Ex Parte Compton et al

Patent Trial and Appeal Board

Nov 3, 2017

12981784 (P.T.A.B. Nov. 3, 2017)

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.
12/981,784 12/30/2010 David Compton CRNI.160298 7146
46169 7590 11/07/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/07/2017 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON @ SHB .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID COMPTON, JAMES EATON, JUSTIN NELSON,
DAVID PIERRE, BRANNON GARVERT,
MATT GADZINSKI, and MARIO MANESE
Appeal 2016-004665
Application 12/981,784
Technology Center 3600
Before JUSTIN BUSCH, JOYCE CRAIG, and STEVEN M. AMUNDSON,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9—14 and 16, which are all of the pending claims. Claims
1—8 and 15 were previously canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2016-004665
Application 12/981,784
CLAIMED SUBJECT MATTER
The claims are directed to optimizing healthcare environment
workflows by monitoring individuals’ (e.g., clinicians) interactions with the
environment (e.g., equipment) to identity events and suggest workflow
changes. Spec. 3—4, 16. Claim 9 is independent and reproduced below:
9. A computerized system for compiling clinical information
to optimize workflows, the system comprising:
at least one computing device associated with one or more
processors;
a locating component for locating clinicians within a
healthcare environment, wherein the locating component
includes a plurality of sensors utilizing a real-time location
services technology;
a first receiving component for receiving location
information from the locating component;
a second receiving component for receiving clinical
information from a clinical database, wherein clinical
information includes information regarding a resource required
to complete a task;
a third receiving component for receiving one or more user
selections;
an identifying component for identifying a clinical event
represented by the one or more user selections;
a generating component for generating a view of a
healthcare environment based on the clinical event, the clinical
information, and the location information; and
a suggesting component for suggesting workflow changes
to increase efficiency by saving time, wherein a workflow
change includes relocating the resource when a clinician is
identified as spending an amount of time exceeding a
predetermined threshold searching for the resource.
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REJECTION
Claims 9-14 and 16 stand rejected under 35U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2; Ans. 2-4.
ANALYSIS
We have reviewed the rejection of claims 9—14 and 16 in light of
Appellants’ arguments that the Examiner erred. For the reasons explained
below, we disagree with Appellants’ assertions regarding error by the
Examiner. We concur with the Examiner’s conclusion that the claims recite
patent-ineligible subject matter under § 101.
Framework of 35 U.S.C. § 101
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012), and Alice Corp. v. CLS Bank International, 134
S. Ct. 2347, 2354 (2014), the Supreme Court explained that § 101 “contains
an important implicit exception” for laws of nature, natural phenomena, and
abstract ideas. See Diamond v. Diehr, 450 U.S. 175,185 (1981). In Mayo
and Alice, the Court set forth a two-step analytical framework for evaluating
patent-eligible subject matter: (1) “determine whether the claims at issue are
directed to” a patent-ineligible concept, such as an abstract idea; and, if so,
(2) “consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements” add
enough to transform the “nature of the claim” into “significantly more” than
a patent-ineligible concept. Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 79); see Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo!Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
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LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an “inventive concept.” Alice, 134 S. Ct. at 2355;
Elec. Power Grp., 830 F.3d at 1353. For an inventive concept, “more is
required than ‘well-understood, routine, conventional activity already
engaged in’” by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quotingMayo,
566 U.S. at 79-80).
A Prima Facie Case of Unpatentability
Appellants contend the Examiner has not established a prima facie
case of patent ineligibility under 35 U.S. C. § 101 because the rejection
simply concludes that the claims are directed to an abstract idea and
provides “no rationale or supporting documentation” and because the
Examiner has not addressed each of the independent claims. Br. 5—7.
Appellants’ arguments do not persuade us of error. The Federal
Circuit has repeatedly explained that “the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The “PTO [(Patent
and Trademark Office)] carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in ‘notifying] the
applicant. . . [by] stating the reasons for [its] rejection, or objection or
requirement, together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting
35 U.S.C. § 132) (alterations in original). The PTO violates § 132 “when a
rejection is so uninformative that it prevents the applicant from recognizing
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and seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990). But if the PTO “adequately
explain[s] the shortcomings it perceives . . . the burden shifts to the applicant
to rebut the prima facie case with evidence and/or argument.” Hyatt,
492 F.3d at 1370.
The Final Office Action adequately explains the § 101 rejection. The
claims as a whole, which recite locating; receiving; and suggesting, are
directed to the abstract idea of “comparing new and stored information and
using rules to identify options.” Final Act. 2. The Examiner also finds
“[t]he claims are directed towards processing location data and clinical event
information and suggesting workflow changes to improve operational
efficiency, which is a method of organizing human activity.” Final Act. 3.
The Examiner further determines the claims do not contain additional
elements sufficient to transform the claimed abstract idea into a patent-
eligible application of the abstract idea because the claims merely recite
well-understood, routine, and conventional generic computer functions that
are not significantly more than the underlying abstract idea. Final Act. 2.
The Examiner’s statements satisfy § 132 because they apply the Mayo!Alice
two-step analytical framework and apprise Appellants of the reasons for the
§101 rejection under that analysis. As discussed in more detail below,
Appellants recognize the Examiner’s Mayo!Alice analysis and present
arguments regarding each step. See Br. 8—15.
Appellants’ contention concerning the absence of evidence supporting
the § 101 rejection does not persuade us of Examiner error. “Patent
eligibility under § 101 presents an issue of law.” Accenture Glob. Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013).
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There is no requirement that an examiner cite evidentiary support to
conclude that a claim is directed to a patent-ineligible concept, such as an
abstract idea. Appellants cite the “2014 Interim Guidance on Patent Subject
Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014) (“2014 Guidance”),
and Section 2106(111) of the Manual of Patent Examining Procedure. Br. 5—
6. The “July 2015 Update: Subject Matter Eligibility” (“2015 Update”)
notes that “courts do not rely on evidence that a claimed concept is a judicial
exception, and in most cases resolve the ultimate legal conclusion on
eligibility without making any factual findings.” 2015 Update 6. Further,
the 2015 Update instructs that a § 101 rejection may rest on “the knowledge
generally available to those in the art, on the case law precedent, on
applicant’s own disclosure, or on evidence.” Id.
The dependent claims describe various further limitations on types of
data, methods of display, specific location technologies, etc., which do little
to patentably transform the abstract idea. Cf. Apple, Inc. v. Ameranth, Inc.,
2016 WL 6958650, *10 (Fed. Cir. 2016) (“These claims depend from
independent claims which were found to be directed to unpatentable subject
matter, as discussed above. Merely appending this preexisting practice to
those independent claims does not make them patentable. It is an
insignificant post-solution activity.”). Also, where all claims are directed to
the same abstract idea, “addressing each claim of the asserted patents . . . [is]
unnecessary.” Content Extraction & Transmission LLCv. Wells Fargo
Bank, Natl Assn, 776 F.3d 1343, 1348 (Fed. Cir. 2014).
Step One of Alice Framework
Turning to step one of the Alice framework, the Examiner finds the
claims are directed to data manipulation—i.e., locating (clinicians),
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receiving data (location information, clinical information, and user input),
and suggesting (workflow changes), which is simply comparing new and
stored information and using rules to identify options. Final Act. 2; Ans. 3.
The Examiner further explains that the various data gathering and analysis
and suggesting a workflow change could alternatively be performed by a
person. Ans. 3. Notably, the Examiner’s characterization is consistent with
Appellants’ description of the invention as “compiling data from various
sources to monitor interactions within a healthcare environment... to get a
complete picture of the healthcare environment to, for example, optimize
workflows,” and that “[t]he present invention may be operational with
numerous other general purpose or special purpose computing system
environments or configurations.” Spec, H 4, 16, 18; see also Br. 3
(summarizing claimed subject matter as “a computerized system for
compiling clinical information to optimize workflows”).
