Ex Parte McLaren et al

Patent Trial and Appeal Board

Jun 12, 2018

12789962 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/789,962 05/28/2010
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 900
DALLAS, TX 75201-2980
06/14/2018
FIRST NAMED INVENTOR
Jeffrey Lee McLaren
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
080415.0105 9619
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/14/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY LEE MCLAREN,
WILLIAM DYER RODES II,
and JOHN MALCOLM TOUPS
Appeal2017-000619
Application 12/789,962
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
MATTHEWS. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Jeffrey Lee McLaren, William Dyer Rodes II, and John Malcolm Toups
(Appellants2) seek review under 35 U.S.C. § 134 of a final rejection of
claims 1---6, 8-14, 16-22, and 24, the only claims pending in the application
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed March 7, 2016) and Reply Brief ("Reply Br.," filed November 28,
2016), and the Examiner's Answer ("Ans.," mailed September 28, 2016),
and Final Action ("Final Act.," mailed October 8, 2015).
2 The real party in interest is Medaxion, LLC. App. Br. 3.
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on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a way of managing medical case and
chronology information for one or more medical practices. Specification
para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 9, which is reproduced below (bracketed matter and some
paragraphing added).
9. A method comprising:
[ 1] displaying a list of patient tracking records received from a
medical information management system,
the central medical information management system
maintaining a plurality of patient tracking records for
patients receiving care,
wherein each of the patient tracking records includes a
patient identifier, medical personnel assignments
indicating, for those patient tracking records with
assigned personnel, one or more assigned medical
providers and, for each assigned medical provider, one of
a plurality of caregiver case roles, and case status
information indicating a current state of the care for the
patient,
wherein each of the caregiver case roles corresponds to a
responsibility of the one or more assigned medical
providers with respect to a stage in the active
administration of medical care of the patient;
[2] identifying, using a processor, a selected one of the patient
tracking records based on a user input;
[3] displaying indications of at least one of the caregiver case
roles;
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[ 4] receiving a case role selection for the selected patient
tracking record based on user input,
the case role selection indicating a desire to assume one
of the caregiver case roles for the selected patient
tracking record;
[ 5] communicating the case role selection and the user identifier
to the medical information management system;
[ 6] if the case role selection violates role handoff rules
maintained by the medical information management system,
and
receiving a message indicating the case role selection
violation
and
displaying a message indicating failure of the case role
selection;
[7] if the case role selection does not violate role handoff rules
maintained by the medical information management system,
receiving an information update from the medical
information management system,
the information update reflecting that the medical
information management system has updated the
assigned medical providers for the selected patient
tracking entry to reflect the case role selection.
The Examiner relies upon the following prior art:
Cohen US 2005/0021369 Al Jan.27,2005
Wager US 2006/0149589 Al July 6, 2006
Buist US 2007 /0073555 Al Mar. 29, 2007
Morgan US 2007/0192133 Al Aug. 16, 2007
Besterman US 2008/0249386 Al Oct. 9, 2008
Pall US 2009/0157570 Al June 18, 2009
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Claims 1-6, 8-14, 16-22, and 24 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
Claims 1-6, 8-14, 16-22, and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cohen, Wager, Buist, Morgan, Besterman, and
Pall.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness tum primarily on whether data limitations
discemable only to the human mind are worthy of patentable weight and
whether the references describe the limitations and their teachings are
properly used together.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Cohen
01. Cohen is directed to "delivery and interaction with information
based on context, and more specifically, to wireless information
management and display based on a user's identity, location, and
proximity to other location-identified devices, objects, and users."
Cohen para. 2.
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02. Cohen allows for the management of information based on
context and relevance. The term context, as used by Cohen, is the
intersection of the user's identity, the user's physical location, and
the user's proximity to other people and objects. Therefore,
context relevant information is information that is based on a
user's identity, physical location, and proximity to other persons
and objects. Cohen para. 13.
Wager
03. Wager is directed to the field of clinical information
technology, and more particularly to a "management interface
which presents a charge nurse or other staffing manager with an
intuitive, visual interface for generating patient-to-care provider
assignments, including capacity computation, skill set matching,
ratio management and other parameters as part of that interface."
