Ex Parte Vahlberg et al

Patent Trial and Appeal Board

Sep 27, 2018

12140970 (P.T.A.B. Sep. 27, 2018)

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:
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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:
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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.
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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.,
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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
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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).
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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,
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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.
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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.
§ 1.136(a)(l )(iv).
AFFIRMED
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