Ex Parte FORD et al

Patent Trial and Appeal Board

Oct 29, 2018

13592623 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/592,623 08/23/2012
46169 7590 10/31/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Erica Lorraine FORD
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.173296 5376
EXAMINER
LE, LINH GIANG
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
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 ERICA LORRAINE FORD, RACHEL LEE COOMBE, and
NIKLAS CHRISTIAN BOIVE FORSBERG
Appeal2017-007762
Application 13/592,623 1
Technology Center 3600
Before HUNG H. BUI, NABEEL U. KHAN, and SHARON PENICK,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-3, 5-13, and 15-18. Claims 4 and
14 have been canceled. Claims App 'x. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Cemer Innovation,
Inc. App. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed
October 17, 2016; Examiner's Answer ("Ans.") mailed February 1, 2017;
Final Office Action ("Final Act.") mailed May 17, 2016; and original
Specification ("Spec.") filed August 23, 2012.
Appeal2017-007762
Application 13/592,623
STATEMENT OF THE CASE
Appellants' invention relates to "methods, systems, graphical user
interfaces, and computer readable media for populating custom patient
worklists using demographic and clinical criteria." Spec. ,r 3; Abstract.
Claims 1, 11, and 18 are independent. Claim 1 is illustrative of
Appellants' invention, as reproduced below:
1. One or more non-transitory storage media having
computer-executable instructions embodied thereon that, when
executed, facilitate a method of creating custom patient
worklists, the method comprising:
rece1vmg a selection of a patient list for a healthcare
facility;
rece1vmg a name of a view associated with a custom
patient worklist, wherein a view is a number of custom patient
lists saved under a certain name;
receiving a selection of a unit within the healthcare
facility;
receiving a selection of one or more criteria associated
with the patient list;
receiving a selection of a sequence to display the selection
of one or more criteria such that criteria that is of greater
importance appears more prominently;
building the custom patient worklist based on the
selections, wherein each of various columns representing the one
or more criteria that are created in the sequence;
retrieving a plurality of data associated with the selections
from at least one of a health information system and electronic
medical records associated with patients, wherein the plurality of
data includes at least one piece of data received from a medical
device;
automatically populating the custom patient worklist for a
clinician using the plurality of data; and
displaying the custom patient worklist with the plurality of
data.
App. Br. 20 (Claims App'x).
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Application 13/592,623
EXAMINER'S REJECTION
Claims 1-3, 5-13, and 15-18 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to an abstract idea. Final Act. 2-5.
DISCUSSION
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (citing Mayo, 566 U.S. at 72-73).
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Application 13/592,623
In rejecting claims 1-3, 5-13, and 15-18 under 35 U.S.C. § 101, the
Examiner determines these claims are directed to an abstract idea of
"creating and building custom patient worklists based on user selections
of demographical and clinical criteria" and includes limitations that are
analogous to those discussed in Cyberfone. Final Act. 2-3 ( quoting
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992
(Fed. Cir. 2014) (holding that "using categories to organize, store, and
transmit information is well-established ... the idea of collecting
information in classified form, then separating and transmitting that
information according to its classification, is an abstract idea that is not
patent-eligible"). The Examiner also finds the claims are merely mental
steps that could also be performed in the human mind or by a human using a
pen and paper. Final Act. 3; see CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
The Examiner also determines:
[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because [i] the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. [ii] the additional
elements ... amount to no more than a recitation of: A) Generic
computer structure ... B) Generic computer functions that are
well-understood, routine and conventional activities previously
known to the pertinent industry (i.e., receiving, building, and
populating data) ... There is no indication that the combination
of elements improves the functioning of a computer or improves
any other technology.
Final Act. 4--5.
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Application 13/592,623
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue the
claims are not directed to an abstract idea within the meaning of Alice
because ( 1) "creating and building custom patient worklists based on user
selections of demographical and clinical criteria" is not merely "using
categories to organize, store, and transmit information" as discussed in
Cyberfone; and (2) the abstract ideas, as explained by the Supreme Court in
Alice, are limited to "those concepts that are necessarily 'the basic tools of
scientific and technological work' that may be considered 'fundamental
truths' or 'building blocks to human ingenuity."' App. Br. 10-13 (quoting
Alice, 134 S.Ct. at 2354--2356. According to Appellants, the Examiner "has
failed to provide any evidence" that "'creating and building custom patient
worklists based on user selections of demographical and clinical criteria' is a
building block of human ingenuity." App. Br. 13.
Appellants' arguments are not persuasive. At the outset, we note the
"abstract idea" exception is not limited to "those concepts that are
necessarily 'the basic tools of scientific and technological work' that may be
considered 'fundamental truths' or 'building blocks to human ingenuity,"' as
Appellants argue. App. Br. 10-13. As the Federal Circuit has recognized,
there is no single universal definition of an abstract idea, and because there
is no single universal definition of an abstract idea, the Examiner is asked
"to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided."
(Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) (citing Elec. Power Grp., 830 F.3d at 1353-54); accord USPTO
Memorandum, July 2015 Update: Subject Matter Eligibility (July 30, 2015),
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Application 13/592,623
https ://www. uspto. gov/ sites/ default/files/ docmnents/ieg-july-2015-
update. pdf (instructing Examiners that "a claimed concept is not identified
as an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea"); MPEP § 2106.04(a). In this case, the
Examiner did what was required under the USPTO Memorandum and the
Manual of Patent Examining and Procedure, and characterized the claims as
similar to concepts that the courts have already identified (i.e., Cyberfone) as
required pursuant to Alice.
Contrary to Appellants' arguments, Appellants' Specification
describes the invention as directed to "methods, systems, graphical user
interfaces, and computer readable media for populating custom patient
worklists using demographic and clinical criteria." Spec. ,r 3. According to
Appellants' Specification, "[p]atient lists and units associated with
healthcare facilities are selected. Names of views associated with the
custom patient worklists are received. Criteria are selected and sequences
for displaying selected criteria are received. Custom patient worklists are
built based on the selections." Abstract. Embodiments of Appellants'
Specification, as shown in Figure 3, describe basic steps of (1) "receiv[ing] a
selection of a patient list for a healthcare facility" (see Fig. 3, step 31 O); (2)
"receiv[ing] a name of a view associated with a custom patient list" (see Fig.
3, step 320); (3) "receiv[ing] a selection of a unit within the healthcare
facility" (see Fig. 3, step 330); (4) "receiving a selection of one or more
criteria associated with the patient list" (see Fig. 3, step 340); (5)
"receiv[ing] a selection of a sequence to display the selection of one or more
criteria" (see Fig. 3, step 350); and ( 6) "building the custom patient list
based on the selections" (see Fig. 3, step 360) as recited in Appellants'
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claims 1, 11, and 18. All these steps are nothing more than "creating and
building custom patient worklists based on user selections of demographical
and clinical criteria" as correctly recognized by the Examiner. Final Act. 2-
3
Thus, we agree with the Examiner (see Ans. 2) that the claims are
directed to an abstract idea of "creating and building custom patient
worklists based on user selections of demographical and clinical criteria"
which is considered as "certain methods of organizing human activities" as
identified in Alice and Bilski v. Kappas, 561 U.S. 593 (2010)- concepts
that courts have characterized as abstract ideas. 3 Such activities are squarely
within the realm of abstract ideas.
As further recognized by the Examiner (Final Act. 3), "creating and
building custom patient worklists based on user selections of demographical
and clinical criteria" can also be performed manually using a pen and paper.
See CyberSource, 654 F.3d at 1372-73 ("[A] method that can be performed
by human thought alone is merely an abstract idea and is not patent-eligible
under§ 101."); see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009)
("[M]ental processes-or processes of human thinking-standing alone are not
3 See (1) "The 2014 Interim Guidance on Patent Subject Matter Eligibility,"
published on Dec. 16, 2014 (79 Fed. Reg. 74618); (2) "July 2015 Update:
Subject Matter Eligibility" (July 2015 Update); (3) "May 2016 Subject
Matter Update" (May 4, 2016 Memorandum) at
https://www.uspto._gov/patent/1aws-and-regulations/examination-
policy/subject-matter-eligibility; (4) USPTO June 2017: Interim Eligibility
Guidance Quick Reference Sheet identifying abstract idea examples of
"certain methods of organizing human activity." See also In re Bilski, 545
F.3d 943,972 (Fed. Cir. 2008); Bilski v. Kappas, 561 U.S. 593 (2010); and
Alice, 134 S. Ct. 2361 (concurrence from Justice Sotomayor joined by
Justices Ginsburg and Breyer).
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Application 13/592,623
patentable even if they have practical application."); Gottschalkv. Benson,
409 U.S. 63, 67 (1972) ("Phenomena of nature ... , mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work" (emphasis added)). Additionally, mental
processes remain unpatentable even when automated to reduce the burden
on the user of what once could have been done with pen and paper.
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.").
