Ex Parte Ach et al

Patent Trial and Appeal Board

Dec 26, 2018

13746544 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/746,544 01/22/2013
26201 7590 12/28/2018
FISH & RICHARDSON P.C. (AU)
P.O BOX 1022
Minneapolis, MN 55440-1022
FIRST NAMED INVENTOR
ChipW.Ach
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.
42887-0044001 6933
EXAMINER
HEIN, DEVIN C
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIP W. ACH, EDWARD J. MAGNER,
VAKMIKI RAO, and LIBBY C. WEBB 1
Appeal2017-007732
Application 13/746,544
Technology Center 3600
Before CARLA M. KRIVAK, IRVINE. BRANCH, and
AARON W. MOORE, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4--11, 14--17, and 19-21, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "using a practice management system to
track patient compliance with orders issued to a patient by a medical
provider." Spec. Abstract.
1 The real party in interest is the assignee, AthenaHealth, Inc. (hereinafter
"Appellant"). App. Br. 2.
Appeal2017-007732
Application 13/746,544
Illustrative Claim
Claims 1, 4--11, 14--1 7, and 19-21 are pending; of these, claims 1, 11,
and 17 are independent. Claim 1 is reproduced below for reference.
1. A method of using a practice management system to track
patient compliance with orders issued to a patient by a medical
provider, the method comprising:
storing, by at least one storage device associated with a
health information management component of the practice
management system, a representation of the orders issued to the
patient and an alarm associated with the representation of the
orders, wherein the alarm specifies an amount of time, wherein
the practice management system includes a communications
management component configured to interact with the health
information management component to send one or more
notifications to the patient based, at least in part, on a status
indicator associated with the representation of the orders;
determining, with at least one processor of the practice
management system, whether the amount of time specified by
the alarm has elapsed;
determining, when it is determined that the amount of time
specified by the alarm has elapsed, whether the orders have been
filled, wherein determining whether the orders have been filled
is based, at least in part, on the status indicator associated with
the representation of the orders;
sending, when it is determined that the orders have not
been filled, a notification to the patient using the communications
management component of the practice management system,
wherein the notification includes information instructing the
patient to access a user interface to input information about the
orders;
receiving input via the user interface, wherein the input
indicates a current status for the orders; and
updating, based at least in part, on the input received via
the user interface, the status indicator associated with the
representation of the orders stored by the health information
2
Appeal2017-007732
Application 13/746,544
management component of the practice management system,
wherein the updating is performed in response to receiving the
input via the user interface.
References and Re} ections2
Claims 1, 4--11, 14--17, and 19-21 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception to
patent eligibility without significantly more. Final Act. 2, 20-22; Ans. 2-7.
Claims 1, 5, 6, 8, 9, 11, 15, 17, and 20 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Surwit (US 6,024,699, issued Feb. 15, 2000)
and Adelson (US 2006/0294108 Al, published Dec. 28, 2006). Final Act.
3-15.
Claims 4, 7, 10, 14, 16, 19, and 21 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Surwit, Adelson, and Hunt (US
2009/0164237 Al, June 25, 2009). Final Act. 15-20.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential).
2 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the above mentioned Appeal Brief filed March 16,
2016 ("App. Br."), as well as the following documents for their respective
details: the Final Action mailed April 23, 2015 ("Final Act."), the
Examiner's Answer mailed February 27, 2017 ("Ans."), and Appellant's
Reply Brief filed April 26, 2017 ("Reply Br.").
3
Appeal2017-007732
Application 13/746,544
Rejection of Claims 1, 4-11, 14-17, and 19-21 Under§ 101
Issue: Does the Examiner properly reject claim 1 under 35 U.S.C.
§ 101 as being directed to non-patentable subject matter?
Because Appellant argues all claims rejected under 35 U.S.C. § 101 as
a group, our decision with respect to claim 1 is dispositive. App. Br. 6-1 O;
Reply Br. 2--4. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant does not persuade us the Examiner errs in determining the
claims are patent-ineligible pursuant to the two-part test enumerated in Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)). See Final Act. 2,
20-21; Ans. 2-7. We adopt the Examiner's reasoning, with respect to this
rejection, to the extent consistent with our analysis; we add the following for
emphasis.
Appellant argues the Examiner's rejection does not identify an
abstract idea because the "alleged abstract idea improperly overgeneralizes
the claims because it is untethered from the actual claim language." Reply
Br. 2. Specifically, Appellant contests the Examiner's determinations that
the claims are directed to "collecting and storing order information, alarm
information, status indicator information and order status information and
analyzing the information to determine if an order has been filled in a
specified time, to send a notification regarding the order, and to update the
information," (id. at 2) ( quoting Ans. 3), and that "claim 1 does not include
any steps of collecting order information, alarm information, status indicator
information, or order status information." Id. at 2-3. Appellant further
argues that the Examiner errs in determining that the claims are similar to
those found patent ineligible in Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016), because Appellant's claims "recite a particular
4
Appeal2017-007732
Application 13/746,544
implementation that allows for alternative methods for achieving the same
result." Reply Br. 3.
Appellant's arguments are not persuasive because they narrowly focus
only on the collection aspect of the Examiner's summary of claim 1. See
Reply Br. 2-3; Ans. 3--4. That is, the Examiner did not "overgeneralize"
Appellant's claim language as the Examiner is merely pointing out the
claims recite generic data gathering and manipulation steps. Further,
Appellant's arguments do not explain how claim 1 's "particular set of steps
for using a status indicator associated with a representation of orders in a
