Ex Parte Vahlberg et alDownload PDFPatent Trial and Appeal BoardSep 27, 201812140970 (P.T.A.B. Sep. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/140,970 06/17/2008 20350 7590 10/01/2018 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 UNITED ST A TES OF AMERICA John V ahlberg 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. 79816-004223US-726084 4452 EXAMINER REYES, REGINALD R ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 10/01/2018 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN V AHLBERG, DAN COHEN, JENNIFER CARTRIGHT, RICHARD CALDWELL, and JEFF BLANK Appeal2017-002382 Application 12/140,970 Technology Center 3600 Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and JAMES W. DEJMEK, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-3, 5-11, 13-15, and 17-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2017-002382 Application 12/140,970 CLAIMED SUBJECT MATTER The claims are directed to management of patient transfer systems, methods, and devices. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for managing a patient transfer, the system compnsmg: a plurality of dispensing devices of a healthcare facility, the plurality comprising a first dispensing device and a second dispensing device each with one or more patient-specific bins allocated for assignment to the patient for exclusive storage of medications for the patient, each dispensing device being used in a different location within the healthcare facility in caring for the patient; and a central server computer system, communicatively coupled to the first dispensing device and the second dispensing device, and configured to: receive a set of transfer data indicating the patient is to be transferred from a first location associated with the first dispensing device to a second location associated with the second dispensing device; store a set of bin configuration data identifying a configuration of patient-specific bins assigned to the patient at the first dispensing device, the bin configuration data including information on medications stored in the assigned patient-specific bins and arrangement data on the storage of the medications within the assigned patient-specific bins; automatically identify a bin configuration for the second dispensing device based on the bin configuration data of the first dispensing device; and transmit the identified bin configuration to the second dispensing device in response to receipt of the set of transfer data, the transmitted bin configuration compnsmg: 2 Appeal2017-002382 Application 12/140,970 a listing of medication to be transferred to the second dispensing device; an identification of bins for storage of each of the items of the listing of medications; and arrangement data on the storage of the listing of medications within the identified bins. REJECTIONS Claims 1-3, 5-11, 13-15, and 17-25 stand rejected under 35 U.S.C § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea), without significantly more. OPINION Appellants argue that the Examiner ignores the unique aspects of the claims in concluding that the claim is directed to an abstract idea. App. Br. 9. Appellants explain that the specific bin configuration between two dispensing devices may differ and the bins of a dispensing device located in an operation room may be different from the bins of a dispensing device located in a patient care room since the two rooms serve significantly different functions. Id. According to Appellants, the claimed central system is able to account for these differences by receiving the bin configuration and medication/supply arrangement data of a first dispensing device and then processing this information to identify a proper bin configuration and medication/supply arrangement for the selected bin. Id. at 9-10. This concept is captured in claim 1 in at least the following recitations: 3 Appeal2017-002382 Application 12/140,970 automatically identify a bin configuration for the second dispensing device based on the bin configuration data of the first dispensing device; and transmit the identified bin configuration to the second dispensing device in response to receipt of the set of transfer data, the transmitted bin configuration comprising: a listing of medication to be transferred to the second dispensing device; an identification of bins for storage of each of the items of the listing of medications; and arrangement data on the storage of the listing of medications within the identified bins. App. Br. 10. According to Appellants, the above recitations do not involve a mere use of "categories to organize, store and transmit information" and/ or a comparison of "new and stored information and using rules to identify options," but rather, a unique process of solving specific problems for specialized machines. Id. Appellants further argue that the claims add significantly more than the judicial exception since the claimed process is applied to improve an existing technology, namely the logistics of personnel, equipment, and supplies within a healthcare facility. Id. at 14. Specifically, the steps provide increased central control of the operations within the healthcare facility and movement of the patient's medications within the facility, which results in a faster operation of the various tasks that are performed within the facility and results in a faster movement of personnel and supplies within the facility. Id. 4 Appeal2017-002382 Application 12/140,970 Appellants note that the claims are not rejected under 35 U.S.C. § 102 or § 103 over any cited art, and thus, the claims cannot contain elements that are routine and well known in the art. App. Br. 13. We are not persuaded by Appellants' arguments. The Supreme Court's two-step framework guides our analysis. See Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). According to step one, "[w]e must first determine whether the claims at issue are directed to a patent- ineligible concept," such as an abstract idea. Id. The Examiner concludes, and we agree that the instant invention recites an abstract idea of "receiving a set of transfer data indicating the patient is to be transferred," "storing a set of bin configuration data," "identifying a bin configuration," "transmitting the identified bin configuration" which correlates to the abstract idea of comparing new and stored information and then using rules to identify options. Ans. 4. The Examiner further finds that the bin configurations are actually comparing what was listed in the original bin and then transferred to the new bin, thereby keeping track of the arrangement of medication/supply in the bin being transferred using a database as a tool to keep track of the bins and its contents. Id. Appellants' claim 1 is directed to a computer-implemented process for using categories to organize, store and transmit information and/or a comparison of new and stored information and using rules to identify options. With regard to the first step in Alice, the execution of operations as claimed do nothing more than computer implemented executions to organize, store, transmit, and use rules to identify options, which amounts to an abstract idea. See, e.g., 5 Appeal2017-002382 Application 12/140,970 Fargo Bank Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (collecting data, recognizing certain data within the collected data set, and storing the recognized data in memory is "undisputedly well-known"); Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014) ("using categories to organize, store, and transmit information is well- established"); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) ("[t]he advance they purport to make is a 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"); In re TL! Commc 'ns LLC Patent Litig., 823 F .3 d 607, 613 (Fed. Cir. 2016) ("attaching classification data ... to images for the purpose of storing those images in an organized manner is a well- established 'basic concept' sufficient to fall under Alice step 1 "). We further note, that the method steps are similar to the abstract idea in Cyberfone, where the Court held that "using categories to organize, store, and transmit information is well-established," and "the well-known concept of categorical data storage, i.e., 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." Cyberfone, 558 F. App'x at 992. Here, as in Cybeifone, information is stored, organized, and transmitted, and claim 1, therefore, merely recites an abstract idea. Additionally, although we note that the claim does not recite a step of actually dispensing the medication, even if it did, the computer would be merely employed to perform a prescription process to automate a task previously performed by humans (i.e., following medical protocols in 6 Appeal2017-002382 Application 12/140,970 dispensing medications). The claimed invention, thus, merely combines a commonly used dispending prescription process, which merely automates a commonly used manual process, with the idea of collecting information in classified form, and separating and transmitting that information according to its classification. Merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F .3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea ... does not render the claim non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) ( determining the pending claims were directed to a combination of abstract ideas). Thus, we agree with the Examiner's conclusion that the transfer of information from one device to another is not specialized or unique. Ans. 4. Because the claims are "directed to an abstract idea," we consider the claim limitations "both 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 2355-56 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)). The Supreme Court has described this analysis "as a search for an 'inventive concept."' Alice, 134 S. Ct. at 2355. Put differently, we must search the claims 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, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72-73). 7 Appeal2017-002382 Application 12/140,970 Appellants' Specification recites that a "dispensing device" may be any cabinet or other device for dispensing medications or other medical supplies, may include a computer and console to manage the storage and distribution of medical supplies, and may be networked to communicate with a central server. Spec. paras. 64 and 65. The Examiner finds, and we agree, the central server computer system in the claims according to the Specification in paragraph 70 recites "the central server computer system 105 may include, for example, one or more server computers, personal computers, workstations, web servers, or other suitable computing devices," and while in paragraph 87 it recites "that the central server computer system 105 is communicatively connected (perhaps over a network) to data stores 110 stored in local or remote memory." Ans. 5. The Examiner concludes that the claimed elements of the recited system do not add meaningful limitations to the identified abstract idea(s) claimed beyond generally linking the judicial exception to a particular technological environment, that is, implementation via computers. Id. Thus, taken alone and in ordered combination, the additional elements do not amount to significantly more than the above-identified abstract idea. Id. Furthermore, our reviewing court decided that "relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F. 3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359 ("use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions" is not an inventive concept)). Accordingly, claim 1, at best, utilizes only a generic computer component, which does not constitute an inventive concept. "[ A ]fter Alice, 8 Appeal2017-002382 Application 12/140,970 there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. The bare fact that a computer exists in the physical rather than purely conceptual realm is beside the point." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations and quotation marks omitted). With regard to Appellants' argument that the pending claims are patent eligible because there are no obviousness or novelty rejections of the claims, Appellants improperly conflate the requirements for eligible subject matter(§ 101) with the independent requirements of novelty(§ 102) and non-obviousness(§ 103). "The '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); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, "under the Mayo/Alice framework, a claim directed to a newly discovered law of nature ( or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility"). Accordingly, we affirm the Examiner's rejection of claim 1 and, for the same reasons, the rejection of claims 2, 3, 5-11, 13-15, and 17-25. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). DECISION The Examiner's rejection of claims 1-3, 5-11, 13-15, and 17-25 is affirmed. 9 Appeal2017-002382 Application 12/140,970 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. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation