Ex Parte Rosow et al

Patent Trial and Appeal Board

Nov 14, 2018

13117674 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/117,674 05/27/2011
141363 7590 11/16/2018
LOZA & LOZA, LLP/Allscripts
Peter Zura, Esq.
305 N. Second Avenue #127
Upland, CA 91786-6064
FIRST NAMED INVENTOR
Eric Rosow
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.
ALLS-1019CON7 8116
EXAMINER
LE, LINH GIANG
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
docketing@lozaip.com
peter@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC ROSOW, JOE ADAM, and CHRIS ROTH
Appeal2017-005975
Application 13/117 ,67 4
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claim 1 under 35 U.S.C. § 101 as being directed to a
judicial exception without significantly more. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Oct. 10, 2016), Reply Brief ("Reply Br.," filed Feb. 24,
2017), and Specification ("Spec.," filed May 27, 2011), and to the
Examiner's Answer ("Ans.," mailed Jan. 24, 2017) and Non-Final Office
Action ("Office Act.," mailed Mar. 8, 2016).
2 According to the Appellants, the real party in interest is Allscripts
Healthcare Solutions, Inc. Appeal Br. 3.
Appeal2017-005975
Application 13/117,674
STATEMENT OF THE CASE
The Appellants' invention "generally relates to the fields of automated
resource management and virtual instrument technology" (Spec. ,r 3), and
more particularly to "an easy-to-use intelligent application that is designed
to allow administrators, clinicians and managers to easily access, analyze
and display real-time patient and bed availability and related information
from ancillary information systems, databases and spreadsheets" (id. ,r 10).
Claim 1 is the sole claim on appeal and is reproduced below:
1. An apparatus for the graphical display of a facility's bed
management and room occupant status information, the
apparatus comprising:
(a) a display incorporating a plurality of icons viewed on
the display, each said icon simultaneously conveying a first level
of hospital room information regarding: bed management
information, including at least one of patient bed occupancy and
bed availability, said icons being arranged on said display in the
pattern of a floor plan of the facility;
(b) wherein each said icon is associated with one of said
rooms of said facility for which information is conveyed, the
icons being associated with a plurality of different rooms;
( c) wherein the display provides a link to secondary patient
information;
( d) wherein the secondary patient information is displayed
in response to user interaction with an icon of a patient occupied
room;
( e) wherein said icons are continually updated based on
information received from a patient admissions/discharge system
of a health care facility via transactional messages;
(f) wherein the secondary information is displayed solely
to authorized users of the apparatus;
(g) wherein one of the icons indicates a room is
unoccupied;
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(h) wherein one of the icons indicates a room is occupied;
(i) wherein one of the icons comprises a color indicating
one or more attributes of a patient occupying the room associated
with the icon;
(j) wherein the secondary patient information is medical
information of the patient occupying the patient occupied room;
and
(k) wherein a first one of the icons includes, for a first
patient in a room associated with the first one of the icons,
(i) color coding indicating a type of medical service
the first patient was provided,
(ii) a geometric symbol indicating whether the first
patient is an inpatient or outpatient, and
(iii) a count-down timer indicating time relative to
a scheduled discharge, the count-down timer displaying a
negative value to indicate the scheduled discharge for the
first patient is past-due a number of hours corresponding
to a displayed value of the count-down timer.
Appeal Br. 16-17 (Claims App.)
ANALYSIS
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 "long 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 Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588-89
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
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Laboratories, Inc., 566 U.S. 66, 78-79 (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. (emphasis
added) ( citing Mayo, 566 U.S. at 79). If so, the second step is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether the additional elements "'transform the nature of the
claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S.
at 78-79).
We first address the Appellants' contention that the Examiner failed to
establish a prima facie case of patent-ineligible subject matter because the
Examiner "failed to identify the particular abstract idea that the Examiner
believes the claims to be directed to." Appeal Br. 11. We disagree. In
rejecting the pending claims under § 101, the Examiner analyzed the claims
using the Mayol Alice two-step framework, in accordance with the guidance
set forth by the USPTO. See Office Act. 3--4. Specifically, the Examiner
notified the Appellants that the claim is directed to "the organization and
categorization of bed attribute and patient data," that is an abstract idea
"because it uses categories to organize, store and transmit information
(Cyberfone ), which has been found by the courts to be an example of an
abstract idea." Office Act. 3; Ans. 3 ( emphases omitted). The Appellants
acknowledge that the Examiner makes such a determination. Appeal Br. 9.
Turning to the first step of the Mayo/Alice framework, the Appellants
do not appear to disagree with the Examiner's determination as to what the
claim is directed. Rather, the Appellants argue that "if such a high level of
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abstraction is utilized, it is absurdly clear that the claims include additional
features that ensure that the claims are not a drafting effort designed to
monopolize the identified idea of 'the organization and categorization of bed
attribute and patient data'." Appeal Br. 9.
An examination of the claims shows that the apparatus of claim 1
comprises a display having: (1) icons that convey specific information, are
associated with other information, are continually updated, indicate
information, and comprises colors, symbols, and a timer (limitations (a), (b ),
(e), (g), (h), (i), (k)); and (2) links to secondary information displayed to
authorized users in response to a user interaction ((limitations (c), (d), (f),
and (j)). See Appeal Br. 16-17 (Claims. App). No further technical or
structural limitations of the display are claimed, and the Specification
describes the display generically. See Spec. ,r,r 53 ("display 24"), 72
( discussing displaying information on a computer screen), 86-88, 94--98,
105, 113, 114 (all discussing the system displaying information). As such,
the claim is directed to organizing, categorizing, and providing information, 3
without any limitations on how to produce the results or any inventive
technology.
The claim is similar to those claims found to be abstract in Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018)
("Recitation, as in this case, of the collection, organization, and display of
3 We note that although our description of the abstract idea may differ
slightly from that of the Examiner, "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). The Board's "slight revision of its
abstract idea analysis does not impact the patentability analysis." Id.
at 1241.
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two sets of information on a generic display device is abstract absent a
'specific improvement to the way computers [ or other technologies]
operate.' Enfzsh, 822 F.3d at 1336."), Elecric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) ("process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions ... [is] directed to an abstract idea."), Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (claims
comprising limitations of "maintaining the state [ of icons], furnishing icons
on a web page with a browser having Back and Forward navigation
functions, and displaying an online application form" were directed to the
abstract idea of "retaining information in the navigation of online forms"),
West View Research, LLC v. Audi AG, 685 F. App'x 923, 926 (Fed. Cir.
2017) ( claims directed to abstract idea of "receiving or collecting data
queries, analyzing the data query, retrieving and processing the information
constituting a response to the initial data query, and generating a visual or
audio response to the initial data query"), and Cyberfone Sys., LLC v. CNN
Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014) ("the idea of
collecting information in classified form, then separating and transmitting
that information according to its classification, is an abstract idea that is not
patent-eligible").
The Appellants argue that "it is very clear that the claim includes
additional features that ensure that the claim is not a drafting effort designed
to monopolize the identified abstract idea." Appeal Br. 9; Reply Br. 2. To
the extent the Appellants argue that the additional features are specific
enough to not be abstract, although there is a degree of particularity to the
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type of information displayed, the limitations describe only the abstract idea
of organizing and providing information. See Ultramercial, Inc. v Hulu
LLC, 772 F.3d 709, 715 (Fed Cir 2014). To the extent the Appellants argue
that, under the second step of the Mayo/Alice framework, the additional
features amount to significantly more than the abstract idea (see Appeal
Br. 9), we agree with the Examiner that the Appellants do not provide
reasoning or argument how or why "these additional features add anything
significantly more than the above-identified judicial exception." Ans. 4--5.
