method comprising: receiving, utilizing a first computing process, the clinical order that was prescribed to a particular patient, the clinical order having a first component associated with a first phase and a second component associated with a second phase, wherein the first and second components have a first attribute in common, wherein the first phase and the second phase are separated by more than one day, wherein a phase is a sub-plan within a healthcare plan, and wherein the healthcare plan includes 2 Appeal 2016-005810 Application 11/359,012 multiple orders for the treatment of a particular ailment in a patient; receiving, utilizing a second computing process, after the clinical order is prescribed to the patient, an indication to modify the first attribute of the first component; and modifying, utilizing a third computing process, the first attribute of the first component and the second component in the same way based on the indication received, wherein the first, second, and third computing processes are executed utilizing one or more computing devices. Rejections on Appeal 1. The Examiner rejects claims 1—9, 12—20, 23—27, and 33 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. The Examiner rejects claims 1—9, 12—20, 23—27, and 33 under 35 U.S.C. § 103(a) as being unpatentable over De La Huerga (US 2002/0038392 Al, published Mar. 28, 2002) and Huber (US 2002/0049615 Al, published Apr. 25, 2002). ISSUES Based upon our review of the record, Appellants’ contentions, and the Examiner’s findings and conclusions, the issue before us follows: 1. Did the Examiner err in rejecting claims 1—9, 12—20, 23—27, and 33 under 35 U.S.C. § 101 as being directed to non-statutory subject matter? 2. Did the Examiner err in finding that De La Huerga and Huber collectively would have taught or suggested “receiving ... an indication to modify the first attribute of the first component [and] modifying . . . the first attribute of the first component and the second component in the same way 3 Appeal 2016-005810 Application 11/359,012 based on the indication received” (claim 1 (emphasis omitted)) within the meaning of Appellants’ claim 1 and the commensurate limitations of Appellants’ claims 12, 23, and 33? ANALYSIS The 35 U.S.C. §101 Rejection Appellants argue independent claims 1, 12, 23, and 33 together as a group with respect to the § 101 rejection. See Br. 12—18. We select independent claim 1 as representative of Appellants’ arguments with respect to claims 1-9, 12-20, 23-27, and 33. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner rejects the claims as being directed to non-statutory subject matter in that the claims: do not amount to significantly more than an abstract idea. The claim(s) is/are directed to the abstract idea of (i) a method of organizing human activities and/or (ii) a mathematical relationship or formula. The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Final Act. 7. Appellants contend that “it cannot be said that the claims of the present Application are directed merely to [an abstract idea] as asserted by the Office. This overly broad characterization of the claimed subject matter is inaccurate and ignores the specific features included in the claims.” Br. 12 (footnote omitted); see Br. 12—13. Appellants further 4 Appeal 2016-005810 Application 11/359,012 contend that, similar to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), the claims in the instant application do not merely recite the performance of some practice known from the pre-computerized world along with the requirement to perform it on a network or a computer. Nor do the claims broadly and generically claim use of a network or computer to perform an abstract business practice with insignificant added activity. Br. 13—14. Rather, Appellants contend “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of distribution of clinical orders within computers and computer networks, and specifies how interactions with the clinical orders in the network/computer are manipulated to yield a desired result.” Br. 14. Under 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has “Tong held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77—80 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts” {id.), e.g., to an 5 Appeal 2016-005810 Application 11/359,012 abstract idea. If the claims are not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting 566 U.S. at 78, 79). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Turning to the first step of the eligibility analysis, the Examiner finds that claim 1 is directed to the abstract idea of receiving and modifying a clinical order. Final Act. 6, 7; Ans. 3. Conversely, the Appellants contend that Appellants’ claimed invention, similar to the invention in DDR, “is necessarily rooted in computer technology” and “overcome[s] a problem specifically arising in the realm of distribution of clinical orders within computers and computer networks.” Br. 14. The independent claims (claims 1, 12, 23, and 33) are directed to a process for modifying a clinical order. The modification is accomplished utilizing a computer to receive a clinical order, receive an indication to modify a portion (an attribute of a component) of the order (where the first component of the order is associated with a first phase (of treatment)), and modifying the portion of the order (the attribute of the first component) and 6 Appeal 2016-005810 Application 11/359,012 modify an additional portion of the order (a second component —where the second component of the order is associated with a second phase (of treatment)) in the same way as the first portion (component) (see, e.g., Spec. 45, 46, 53, 57). That is, Appellants’ claim recites receiving an input (a clinical order), receiving additional input —a request to modify a common attribute (between a first component of the order in a first treatment phase and a second component of the order in a second treatment phase), and modifying the first and second components of the order accordingly. The claim consists entirely of data manipulation utilizing undisclosed and unclaimed algorithms. In DDR, the court held that a claim may amount to more than any abstract idea recited in the claims when it addresses and solves problems only encountered with computer technology and online transactions, e.g., by providing (serving) a composite web page rather than adhering to the routine, conventional functioning of Internet hyperlink protocol. See DDR Holdings, 773 F.3d at 1257—59. In contrast, claim 1 performs a process that modifies (manipulates) clinical order information (e.g., data in a database) utilizing a conventional computer and user interface. See Spec. 45, 46, 67—73, 81—83, Figs. 3, 4, 11. Clinical order modification and data manipulation in a database are not technical problems as discussed in DDR, they are organization and/or efficiency problems. See