Appellants argue the claims are not directed to an abstract idea,
asserting the Examiner’s “characterization of the abstract idea is overly
broad” and the process recited in the claims requires a computer and cannot
be completed in the human mind alone because the claims go “beyond a
generic computing device that merely executes steps that could be done
mentally.” Br. 8—9. We disagree. Appellants do not identify a focus of the
claimed invention different than the description given by the Examiner.
Rather, as noted above, Appellants describe the claimed invention as being
directed to “a computerized system for compiling clinical information to
optimize workflows.” Br. 3; see Spec 114, 16.
With respect to computer-enabled claimed subject matter, it can be
helpful to determine “whether the claims are directed to an improvement to
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computer functionality,” or whether the “claims ‘simply add[] conventional
computer components to well-known business practices’” or recite
“‘generalized steps to be performed on a computer using conventional
computer activity. In re TLI Commc ’ns LLC Patent Litig., 823 F.3d 607,
612 (Fed. Cir. 2016) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335, 1338 (Fed. Cir. 2016)).
In this case, the claims as a whole are focused on compiling clinical
information to optimize workflows. Cf. TLI, 823 F.3d at 613 (finding the
claims were not directed to a technological solution because the focus of the
claims “was not on an improved telephone unit or an improved server”). In
that regard, the Background section of the Specification discusses the
problem, which is lacking information regarding how changes have
impacted or will impact a particular environment. Spec. 12. According to
the Specification, the inventors solved the problem by combining data from
various sources to provide a complete picture of the healthcare environment
and enable workflow optimization. See Spec, 4, 16. In light of the
Specification’s description of the problem and solution, the advance over the
prior art by the claimed invention is the compiling various information and
presenting data to provide a “complete picture.” This is the heart of the
invention. Cf. Intellectual Ventures I LLC v. Erie Indent. Co., 850 F.3d
1315, 1328 (Fed. Cir. 2017) (finding “the heart of the claimed invention lies
in creating and using an index to search for and retrieve data [which is] an
abstract concept”).
As the Examiner finds, the sensors merely perform conventional data
gathering steps and a human could review the data to generate
recommendations. Ans. 3. The Examiner is also correct that paragraph 18
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of Appellants’ Specification explains that the invention can be carried out
using a general purpose computer. Ans. 4 (citing Spec. 112). Given the
focus of the claims as a whole is on compiling clinical information to
optimize workflows, and the claims merely perform the steps of the abstract
idea on a computer using conventional computer activity, the claims are
properly characterized as being directed to data gathering, comparing new
and stored information, and identifying options. See Ans. 3.
Furthermore, the claims are similar to claims the Federal Circuit has
consistently found to be directed to an abstract idea. The claims recite
methods implemented by processors for compiling data, identifying events,
and suggesting workflow changes. When “the focus of the asserted claims”
is “on collecting information, analyzing it, and displaying certain results of
the collection and analysis,” the claims are directed to an abstract idea. Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Moreover, the Federal Circuit has repeatedly ruled that claims covering the
collection, manipulation, and display of data were directed to abstract ideas.
See, e.g., Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1047,
1054—56 & n.6 (Fed. Cir. 2017); Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1339-40 (Fed. Cir. 2017); Elec. Power Grp.,
830 F.3d at 1351—54; see also Content Extraction, 116 F.3d at 1347 (finding
that “[t]he concept of data collection, recognition, and storage is
undisputedly well-known,” and “humans have always performed these
functions”). Accordingly, we agree with the Examiner’s findings because
the claimed concept is similar to concepts found to be abstract by the Federal
Circuit.
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Step Two of Alice Framework
Because the claims are “directed to an abstract idea,” we turn to step
two of Alice to determine whether the limitations, when considered both
“individually and ‘as an ordered combination’” contain an “inventive
concept” sufficient to transform the claimed “abstract idea” into a patent-
eligible application. Alice, 134 S. Ct. at 2355—58.
Appellants contend the claims recite elements that add significantly
more to the alleged abstract idea to render the claimed subject matter patent
eligible. Br. 10-15. In particular, Appellants assert the claims recite
functions that are not well-understood, routine, or conventional computer
functions because: (1) the Examiner determined the claims are novel and
non-obvious; and (2) various components, such as the locating component;
receiving components; identifying component; generating component; and
suggesting component, are novel, non-generic components. Br. 10-13.
