Ex Parte Manetta et al

Patent Trial and Appeal Board

Feb 11, 2014

12099617 (P.T.A.B. Feb. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte AMY M. MANETTA, 7
JOLYN RUTLEDGE, 8
and JUDITH SHAFFER 9
___________ 10
11
Appeal 2011-011796 12
Application 12/099,617 13
Technology Center 3600 14
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16
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 18
NINA L. MEDLOCK, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
Appeal 2011-011796
Application 12/099,617

2

STATEMENT OF THE CASE1 1
Amy M. Manetta, Jolyn Rutledge, and Judith Shaffer (Appellants) seek 2
review under 35 U.S.C. § 134 of a final rejection of claims 26-32, the only 3
claims pending in the application on appeal. We have jurisdiction over the 4
appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellants invented a way of processing and displaying of medical 6
information, particularly patient data, and enabling a user of a charting 7
system to navigate through patient chart data in various care units during a 8
patient's stay, in a quick and efficient manner. (Specification 1: Field of the 9
Invention). 10
An understanding of the invention can be derived from a reading of 11
exemplary claim 26, which is reproduced below [bracketed matter and some 12
paragraphing added]. 13
26. A system for processing medical information, comprising: 14
[1] a store of information 15
including sets of patient medical data and chart setups 16
associated with a plurality of different patient stays in 17
different care units, 18
an individual chart setup being associated 19
with an individual care unit 20
and 21
with an individual viewable time frame 22
corresponding to a patient stay 23
in said individual care unit 24

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 25, 2011) and Reply Brief (“Reply Br.,” filed June 29,
2011), and the Examiner’s Answer (“Ans.,” mailed May 26, 2011).
Appeal 2011-011796
Application 12/099,617

as well as 1
with a set of patient medical data 2
acquired during said patient stay 3
in said care unit; 4
[2] a processor 5
for acquiring and storing 6
medical data of a patient in said store; 7
[3] a user input device 8
enabling a user 9
to enter input data and commands 10
via a displayed image screen; 11
and 12
[4] a display unit 13
for, 14
in response to a user command 15
selecting a particular care unit 16
from a plurality of different care units, 17
using said store of information 18
to display an image screen 19
presenting an individual chart setup 20
associated with the selected particular 21
care unit 22
and 23
an associated individual viewable 24
time frame 25
corresponding to a patient stay 26
in said selected particular care 27
unit 28
and 29
for presenting a set of patient medical data 30
Appeal 2011-011796
Application 12/099,617

acquired during said patient stay 1
in said selected particular care unit. 2
3
The Examiner relies upon the following prior art: 4
Sato US 5,911,687 Jun. 15, 1999
DeBusk US 5,991,728 Nov. 23, 1999
Evans US 6,347,329 B1 Feb. 12, 2002
Claims 29-32 stand rejected under 35 U.S.C. § 101 as directed to non-5
statutory subject matter. 6
Claims 26-31 stand rejected under 35 U.S.C. § 103(a) as unpatentable 7
over Evans and Sato. 8
Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 9
Evans, Sato, and DeBusk. 10
ISSUES 11
The issues of statutory subject matter turn primarily on whether the 12
claims are drawn to abstract ideas, all of whose implementations are 13
preempted. The issues of obviousness turn primarily on whether Evans and 14
Sato describe a health information system in which it would be predictable 15
to perform a query by health care location and time frame. 16
FACTS PERTINENT TO THE ISSUES 17
The following enumerated Findings of Fact (FF) are believed to be 18
supported by a preponderance of the evidence. 19
Appeal 2011-011796
Application 12/099,617

