Ex Parte UTECH et al

Patent Trials and Appeals Board

Apr 18, 2019

13900502 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/900,502 05/22/2013
80236 7590 04/22/2019
Morgan, Lewis & Bockius LLP (OC)(BD)
600 Anton Boulevard
Suite 1800
Costa Mesa, CA 92626-7653
FIRST NAMED INVENTOR
Thomas William UTECH
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.
080625-0472 8192
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
04/22/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ocipdocketing@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS WILLIAM UTECH,
MARIA CONSOLACION JASKELA, and
WILLIAM LEE WEBSTER
Appeal2018-003502 1
Application 13/900,502
Technology Center 3600
Before JEREMY J. CURCURI, ADAM J. PYONIN, and
NABEEL U. KHAN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is listed as CareFusion 303, Inc. Br. 3.
Appeal2018-003502
Application 13/900,502
STATEMENT OF THE CASE
Introduction
The Application is directed "to medication distribution, and, in
particular, relates to systems and methods for managing retrieval of a
prepared medication in a healthcare facility." Spec. ,r 2. Claims 1-5, 7-16,
and 18-24 are pending; of these, claims 1, 11, 12, 22, 23, and 24 are
independent. Br. 23-31. Claim 1 is reproduced below for reference
( emphasis added):
1. A system for managing a retrieval of an unused
medication, the system comprising:
a memory comprising instructions; and
one or more processors configured to execute the
instructions to:
receive an identification of a plurality of unused
medications that have been delivered to patients at a plurality of
patient locations, and an identification of a current location of
each of the plurality of unused medications at their respective
patient locations;
determine an order in which to instruct a person to
retrieve at least two of the plurality of unused medications from
their respective patient locations and return the at least two of
the plurality of unused medications to a return location, wherein
the determination is based on at least one of an expiration date
of the at least two of the plurality of unused medications, an
estimated amount of time to retrieve each of the at least two of
the plurality of unused medications, a degree of urgency
associated with each of the at least two of the plurality of unused
medications, a cost associated with each of the at least two of the
plurality of unused medications, or an estimated distance to
retrieve each of the at least two of the plurality of unused
medications; and
provide, for display, an ordered listing in which the at
least two of the plurality of unused medications should be
retrieved from their respective patient locations, the ordered
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Application 13/900,502
listing based on the order for retrieving the at least two of the
plurality of unused medications.
Rejection
Claims 1-5, 7-16, and 18-24 stand rejected under 35 U.S.C. § 101 as
being patent ineligible. Final Act. 2.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Arguments Appellants could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines claim 1 is patent ineligible under 35 U.S.C.
§ 101, because the claimed invention is directed to a judicial exception (i.e.,
an abstract idea) without significantly more. Final Act. 2-5; see also Alice
Corp. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (describing the two-step
framework "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts").
After the docketing of this Appeal, the US PTO published revised
guidance on the application of§ 101 ("Guidance"). See USPTO' s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Memorandum"). Pursuant to the Guidance "Step 2A," the office
first looks to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a fundamental
economic practice, or mental processes); and
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(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.0S(a}-
( C ), ( e }-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then (pursuant to the
Guidance "Step 2B") look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality,
to the judicial exception.
See Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Guidance.
A. Step 2A
Appellants argue the Examiner errs in determining claim 1 is abstract,
because "the alleged identified abstract idea is not similar on its face to the
alleged abstract ideas" previously identified, and "further the Office Action
fails to 'explain why [the alleged abstract idea] corresponds to a concept that
the courts have identified as an abstract idea."' Br. 16 ( quoting the May
2016 Update: Memorandum - Formulating a Subject Matter Eligibility
Rejection and Evaluating the Applicant's Response to a Subject Matter
Eligibility Rejection.).
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Application 13/900,502
We are not persuaded the Examiner errs in determining claim 1 is
directed to an abstract idea. See Ans. 9-10. Particularly, we determine the
claim "recites a judicial exception" ( Guidance Prong One) and does not
"integrate the exception into a practical application of that exception"
(Guidance Prong Two). Memorandum Section III (Instructions for
Applying Revised Step 2A During Examination), 84 Fed. Reg. at 54.
Prong One
Pursuant to Step 2A, Prong One of the Guidance, we are not
persuaded the Examiner errs in determining claim 1 recites an abstract idea.
See Final Act. 3; Memorandum Section III (A) (1) (Prong One: Evaluate
Whether the Claim Recites a Judicial Exception), 84 Fed. Reg. at 54. Claim
1 recites a "system for managing a retrieval of an unused medication," with
the system configured to perform the method steps italicized supra. These
steps coordinate a delivery person's route so the "delivery person may then
retrieve the discontinued medications and return them to a workroom in the
pharmacy" (Spec. ,r 20), and are steps of "managing personal behavior or
relationships or interactions between people (including social activities,
teaching, and following rules or instructions)" (Memorandum Section I, 84
Fed Reg. at 52). The italicized limitations are therefore "[ c ]ertain methods
of organizing human activity." Memorandum Section I, 84 Fed Reg. at 52;
see also Spec. ,r 130.
Accordingly, we conclude the claims recite an abstract idea under
Prong One of the Guidance. Memorandum, 84 Fed. Reg. at 52, 54.
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Prong Two
We are also not persuaded the Examiner's rejection is in error
pursuant to Step 2A, Prong Two of the Guidance. Other than the limitations
reciting the judicial exception, the claim recites a memory and one or more
processors to implement the judicial exception. Thus, the "additional
element[ s] merely recites the words 'apply it' ( or an equivalent) with the
judicial exception, or merely includes instructions to implement an abstract
idea on a computer, or merely uses a computer as a tool to perform an
abstract idea." Memorandum, 84 Fed. Reg. at 55.
Further, Appellants' argument regarding preemption does not show
Examiner error (see Br. 17-19). Appellants broadly claim a method of
determining a retrieval order for unused medications. See Final Act. 3.
Based on the record before us, claim 1 would appear to "pre-empt use of this
approach in all fields, and would effectively grant a monopoly over an
abstract idea." Bilski v. Kappas, 561 U.S. 593, 612, (2010). More
importantly, we agree with the Examiner that any questions on preemption
in the instant case have been resolved by the analysis herein, the Final
Action, and the Examiner's Answer. See Ans. 3; Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
("[W]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Alice framework, as they are in this case,
preemption concerns are fully addressed and made moot.").
Accordingly, we determine claim 1 does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. As the "claim recites a judicial exception and fails to integrate the
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exception into a practical application" (id. at 51 ), "the claim is directed to
the judicial exception" (id. at 54).
B. Step 2B
Appellants argue "Claim 1 as a whole amounts to significantly more
than the abstract idea because, for example, Claim 1 adds specific limitations
other than what is well-understood, routine, and conventional in the field."
Br. 19. Particularly, Appellants contend claim 1 does not "instruct a
pharmacist to fill a new order for medication in response to a need for the
medication, but instead describes 'a process that differs from the routine and
conventional sequence of events normally conducted by' a pharmacist, such
as receiving an order and filling the order." Br. 19-20.
We are not persuaded the Examiner errs in determining the claim does
not recite additional elements which "transform an otherwise abstract idea
into patent-eligible subject matter." Ans. 12. Outside of the identified
judicial exception, the claim recites hardware limitations that "merely
provide typical computer system, or existing computing devices, or general
purpose computing system environment" and that "perform no more than
their basic computer functions." Ans. 12-13; Spec. ,r,r 30, 32-34, 45-54;
see also Alice, 573 U.S. at 226. The claimed unique sequence of events
argued by Appellants (see, e.g., Br. 19) is part of the identified judicial
exception, as these limitations are steps of the organizing human activity of
"managing a retrieval of an unused medication." Final Act. 2. Thus, the
disputed limitations are not additional elements that amount to significantly
more than the exception itself. See Memorandum 84 Fed. Reg. at 56; see
also Memorandum Fn. 24 ("USPTO guidance uses the term 'additional
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Application 13/900,502
elements' to refer to claim features, limitations, and/ or steps that are recited
in the claim beyond the identified judicial exception.").
Accordingly, we agree with the Examiner that claim 1 is patent
ineligible.
C. Claim 11
Appellants' arguments with respect to independent claim 11 are
similar to arguments provided for independent claim 1 :
Claim 11 adds specific limitations other than what is well-
understood, routine, and conventional in the field. For example,
the combination of "receiv[ing] an identification of a first
medication to be delivered to a first patient location" and
"determin[ing] a route comprising an order in which to deliver
by a person the first medication to the first patient location and
retriev[ing] by the person at least one second medication
previously delivered to a patient at a second patient location"
( emphasis added) (instead of simply delivering the first
medication) does not merely instruct a person to deliver a new
order for medication in response to a need for the medication, but
instead describes "a process that differs from the routine and
conventional sequence of events normally conducted by" a
delivery person, such as by the delivery person also retrieving a
medication.
Br. 20.
We are not persuaded of Examiner error, for similar reasons discussed
above with respect to independent claim 1. The claimed steps are part of the
identified judicial exception, as these limitations are steps of the organizing
human activity of managing delivery of medications. 2 See Final Act. 3.
2 Specifically, claim 11 recites the following limitations which are certain
methods of organizing human activity ( e.g., managing personal behavior or
relationships or interactions between people (including social activities,
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Thus, the disputed limitations are not additional elements that amount to
significantly more than the judicial exception itself, and we agree with the
Examiner that claim 11 is patent ineligible. See Final Act. 2--4.
CONCLUSION
We sustain the Examiner's rejection of independent claims 1 and 11.
Appellants advance no further substantive argument on the remaining
claims. See Br. 21. Accordingly, we sustain the Examiner's rejection of
these claims for the same reasons discussed above.
DECISION
The Examiner's decision rejecting claims 1-5, 7-16, and 18-24 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).
teaching, and following rules or instructions)): receive an identification of a
first medication to be delivered to a first patient location; determine a route
comprising an order in which to deliver by a person the first medication to
the first patient location and retrieve by the person at least one second
medication previously delivered to a patient at a second patient location,
wherein the determination is based on the first patient location, the second
patient location, and at least one of an expiration date of the first or the at
least one second medication, an estimated amount of time to deliver the first
medication, an estimated amount of time to retrieve the at least one_second
medication, a degree of urgency associated with each of the first and the at
least one second medication, a cost associated with each of the first or the at
least one_second medication, and an estimated distance to retrieve each of
the first and the at least one second medication; and provide, for display, the
determined route.
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AFFIRMED
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