Regarding the Appellants' argument that the claim is not directed to
an abstract idea because it "poses no risk of pre-empting the identified
abstract idea" (Appeal Br. 10; see also Reply Br. 2), the Examiner correctly
notes that although the Supreme Court has described "the concern that drives
this exclusionary principle[, i.e., the exclusion of abstract ideas from patent
eligible subject matter,] as one of pre-emption" (see Alice, 134 S. Ct.
at 2354), characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. See Ans. 2. "The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability" and "[ fJor this reason, questions on preemption are inherent in
and resolved by the§ 1 OJ analysis." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354)
( emphasis added); cf Reply Br. 2-3. Although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id.
Turning to the second step of the Mayol Alice framework, in response
to the Appellants' argument that the claim "represent[s] an inventive
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concept" (Appeal Br. 9) because the Examiner states that "'[t]he pending
claim[] recite[ s] subject matter free of prior art'. Office Action, p. 4[, and]
Applicant respectfully submits that the features that have been found novel
and nonobvious similarly represent non-conventional features" (id. at 10; see
also Reply Br. 3--4), the Appellants misapprehend the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead to the
conclusion that the claimed subject matter is patent-eligible. Although the
second step is termed a search for an "inventive concept," the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for "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., 134 S. Ct. at 2355. An abstract
idea does not transform into an inventive concept just because the prior art
does not disclose or suggest it. See Mayo, 566 U.S. at 90; cf Reply Br. 4.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Myriad Genetics, 569 U.S. at 591. Indeed, "[t]he
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the§ 101 categories of possibly patentable subject matter." Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981).
The Appellants posit that "[ e ]ven assuming arguendo that this
functionality can be implemented utilizing conventional computer
technologies, the functionality which is provided can still represent an
inventive concept." Appeal Br. 9 (emphasis added). The Appellants cite
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) for the proposition that "an inventive concept can be
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found in the non-conventional and non-generic arrangement of known,
conventional pieces." Id. at 10. The Appellants state that the BASCOM
court "went on to hold that the claimed 'specific method of filtering Internet
content cannot be said, as a matter of law, to have been conventional or
generic."' Id. This legal proposition is accurate, but the proposition's
veracity is not persuasive of Examiner error. The Appellants do not apply
this legal principle to the present case. That is, the Appellants do not present
substantive arguments or evidence as to what particular combination of
elements in claim 1 allegedly produces a non-conventional and non-generic
arrangement of known, conventional elements.
In the Reply Brief, the Appellants "note[] that the Examiner has
offered no evidence that these activities [ of the limitations] are indeed
routine and conventional." Reply Br. 3; see also id. at 4. However, the
Appellants misconstrue the Examiner's rejection. The Examiner does not
find that the activities are "routine and conventional;" rather, the Examiner
determines that
Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually. There is no indication that the combination
of elements improves the functioning of a computer or improves
any other technology. Their collective functions merely provide
conventional computer implementation.
Ans. 5. As discussed above, claim 1 recites a generic display that operating
in its ordinary capacity to display data, as evidenced by the Specification.
See Spec. ,r,r 53, 72, 86-88, 94--98, 105, 113, 114. The Appellants do not
provide reasoning, evidence, or argument to the contrary.
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The Appellants also argue that
under a proper construction of 35 U.S.C. §101 which takes into
account the TRIPS [ Agreement on Trade Related Aspects of
Intellectual Property Rights] requirement that "patents shall be
available for any inventions, whether products or processes, in
all fields of technology, provided that they are new, involve an
inventive step and are capable of industrial application", the
claimed invention is clearly patent eligible.
Appeal Br. 15; see also id. at 12-14 (citing Alexander Murray v. The
Schooner Charming Betsy, 6 U.S. 64 (1804). We decline to address these
arguments regarding Charming Betsy and the canons of statutory
construction as they relate to interpreting 35 U.S.C. § 101. The Board does
not have the authority to supplant the Supreme Court's interpretation of
§ 101, as expressed in cases such as Mayo and Alice.
Thus, we are not persuaded that the Examiner erred in the rejection of
under 35 U.S.C. § 101 of claim 1.
DECISION
The Examiner's rejection of claim 1 under 35 U.S.C. § 101 is
AFFIRMED.
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
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