Spec. H 1, 6, 7. Modifying multiple components in a clinical order based on a change to one attribute of one component is a commercial solution to the organizational problem, not a technical solution. This commercial solution may be assisted using a general purpose computer 7 Appeal 2016-005810 Application 11/359,012 to compare and manipulate data concerning clinical orders, but does not arise specifically in the realm of computer networks. The instant claims are more akin to the claims for analyzing information found to be abstract in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016), or the claims directed to image data processing discussed in Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (finding “a process that employs mathematical algorithms to manipulate [data or information] to generate additional information is [abstract and] not patent eligible”). See Elec. Power Grp., 830 F.3d at 1353—54 (citing Digitech, 758 F.3d at 1351). Having found Appellants’ claims are directed to an abstract concept under Alice’s step 1 analysis, we next address whether the claims add significantly more to the alleged abstract idea. Final Act. 7; Ans. 3. As directed by our reviewing Court, we search for an ‘“inventive concept’ sufficient to ‘transform the nature of the claim into a patent-eligible application.’” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2355). Appellants contend claim 1 and the other independent claims “recite features that are neither mere instructions to implement an abstract idea on a computer, nor well-understood, routine, and conventional activities” (Br. 15 (emphasis omitted)), and “[t]hese are not functions found on a generic computer; rather, special programming would be required to implement such features on a generic computer. These features, at least, ensure the claims amount to significantly more than” an abstract idea (Br. 16). Appellants also contend that the claims “pose no risk prempting an abstract idea, itself,” that 8 Appeal 2016-005810 Application 11/359,012 the claims recite “a specific new and useful invention,” and that the claims would not “preempt modifying clinical orders in a clinical computing environment, because the claims do not claim all methods of modifying clinical orders.” Br. 17 (emphasis omitted). We disagree with Appellants’ unsupported and conclusory arguments. Appellants’ claim 1 recites processes for manipulating data, e.g., utilizing database operations. Such steps — modifying a component of a clinical order in accordance with a change to a parameter in a different component of the clinical order — are all routine and conventional computer functions (i.e., mathematical operations) of a general processor. The Specification supports this view in discussing the processes implemented in software which operates on generic computers to perform the recited data manipulations steps. See Spec. 1145, 46, 67-73, 81-83; Figs. 1, 3, 4, 11. Appellants contend that the claims do not merely recite well-known processes — “these features are not ‘well-understood, routine, and conventional activities previously known to the pertinent industry’ as asserted by the Office” (Br. 16—17, 17 n.13 (citing Final Act. 6), and that the claims recite functions not “found on a generic computer” but instead require specialized programing “to implement such features on a generic computer” (Br. 16), but the claim only recites aspects of the clinical order itself (attributes, components, and phases of treatment covered by the order) as well as broad functional steps {supra). The claims do not recite how the computer performs the steps (utilizing the software) to modify the first attribute of the first component and modify the second component in the same way (as the first component) based on the indication received (to modify the attribute). Therefore, we are unpersuaded that Appellants’ 9 Appeal 2016-005810 Application 11/359,012 claims recite the requisite “inventive concept” necessary to transform the claims from an abstract concept. For at least the reasons above, we are not persuaded of Examiner error in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the Examiner’s rejection under § 101 of independent claims 1, 12, 23, and 33, and also dependent claims 2—9, 13—20, and 24—27, which fall with claims 1, 12, and 23, respectively. The 35 U.S.C. § 103(a) Rejection The Examiner rejects independent claim 1 as being obvious in view of De La Huerga and Huber. See Final Act. 8—9; Ans. 4—6. Appellants contend De La Huerga and Huber do not teach the disputed features of claim 1. Br. 18—26. Specifically, Appellants contend “De La Huerga does not describe a clinical order that has components associated with different phases, nor that the components in the different phases have an attribute in common. Br. 21; see Br. 21—23. Appellants also contend the Examiner has not provided sufficient rationale for combining the prior art references (see Br. 18—20) and that Huber does not teach different phases and that a phase is a sub-plan within a healthcare plan as recited in claim 1 (Br. 23—25). The Examiner repeats the language of the claim and cites multiple disparate portions of De La Huerga as teaching the recited limitations. See Final Act. 8—9; Ans. 4. Appellants persuade us of error in the Examiner’s obviousness rejection. The Examiner provides no clear mapping or explanation between the disputed claim limitations and disclosures of De La Huerga. Further, the cited portions of De La Huerga appear to conflate and contradict the various processes recited in Appellants’ claim 1. See, e.g., De La Huerga 1224 10 Appeal 2016-005810 Application 11/359,012 (patient settings erased — i.e., not retained between different treatment phases). Appellants, on the other hand, provide a detailed discussion of each portion of De La Huerga cited by the Examiner and explain why the citations do not teach the disputed limitations. See Br. 22—23. Consequently, we are constrained by the record before us to find that the Examiner erred in finding De La Huerga and Huber teach the disputed limitations of Appellants’ claim 1. Independent claims 12, 23, and 33 include limitations of commensurate scope. Dependent claims 2—9, 13—20, and 24—27 depend on claims 1,12, and 23, respectively, and stand with their respective independent claims. Accordingly, we reverse the Examiner’s obviousness rejection of claims 1—9, 12—20, 23—27, and 33. CONCLUSIONS Appellants have not shown that the Examiner erred in rejecting claims 1-9, 12-20, 23-27, and 33 under 35 U.S.C. § 101. Appellants have shown that the Examiner erred in rejecting claims 1— 9, 12-20, 23-27, and 33 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. §41.50(a)(1). DECISION We affirm the Examiner’s rejection of claims 1—9, 12—20, 23—27, and 33. 11 Appeal 2016-005810 Application 11/359,012 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation