Langdon, Robert W.Download PDFPatent Trials and Appeals BoardMay 4, 202012171160 - (D) (P.T.A.B. May. 4, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/171,160 07/10/2008 Robert W. Langdon TSYP.P0002US/1000082303 2443 29053 7590 05/04/2020 NORTON ROSE FULBRIGHT US LLP 2200 ROSS AVENUE SUITE 3600 DALLAS, TX 75201-7932 EXAMINER PORTER, RACHEL L ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 05/04/2020 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): doipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT W. LANGDON ____________ Appeal 2019-000799 Application 12/171,160 Technology Center 3600 ____________ Before BARBARA A. BENOIT, JOHN F. HORVATH, and MICHAEL M. BARRY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 3–17, and 19–30, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer herein to the Appeal Brief (“Appeal Br.”) filed Apr. 26, 2018, the Examiner’s Answer (“Ans.”) mailed Sept. 7, 2018, the Reply Brief (“Reply Br.”) filed Nov. 7, 2018, the Final Office Action (“Final Act.”) mailed Oct. 24, 2017, and the original Specification (“Spec.”) and Figures (“Figs.”) filed July 10, 2008. 2 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as T-System, Inc. Appeal Br. 2. Appeal 2019-000799 Application 12/171,160 2 Introduction Appellant describes the disclosed invention as “relate[d] to hospital order entry systems and more particularly to systems and methods for improving medical order entry for high volume situations.” Spec. ¶ 1. By arranging the input screen of a computerized medical order entry system to display pre-defined order-set possibilities for several categories (for example, labs, diagnostic, staff, medications) where the displayed order-set is directly related to a selected one of a plurality of medical emergency conditions, the physician can easily select orders from a single screen while conducting a patient interview or examination. The system allows the physician to concurrently select orders from order- sets associated with medical conditions different from the initially selected medical condition. In one embodiment, an elapsed time for an order is displayed for overall monitoring of patients. Abstract. Claims 1, 8, and 16 are independent. Claim 1 is illustrative: 1. A machine controlled method for medical practice order entry, said method comprising: executing, by a processing device, a computerized medical order entry program which is configured to populate an order selection display to accept medical orders from a user; displaying, under control of said processing device, a single page display containing a first section which lists a plurality of selectable medical conditions; displaying in the single page display, under control of said processing device, a plurality of columns of possible orders, each column in said plurality of columns displayed concurrently with each other; associating each column of said plurality of columns with a different category of a plurality of categories of medical order types; Appeal 2019-000799 Application 12/171,160 3 receiving a selection, from said user, of a medical condition of the plurality of selectable medical conditions, wherein the selection by said user is made using an input device of said machine; identifying a plurality of pre-defined order sets based on the selected medical condition, wherein each pre-defined order set of the plurality of pre-defined order sets comprises predefined individually selectable orders that are pre-defined to be directly related to said selected medical condition; determining, for each pre-defined order set of the plurality of pre-defined order sets, with which category of a plurality of categories of medical order types each pre-defined order set is associated; populating each column of the plurality of columns on said single page display with respective pre-defined order sets based on the associated category of medical order types; receiving a selection, by said user, of multiple ones of said pre-defined individually selectable orders, at least one of said multiple ones of said predefined individually selectable orders being further modifiable by said user upon being selected by said user; receiving information, from the user, modifying the at least one of said multiple ones of said predefined individually selectable orders; updating the at least one of said multiple ones of said predefined individually selectable orders based on the received information; providing to a centralized server, said selected multiple ones of said pre-defined individually selectable orders, wherein the centralized server is configured to: record in a database said selected multiple ones of said pre-defined individually selectable orders; generate a workflow based on said selected multiple ones of said pre-defined individually selectable orders; Appeal 2019-000799 Application 12/171,160 4 send a first request to a first department ordering a first medical service be performed by the first department; and send a second request to a second department ordering a second medical service be performed by the second department. Appeal Br. 22–23 (Claims App’x). Rejections and References The Examiner rejected claims 1, 3–17, and 19–30 under 35 U.S.C. § 101 as directed to a judicial exception, without reciting significantly more. Final Act. 2–7. The Examiner rejected claims 16, 17, 19–21, and 28–30 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 7–8. The Examiner rejected claims 8–10, 14, and 15 under 35 U.S.C. § 102(b) as anticipated by Rucker (US 2005/0015279 A1; Jan. 20, 2005). Final Act. 8–12. The Examiner rejected claims 25–27 under 35 U.S.C. § 103(a) as unpatentable over Rucker and Coli (US 6,018,713; Jan. 25, 2000). Final Act. 13–14. The Examiner rejected claims 11–13 under 35 U.S.C. § 103(a) as unpatentable over Rucker and Batch (US 2006/0200369 A1; Sept. 7, 2006). Final Act. 14–15. Appeal 2019-000799 Application 12/171,160 5 ANALYSIS The § 101 Rejection For the § 101 rejection, Appellant argues all pending claims together as a group. Appeal Br. 6–15. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us to “first determine whether the claims at issue are directed to a patent-ineligible concept.” Id. at 218. In this case, the inquiry centers on whether the claims are directed to an abstract idea. If the initial threshold is met, we then move to the second step, in which we “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.” Id. at 217–18 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes the second step 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.’” Id. (quoting Mayo, 566 U.S. at 72–73). In 2019, the USPTO published revised guidance on the application of § 101 consistent with Alice and subsequent Federal Circuit decisions. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50– 57 (Jan. 7, 2019) (“Guidance”) see also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942–53 (Oct. 17, 2019) (providing “examples as well as a discussion of various issues raised by the public Appeal 2019-000799 Application 12/171,160 6 comments” to the Guidance). Under the Guidance, we first look to whether the claim recites: (1) 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) (referred to as Step 2A, prong 1 in the Guidance); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (referred to as Step 2A, prong 2 in the Guidance). See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then move to Step 2B of the Guidance, in which we look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(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 Guidance, 84 Fed. Reg. at 56. Alice/Mayo Step One, 2019 Guidance Step 2A, Prong One (Does Claim 1 Recite a Patent-Ineligible Concept?) For our prong one analysis, we set aside the following quoted elements recited in claim 1: (1) “machine[-]controlled” from the preamble; (2) that the first recited step recites “executing, by a processing device, a computerized” for the medical order entry program; (3) that the second and third steps are performed “under control of said processing device;” (4) that user input in the fifth step is by a device “of said machine;” and (5) “server” from the twelfth step. We consider those elements as “additional elements” Appeal 2019-000799 Application 12/171,160 7 (individually and in combination) in our analyses below under prong two of step 2A and under step 2B. Setting aside those quoted limitations, claim 1 recites a “method for medical practice order entry” that requires: [a] [using a] medical order entry program which is configured to populate an order selection display to accept medical orders from a user; [b] displaying . . . a single page display containing a first section which lists a plurality of selectable medical conditions; [c] displaying in the single page display . . . a plurality of columns of possible orders, each column in said plurality of columns displayed concurrently with each other; [d] associating each column of said plurality of columns with a different category of a plurality of categories of medical order types; [e] receiving a selection, from said user, of a medical condition of the plurality of selectable medical conditions, wherein the selection by said user is made using an input device . . . ; [f] identifying a plurality of pre-defined order sets based on the selected medical condition, wherein each pre-defined order set of the plurality of pre-defined order sets comprises predefined individually selectable orders that are pre-defined to be directly related to said selected medical condition; [g] determining, for each pre-defined order set of the plurality of pre-defined order sets, with which category of a plurality of categories of medical order types each pre-defined order set is associated; [h] populating each column of the plurality of columns on said single page display with respective pre-defined order sets based on the associated category of medical order types; [i] receiving a selection, by said user, of multiple ones of said pre-defined individually selectable orders, at least one of said multiple ones of said predefined individually selectable orders being further modifiable by said user upon being selected by said user; Appeal 2019-000799 Application 12/171,160 8 [j] receiving information, from the user, modifying the at least one of said multiple ones of said predefined individually selectable orders; [k] updating the at least one of said multiple ones of said predefined individually selectable orders based on the received information; [l] providing to a centralized [entity], said selected multiple ones of said pre-defined individually selectable orders, wherein the centralized [entity] is configured to: [i] record in a database said selected multiple ones of said pre-defined individually selectable orders; [ii] generate a workflow based on said selected multiple ones of said pre-defined individually selectable orders; [iii] send a first request to a first department ordering a first medical service be performed by the first department; and [iv] send a second request to a second department ordering a second medical service be performed by the second department. Step (a) requires using a “medical order entry program which is configured to populate an order selection display to accept medical orders from a user.” This encompasses, for example, a human-run program of creating and using paper forms that display information for placing medical orders, which people can then use for accepting such orders. Thus, step (a) recites an idea for managing interactions between people, following rules or instructions, which is an abstract idea in the category of certain methods of organizing human activity. 