Facts Related to the Prior Art 1
Evans 2
01. Evans is directed to storage and retrieval of electronic medical 3
records in a computer environment. Evans 1:12-16. 4
02. Evans describes a point of care system to capture patient data at a 5
point of care and a patient data repository, in communication with 6
the point of care system and with external systems, to store and 7
organize the patient data for access by the point of care system; to 8
capture data in a patient record at a point of care, wherein the 9
patient record includes a patient identifier and at least one data 10
structure including the patient identifier and the data; and to 11
capture data at a point of care and a patient data repository, in 12
communication with the point of care system and with external 13
systems to store and organize the data in a patient record for 14
access by the point of care system, wherein the patient record 15
includes a patient identifier and at least one data structure 16
including the patient identifier and the data. Evans 3:14-35. 17
Sato 18
03. Sato is directed to a wide area medical information system by 19
which a patient can receive examination and treatment without 20
going to a doctor at a remote location and by which a patient at 21
any location in the country can receive a remote examination and 22
treatment service from a doctor selected optionally by the patient 23
or can receive various related services from optional medical 24
facilities. Sato 1:5-14. 25
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Application 12/099,617

04. In Sato’s system, a management group for managing the whole 1
information processes executed between a patient and a medical 2
facility or between a plurality of medical facilities is installed and 3
centrally manages medical information of each patient generated 4
in a plurality of medical facilities. Sato 2:64 - 3:5. 5
05. Treatment history data of a patient generated in a plurality of 6
medical facilities is integrated and centrally managed, so that 7
superior examination and treatment in terms of consistency and 8
reliability are made possible. Sato 3:31-35. 9
06. Sato’s management center monitors the whole electronic hospital 10
and integrates and manages treatment history data of residents in 11
the corresponding local area generated in all medical facilities. 12
Sato 7:56-65. 13
ANALYSIS 14
Claims 29-32 rejected under 35 U.S.C. § 101 as directed to non-statutory 15
subject matter. 16
We are not persuaded by the Appellants’ argument that “the present 17
claimed method recites that the medical information being processed is 18
received over a computer network.” App. Br. 7. 19
The Appellants argue these claims as a group. Accordingly, we select 20
claim 29 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 21
These claims are to processing medical information. Claim 29 is 22
independent. Claim 29 recites steps including storing information, acquiring 23
and storing medical data of a patient, enabling a user to enter input data and 24
commands, and displaying an individual chart setup. Thus, claim 29 simply 25
gathers data and displays a chart based on that data as commanded. 26
Appeal 2011-011796
Application 12/099,617

The Examiner found that claim 29 performs no physical transformation 1
and does not recite how a specific machine is used, and therefore recites no 2
more than an abstract idea. The Appellants contend that the use of a 3
computer network requires a specific machine. 4
Here, we disagree with the Appellants. The Supreme Court held that 5
claims that explained the basic concept of an activity (hedging) would allow 6
the Appellant to pre-empt the use of this approach in all fields, and would 7
effectively grant a monopoly over an abstract idea. Bilski v. Kappos, 130 8
S.Ct. 3218, 3231 (2010). Abstract ideas are not patent eligible. Id. at 3225. 9
Claim 29 does no more than lay out the concept of displaying a chart of 10
patient data. The claims neither refer to a specific machine by reciting 11
structural limitations to any apparatus, nor recite any specific operations that 12
would cause a machine to be the mechanism to store, accept, and display 13
information. Indeed, to receive data and construct a displayed chart requires 14
no machine, only the conscious thought of the one controlling the operation. 15
Absent any specific structural limitations on how one acts to perform these 16
steps, these claims recite no more than the abstract concept of displaying a 17
chart based on gathered data. As in Bilski, a patent including these claims 18
would allow the Appellants to pre-empt the use of this approach in all fields, 19
and would effectively grant a monopoly over an abstract idea. 20
As to the network and display screen, 21
even if some physical steps are required to obtain information 22
from the database (e.g., entering a query via a keyboard, 23
clicking a mouse), such data-gathering steps cannot alone 24
confer patentability 25
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 26
2011) (citation omitted). Simply using some computer in some undefined 27
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Application 12/099,617

manner alone cannot confer patentability. More recently, claims were held 1
to be non-statutory where 2
the claims here recite only that the method is “computer aided” 3
without specifying any level of involvement or detail. The fact 4
that certain algorithms are disclosed in the specification does 5
not change the outcome. In considering patent eligibility under 6
§ 101, one must focus on the claims. This is because a claim 7
may “preempt” only that which the claims encompass, not what 8
is disclosed but left unclaimed. 9
Dealertrack, Inc. v Huber, 674 F.3d 1315, 1334 (Fed. Cir. 2012). 10
Subsequently, in Bancorp Services, L.L.C. v. Sun Life Assur. Co. of 11
Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012), the court found that 12
“the interchangeability of certain mental processes and basic digital 13
computation . . . help[s] explain why the use of a computer in an otherwise 14
patent-ineligible process for no more than its most basic function—making 15
calculations or computations—fails to circumvent the prohibition against 16
patenting abstract ideas and mental processes,” holding that using a 17
computer to accelerate an ineligible mental process does not make that 18
process patent-eligible, but to salvage an otherwise patent-ineligible process, 19
a computer must be integral to the claimed invention, facilitating the process 20
in a way that a person making calculations or computations could not. The 21
court provided a bottom line analysis that when the insignificant computer-22
based limitations are set aside from those claims that contain such 23
limitations, the question under § 101 reduces to an analysis of what 24
additional features remain in the claims. 25
The court also found that where the only difference between the claims 26
is the form in which they were drafted, the district court correctly treated the 27
system and method claims at issue in this case as equivalent for purposes of 28
patent eligibility under § 101. 29
Appeal 2011-011796
Application 12/099,617

More recently, the court found some indicia of eligible subject matter in 1
such cases in Ultramercial LLC v Hulu LLC, No. 2010-1544 (Fed. Cir. 2
2013). However, even there, the context was litigation of an issued patent, 3
where the court construed claim limitations as computerized embodiments 4
based on the Specification and relied on the presumption of validity. Here, 5
we construe claims according to their broadest reasonable interpretation and 6
there is no presumption of validity. 7
The court held that the relevant inquiry is whether a claim, as a whole, 8
includes meaningful limitations restricting it to an application, rather than 9
merely an abstract idea. A claim is meaningfully limited if it requires a 10
particular machine implementing a process or a particular transformation of 11
matter. A claim also will be limited meaningfully when, in addition to the 12
abstract idea, the claim recites added limitations which are essential to the 13
invention. Id. Here the claim as a whole does not include meaningful 14
limitations beyond the abstract idea of acquiring data and displaying a chart. 15
No particular machine or transformation is recited. None of the added 16
limitations regarding a network and display is essential to the invention, as 17
they simply send and display data, and do not provide any implementation 18
algorithm or structure that creates data and charts in a specific manner. 19
Claims 26-31 rejected under 35 U.S.C. § 103(a) as unpatentable over Evans 20
and Sato. 21
Claim 32 rejected under 35 U.S.C. § 103(a) as unpatentable over Evans, 22
Sato, and DeBusk. 23
We are not persuaded by the Appellants’ argument that 24
Evans is not concerned with the environment or charts 25
associated with a patient[’]s stay in different care units in a 26
hospital. Evans neither teaches nor suggests “a store of 27
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Application 12/099,617

information including sets of patient medical data and chart 1
setups associated with a plurality of different patient stays in 2
different care units, an individual chart setup being associated 3
with an individual care unit and with an individual viewable 4
time frame corresponding to a patient stay in said individual 5
care unit as well as with a set of patient medical data acquired 6
during said patient stay in said care unit” as recited in claim 26 7
of the present arrangement. The medical records received and 8
stored by Evans are related to a patient medical history, the 9
information is provided by and viewable by numerous different 10
users. The records received by Evans form a medical history 11
timeline for the patient’s life. This is unlike the present claimed 12
arrangement which is concerned with a patient[’]s stay in 13
different care units and the medical information acquired during 14
that stay and related to the individual care units. 15
App. Br. 10-11. The Appellants’ contention does not persuade us of error on 16
the part of the Examiner because the Appellants respond to the rejection by 17
attacking the references separately, even though the rejection is based on the 18
combined teachings of the references. Nonobviousness cannot be 19
established by attacking the references individually when the rejection is 20
predicated upon a combination of prior art disclosures. See In re Merck & 21
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner applied Sato for 22
the context within which patients stay in different units. 23
Further, Evans describes 24
a store of information including sets of patient medical data and 25
chart setups associated with a plurality of different patient stays 26
in different care units, an individual chart setup being 27
associated with an individual care unit and with an individual 28
viewable time frame corresponding to a patient stay in said 29
individual care unit as well as with a set of patient medical data 30
acquired during said patient stay in said care unit 31
as recited in claim 26. Appellants appear not to appreciate the breadth of the 32
scope of this limitation. Chart setups are stored as a matter of course prior to 33
chart display. The claim does not specify the data structures or locations for 34
Appeal 2011-011796
Application 12/099,617

such chart setups. As Appellants acknowledge, Evans describes data for 1
plural patients across a variety of venues, and so necessarily stores data 2
concerning different patient stays in different care units. The word “patient” 3
in “patient stays” is a noun adjective modifying the plural “stays,” and not a 4
singular noun as Appellants’ argument would suggest. Evans illustrates 5
examples of a singular chart being associated with an individual care unit in 6
Figures 7 and 8. The patient stay duration defines an individual viewable 7
time frame. 8
As to Appellants’ arguments regarding the selection in limitation [4], 9
this is simply a standard query that any database management system would 10
provide. It was at least predictable to use a care unit and time period for a 11
patient in such a query at least for insurance and diagnosis purposes. 12
Further, the search criteria in a database query is non-functional in itself, 13
being no more than an arbitrary bit pattern, that is interpreted in the mind of 14
the beholder. 15
In a recent non-precedential decision, our reviewing court reminded 16
us of the applicability of the precedential In re Gulack, 703 F.2d 1381 (Fed. 17
Cir. 1983), In re Bernhart, 417 F.2d 1395 (CCPA 1969) and In re Lowry, 32 18
F.3d 1579 (Fed. Cir. 1994) decisions. 19
We have held that patent applicants cannot rely on printed 20
matter to distinguish a claim unless “there exists [a] new and 21
unobvious functional relationship between the printed matter 22
and the substrate.” In re Gulack, 703 F.2d 1381, 1386 23
(Fed.Cir.1983). . . . 24
. . . [T]he Board did not create a new “mental 25
distinctions” rule in denying patentable weight . . . . On the 26
contrary, the Board simply expressed the above-described 27
functional relationship standard in an alternative formulation—28
consistent with our precedents—when it concluded that any 29
given position label’s function . . . is a distinction “discernable 30
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Application 12/099,617

only to the human mind.” . . . ; see In re Lowry, 32 F.3d 1579, 1
1583 (Fed.Cir.1994) (describing printed matter as “useful and 2
intelligible only to the human mind”) (quoting In re Bernhart, 3
. . . 417 F.2d 1395, 1399 (CCPA 1969)). 4
In re Xiao, 2011-1195 WL 4821929, at *3-4 (Fed. Cir. 2011) (non-5
precedential). Thus, non-functional descriptive material, being useful and 6
intelligible only to the human mind, is given no patentable weight. See also 7
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). 8
The remaining claims are argued either on the basis of claim 26, or using 9
similar arguments. 10
CONCLUSIONS OF LAW 11
The rejection of claims 29-32 under 35 U.S.C. § 101 as directed to non-12
statutory subject matter is proper. 13
The rejection of claims 26-31 under 35 U.S.C. § 103(a) as unpatentable 14
over Evans and Sato is proper. 15
The rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over 16
Evans, Sato, and DeBusk is proper. 17
DECISION 18
The rejection of claims 26-32 is affirmed. 19
No time period for taking any subsequent action in connection with this 20
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 21
§ 1.136(a)(1)(iv) (2011). 22
AFFIRMED 23
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