Wager para. 3.
04. Wager describes "a clinical workforce management interface, in
which a staff manager may be presented with a suite of provider
assignment options and alternatives, to automatically organize and
drive assignment ratios and other assignment parameters and
options with compliance, capacity, best practice and other criteria
taken into account."
[A] visual or graphical interface or other
presentation layer may present a charge nurse or
other staff manager with a patient list including
graphical or iconic representations of the
continuity and types of assigned provider care for
each patient, for instance in a slider bar showing
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continuity of provider assignments or any gaps
therein, for example over a shift, 24 hours, week or
other periods. . . . The interface may likewise
indicate the acuity or amount of work which a
given patient's care will demand of a provider, and
generate aggregate totals of the amount of capacity
in a clinical unit available to serve the patient
population. Mandated patient-to-provider ratios
may automatically be monitored, and alerts may be
presented when those or other compliance,
operational or other criteria are violated.
Wager para. 6.
05. Wager describes a workforce management interface and
associated logic to monitor or condition patient assignments based
on regulatory compliance, clinical best practices or other clinical
or operational criteria. Thus, for example,
the workforce management interface [] may
monitor for mandatory or other state, federal,
industry or other compliance criteria regarding or
limiting the acceptable ratio of care providers to
patients or requiring staffing based on quantitative
levels of acuity. When an attempt is made, for
instance by selecting, dragging and dropping a care
provider by name to an assignment bar [] for a
patient which would result in that provider's
reaching a level of, for example, five (or other)
patients for a given shift or period, the workforce
management interface [] may generate and display
an alert [] indicating that exception to a charge
nurse or other manager. According to
embodiments, in the event of an alert [] the
workforce management interface [] may present
the staff manager ( or other user) with options for
instance to temporarily accept an assignment to
remedy the violation later, to cancel that
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assignment, to suggest alternative assignments, or
take other actions or options. Other regulatory,
compliance, clinical, operational, industry or other
criteria or guidelines may be used, monitored or
accessed to trigger alert.
Wager para. 1 7.
Buist
06. Buist is directed to facilitating the provision of health care to
one or more patients. Buist para. 1.
07. Buist describes receiving patient data relating to the health of a
patient; processing said patient data to determine a risk status
providing an indication of risk to the patient's health; selecting a
health care provider to attend said patient on the basis of said risk
status; and transmitting a direction to said health care provider to
attend the patient. Buist paras. 12-16.
08. The administration system 105 maintains a log of approvals and
updates. Buist para. 180.
Morgan
09. Morgan is directed to a patient records system. Morgan para. 2.
10. Morgan describes
a patient record system operable to store a patient
record corresponding to a patient and comprising
patient information, the patient record system
being operable, as part of a medical process, to
receive a request for patient information from an
input/ output device, retrieve patient information
from the patient record, transmit the patient
information to the input/output device, receive
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verification information from the input/ output
device, and identify the patient as being ready for a
next stage of the medical process in accordance
with the verification information.
Morgan para. 4.
11. Morgan describes relying on the roles of various medical
personnel, such as anesthetist, to perform tasks associated with
those roles to ensure patient safety. Morgan paras. 84--86.
Besterman
12. Besterman is directed to improved management of medical
procedures for patients on medical protocols. Besterman para. 2.
13. Besterman describes a method for adapting management of
Pall
medical procedures for a patient assigned to a medical protocol.
A report of a patient's monitored physiological
data and confirmed medical procedures is
periodically received at a management process
from a patient's monitoring station. An instruction
for management of the medical procedures for the
patient is adapted in response to an evaluation of
the patient's periodic reports. The adapted
instruction is sent from the management process to
the patient's monitoring station or to selected other
monitoring stations based on the evaluation.
Besterman para. 5.
14. Pall is directed to systems and/or methods that facilitate
implementing data access within an environment based upon a
role with at least one defined right. Pall para. 5.
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15. Pall discloses
[a] role component can enforce data access within
an environment based upon a role assigned to an
entity. In other words, the role component can
enable seamless data interaction, distribution, and
access in accordance with an entity's assigned role
within the environment. The role can be indicative
of a position or status associated with the entity
within the environment. In general, the role can
correspond to a position or status with correlating
rules, rights, or privileges that can be utilized
within the environment for various entities and/or
users. The role component can further allow
multiple users or entities to share or log into a role
for seamless data distribution, sharing, and/or
access. Thus, data can be uniformly available to
entities sharing a role.
Pall para. 5.
16. Pall discloses the role component can utilize an evaluation
component that can automatically evaluate the environment in
order to generate a role-based model that includes a role layout or
structure.
The role component can assign entities to the
various roles within the role-based model and
provide data access or interaction based on such
model. Moreover, the role-based model
automatically created can be manually configured,
changed, and/ or updated. In other aspects of the
claimed subject matter, methods are provided that
facilitates evaluating an environment to identify at
least one role utilized for data accessibility.
Pall para. 6.
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17. Pall discloses that data access can be employed within the
environment utilizing the role-based model. The data access for
each individual or entity within the environment can be in
accordance with rights or privileges related to the assigned role.
Seamless interaction for entities assigned to a role within the
model can be enabled. In other words, a plurality of users or
entities can seamlessly interact, hand-off, share, distribute, etc.
data within the environment based on each user or entity logging
into a role. Pall para. 50.
ANALYSIS
Claims 1-6, 8-14, 16-22, and 24 rejected under 35 USC§ 101 as directed
to non-statutory subject matter
Method claim 9 recites displaying a list of patient tracking records,
identifying a selected patient tracking record, displaying caregiver case
roles, receiving and communicating a case role selection, and depending on
whether the selection violates some criterion, either receiving and displaying
a message of violation or updating the data based on the selection and
communicating accordingly. Thus, claim 9 recites displaying a list, making
a selection, and updating data if the selection is proper, otherwise notifying
as to the impropriety. None of the limitations recite implementation details
for any of these steps, but instead recite functional results to be achieved by
any and all possible means. Data reception, analysis and modification, and
display are all generic, conventional data processing operations to the point
they are themselves concepts awaiting implementation details. The
sequence of data reception-analysis-display is equally generic and
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conventional. In fact, this is the prototypical conventional data editing
sequence of display-select-update (if proper). The ordering of the steps is
therefore ordinary and conventional. The remaining claims merely describe
additional data and messages, with no implementation details.
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, we 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 Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to comparing new and stored information and using rules to identify
options. Final Act. 3.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
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Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 9 does not recite what it is directed to, but the
steps in claim 9 result in updating data according to some selection if the
update is proper. The Specification at paragraph 2 recites that the invention
relates to managing medical case and chronology information for one or
more medical practices. Thus, all this evidence shows that claim 9 is
directed to editing medical data according to specified criteria, i.e., updating
data using data validity checks. This is consistent with the Examiner's
finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. The use of updating data using data validity checks is a
building block of ingenuity in data processing. Thus, updating data using
data validity checks, like hedging, is an "abstract idea" beyond the scope of
§ 101. See Alice Corp., 134 S. Ct. at 2356.
As in Alice Corp., we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of updating data using data validity
checks at issue here. Both are squarely within the realm of "abstract ideas"
as the Court has used that term. See Alice Corp., 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F .3d
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1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing
it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent-ineligible concept"); see also
In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 9, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and display
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314--15 (Fed. Cir. 2016) (finding claims not abstract because they "focused
on a specific asserted improvement in computer animation"). As such, claim
9 is directed to the abstract idea of receiving, analyzing, and displaying data.
The remaining claims merely describe additional data and messages. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the 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 "implement[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
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implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp., 134 S. Ct. at2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp., 134 S. Ct. at 2359. 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 for displaying a list, making a selection, and updating data if the
selection is proper, or otherwise notifying as to the impropriety amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., supra._In short, each step does no more than require a
generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-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)
(sequence of data retrieval, analysis, modification, generation, display, and
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transmission), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874
F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellants' method claims simply recite the concept
of updating data using data validity checks as performed by a generic
computer. To be sure, the claims recite doing so by advising one to select
data to update and then enter the update and let one know when the update is
improper. But this is no more than abstract conceptual advice on the
parameters for such updating data using data validity checks and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
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 updating data using data validity checks under
different scenarios. They do not describe any particular improvement in the
manner a computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of updating
data using data validity checks using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp., 134 S. Ct. at 2360.