practice management system" (Reply Br. 3) are dissimilar from
"[C]ollecting information, including when limited to particular content
(which does not change its character as information)," and "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more," which are "within the realm of abstract ideas,"
and were held to be patent ineligible. Elec. Power Grp., 830 F.3d at 1353-
54; see also Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for Imaging,
Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) ("Data in its ethereal,
non-physical form is simply information that does not fall under any of the
categories of eligible subject matter under section 101 "); and Content
Extraction and Transmission LLC v. Wells Fargo, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (finding that "[t]he concept of data collection, recognition,
and storage is undisputedly well-known," and "humans have always
performed these functions").
Therefore, we agree with the Examiner the claims are directed to an
abstract idea and are patent ineligible under Alice step 1.
5
Appeal2017-007732
Application 13/746,544
We also agree with the Examiner, that Appellant's claims, when
viewed as a whole and as an ordered combination, do not include additional
limitations that are sufficient to amount to significantly more than the
judicial exception, under Alice step 2.
We agree with the Examiner that Appellant's "claims recite processes
that are routine and well-understood in the art of healthcare compliance and
simply implementing the process on a computer(s) is not enough to qualify
as 'significantly more'." Ans. 4. Specifically, Appellant takes the "well-
understood process of tracking a patient[']s compliance with[] healthcare
orders in order to facilitate the order" and implements it on a computer. Id.
This does not qualify as significantly more. Appellant "is attempting to
claim a process of reminding a patient to fill a healthcare order based on
tracked data which may be done by humans, using generic computer
structure and functions." Id. Additionally, Appellant's paragraph 60 states a
non-transitory tangible computer readable storage medium such as "a
computer memory, a USB drive, a flash memory, a compact disk, a tape" is
used to perform the invention along with generic computer programs. See
Ans. 5. This supports the Examiner's determination that the additional
limitations do not amount to significantly more.
Accordingly, we sustain the Examiner's§ 101 rejection of all pending
claims as patent ineligible. Final Act. 2, 20-21; Ans. 2-7.
Rejection Under§ 103 over Surwit and Adelson
Issue: Does the Examiner err in determining that the combination of
Surwit and Adelson discloses a status indicator associated with a
representation of orders?
6
Appeal2017-007732
Application 13/746,544
Appellant does not persuade us the Examiner errs in determining the
combination of Surwit and Adelson renders claims 1, 11, 17 obvious. We
adopt the Examiner's findings and conclusion that these claims are obvious
over the combination of Surwit and Adelson. Final Act. 3-15; Ans. 7-8.
We provide the following for emphasis.
Appellant argues error because "the message transmission information
in Adelson is not a status indicator." Reply Br. 4 (citing Adelson ,r,r 31-35).
Appellant's argument is premised on "the message transmission information
in Adelson [being] associated with transmitted and received messages
themselves, rather than being stored information associated with a
representation of orders, and on which a decision to send a notification to the
patient is made." Id.
We are not persuaded by Appellant's argument. "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner
finds "[i]t would have been obvious to a person of ordinary skill in the art at
the time the invention was made to combine the teachings of Adelson with
the method for tracking patient compliance as taught by Surwit." Final Act.
6. Appellant's arguments do not address any teaching of Surwit. See App.
Br. 11-13; Reply Br. 4--5. Notably, the Examiner finds that Surwit discloses
an appointment date which, once received from the patient, serves to
suspend further reminders to schedule an appointment, and then is used to
initiate queries to the patient soliciting whether the appointment was actually
kept. Final Act. 3--4 (citing Surwit col. 8, 11. 7-10; col. 19, 11. 1-7, col. 20,
11. 48---63).
7
Appeal2017-007732
Application 13/746,544
Moreover, Appellant does not adequately explain why "it is improper
to consider [Adelson's] message transmission information" to be the claimed
status indicator. Reply Br. 4. Adelson explicitly describes storing "data
representative of ... the contents of responsive messages," such as whether
a prescribed medicine was taken at a prescribed time. Adelson ,r,r 31, 49.
Appellant's argument overlooks that the content of responsive messages also
is stored.
Appellant argues claims 5, 15, and 20 are patentable for the additional
reason that "[t]he initial scheduling of message transmission times described
in paragraph [0043] and the repeated sending of messages when a patient
response is not received described in paragraph [0049] are unrelated, and as
such the Answer's interpretation of these portions of Adelson is improper."
Reply Br. 5 ( citing Ans. 8). We do not agree. The paragraphs provide
various examples of how Adelson' s system may be deployed. Appellant's
argument that specific examples are different does not persuasively
undermine the Examiner's findings with respect to the system capabilities
generally. See Ans. 8 ("Adelson discloses in paragraph [0043] that
management messages may be sent at a deferred date based on a selected
date in a calendar option, construed as scheduling information received via a
user interface" and "the alarm or notification configured to be sent at a
predetermined time, as discussed in paragraph [0049], would be updated
with the deferred date based on a selected date in a calendar option.").
Appellant does not separately argue the rejection of claims 4, 7, 10,
14, 16, 19, and 21 over Surwit, Adelson, and Hunt. See generally App. Br.
Accordingly, we are unpersuaded of error in the Examiner's rejection
of claims 1 and 11, and of claims 4--10 and 14--16, which depend therefrom
8
Appeal2017-007732
Application 13/746,544
and are argued therewith. App. Br. 12. We also are unpersuaded of error in
the Examiner's rejection of claims 17 and 19-21, which are argued on the
same basis. Id. at 13. See Reply Br. 4--5.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 4--11, 14--17, and 19-21 under 35 U.S.C. §§ 101 and 103.
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.
§ 4I.50(f).
AFFIRMED
9