Appellants also contend the claims improve “the existing technology of
workflow optimization in a healthcare environment.” Br. 13. Finally,
Appellants assert the claims are patent eligible because the claims do not
merely recite the abstract concepts of “on-line healthcare communication”
and comparing new and stored information and using rules to identity
options, but rather the claims recite specific steps such that the claims do not
pre-empt all implementations of those concepts. Br. 14—15.
First, we address Appellants’ last argument regarding pre-emption.
We agree with the Examiner that pre-emption is not the proper test. Final
Act. 3. It is true that the Supreme Court has characterized pre-emption as a
driving concern for patent eligibility. See Alice, 134 S. Ct. at 2354.
However, characterizing pre-emption as a driving concern for patent
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eligibility is not the same as characterizing pre-emption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354) (emphasis added).
However, “[wjhile preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Ariosa, 788 F.3d at 1379; Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362—63 (Fed. Cir. 2015) (“[Tjhat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”), cert, denied, 136 S.
Ct. 701 (2015).
We are similarly unpersuaded by Appellants’ argument that the
recited steps are not well-understood, routine, or conventional computer
functions. See Br. 10—13. A finding of novelty or non-obviousness does not
necessarily lead to the conclusion that subject matter is patentable eligible.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass ’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). “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, 450 U.S. at
188—89; Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307,
1315 (Fed. Cir. 2016). Moreover, Appellants’ general assertion that the
recited elements are not well-understood, routine, or conventional, and
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Appellants’ contention that the recited locating component includes sensors
using “real-time location services technology,” are unpersuasive. First,
every recited component is recited generally and is characterized by the
function it performs. Neither the Examiner nor Appellants have indicated
that the claims invoke 35U.S.C. § 112, sixth paragraph, such that the
components should be construed as means-plus-fimction limitations.1 Thus,
the broadest reasonable interpretation of these components encompasses any
particular implementation. In particular, the locating component may use
any known real-time location services technology that includes sensors.2
Therefore, Appellants have not persuaded us that the recited limitations are
anything other than generic components or that those limitations provide
significantly more than the abstract idea itself.
Finally, we disagree with Appellants that the claims recite an
improvement to an existing technology. Appellants contend that the claims
improve “the existing technology of workflow optimization in a healthcare
environment.” Br. 13. The Examiner finds there is no evidence in the
record or the claims that a technology is improved and, rather, the claims
attempt to improve workflow optimization, which is not a technical field.
Ans. 4. The Examiner finds that using sensors and data to optimize
workflows is encompassed by the abstract idea. Id. We agree with and
1 We leave to the Examiner whether the claims invoke 35 U.S.C. § 112,
sixth paragraph and, if so, whether Appellants’ Specification provides
sufficient support under 35 U.S.C. § 112, second paragraph.
2 In fact, dependent claim 16 recites that “the real-time location services
technology is one of ultrasound technology, infrared technology, or radio-
frequency identification technology.” Accordingly, the claims do not
require any particular technology and apparently may utilize any well-
known, conventional real-time location services technology.
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adopt the Examiner’s findings and conclusions. Unlike the claims in SiRF
Technologies, Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010), the present claims
are not directed to improving the actual location services. Rather, as the
Examiner explains, the present claims merely use conventional location
services as intended—i.e., to obtain location data. We agree with the
Examiner’s finding that the claims require nothing more than a generic
computer implementation on a general purpose computer or processor.
Ans. 4—5 (quoting Spec. 118). Thus, the limitations, considered
individually, and as an ordered combination, do not contain an inventive
concept sufficient to transform the claimed abstract idea into a patent-
eligible application.
For the above reasons, Appellants have not persuaded us the
Examiner erred in rejecting the claims under 35 U.S.C. § 101. Therefore,
we sustain the Examiner’s rejection of claims 9—14 and 16 under 35 U.S.C.
§101.
DECISION
We affirm the Examiner’s rejection of claims 9—14 and 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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