Moreover, all the steps recited in Appellants' claim 1 (similarly
claims 11 and 18) including, for example, (1) "receiving a selection of a
patient list for a healthcare facility"; (2) "receiving a name of a view
associated with a custom patient worklist"; (3) "receiving a selection of a
unit within the healthcare facility"; ( 4) "receiving a selection of one or more
criteria associated with the patient list"; (5) "receiving a selection of a
sequence to display the selection of one or more criteria"; ( 6) "building the
custom patient list based on the selections"; (7) "retrieving a plurality of data
... automatically populating the custom patient worklist; and displaying the
custom patient worklist with the plurality of data" are analogous or similar
to those discussed in Cyberfone as well as "collecting information, analyzing
it, and displaying certain results of the collection and analysis" discussed in
Electric Power Group LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (holding "collecting information, analyzing it, and displaying certain
results of the collection and analysis" are abstract-idea processes). These
steps are also abstract processes of receiving, processing and analyzing data
of a specific content, i.e., a customer patient worklist. Information, as such,
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Application 13/592,623
is intangible, and the data analysis and comparisons are abstract ideas. See,
e.g., Microsoft Corp. v. AT & T Corp., 550 U.S. 437,451 n.12 (2007); Alice,
134 S. Ct. at 2355; Parker v. Flook, 437 U.S. 584, 589, 594--95 (1978);
Gottschalk, 409 U.S. at 71-72. "[C]ollecting information and analysis,
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," are
"within the realm of abstract ideas." Electric Power Group. 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, 1351 (Fed. Cir. 2014); CyberSource 654 F.3d
at 1370.
Accordingly, we agree with the Examiner that claims 1-3, 5-13, and
15-18 are directed to an abstract idea of "creating and building
custompatient worklists based on user selections of demographical and
clinical criteria" which is "certain methods for human activities" similar to
concepts identified in Alice and Bilski, as well as "mental steps" under
Benson.
Alice/Mayo-Step 2 (Inventive Concept)
Appellants argue "the inventive concept embodied in claims 1-3, 5-
13, and 15-18 of the present Application is not merely automation of prior
processes ... [but] recite a new combination of steps or computer system
components for building custom patient worklists that is not generic or well-
known as illustrated by the absence of a prior-art rejection." App. Br. 17
(quotingMcRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299
(Fed. Cir. 2016)).
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Appellants' argument is not persuasive. Likewise, we note
Appellants' reliance on McRO is misplaced because McRO is relied upon to
determine whether a claim is directed to an abstract idea under Alice step 1,
not Alice step 2. For example, McRO 's claims contain (i) specific
limitations regarding a set of rules that "define [] a morph weight set stream
as a function of phoneme sequence and time of said phoneme sequence" to
enable computers to produce "accurate and realistic lip synchronization and
facial expressions in animated characters" and, when viewed as a whole, are
directed to (ii) a "technological improvement over the existing, manual 3-D
animation techniques" that uses "limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice," McRO, 837 F.3d at 1315. In contrast to McRO,
Appellants' claims and Specification are directed to "methods, systems,
graphical user interfaces, and computer readable media for populating
custom patient worklists using demographic and clinical criteria." Spec. ,r 3;
Abstract.
According to Alice, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 72-73). The Federal Circuit cases on point include
(I) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) and (2) Amdocs, 841 F.3d 1288, both of which involved business-
centric inventions.
In DDR and Amdocs, the Federal Circuit opted to bypass Alice step 1
in favor of step 2. In particular, the Federal Circuit found DDR 's claims
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contain an "inventive concept" under Alice step 2 because DDR 's claims
( 1) do not merely recite "the performance of some business practice known
from the pre-Internet world" previously disclosed in Bilski and Alice, but
instead (2) provide a technical solution to a technical problem unique to the
Internet, i.e., a "solution ... necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also
found Amdocs' claims contain a sufficient "inventive concept" because like
DDR, Amdocs' claims "entail[] an unconventional technological solution
( enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)" and
"improve the performance of the system itself." Amdocs, 841 F.3d at 1300,
1302. Under current Federal Circuit precedent, an "inventive concept"
under Alice step 2 can be established by showing, for example, that the
patent claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F .3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution
([e.g.,] enhancing data in a distributed fashion) to a technological
problem ([ e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
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In this case, however, we find no element or combination of elements
recited in Appellants' claims 1, 11, and 18 that contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept (i.e., "creating and building customer patient worklists based on user
selections of demographical and clinical criteria") into a patent-eligible
application. Alice, 134 S. Ct. at 2357. We agree with the Examiner that
added computer elements ( such as a computing device and network interface
device) cannot transform the abstract idea into a patent eligible invention.
As our reviewing court has observed, "after Alice, there can remain no
doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible." DDR, 773 F.3d at 1256 (citing
Alice, 134 S. Ct. at 2358)).
Additional Argument
Appellants argue that the claims do not seek to tie up or preempt an
entire field, i.e., an abstract idea of ""creating and building custom patient
worklists based on user selections of demographical and clinical criteria."
App. Br. 18. However, this argument is not persuasive because, although
"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).
"Where a patent's claims are deemed only to disclose patent ineligible
subject matter" under the Alice/Mayo framework, "preemption concerns are
fully addressed and made moot." Id.
Because Appellants' claims 1, 11, and 18 are directed to a patent-
ineligib le abstract concept and does not recite something "significantly
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more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of claims 1-3, 5-13, and 15-18 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-3, 5-13, and 15-18
under 35 U.S.C. § 101.
DECISION
As such, we AFFIRM the Examiner's Final Rejection of claims 1-3,
5-13, and 15-18 under 35 U.S.C. § 101.
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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