Allscripts Software, LLC

Patent Trials and Appeals Board

Feb 25, 2020

14318500 - (D) (P.T.A.B. Feb. 25, 2020)

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.
14/318,500 06/27/2014 Thomas William EVANS ALSP-1148 5640
149752 7590 02/25/2020
Medley, Behrens & Lewis, LLC
6100 Rockside Woods Blvd.
Suite 440
Independence, OH 44131
EXAMINER
AUGUSTINE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/25/2020 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):
admin-docketing@medleybehrens.com
mmedley@medleybehrens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS WILLIAM EVANS, JONATHAN MARK MALEK,
MATTHEW CHRISTOPHER DOUGLASS, and RYAN PAUL HOWARD
____________

Appeal 2019-002450
Application 14/318,500
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–5, 7–9, 11–15, 17, 18, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed August 6, 2018) and Reply Brief (“Reply Br.,” filed January 30, 2019),
and the Examiner’s Answer (“Ans.,” mailed November 30, 2018) and Final
Office Action (“Final Act.,” mailed December 7, 2017). Appellant identifies
Allscripts Software, LLC as the real party in interest (Appeal Br. 2).
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CLAIMED INVENTION
Appellant describes that the claimed invention “is generally related to
interfacing with electronic health record systems” (Spec. ¶ 1).
Claims 1, 11, and 17 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method to help an
application operate more efficiently on data elements of an
electronic health record (EHR) system, comprising:
[(a)] receiving, from the application operated by a
member of a medical practice interacting with a patient, a context
application program interface (API) call; and in response to the
context API call:
[(b)] retrieving a current status of the member in
the application with respect to the patient,
[(c)] determining, based on the current status, a
plurality of keys, each key identifying one possible EHR
element that is related to information of the patient in the
EHR system,
[(d)] for each key, calculating, by an adaptive
algorithm based on historical activity of the member
within a status similar to the current status of the
application, a confidence value indicating how likely that
key is to be selected by the member,
[(e)] selecting, by the adaptive algorithm from the
determined plurality of keys, a key that identifies a
possible EHR element, the key selected based on whether
the calculated confidence value for the selected key is
above a threshold value, and
[(f)] returning the selected key to the application,
wherein responsive to receiving the selected key, the
application prompts the member to verify that the selected
key corresponds to a correct EHR element such that after
the verification, the application uses the selected key to
operate on the correct EHR element in the EHR system.
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REJECTIONS
Claims 1–5, 7–9, 11–15, 17, 18, and 20 are rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
Claims 1–5, 7–9, 11–15, 17, 18, and 20 are rejected under 35 U.S.C.
§ 112(b) as indefinite for failing to particularly point out and distinctly claim
the subject matter that the inventors regard as the invention.
Claims 1–5, 7–9, 11–15, 17, 18, and 20 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
Written Description
“The ‘written description’ requirement implements the principle that a
patent must describe the technology that is sought to be patented”; the
requirement, thus, serves both to “satisfy the inventor’s obligation to
disclose the technologic knowledge upon which the patent is based, and to
demonstrate that the patentee was in possession of the invention that is
claimed.” Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). The
purpose of the written description requirement is “to ensure the scope of the
right to exclude, as set forth in the claims, does not overreach the scope of
the inventor’s contribution to the field of art as described in the patent
specification.” Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir.
2000).
Here, in rejecting the pending claims under 35 U.S.C. § 112(a), the
Examiner finds that the Specification lacks sufficient written description for
“calculating, by an adaptive algorithm based on historical activity of the
member within a status similar to the current status of the application, a
confidence value indicating how likely that key is to be selected by the
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member” and “selecting, by the adaptive algorithm from the determined
plurality of keys, a key that identifies a possible EHR element, the key
selected based on whether the calculated confidence value for the selected
key is above a threshold value,” i.e., limitations (c) and (d), as recited in
claim 1, and similarly recited in claims 11 and 17 (Final Act. 2–4).
Referencing paragraph 60 of Appellant’s Specification, the Examiner
asserts that although, “[a]s disclosed, the invention . . . uses adaptive
algorithms that are known in the art at the time the application was filed,”
the invention, “[a]s claimed, . . is not specifically limited to those algorithms
that were presently known at filing”; “[i]nstead, the claim is directed
towards any algorithm capable of calculating a confidence value, including
those algorithms that have not been yet invented” (id. at 3). The Examiner
concludes, “[f]or this reason, the Specification as originally filed does not
appear to provide adequate support for all embodiments of this algorithm,
and specifically does not support embodiments of the algorithm that has not
yet been invented” (id.).
The Examiner’s position, as best understood, is that the Specification
does not include adequate written description support for the full scope of
what is claimed. Yet, what the inventors are claiming is the use of an
adaptive algorithm of the type known in the art to perform the recited
calculating and selecting features based on historical activity of a member of
a medical practice within a status similar to a current status of an
application, not an adaptive algorithm alone. The Examiner has not
sufficiently demonstrated that the disclosure of known adaptive algorithms,
and the disclosed use of such algorithms, is inadequate to demonstrate that
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the inventors had possession of the claimed invention, including all of its
limitations, at the time the present application was filed.
Therefore, we do not sustain the Examiner’s rejection of claims 1–5,
7–9, 11–15, 17, 18, and 20 under 35 U.S.C. § 112(a).
Indefiniteness
In rejecting the pending claims under 35 U.S.C. § 112(b), the
Examiner takes the position that because “the claims can encompass any
[adaptive] algorithm,” including “those not yet invented,” a person of
ordinary skill in the art would not be able to ascertain the metes and bounds
of the claims (Final Act. 5). “Therefore, the claims [are] indefinite” (id.).
Appellant argues, and we agree, that the term “adaptive algorithm” is
a term of art, and would be understand by a person of ordinary skill in the art
to refer to an algorithm that changes its behavior at the time it is run, based
on computational resources available or a recent history of received data
(Appeal Br. 10). The Specification describes, in paragraph 60 of the written
disclosure, that the adaptive algorithm is used to assign confidence levels to
the determined contexts, and lists factors used by the algorithm (i.e., user
customization information, behavioral information, and past accuracy
statistics) both there and in the claim language.
In our view, a person of ordinary skill in the art would understand
what is claimed when the claims are read in light of the Specification. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second
paragraph [now § 112(b)], is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
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specification.”). Therefore, we do not sustain the Examiner’s rejection of
claims 1–5, 7–9, 11–15, 17, 18, and 20 under 35 U.S.C. § 112(b).
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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. at 217–18 (alteration in original).
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After Appellant’s Appeal Brief was filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2
Independent Claim 1 and Dependent Claims 2–5 and 7–9
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to comments solicited from the public.
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legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id. As described
in more detail below, we are persuaded that the Examiner erred in
determining that claim 1 is directed to an abstract idea.
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner determined
that claim 1 is directed to “selecting a key with a confidence value sufficient
to identify a patient,” i.e., to a concept similar to other concepts that the
courts have held abstract, and that the claim does not include additional
elements or a combination of elements sufficient to amount to significantly
more than the judicial exception (Final Act. 6–9). The Examiner determined
that the remaining claims are patent ineligible for substantially the same
reasons (id. at 9–13).
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
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specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36.
Here, the Specification is titled “ELECTRONIC HEALTH RECORD
SYSTEM CONTEXT API,” and describes, in the Background section, that
traditionally medical records have been paper-based documents (id. ¶ 2).
The emergence of electronic medical records (“EMRs”), i.e., digital versions
of the paper chart that contains all of a patient’s medical history from one
medical practice, “offers medical professionals and patients with new
functionalities and efficiencies that paper-based medical records cannot
provide”; EMRs are considered a “drastic improvement over paper-based
medical records” (id. ¶¶ 2, 3). Yet, according to the Specification, although
“the advantages of EHRs are significant, they also carry concerns, including
high costs, lost productivity during EHR implementation or computer
downtime, and lack of EHR usability” (id. ¶ 5). For example, although there
are commercially available devices that observe aspects of a patient’s health
(e.g., a commercially available blood glucose monitor collects blood glucose
readings using a smartphone application) and also available devices that
improve doctor productivity (e.g., healthcare speech recognition solutions
that allow a doctor to dictate healthcare information), these devices do not
directly integrate with current EHR systems (id. ¶¶ 13, 14). Instead, the data
often must be manually retyped into the patient record within the EHR, or, in
some cases, the collected data may be sent to a doctor’s practice as a
facsimile, which must be converted to portable document format (“PDF”)
and imported into the patient’s record (id. ¶ 14).
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The claimed invention, as described in the Specification, addresses
these issues by increasing the efficiency and usability of applications that
interface with EHR systems, and thereby encouraging healthcare providers
to “adopt the use of EHR systems, which is advantageous for both the
providers and patients” (id. ¶ 15). More particularly, in one embodiment, a
context server receives a context application program interface (“API”) call
from an application, e.g., a medical transcription application, being operated
in real-time by a member of a medical practice (id. ¶¶ 16, 28). Upon receipt
of the API call, a current status of the member is retrieved (e.g., a doctor
running the medical transcription application on his cellphone or a
receptionist running a patient scheduling application on a handheld device
(see, e.g., id. ¶¶ 37, 46–48, 50, 52)), and based on the member status, a
plurality of likely desired contexts related to patient information in the EHR
system is determined and displayed as a set of keys (id. ¶ 53).3 For example,
in the doctor’s case, the context application may return a key, “JohnDoe23,”
for a patient context or a key for the patient’s current chart note (id. ¶¶ 37,
53). Upon the member’s, in this example, the doctor’s, verification of the