2019 Guidance, 84 Fed. Reg. at 52. Steps (b) and (c) recite displaying “a single page display containing a first section which lists a plurality of selectable medical conditions” and “a plurality of columns of possible orders, each column in said plurality of Appeal 2019-000799 Application 12/171,160 9 columns displayed concurrently with each other” in that single page display. Extending the previous example, these steps encompass using a binder of forms. An initial single page form includes a section displaying checkbox selectable medical conditions (along with other suitable information that may be entered at the point of selecting a medical condition, e.g., patient- identifying information). Subsequent single page forms that correspond to selectable medical conditions are then used for selecting and entering medical order information for those medical conditions. Each of the subsequent forms includes the “condition selection” column from the initial page, highlighted to indicate the medical condition selected, together with side-by-side columns of checkbox selectable medical orders specific to the selected medical condition. Similar to step (a), steps (b) and (c) describe activities for managing interactions between people, following rules or instructions, and therefore also recite abstract ideas in the category of certain methods of organizing human activity. Id. Step (d) recites “associating each column of said plurality of columns with a different category of a plurality of categories of medical order types.” Continuing on with the foregoing example, this describes an action that a person designing the single-page medical order entry forms can perform mentally, using no more technology than pen and paper. Thus, step (d) recites an abstract idea in the category of mental processes. Id. We also note that steps (a)–(c), to the extent they may be performed by people with no more technology than pen and paper, also recite mental processes. Step (e) recites “receiving a selection, from said user, of a medical condition of the plurality of selectable medical conditions, wherein the selection by said user is made using an input device.” This encompasses, in Appeal 2019-000799 Application 12/171,160 10 the example above, a doctor checking a box to select a medical condition on the form, or flipping through the binder of forms to the page that has that medical condition highlighted. Thus, step (e) also recites an abstract idea in the category of certain methods of organizing human activity, i.e., managing interactions between people, following rules or instructions. Id. Steps (f)–(l) similarly describe abstract ideas in the categories of certain methods of organizing human activities and mental processes. Similar to the “associating’ limitations in step (d), the “identifying” and “determining” limitations in steps (f) and (g) encompass mental processes. For step (h), “populating each column of the . . . display” is similar to the “displaying” in steps (b) and (c); the example given for those steps also applies to step (h). Here, the “populating” is done by the form designer, who populates each form with the checkbox selectable medical orders that are specific to that forms selected medical condition. Similar to step (e), the “receiving a selection” and “receiving information” limitations in steps (i) and (j) describe certain methods of organizing human activity (i.e., managing interactions between people using rules or instructions) and/or mental processes. Steps (k) and (l) similarly recite limitations that are abstract as either or both a certain method of organizing human activity or a mental process. For example, upon selecting an order in step (i) (e.g., a prescription), information received in step (j) (e.g., a patient’s weight) can be used to update the order in step (k) (e.g., by specifying a pharmaceutical dosage on the form). Thus, each step of claim 1 recites abstract limitations that are part of, as the preamble describes, the claim’s idea for “medical practice order entry.” Here, we note that “[a]dding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.” Appeal 2019-000799 Application 12/171,160 11 RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322, 1327 (Fed. Cir. 2017); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a combination of abstract ideas). Accordingly, under the 2019 Guidance, claim 1 recites a judicial exception, and our analysis proceeds to prong two. Alice/Mayo Step One, 2019 Guidance Step 2A, Prong Two (Does Claim 1 Integrate the Abstract Idea into a Practical Application?) We next consider whether the claim integrates the abstract idea into a practical application. 2019 Guidance, 84 Fed. Reg. at 54. To determine this, we identify whether there are “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements to determine whether they integrate the judicial exception into a practical application. 84 Fed. Reg. at 54–55 (emphasis added); see also MPEP § 2106.05(a)–(c), (e)–(h). Here, as discussed above, claim 1 recites the following quoted elements in addition to the abstract idea: (1) that the method is “machine[- ]controlled” (in the preamble); (2) the use of a “processing device” in steps (a)–(c); (3) the use of “an input device of said machine” in step (e); and (4) a “centralized server” in step (l). All these additional elements are recited in the claim and described in the specification at a high, generic level. See, e.g., Spec. ¶¶ 36–39 (referring to servers), 43 (referring to a processor), 49 (explaining that the scope of the claim is not limited to any particular machine). Although the additionally recited elements add a certain level of specificity to claim 1, they do not, alone or in combination, constitute an Appeal 2019-000799 Application 12/171,160 12 improvement to a technology or technical field. Instead, they constitute generic recitations of those technologies for automating performance of the abstract idea. Thus, they do not constitute an improvement to “the functioning of the computer itself” or “any other technology or technical field.” See MPEP § 2106.05(a) (quoting Alice, 573 U.S. at 225). Neither do these computer limitations qualify as applying the judicial exception with “a particular machine,” because these components provide their conventional functions and require no more than general purpose computer equipment. See MPEP § 2106.05(b); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014); TLI Commc’ns LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (explaining that mere recitation of concrete or tangible components is not an inventive concept). Appellant’s arguments similarly do not persuade us that claim 1 effects a transformation of any recited articles, which are simply used for their ordinary purposes, or that claim 1 includes any other meaningful (technological) limitations, i.e., limitations beyond simply “linking the use” of the abstract idea to generic technology. See MPEP § 2106.05 (c), (e)–(f); see also id. at (g) (use of well-known limitations beyond the judicially excepted matter constitutes “insignificant extra-solution activity”), (h) (claim limitations “merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more”). Accordingly, we determine the recited judicial exception is not integrated into a practical application, and that the Examiner did not err in determining claim 1 is directed to an abstract idea. Accordingly, we proceed to step two of the Alice/Mayo analysis (2019 Guidance Step 2B) Appeal 2019-000799 Application 12/171,160 13 Alice/Mayo Step Two; 2019 Guidance Step 2B (Does Claim 1 Recite Significantly More than the Abstract Idea?) In step two of the Alice/Mayo analysis, we consider whether there are additional limitations that individually, or as an ordered combination, ensure the claims amount to “significantly more” than the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. at 72–73, 77–79 (2012)). As the 2019 Guidance explains, many of the considerations to determine whether a claim amounts to “significantly more” under step two of the Alice framework are already considered as part of determining whether the judicial exception has been integrated into a practical application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we determine if claim 1 adds a specific limitation, or combination of limitations, that is not well-understood, routine, conventional activity in the field; or whether it simply recites well-understood, routine, conventional activities at a high level of generality. Id. Here, as the Examiner finds, and we agree, claim 1 does not recite limitations (or a combination of limitations) additional to those for the abstract idea that are beyond what were known to those of ordinary skill in the art to be well-understood, routine, and conventional prior to the invention. Final Act. 5–6; Ans. 20–21. The high-level, generic disclosure of computer automation features in Appellant’s Specification related to claim 1 confirm this. See, e.g., Spec. ¶¶ 36–39, 43, 49. Discussion of Appellant’s § 101 Arguments Appellant’s arguments of error in the § 101 rejection are unpersuasive in view our above determination under the 2019 Guidance that claim 1 is Appeal 2019-000799 Application 12/171,160 14 directed to an abstract idea, without reciting significantly more. Regardless, for clarification, we discuss some of Appellant’s arguments. Appellant contends the “claims are directed to patent eligible subject matter, especially in view of Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., [880 F.3d 1356] (Fed. Cir. 2018), and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016).” Appeal Br. 6; see also id. at 8–14 and Reply Br. 2–5. Appellant further contends claim 1 is patent eligible based on its similarity to the claims at issue in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), Diamond v. Diehr, 450 U.S. 175 (1981), and Trading Techs. Int’l v. CGQ, 675 F. App’x 1001 (Fed. Cir. 2017). Appeal Br. 7–8. These arguments are unpersuasive. In Core Wireless, for example, the claims at issue were “directed to a particular manner of summarizing and presenting information in electronic devices” that addressed identified user interface deficiencies for electronic devices with small screens. 880 F.3d at 1362; see also id. at 1359–60 (setting forth exemplary claims), 1363 (highlighting discussion in the specification of improvements over conventional user interfaces). The Core Wireless claims focus on a user interface improvement that includes a specific technological limitation for “un-launched” software applications. Id. The user interface functionality recited in Appellant’s claim 1, on the other hand, includes only generic technological limitations and otherwise is abstract (e.g., as discussed above, claim 1’s limitations for displaying a particular arrangement of information on a single page display is abstract). Claim 1 is similarly distinguishable from the claims at issue in Enfish, see 822 F.3d at 1336–37 (claim at issue included software technology limitation for a “self-referential” database table), and McRO, see 837 F.3d at 1307–08, Appeal 2019-000799 Application 12/171,160 15 1315–16 (claim at issue included limitations related to “sub-sequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing (as represented by [a] morph weight set)”). In Diehr, the Court held the claims patent eligible because they were “drawn to an industrial process for the molding of rubber products.” 450 U.S. at 192–93 (determining there was no attempt to patent a judicial exception (i.e., mathematical formula) also recited in the claim). Thus, in other words, unlike Appellant’s claim 1, the claims in Diehr were directed (“drawn”) to a technological process (industrial rubber molding), while also reciting a judicial exception. Claim 1 is patent ineligible because it is directed to a non-technological judicial exception (i.e., an abstract idea), while also reciting only high-level, generic computer limitations (that do not add significantly more). See Alice, 208 U.S. at 223. In Trading Technologies, the claims at issue recited limitations for a graphical user interface (GUI) to address a specific problem with prior art GUI software for real-time trading of stocks, bonds, options, and similar products. See 675 F. App’x at 1003–05. Every step in the illustrative claim in Trading Technologies includes GUI-related limitations. In view of the interrelated functionality of the GUI limitations, the court determined the claims “require[d] a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure.” Id. at 1004. Although Appellant’s claim 1 also includes user interface limitations (e.g., for displaying selectable medical conditions and medical orders in a prescribed format on a single page display and for receiving a user selection), claim 1 is not analogous to the claims in Trading Technologies. The court found the recited GUI limitations addressed a Appeal 2019-000799 Application 12/171,160 16 specific problem with a real-time, computerized trading system, and the claim limitations were not to analogous interfaces for use in non-electronic trading systems. Id. As discussed above, however, except for generic requirements such as for “a processing device” and “an input device,” claim 1’s user interface limitations are analogous to (and could be implemented in) a non-technological solution, i.e., one that people can use that involves no more technology than pen and paper. In the Reply Brief, Appellant raises a new argument: that the Examiner errs in the Alice/Mayo step two analysis based on the Federal Circuit’s ruling in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and the subsequently issued USPTO “Berkheimer Memorandum,” Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (April 19, 2018). Reply Br. 5–6. Appellant points out that the Federal Circuit decision in Berkheimer published “prior to issuance of the Examiner’s Answer.” Id. at 5. We note publication of both the Berkheimer decision and the corresponding USPTO Memorandum also occurred prior to the filing of Appellant’s Appeal Brief. Appellant provides no good cause explanation for not raising issues related to Berkheimer in the Appeal Brief. Thus, Appellant waived any such argument. See 37 C.F.R. § 41.41(b)(2). Appellant’s Berkheimer arguments are, regardless, unpersuasive. The exemplary claim limitation at issue in Berkheimer was “storing a reconciled object structure in the archive without substantial redundancy,” which the court found was “directed to [an] arguably unconventional inventive concept described in the specification.” 881 F.3d at 1370. There was no evidence in the record that this limitation described well-understood, routine, and Appeal 2019-000799 Application 12/171,160 17 conventional technology. Id. at 1368. The court held there was a “genuine issue of material fact” and that “fact questions created by the specification’s disclosure” precluded summary judgment of invalidity under step two of the Alice/Mayo framework. Id. Here, on the other hand, as the Examiner finds, and we agree, Appellant’s Specification demonstrates that the technological elements recited in claim 1 were, at the time of filing, well-understood, routine, and conventional. See Final Act. 5–6 and Ans. 20–21 (both citing Spec. ¶¶ 34– 37 as published in US 2010/0010833 A1; Jan. 14, 2010); see also Spec. ¶¶ 38–39, 43, 49; Berkheimer Memorandum Section III (A)(1). Consistent with Berkheimer and as discussed in our analysis above under prong two of Step 2A and under Step 2B of the Guidance, the record before us supports the determination that additional elements recited in claim 1, alone or in combination, do not add significantly more. § 101 Conclusion Accordingly, we sustain the § 101 rejection of claim 1 and, along with it, claims 3–17 and 19–30, which Appellant argues are patent eligible for the same reasons as for claim 1 (see Appeal Br. 14–15). The § 112, First Paragraph Rejection Claim 16 recites, inter alia, “said individually selectable orders in said pre-identified set of orders being modifiable by said care giver upon being selected by said care giver.” Appeal Br. 26 (Claims App’x). The Examiner rejects claim 16 under § 112, first paragraph, as lacking written description support for this recitation. Final Act. 7–8 (rejecting its dependent claims 17, 19–21, and 28–30 also for this reason). Appeal 2019-000799 Application 12/171,160 18 Appellant contends the Examiner errs because paragraphs 27 and 28 of the Specification, which discuss Figures 2 and 3, provide the requisite support for the disputed limitation. Appeal Br. 15. The Examiner answers that “the cited portion of the disclosure does not describe a pre-identified order set being modified by the physician or ‘said care giver.’ There is no description of the caregiver adding or removing [or editing or modifying] pre-identified tests in the set of possible diagnostics.” Ans. 21. To fulfill the written description requirement, the “specification must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (internal citation, bracketing, and quotation omitted). Here, Appellant’s Figure 2 shows a set of individually selectable orders for diagnostic studies (i.e., “individually selectable orders in said pre-identified set of orders,” as recited). See Spec. ¶ 27 (explaining that each order “can also have an expansion section”). Figure 3 shows details of an exemplary expansion section for a particular order that is displayed when a physician selects that order, which a physician uses to select parameters to customize the order (i.e., information for the order that is “modifiable by said care giver upon being selected by said care giver,” as recited). See Spec. ¶ 28. Thus, we agree with Appellant that paragraphs 27 and 28 of the Specification demonstrates the inventor was in possession of “said individually selectable orders in said pre-identified set of orders being modifiable by said care giver upon being selected by said care giver,” as recited. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first paragraph rejection of claims 16, 17, 19–21, and 28–30. Appeal 2019-000799 Application 12/171,160 19 The §§ 102 and 103 Rejections Appellant contends the Examiner errs in the § 102 rejection of claim 8 because Rucker fails to disclose a plurality of additional columns configured to display a plurality of pre-defined order sets, . . . said plurality of pre- defined order sets based on a medical condition selected by said user, each pre-defined order set of the plurality of pre- defined order sets comprising individually selectable orders that are pre-defined as being directly related to said selected medical condition, as recited. Appeal Br. 16; see also id. at 17–18. The Examiner responds by explaining that Rucker’s interface for selecting order sets from a variety of possible order sets (as shown in Rucker Figure 2) and for modifying an initial order set (as shown in Rucker Figure 3) disclose these disputed claim limitations. Ans. 22 (citing Rucker ¶¶ 17–18, 20–21). Appellant replies that Rucker fails to disclose, in the context of the combined limitations, the individually selectable orders, as recited. Reply Br. 8. Appellant’s argument is persuasive. Anticipation is a strict standard that requires finding each and every element as set forth in the claim, either expressly or inherently, in a single prior art reference, arranged as required by the claim. Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added), citing In re Arkley, 455 F.2d 586, 587 (CCPA 1972); see also Arkley, 455 F.2d at 587–88. Appeal 2019-000799 Application 12/171,160 20 Here, Appellant persuades us that Rucker does not disclose a plurality of concurrently displayed columns of pre-defined order sets based on a user- selected medical condition, as recited. Although Rucker Figure 2 discloses a user interface for selecting from columns of predefined, selectable order sets, including “illness based” order sets that correspond to various selectable medical conditions (see Rucker ¶ 17), we agree with Appellant that “when a user selects one of these predetermined sets, the user is actually selecting a medical complaint.” Reply Br. 9. In other words, although the columns of order sets displayed in Rucker Figure 2can be used to select a medical condition and the order sets corresponding to that medical condition, the columns are displayed prior to selection of a medical condition rather than “based on a medical condition selected by said user,” as recited in claim 8. Moreover, although the Examiner also cites Figure 7 of Rucker to meet this limitation, and although Figure 7 does disclose columns of predefined selectable order sets that are based on a selected medical condition (e.g., order sets based on the selection of “pneumonia” in Figure 2), Figure 7 does not display a first column in a single page display allowing a user to select a medical condition as recited in claim 8, and the Examiner has not found that Figures 2 and 7 constitute a single page display or can be combined to constitute a single page display. See Final Act. 9; see also Rucker Figs. 2, 7. Accordingly, we do not sustain the § 102 rejection of claim 8. There is no finding in the §§ 102 and 103 rejections of claim 8’s dependent claims that cure this error and, thus, we also do not sustain the § 102 rejection of claims 9, 10, 14, and 15 and the § 103 rejections of claims 11–13 and 25–27. Appeal 2019-000799 Application 12/171,160 21 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 3–17, 19– 30 101 Eligibility 1, 3–17, 19–30 16, 17, 19– 21, 28–30 112, first paragraph Written Description 16, 17, 19– 21, 28–30 8–10, 14, 15 102(b) Rucker 8–10, 14, 15 11–13 103(a) Rucker, Batch 11–13 25–27 103(a) Rucker, Coli 25–27 Overall Outcome 1, 3–17, 19–30 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation