Ex Parte Easterhaus et al

Patent Trials and Appeals Board

Apr 29, 2019

13452397 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/452,397 04/20/2012
46169 7590 05/01/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Kim Michele Easterhaus
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.
CRNI.165527 9583
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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 KIM MICHELE EASTERHAUS, DANIEL MARTIN FEIMSTER,
and SETH MICHEL CLAYBROOK
Appeal2018-000359
Application 13/452,397
Technology Center 3600
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
JOHNNY A. KUMAR, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 10-20, which constitute all the claims pending in
this application. Claims 1-9 are canceled. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Cemer Innovation,
Inc. App. Br. 3.
Appeal2018-000359
Application 13/452,397
STATEMENT OF THE CASE2
Disclosed embodiments of Appellants' invention relate to "methods,
systems, and computer-readable storage media for creating, among other
things, a unified patient referral worklist that helps a provider to manage
incoming and outgoing referrals." Spec. ,r 7.
Exemplary Claim
10. A computerized method carried out by a referral
service running on one or more processors for generating a
patient-centric referral order in a healthcare setting, the method
compnsmg:
receiving a first referral order for a patient from a first
referring provider;
receiving a second referral order for the patient from a
second referring provider, wherein the second referring provider
is one of the same as the first referring provider or different than
the first referring provider;
determining, using the one or more processors, at least one
instance of commonality between the first referral order and the
second referral order [L 1] wherein the at least one instance of
commonality comprises one location common to one or more
aspects of the first referral order and the second referral order
and that can be used for the first referral order and the second
referral order, the one or more aspects including at least one of
medical specialty, provider gender, provider ratings, provider
affiliations, board certifications, and types of accepted
payments; and
2 We herein refer to the Final Office Action, mailed Oct. 11, 2016 ("Final
Act."); Appeal Brief, filed April 10, 2017 ("App. Br."); Examiner's Answer,
mailed Aug. 11, 2017 ("Ans."); and the Reply Brief, filed Oct. 11, 2017
("Reply Br.").
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[L2] generating a third, patient-centric referral order for
the patient based, at least in part, on the at least one instance of
commonality, the third referral order comprising at least the first
referral order, the second referral order, and the one location.
App. Br. 29 (Claims Appendix) (Emphasis added regarding the contested
limitations LI and L2 under 35 U.S.C. § I03(a)).
Rejections
A. Claims 10-20 are rejected under 35 U.S.C. § 101, as being directed
to a judicial exception, without significantly more. Final Act. 2.
B. Claims 10-13 are rejected under 35 U.S.C. § I03(a) as being obvious
over the combined teachings and suggestions of Moore
(U.S. 7,693,727 B2; Apr. 6, 2010), in view ofWhibbs et al.
(U.S. 7,702,524 Bl; Apr. 20, 2010 ("Whibbs")), and further in view
of Engel et al. (U.S. 2002/0069085 Al; June 6, 2002 ("Engel")).
Final Act. 5.
C. Claims 14--20 are rejected under 35 U.S.C. § I03(a) as being obvious
over the combined teachings and suggestions of Moore in view of
Whibbs. Final Act. 9.
Issues on Appeal
1. Did the Examiner err in rejecting claims 10-20 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
2. Did the Examiner err in rejecting claims 10-20, under
35 U.S.C. § I03(a), as being obvious over the cited combinations of
prior art?
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ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Principles of Law-35 USC§ 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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "Laws of nature, natural phenomena, and abstract ideas"
are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
andAlice. Alice Corp. v. CLSBanklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk." (emphasis omitted)); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diamond v. Diehr, 450 U.S. at 193);
"tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-
68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing
Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue
recited a mathematical formula, but the Supreme Court held that "a claim
drawn to subject matter otherwise statutory does not become nonstatutory
simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see
also id. at 191 ("We view respondents' claims as nothing more than a
process for molding rubber products and not as an attempt to patent a
mathematical formula."). Having said that, the Supreme Court also
indicated that a claim "seeking patent protection for that formula in the
abstract ... is not accorded the protection of our patent laws, ... and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment." Id. ( citing Benson and
Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
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monopolize the [abstract idea]."' Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
Subject Matter Eligibility-2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). This
new guidance is applied in this opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain methods of
organizing human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions between
people); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure ("MPEP")
§§ 2106.05(a}-(c), (e}-(h)). 3 See 2019 Revised Guidance, 84 Fed. Reg. at
51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under§ 101. Id.
Only if a claim: ( 1) recites a judicial exception and (2) does not
3 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217-18.
For example, 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, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. See 2019 Revised Guidance, 84 Fed.
Reg. at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes- concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
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According to the 2019 Revised Guidance, "[ c ]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
(abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b );
3. Effecting a transformation or reduction of a particular
article to a different state or thing - see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception -
see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application," include:
1. Adding the words "apply it" ( or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely using
a computer as a tool to perform an abstract idea - see
MPEP § 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception - see MPEP § 2106.05(g); and
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3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
Rejection A of claims 10-20 under 35 US.C. § 101
The Examiner identifies the abstract idea as:
receiving a first referral order from the first provider, receiving
a second referral for the patient from the second provider,
determining an instance of commonality between the first and
second referral orders, wherein the instance of commonality
comprises the location common to the first and second order with
aspects of provider's rating affiliation, board certification, etc ... ,
generating a third patient-centric referral order for the patient
with the instance of commonality. The abstract idea [for] claims
14-20 is similar to the abstract idea for the claims 10-13 only that
the third referral order based on the instance of commonality and
the templates usable for creat[ing] a customized referral order
[are] generated. And thus, the claims are similar to other concepts
that have been identified as an abstract idea of using categories
to organize, store[] and transmit[] information (Cybeifsource)
[sic] [4J comparing new and stored information and using rules
4 From the misspelling ("Cyberfsource"), the Examiner appears to have
conflated Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F.App'x
988 (Fed. Cir. 2014) with CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366 (Fed. Cir. 2011). However, the best fit for "using categories to
organize, store[] and transmit[] information" (Final Act. 3), is Cyberfone,
because the Cyberfone patent used the "well-known concept of categorical
data storage, i.e., the idea of collecting information in classified form, then
separating and transmitting that information according to its classification"
which the court concluded was "an abstract idea that is not patent-eligible."
Cyberfone, 558 F.App'x at 992. However, Cyberfone is a non-precedential
Federal Circuit opinion. See USPTO Nov. 2, 2016 Memorandum ("Recent
Subject Matter Eligibility Decisions"), which guides against reliance on such
non-precedential opinions, specifically mentioning SmartGene and
Cyberfone as examples to generally avoid: "given the large and ever-
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to identify options (Smartgene).
Final Act. 2-3 ( emphasis in italics in original; bold added for additional
emphasis regarding the two recited receiving steps, and the "wherein" clause
of claim 10). 5
The Examiner finds the claims do not include additional elements that
amount to significantly more than the judicial exception, because
the additional elements or combination of elements in the claims,
other than the abstract idea per se, amount to no more than a
recitation of
A) generic computer structure that serves to perform
generic computer functions that serve to merely link the abstract
idea to a particular technological environment (i.e.
multiprocessor, computer, laptop, handheld devices, control
server, main frame computer ... ). The Applicant's specification
[Paras 0026, 0028], show these [as] typical and conventional
devices; and
B) functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry (i.e. receiving, determining, generating ... ).
increasing number of precedential decisions, [E]xaminers should avoid
relying upon or citing non-precedential decisions (e.g., SmartGene,
Cyberfone) unless the facts of the application under examination uniquely
match the facts at issue in the non-precedential decision." Id. at 4 ( emphasis
added).
5 The Examiner is referring to SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F.App'x 950, 955 (Fed. Cir. 2014) (nonprecedential)
("Whatever the boundaries of the 'abstract ideas' category, the claim at issue
here involves a mental process excluded from section 101: the mental steps
of comparing new and stored information and using rules to identify medical
options."). In SmartGene, step (c) of Advanced Biological Laboratories'
claim 1 recites: "generating in said computing device advisory information
for one or more therapeutic treatment regimens in said ranked listing based
on said patient information and said expert rules." Id. at 952.
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Final Act. 3 ( emphasis omitted, alteration in original).
For the aforementioned reasons, the Examiner concludes that all
claims 10-20 are not patent eligible under 35 U.S.C. § 101. 6 7
2019 Revised Guidance, Step 2A, Prong One
The Judicial Exception
Under the 2019 Revised Guidance ( 1 ), we consider whether the
claims recite any judicial exceptions, including certain groupings of abstract
ideas, in particular: (a) mathematical concepts, (b) mental steps, and ( c)
certain methods of organizing human activities.
We note the two recited "receiving steps" of claim 10 merely gather
information. Courts have found such data gathering steps to be insignificant
extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en bane), aff'd sub nom Bilski v. Kappas, 561 U.S. 593 (2010)
(characterizing data gathering steps as insignificant extra-solution activity).
In contrast, we conclude the "determining" step recites an abstract
idea, i.e., a method of organizing human activity that includes managing
relationships or interactions between people (i.e., medical referrals between
healthcare providers), which further involves following rules or instructions,
such as recited in the "wherein" clause:
6 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
7 Throughout this opinion, we give the contested claim limitations the
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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determining, using the one or more processors, at least
one instance of commonality between the first referral order and
the second referral order wherein the at least one instance of
commonality comprises one location common to one or more
aspects of the first referral order and the second referral order
and that can be used for the first referral order and the second
referral order, the one or more aspects including at least one of
medical specialty, provider gender, provider ratings, provider
affiliations, board certifications, and types of accepted
payments.
App. Br. 29 (Claims Appendix, Claim 10 (emphasis added)).
We additionally conclude at least the recited "determining" step could
be performed as a mental step. Id. 8 To the extent Appellants advance
arguments regarding Alice step one, which also fall under 2019 Revised
Guidance (2) (covering MPEP §§ 2106.05(a}-(c) and (e}-(h)), we address
these arguments infra.
8 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under§ 101. CyberSource Corp., 654 F.3d at 1372-73; see also Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
("While the Supreme Court has altered the § 101 analysis since CyberSource
in cases like Mayo and Alice, we continue to 'treat[] analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category."' (brackets in original) ( quoting Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)); CyberSource, 654 F.3d at 1375
("That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
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2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
For the reasons which follow, we conclude that Appellants' claims
10-20 do not integrate the judicial exception into a practical application.
See MPEP §§ 2106.0S(a}-(c) and (e}-(h). Applying the 2019 Revised
Guidance, we address these "practical application" MPEP sections seriatim.
MPEP § 2106.05(a) "Improvements to the Functioning of a Computer
or to Any Other Technology or Technical Field"
This section of the MPEP guides:
In determining patent eligibility, examiners should
consider whether the claim "purport( s) to improve the
functioning of the computer itself' or "any other technology or
technical field." ...
While improvements were evaluated in Alice Corp. as
relevant to the search for an inventive concept (Step 2B), several
decisions of the Federal Circuit have also evaluated this
consideration when determining whether a claim was directed to
an abstract idea (Step 2A).
The MPEP instructs:
Thus, an examiner may evaluate whether a claim contains an
improvement to the functioning of a computer or to any other
technology or technical field at Step 2A or Step 2B, as well as
when considering whether the claim has such self-evident
eligibility that it qualifies for the streamlined analysis.
MPEP § 2106.0S(a) (emphasis added).
Regarding the purported improvements offered by the claimed
invention, Appellants contend:
the Federal Circuit has emphasized that software is not inherently
abstract because "[ s ]oftware can make non-abstract
improvements to computer technology just as hardware
improvements can."[] In Enfzsh, for example, the Federal Circuit
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held claims "directed to a specific implementation of a solution
to a problem in the software arts" are eligible under part 1 of the
Alice analysis, rather than proceeding to part 2.[] Here, the
pending claims are similarly directed to a specific
implementation of a solution to a problem in the software arts
and, thus, are not directed to an abstract idea. Specifically, the
claims address a failure of prior referral software to effectively
manage referral orders by not consolidating multiple referrals
for the same patient and not providing sufficient information to
the provider understand the referral options for a patient. [J
App. Br. 10-ll(footnotes omitted, emphasis added).
Appellants further urge:
The claimed invention solves this problem by generating patient-
centric referral comprising first and second referral orders for the
patient and a location common to aspects of the first and second
referral order, as recited in claim 10, and generating templates
usable to create a customized referral order and providing
referral order options from recommended referrals determined
from a patient's medical record and medical standards of care and
from frequently-occurring referrals based on the referral patterns
of the provider, as recited in claim 14. Because the claims are
"directed to a specific implementation of a solution to a problem
in the software arts," they cannot be found to be directed to an
abstract idea. [J
App. Br. 11 (footnotes omitted, emphasis added).
We note the Enfzsh court concluded the subject claims were "not
directed to an abstract idea within the meaning of Alice." Rather, the court
held the subject claims were "directed to a specific improvement to the way
computers operate, embodied in the self-referential table." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (emphasis added).
As noted by the Enfish court, "traditional databases, such as 'those that
follow the relational model and those that follow the object oriented model,'
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'604 patent, col. 1 11. 37--40, are inferior to the claimed invention." Enfzsh,
822 F.3d at 1337.
Citing again to the Enfish '604 patent Specification (col. 2, 11. 10-13),
the court explained "[ t ]he structural requirements of current databases
require a programmer to predefine a structure and subsequent [data] entry
must conform to that structure;" however, the "database of the present
invention does not require a programmer to preconfigure a structure to
which a user must adapt data entry." Id. (alteration in original).
We emphasize that the self-referential database table considered by
the court in Enfish was found to be a specific type of data structure that was
designed to improve the way a computer stores and retrieves data in
memory. Id. at 1339. Because the Enfzsh court found the claimed self-
referential database table improved the way the computer stored and
retrieved data, the court concluded the Enfzsh claims were not directed to an
abstract idea, and thus ended the analysis at Alice step one. Id. at 1336.
Here, Appellants have not shown that any of the features of the claims
before us on appeal improve the manner in which the recited generic "one or
more processors" (claim 10) and/or the "computing device having at least
one processor" (claim 14), store and retrieve data, in a manner analogous to
that found by the court in Enfzsh. Moreover, Appellants' claims 10-20 are
silent regarding any mention of a database, much less any mention of a
database storage device that includes a self-referential database table of the
type found by the Enfzsh court to improve the way a computer stores and
retrieves data in memory.
Therefore, on this record, we are not persuaded that Appellants'
claimed invention improves the functionality or efficiency, or otherwise
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changes the way the claimed generic processors function, at least in the
sense contemplated by the Federal Circuit in Enfzsh.
Thus, we agree with the Examiner (Final Act. 3; Ans. 16-17) that
Appellants' claims merely implement generic computer components to
perform the recited steps or functions. We emphasize that McRO guides:
"The abstract idea exception prevents patenting a result where 'it matters not
by what process or machinery the result is accomplished."' McRO, Inc. v
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Circ. 2016)
(quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
In reviewing the record, we find the claims on appeal are silent
regarding specific limitations directed to an improved computer system,
processor, memory, network, database, or Internet. Therefore, we find
Appellants' claimed invention does not provide a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," such as considered by the court
in DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) (emphasis added).
MPEP § 2106.05(b) Particular Machine
MPEP § 2106.05(c) Particular Transformation
Appellants advance no arguments in the Briefs that are directed to the
Bilski machine-or-transformation test, which would only be applicable to the
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method (process) claims on appeal. 9 Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
MPEP § 2106.05(e) Other Meaningful Limitations
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment. 450
U.S. 175, 209 USPQ 1 (1981). In Diehr, the claim was directed
to the use of the Arrhenius equation ( an abstract idea or law of
nature) in an automated process for operating a rubber-molding
press. 450 U.S. at 177-78, 209 USPQ at 4. The Court evaluated
additional elements such as the steps of installing rubber in a
press, closing the mold, constantly measuring the temperature in
the mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184, 187,
209 USPQ at 7, 8. In contrast, the claims in Alice Corp. v. CLS
Bank International did not meaningfully limit the abstract idea of
mitigating settlement risk. 573 U.S._, 134 S. Ct. 2347, 110
USPQ2d 197 6 (2014 ). In particular, the Court concluded that the
additional elements such as the data processing system and
communications controllers recited in the system claims did not
meaningfully limit the abstract idea because they merely linked
the use of the abstract idea to a particular technological
environment (i.e., "implementation via computers") or were
well-understood, routine, conventional activity[.]
MPEP § 2106.05(e) (emphasis added).
9 See 35 U.S.C. § lOO(b) ("The term 'process' means process, art, or method,
and includes a new use of a known process, machine, manufacture,
composition of matter, or material.").
17
Appeal2018-000359
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Appellants contend:
As discussed above, the claims of the present invention add
limitations to contribute to significantly more than the abstract
idea itself. Through these different meaningful limitations and
components, independent claim 10, as an example, provides an
efficient means for managing multiple referrals for a single
patient.
App. Br. 14 ( emphasis added).
But "a claim for a new abstract idea is still an abstract idea."
Synopsys, 839 F .3d at 1151; see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) ("A narrow claim
directed to an abstract idea, however, is not necessarily patent-eligible.").
To the extent Appellants also urge that the purportedly meaningful
limitations are not well-understood, routine, and conventional, we address
this issue under Step 2B (Inventive Concept), infra. For the reasons
discussed further below, and on this record, it is our view that Appellants'
claims do not add meaningful limitations beyond generally linking the use of
the judicial exception to a particular technological environment.
MPEP §2106.05(!) Mere Instructions to Apply an Exception
Appellants contend:
Through these different meaningful limitations and components,
independent claim 10, as an example, provides an efficient
means for managing multiple referrals for a single patient. These
features are not mere instructions to implement the idea on a
computer and are not generic, well-understood, routine, or
conventional.
App. Br. 14 (emphasis added).
We are of the view that claims 10-20 invoke generic computer
components as a tool in which the computer instructions apply the judicial
18
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exception. To the extent that Appellants urge the "efficient means for
managing multiple referrals for a single patient" are "not generic, well-
understood, routine, or conventional" (App. Br. 14), we address this issue
under Step 2B (Inventive Concept), infra.
MP EP § 2106. 05 (g) Insignificant Extra-Solution Activity
Appellants advance no specific arguments in the Briefs contending the
claims do not recite insignificant extra-solution activity. As we noted above,
the two recited "receiving steps" of claim 10, as pointed out by the Examiner
(Final Act. 2-3), merely gather information. Courts have found such data
gathering steps to be insignificant extra-solution activity. See, e.g., Bilski,
545 F.3d at 963 (Fed. Cir. 2008) (en bane), aff'd sub nom Bilski v. Kappas,
561 U.S. 593 (2010) (characterizing data gathering steps as insignificant
extra-solution activity).
The Supreme Court guides that the "prohibition against patenting
abstract ideas 'cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
Applying this guidance here, we are of the view that Appellants'
claims do not operate the recited generic computer components in an
unconventional manner to achieve an improvement in computer or network
functionality, as discussed above.
19
Appeal2018-000359
Application 13/452,397
MPEP § 2106.05(h) Field of Use and Technological Environment
[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity-such as identifying a relevant audience,
a category of use,field of use, or technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
( emphasis added).
Appellants contend:
While courts do not use a lack of preemption, alone, as a
benchmark for patent eligibility, it has been repeatedly cited as a
factor for consideration. [J Here, the claims do not preempt every
application of the abstract idea indicated by the Office. Instead,
the claims recite a "specific way" [J to efficiently manage referral
orders, specifically, a "specific, discrete implementation"[] to
consolidate multiple referral orders for a patient when there is a
common location and generate referral order options that include
recommended referrals based on medical standards of care and
frequently-occurring referrals. As such, there is no risk of
preemption from the claims, weighing in favor of finding the
claims patent eligible.
App. Br. 15-16 (footnotes omitted).
Our reviewing court provides applicable guidance: "While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
After applying the 2019 Revised Guidance supra, we are of the view
that the Examiner did not err in concluding that each of claims 10-20 on
appeal recites method steps that fall under the category of a method of
organizing human behavior- i.e., we agree with the Examiner that the
20
Appeal2018-000359
Application 13/452,397
"determining" step recites an abstract idea, i.e., a method of organizing
human activity that includes managing relationships or interactions between
people (i.e., medical referrals between healthcare providers), which further
involves following rules or instructions, that also could be performed (in
part) as mental steps, as discussed above.
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants' claims 10-20, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, under MPEP §§ 2106.0S(a}-(c) and (e}-(h)).
The Inventive Concept - Step 2B
Regarding step 2B, the inventive concept, Appellants argue:
Like the claims Bascom, the claims of the present
Application address a technological problem. As previously
mentioned, the pending claims address problems arising out of
electronic management of referral orders from failing to
consolidating multiple referrals for the same patient and not
providing referral options to the provider to create a customized
referral order. [J The claimed invention solves these problems by
generating patient-centric referral comprising first and second
referral orders for the patient and a location common to aspects
of the first and second referral order, as recited in claim 10, and
by generating templates usable to create a customized referral
order and providing referral order options from recommended
referrals determined from a patient's medical record and medical
standards of care and from frequently-occurring referrals based
on the referral patterns of the provider, as recited in claim 14. In
other words, just as in Bascom, the patent application "describes
how its particular arrangement of elements is a technical
improvement over prior art ways." [J As such, even if the claims
are found to be directed to an abstract idea, the claims at issue
recite an inventive concept in the ordered combination of claim
21
Appeal2018-000359
Application 13/452,397
limitations that transform any abstract idea into a practical
application, thus providing patent-eligible claims.
App. Br. 13-14 (footnotes omitted).
We find Appellants' analogy to BASCOM 10 is unavailing. Id. The
Federal Circuit held in BASCOM that the claimed Internet content filtering,
which featured an implementation "versatile enough that it could be adapted
to many different users' preferences while also installed remotely in a single
location," expressed an inventive concept in "the non-conventional and non-
generic arrangement of known, conventional pieces." BASCOM, 827 F.3d at
1350.
Here, Appellants have not shown a non-conventional, non-generic
arrangement regarding the generic (known, conventional) "one or more
processors" ( claim 10) and/or "computing device having at least one
processor" ( claim 14 ).
As discussed above, Appellants' invention is directed to and abstract
idea, i.e., a method of organizing human activity that includes managing
relationships or interactions between people (i.e., medical referrals between
healthcare providers), which further involves following rules or instructions,
that also could be performed (in part) as mental steps. It is our view that
Appellants' claims do not involve any improvements to another technology,
technical field, or improvements to the functioning of the computer or
network, as was seen in Bascom.
For the reasons discussed above, we conclude Appellants' claims
10-20 invoke generic computer components merely as a tool in which the
10 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
22
Appeal2018-000359
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computer instructions apply the judicial exception.
Berkheimerv. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Under the 2019 Revised Guidance, only if a claim: ( 1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Regarding the use of the recited generic computer device and one or
more processors, the Supreme Court has held "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Alice, 573 U.S. at 223. Our reviewing court
provides additional guidance: See FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter."); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims
reciting, inter alia, sending messages over a network, gathering statistics,
using a computerized system to automatically determine an estimated
outcome, and presenting offers to potential customers found to merely recite
"'well-understood, routine conventional activit[ies ], ' either by requiring
conventional computer activities or routine data-gathering steps" (alteration
in original)).
We note Berkheimer was decided by the Federal Circuit on February
8, 2018. Appellants' Reply Brief was filed almost four months earlier, on
23
Appeal2018-000359
Application 13/452,397
October 11, 2017. On April 19, 2018, the PTO issued the Memorandum
titled: "Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)" (hereinafter "Berkheimer Memorandum"). 11
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements ( or a
combination of elements) are well-understood, routine, or conventional. In
reviewing the prosecution history, we recognize that Appellants have not yet
had an opportunity to advance arguments based upon the change in the law
effected by Berkheimer. Thus, Berkheimer (881 F.3d at 1369) and the
USPTO Berkheimer Memorandum are intervening authorities.
However, on the record before us, Appellants have not shown that the
claims on appeal add a specific limitation beyond the judicial exception that
is not "well-understood, routine, and conventional" in the field (see MPEP
§ 2106.05(d)).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants' claims 10-20, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the Examiner's
Rejection A under 35 U.S.C. § 101 of claims 10-20. 12
11 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
12 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
24
Appeal2018-000359
Application 13/452,397
Other Issue
As pertaining to Rejection A under 35 U.S.C. § 101, Appellants
contend in the Reply Brief that the Examiner's reliance on Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) in the Answer, page 14,
is a new ground of rejection. Reply Br. 2.
Because the Examiner has not expressly designated a new ground of
rejection in the Answer with the Director's approval pursuant to 37 C.F.R.
§ 41.39(a)(2), Appellants' belief that the Examiner has introduced a new
ground of rejection is a petitionable matter, and is, therefore, not a matter
properly before the Board.
See MPEP § 1207.03(c):
The provisions of 37 CPR 4I.39(b) apply only to
rejections that are designated as new grounds of rejection in the
examiner's answer. If appellant believes there is an undesignated
new ground of rejection, review is by way of the procedure
established in 37 CPR 41.40.
See 37 C.F.R. § 41.40(a) (emphasis added):
Timing. Any request to seek review of the primary
examiner's failure to designate a rejection as a new ground of
rejection in an examiner's answer must be by way of a petition to
the Director under § 1.181 of this title filed within two months
from the entry of the examiner's answer and before the filing of
any reply brief Failure of appellant to timely file such a petition
will constitute a waiver of any arguments that a rejection must be
designated as a new ground of rejection.
Therefore, in reviewing the prosecution history, we find Appellants'
allegation (Reply Br. 2) that the Examiner has set forth a new ground of
rejection in the Answer has been waived under 37 C.F.R. § 41.40(a),
because Appellants have not timely filed a petition to the Director, under 37
25
Appeal2018-000359
Application 13/452,397
C.F.R. § 1.181, within two months from the entry of the Examiner's Answer
and before the filing of the Reply Brief.
Rejections Band C under 35 US.C. § 103(a)
Obviousness over the cited references
We have reviewed Appellants' arguments in the Briefs, the
Examiner's obviousness rejections Band C, and the Examiner's responses to
Appellants' arguments. Appellants do not proffer sufficient argument or
evidence to persuade us of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). For at least the reasons
discussed below, we agree with and adopt the Examiner's underlying factual
findings and legal conclusions, as set forth in the Final Action and Answer.
In our analysis below we highlight and address specific findings and
arguments for emphasis.