3 The Specification discloses, at paragraph 44, with reference to Figure 3, a
hierarchy of possible desired contexts, including a EHR system context 302
(which a doctor seeing a patient for the first time may desire in order to
create a new patient in the EHR system) and a patient context, e.g.,
patient 312 with Patient ID P1 (where the doctor wishes to save a new chart
note for a patient already in the system). Also, as shown in Figure 3, finer
contexts may include chart note and patient scheduling contexts (e.g., for
saving examination information immediately after an examination or for
scheduling a new appointment in real-time); even finer contexts may include
particular fields in the chart note, e.g., objective field 332 and assessment
field 334 of chart note 324 (see Spec. ¶ 45, Fig. 3).
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desired context, the transcription data is saved to the patient’s record or the
specific chart note in the EHR system (see, e.g., id. ¶¶ 37, 54, 55).
Consistent with this disclosure, claim 1 recites a method to help an
application operate more efficiently on data elements of an EHR system
by “receiving, from the application operated by a member of a medical
practice interacting with a patient, a context application program interface
(API) call” (step (a)); and in response to the API call: (1) “retrieving a
current status of the member in the application with respect to the patient”
(step (b)); (2) “determining, based on the current status, a plurality of keys,
each key identifying one possible EHR element that is related to information
of the patient in the EHR system” (step (c)); (3) calculating a confidence
level for each key and selecting a key based on whether its confidence value
is above a threshold value, i.e.,
for each key, calculating, by an adaptive algorithm based
on historical activity of the member within a status similar to the
current status of the application, a confidence value indicating
how likely that key is to be selected by the member, [and]
selecting, by the adaptive algorithm from the determined
plurality of keys, a key that identifies a possible EHR element,
the key selected based on whether the calculated confidence
value for the selected key is above a threshold value
(steps (d) and (e)); and (4) prompting the member to verify that the selected
key corresponds to the desired EHR element and, after the selected key is
verified, using the key to operate on the EHR element in the EHR system,
i.e.,
returning the selected key to the application, wherein
responsive to receiving the selected key, the application prompts
the member to verify that the selected key corresponds to a
correct EHR element such that after the verification, the
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application uses the selected key to operate on the correct EHR
element in the EHR system
(step (f)). Applying the 2019 Revised Guidance, we are persuaded that even
if claim 1 recites an abstract idea, as the Examiner determined, the Examiner
has not sufficiently established that the claim fails to improve an existing
technology, i.e., EHR systems (and, therefore, in the context of the 2019
Revised Guidance, that the claim fails to integrate the abstract idea into a
practical application) or that the claim otherwise fails to recite significantly
more than an abstract idea.
The Examiner determined here, as described above, that claim 1 is
directed to “selecting a key with a confidence value sufficient to identify a
patient.” And the Examiner remarked that the claim “merely performs
various calculations to determine a key that can have sufficient confidence
value to identify the patient” (Final Act. 7). Yet, the method of claim 1 goes
beyond merely calculating a confidence value and selecting a key. It enables
applications running on devices, e.g., a vitals monitor, a cell phone, an MRI,
being operated by members of a medical practice to interact with an EHR
system such that data produced by these devices can be seamlessly entered
into the EHR system. Thus, rather than requiring a user to manually enter
data produced by an application external to the EHR system into a patient
record within the EHR, or to convert the collected data into an intermediate
format (e.g., PDF) for importation into the patient record, the application
initiates an API call to a context server, which determines the EHR element
on which the application is to operate and returns a corresponding key.
After the key is verified by the practice member as corresponding to the
desired EHR element, the collected data is saved to the EHR element,
thereby integrating the application with the EHR system.
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Responding to Appellant’s arguments, the Examiner opines in the
Answer that
[t]he claims are directed to the abstract ideas of receiving data,
processing data, appending data, and storing data to determine a
key, which are akin to at least the claims in Electric Power,4
which “though lengthy . . . the claims d[id] not go beyond
requiring the collection, analysis, and display of available
information in a particular field, stating those functions in
general terms, without limiting them to technical means for
performing the functions that are arguably an advance over
conventional computer and network technology.” Id. at 1351.
Ans. 4–5. But the Examiner has not addressed whether the integration
provided by the claimed method entails an improvement in the field of EHR
systems. The Specification details, as described above, the shortcomings
associated with then existing EHR systems, including the difficulties
involved in entering data collected using external devices into the EHR
system. The claimed invention addresses these shortcomings by providing a
method that enables the integration of applications running on devices being
operated by members of a medical practice with the EHR.
The Examiner has not addressed whether this functionality, viewed in
light of Appellant’s Specification, entails an improvement in EHR
technology. And, as such, the Examiner has not established that claim 1
fails to integrate the asserted abstract idea into a practical application.
Therefore, we do not sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 101. For the same reasons, we also do not sustain
the Examiner’s rejection of dependent claims 2–5 and 7–9.

4 We understand the Examiner’s reference is to Electric Power Group, LLC
v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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Independent Claims 11 and 17 and Dependent Claims 12–15, 18, and 20
Independent claims 11 and 17 include limitations substantially similar
to the limitations of claim 1, and stand rejected based on the same rationale
applied with respect to claim 1. Therefore, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 101 of independent claims 11 and 17, and
claims 12–15, 18, and 20, which depend therefrom, for the same reasons set
forth above with respect to claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–5, 7–9,
11–15, 17,
18, 20
112(a) Written
Description
1–5, 7–9,
11–15, 17,
18, 20
1–5, 7–9,
11–15, 17,
18, 20
112(b) Indefiniteness 1–5, 7–9,
11–15, 17,
18, 20
1–5, 7–9,
11–15, 17,
18, 20
101 Eligibility 1–5, 7–9,
11–15, 17,
18, 20
Overall
Outcome
1–5, 7–9,
11–15, 17,
18, 20
REVERSED