As to the structural claims, they
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are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility "depend simply on the
draftsman's art."
Alice Corp., 134 S. Ct. at 2360.
We are not persuaded by Appellants' argument that "Appellants' claims
are patent eligible because they present no risk of preempting building
blocks of human ingenuity." App. Br. 14--15 (emphasis omitted). That the
claims do not preempt all forms of the abstraction or may be limited to the
abstract idea in the some setting do not make them any less abstract. See
OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-1361
(Fed. Cir. 2015). "Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo [/Alice] framework, as they
are in this case, preemption concerns are fully addressed and made moot."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Appellants' argument regarding the use of the Office's streamlined
analysis (App. Br. 15-16) is predicated on the aforementioned preemption
argument.
We are not persuaded by Appellants' argument that "Appellants' claims
are patent eligible because they contain limitations that demonstrate that
they are directed to significantly more than an abstract idea and that they are
tied to a particular application." App. Br. 17. As we find supra, claim 9
recites displaying a list, making a selection, and updating data if the
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selection is proper, otherwise notifying as to the impropriety. None of the
limitations recite implementation details for any of these steps, but instead
recite functional results to be achieved by any and all possible means. Data
reception, analysis and modification, and display are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). App. Br. 17-18. In DDR Holdings, the
Court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the Court
found that the claims were patent-eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The Court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings the
Court distinguished the patent-eligible claims at issue from claims found
patent-ineligible in Ultramercial. See id. at 1258-59 (citing Ultramercial,
772 F.3d at 715-16). As noted there, the Ultramercial claims were
"directed to a specific method of advertising and content distribution that
was previously unknown and never employed on the Internet before." Id.
at 1258 (quoting Ultramercial, 772 F.3d at 714). Nevertheless, those
claims were patent-ineligible because they "merely recite[d] the abstract
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idea of 'offering media content in exchange for viewing an advertisement,'
along with 'routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on public
access, and use of the Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
reading, receiving, analyzing, sending, and displaying data. This is
precisely the type of activity found ineligible in Ultramercial.
We are not persuaded by Appellants' argument that "the Pending Claims
describe a special purpose computer because the computer is specifically
programmed to perform a number of claimed functions." Reply Br. 5. The
claims only recite what the computer is to perform with no implementation
details of how to perform it. Thus, the computer itself is generic and no
particular programming implementation is recited. Indeed the Specification
describes using conventional personal computers. Specification para. 33.
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Claims 1-6, 8-14, 16-22, and 24 rejected under 35 USC§ 103(a) as
unpatentable over Cohen, Wager, Buist, Morgan, Besterman, and Pall
As we find supra, claim 9 recites displaying a list, making a selection,
and updating data if the selection is proper, otherwise notifying as to the
impropriety. This much Wager describes, albeit in the context of listing a
workforce and selecting medical personnel based on patient condition. The
Examiner applies Cohen for the various hardware components recited in the
structural claims. The remainder of the limitations are contextual. Cohen
allows for the management of information based on context and relevance
and so provides a reason for combining art based on context. This much of a
showing is likely sufficient as context in data processing is in the mind of
the beholder, which is generally given no patentable weight. See In re
Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
But the Examiner goes further to fill in the contextual details, applying
Buist to show it was known to select a particular role and communicate and
make that assignment accordingly, Morgan to show it was known that
particular roles were important in a given patient case for safety reasons,
Besterman to show it was known that such roles frequently were in relation
to responsibility for a particular stages in patient treatment, and Pall to show
it was known to warn of a role violation and at least temporarily stop the
process until the violation was somehow cleared. Thus, the Examiner did
not so much combine the processes and structures of the various references
as show all of the relevant contextual relationships already known about
roles caregivers take on. In such a context, the limitations as applied to
Buist's already known process on Buist's portable hardware was notoriously
predictable.
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We are not persuaded by Appellants' argument that "[t]he cited
references do not disclose 'case roles correspond[ing] to a responsibility ...
with respect to a stage in the active administration of medical care of the
patient."' App. Br. 20-21 ( emphasis omitted). First, as we find supra, as
this is a limitations discemable only to the human mind, it is undeserving of
patentable weight. Second, the limitation in context is
displaying a list of patient tracking records ... wherein each of
the patient tracking records includes ... one or more assigned
medical providers and, for each assigned medical provider, one
of a plurality of caregiver case roles ... wherein each of the
caregiver case roles corresponds to a responsibility of the one or
more assigned medical providers with respect to a stage in the
active administration of medical care of the patient.
Claim 9. Claim 1 is similar, except for reciting a wireless network interface
coupling to a central medical information management system, wherein the
system then is recited as having the tracking records and what follows in
claim 9. Claim 1 7 is similar to claim 1 except it goes into the management
system directly. Accordingly, all of the claims only recite the responsibility
correspondence limitation under contention as an attribute of a case role.
This correspondence does not functionally affect the structure or process and
so is undeserving of patentable weight. King Pharmaceuticals, Inc. v. Eon
Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010). (The relevant inquiry here
is whether the additional instructional limitation has a "new and unobvious
functional relationship" with the method, that is, whether the limitation in no
way depends on the method, and the method does not depend on the
limitation).
Further, in a medical context such as the claim and references, a role
such as anesthetist (described by Morgan) defines responsibilities with
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respect to a stage in the active administration of medical care of the patient,
and so the responsibility limitation is inherent.
We are not persuaded by Appellants' argument that
The independent claims are allowable because the cited
references do not disclose "if the case role selection violates
role handoff rules maintained by the medical information
management system, [] receiv[ing] a message indicating the
case role selection violation and [] display[ing] a message
indicating failure of the case role selection."
App. Br. 21-22 (emphasis omitted). Again, this limitation is no more than
receiving and displaying a message on selection failure. This much is
conventional user interface design as anyone using Microsoft Windows or
Apple computers over the last quarter century is aware. As we find supra,
the content of any message is undeserving of patentable weight for being
both discemable only to the human mind and as having no functional effect.
Certainly, it is predictable for any such message to be contextually relevant.
Therefore, the recited message would be predictable when a role selection
was improper according to selection criteria. Further, the Examiner finds
that Pall describes receiving and displaying a message on selection failure.
To the extent Appellants contend the criteria are not exactly as recited,
again, the Examiner applied the other references for such context and the
recited criteria would be predictable in that context.
We are not persuaded by Appellants' argument that "[i]t would not have
been obvious to combine the six cited references." App. Br. 22-24
( emphasis omitted). Appellants' arguments are those against conventional
combining of physical inventions in different references. As we find supra,
the Examiner does not combine the references so as much as show what was
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known about using a user interface in a medical context. The claims are not
combinations of different processes or structures, but instead recite a classic
and notoriously old user interface for selecting data. The arguments go the
context and data referred to, which in a medical context would be similar for
all references.
Appellants go on to separately argue each of claims 3, 6, and 8, along
with their similar counterparts. App. Br. 24--26. Claim 3 recites displaying
a confirmation message. Claim 6 recites sending a message to someone
currently assigned. Claim 8 recites criteria for what some rule prohibits.
Each of these are predictable and generally known in the message sending
arts. Besterman describes sending and displaying messages. Criteria such
as in claim 8 to prohibit over burdening particular staff, particularly in
specialized situations where safety is at stake, is common sense.
CONCLUSIONS OF LAW
The rejection of claims 1---6, 8-14, 16-22, and 24 under 35 U.S.C. § 101
as directed to non-statutory subject matter is proper.
The rejection of claims 1---6, 8-14, 16-22, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Cohen, Wager, Buist, Morgan, Besterman, and
Pall is proper.
DECISION
The rejection of claims 1---6, 8-14, 16-22, and 24 is affirmed.
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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.I36(a)(l)(iv) (2011).
AFFIRMED
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