Grouping of Claims for Rejections B and C under§ 103 (a)
Based upon Appellants' arguments (App. Br. 16-27), and our
discretion under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of the
obviousness Rejection B, of claims 10-13, on the basis of representative
claim 10, and obviousness Rejection C, of claims 14--20, on the basis of
representative claim 14.
Rejection B of Representative Claim 10 under§ 103 (a)
Appellants contest the following emphasized limitations L 1 and L2 of
independent claim 10:
26
Appeal2018-000359
Application 13/452,397
determining, using the one or more processors, at least one
instance of commonality between the first referral order and the
second referral order [L 1] wherein the at least one instance of
commonality comprises one location common to one or more
aspects of the first referral order and the second referral order
and that can be used for the first referral order and the second
referral order, the one or more aspects including at least one of
medical specialty, provider gender, provider ratings, provider
affiliations, board certifications, and types of accepted
payments; and
[L2] generating a third, patient-centric referral order for
the patient based, at least in part, on the at least one instance of
commonality, the third referral order comprising at least the first
referral order, the second referral order, and the one location.
Claim 10 ( emphasis added). See App. Br. 17-21.
We note the above contested limitations are similarly recited, but with
broader scope, in remaining independent claim 14, which we address
separately, infra.
Contested Limitation LI of Independent Claim 10
Appellants note the Examiner finds Moore fails to disclose the
contested "wherein" clause limitation L 1. App. Br. 1 7. Appellants focus
their arguments on the Examiner's findings regarding Whibbs Figure 3g and
3r, and column 11, lines 29---63, as allegedly disclosing the contested
limitations. Id. at 18.
Regarding contested limitation L 1, Appellants contend the cited
combination of references fails to disclose or render obvious: (i) at least one
instance of commonality comprising one location common to one or more
aspects of the first and second referral orders, the one or more aspects
including at least one medical specialty, provider, gender, provider ratings,
27
Appeal2018-000359
Application 13/452,397
provider affiliations, board certifications, and types of accepted payments; or
(ii) generating a third, patient-centric referral order based at least in part on
the instance of commonality. App. Br. 18. In support, Appellants contend
Whibbs fails to remedy the deficiencies of Moore, for the following reasons:
Whibbs Figures "3g and 3r are both referrals for patient John
Doe and include some of the same referral information, such as
patient name, address, and date of birth. In contrast, however,
the at least one instance of commonality determined in
accordance with claim 10 comprises one location common to
one or more aspects of the first referral order and the second
referral order ... , the one or more aspects including at least one
of medical specialty, provider gender, provider ratings, provider
affiliations, board certifications, and types of accepted
payments.
App. Br. 20 ( emphasis omitted).
Appellants further contend:
This one location common to aspects of the first and
second referral orders can be used to consolidate the two
referral orders. For example, a common location that includes
providers practicing the medical specialties associated with
each of the first referral order and the second referral order may
be determined. Because the at least one instance of
commonality is a location common to certain aspects (at least
one of medical specialty, provider gender, provider ratings,
provider affiliations, board certffications, and types of accepted
payments) of the.first and second referral orders, a patient's
information, such as name, weight, and date of birth, does not
teach the at least one instance of commonality recited in claim
10.
App. Br. 20-21 ( emphasis added).
28
Appeal2018-000359
Application 13/452,397
In response, the Examiner further explains the basis for the rejection:
Whibbs discloses a unique referral dashboard including
incoming and outgoing referrals which include referral
information, patient information, etc .. ([Whibbs]; Col. 11, lines
29-63). The Examiner noted that, in Para 0063, specification,
describes "a provider or team of providers associated with each
of the referral orders may be determined, one or more location
that include the providers or team of providers may then be
determined". Fig. 3d of Whibbs illustrates the incoming and
outgoing referrals for the same patient sent from/to the same
provider at common location, such as Plugit-Specialist/Plugit-
Primary care. And thus, location of Whibbs meets the feature of
common location as described in the invention. Whibbs further
discloses the frequent[] referral based [on] the patient's medical
record such as incoming/outgoing referrals between the primary
care provider and specialists ([Whibbs]; Fig. 3d).
Ans. 18-19.
Turning to the evidence, Whibbs' Figure 3g is depicted below,
showing the Referral Dashboard with Referral and Patient Information,
including Provider Specialty:
29
Appeal2018-000359
Application 13/452,397
! Referrnl Oosh!loord jl Lall flasl!ooard 11 Creole RBI errol I! S:e!Jrch Rfffemils I Weloome &cl: Main Desk Primary Demo I ~
ArchlW! Md Docurrnmt Ml Co,"Te'.lfii:mden~e Prmt
Referral Information
From Group; Pluglt - Prlmory Cure
From Doctor: Test Keith Nicholson ~10
fo Group: Plugit - Speciafis:t
fo Doctor: Wirth, Jomes MD
To Speclotty: Fomily Practice/Primary Core
Schoouling: Please call patient for cppointmeni
Refarrol Number; 55555555
Explres: 1/1/2003
~umber Visits: 6
Origirwtor: Main Desk, Primary Demo
Crooted: 5/'22/2003 10: 16:36 AM
Status
Current Status:
Sant
Received:
Responded:
Arch~w:
ACCEPTED
5/21/2003 10:16:36 AM
5/22/2003 10:25:0S AM
5/21/2003 10:52;00 AM
Patient Information
Ni:Jme; Doe, John
SSN: 555555555
Home Phone:
Work Phone:
Dote of Birth:
f.reight:
we;qh{;
Primary !n1;uronce:
Secondar1 i risuronce:
Signature Ol'l File:
2211 8:Jusden
Pensacola, FL 32503
888-888-8888
999-999-9999
07/04/1970
5'11"
170
BC/BS of Flor;do
XJG55555555555
Beech Streat
eeeeeee
eeeeeee
NO
Dlagnosis
Diagnosis: Codes: 1 i 11 " ..
lest
I ;,;h- a/~15/22/?MJ 1>16'36 AM
Requested Tests
Attached Documents
Dote Oescripfam
lest i;/22/200J 10:16:U AM
Action !
~IR!lfflmll !
*You con ooly remo~-a files too! you u~,loocffl.
Correspondence
I To From Sent P!L1glt - Primmy Core Spaeiol1si D1lmo Moin Desk 5/2'1./2003 W: 25:00 J,.M
FIG. 3g
Whibbs' Figure 3g is depicted above.
R~ceived Message•* !
® ie!l:!100 ecrrespoooorn;e feolure !
Whibbs' Figure 3d is depicted below showing Incoming and Outgoing
Referrals:
30
Appeal2018-000359
Application 13/452,397
IReferrol Dashboard l!Lob Dashboord l!Creote ~te,'Tllll1Soorch Refe,'T(l!sl Vmic~ Enck SJli!dolisl: !mmc;. ~in Desk I logout
Incoming Referro!s legend ~
! Stotus Stai\!5 To From status Date/ Age ti:?,)
ko SENT Doe, Jolin P!ugt-Spoclol1st Plugit-f'rirrnuy Care 5/'J.J./200"!1 10:16:36 AM 0/0
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brain damage.
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Non-clinical Services flights, arrange hotel and hotel accommodatious wi1hin l
acconmwd::itfons for patient spm1se blo.:.k from the hospital.
or family ..
Of'fice DI rMs,>n:,
:,' M~m">r~w:;~! ~1~~u~ ·~· .,,
r· [~:~:!~[?.{i':)P,."il.i$al ~~j
!
[,c ........... .l
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~llefetra! guidslme hi-01"""""·--.... ............ . ...... r::J(tJJfxl
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~~K1r:i~ fijr~c:fn.;E-2
: U,'!t~ ;1r~Jix=crn;t ~)exam t.'Qmp1-etoC"/
"f ricd nf OCP a, pt:'l:g~Sio;aen
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F!G. 6
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Moore's Figures 5 and 6 are depicted above.
We find Appellants are again arguing the references separately. See
Merck & Co., 800 F.2d at 1097; Keller, 642 F.2d at 425. Because
Appellants' arguments attack Moore in isolation, and do not substantively
and persuasively traverse the Examiner's factual findings regarding Whibbs
in combination with Moore, on this record, we are not persuaded of error
41
Appeal2018-000359
Application 13/452,397
regarding the Examiner's ultimate legal conclusion of obviousness for the
contested limitations of independent claim 14.
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for independent representative claim 14. Claims
15-20 (not argued separately) fall with claim 14. See 37 C.F.R.
§ 4I.37(c)(l)(iv). Accordingly, we sustain the Examiner's Rejection C
under 35 U.S.C. § 103(a) of claims 14--20.
CONCLUSIONS
The Examiner did not err in rejecting claims 10-20 under 35 U.S.C.
§ 101, as being directed to a judicial exception, without significantly more.
The Examiner did not err in rejecting claims 10-20 under 35 U.S.C.
§ 103(a), as being obvious over the cited combinations of prior art.
DECISION
We affirm the Examiner's decision rejecting claims 10-20 under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 10-20 under
35 U.S.C. § 103(a).
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
42