Ex Parte George et al

Patent Trial and Appeal Board

Sep 27, 2018

11759534 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/759,534 06/07/2007 Tomson George
52716 7590 10/01/2018
Walgreen Co. Law Department
104 WILMOT ROAD
M.S. #1425
DEERFIELD, IL 60015
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.
PTS-843 6465
EXAMINER
GORT, ELAINE L
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
mgbdocket@marshallip.com
pto@walgreens.com
cary.pumphrey@walgreens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMSON GEORGE and RANDOLPH V. VELOSO
Appeal2017-006486
Application 11/759,534
Technology Center 3600
Before MAHSHID D. SAADAT, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-8, 11-15, and 22-33, which are all the claims pending in this
application. 2 We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify Walgreen Co. as the real party in interest. App. Br. 2.
2 Claims 9, 10, and 16-21 have been previously canceled.
Appeal2017-006486
Application 11/759,534
STATEMENT OF THE CASE
Introduction
Appellants' Specification describes "a process for managing
prescription order workflow in a pharmacy network." Spec. ,r 1.
Exemplary Claim
Claim 1 is illustrative of the invention and reads as follows.
1. A method of managing distributed processing of
prescription orders within a network of pharmacy resources, the
method comprising:
capturing, at a patient access terminal including a display
and a controller, a first image associated with a pharmacy
prescription order that is associated with a physical drug
product, the patient access terminal being associated with a first
pharmacy resource;
creating an image object containing the first image at the
patient access terminal;
displaying a prompt on the display to associate customer
information with the image object;
receiving a response to the prompt on the display at the
patient access terminal;
creating, without user intervention, a single task object
that is associated with the image object, wherein the single task
object stores information associated with the image object and
the prescription order, the customer information, and processing
task data associated with work performed on the prescription
order, the single task object accessible via a computerized data
network including at least the patient access terminal and
computers associated with the pharmacy resources;
processing, via a second pharmacy resource, the
pharmacy prescription order, the second pharmacy resource
being in a pharmacy and tasked with physical preparation of the
physical drug product;
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Application 11/759,534
performing a first verification whether data contained in
the single task object corresponds to prescription information
represented by the first image contained in the image object;
when the data contained in the single task object
corresponds to the prescription information represented by the
first image contained in the image object, storing, in the single
task object, a first indication that correspondence of the data
contained in the single task object to prescription information
represented by the first image contained in the image object has
been verified;
when the data contained in the single task object does not
correspond to the prescription information represented by the
first image contained in the image object, storing an exception
parameter in the single task object, the exception parameter
identifying details of the inconsistency;
communicating with a first computer associated with the
second pharmacy resource to store, in the single task object, a
second indication that the physical drug product has been
prepared;
performing a second verification, via the third pharmacy
resource, of the pharmacy prescription order prepared via the
second pharmacy resource based upon a comparison between
(i) a second image associated with the pharmacy prescription
order, and (ii) a reference image of the physical drug product,
the image comparison being performed via an image
comparison program executed via the third pharmacy resource;
communicating with a second computer associated with
the third pharmacy resource tasked with verification of the
physical drug product to store, in the single task object, a third
indication that the physical drug product has been verified;
routing the single task object to a prescription fulfillment
location upon the single task object including the first, second,
and third indication; and
routing the single task object to one of the first or the
second pharmacy resource in accordance with the exception
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parameter to facilitate rectification of the identified
inconsistency between the data contained in the single task
object and the prescription information.
The Examiner's Rejections
Claims 1-8, 11-15, and 22-33 stand rejected under 35 U.S.C. § 101
for being directed to patent-ineligible subject matter. Final Act. 2-6.
Claims 1-8 and 22-33 stand rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. Final
Act. 6.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
are unpersuaded by Appellants' contentions and agree with and adopt the
Examiner's findings and conclusions in (i) the action from which this appeal
is taken (Final Act. 2---6) and (ii) the Answer (Ans. 2---6) to the extent they
are consistent with our analysis below.
Rejection Under 35 U.S. C § 101
Principles of Law
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
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Supreme Court in Alice reiterated the 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
that analysis is to determine whether the claims at issue are directed to one
of those patent-ineligible concepts, such as an abstract idea. Abstract ideas
may include, but are not limited to, fundamental economic practices,
methods of organizing human activities, an idea of itself, and mathematical
formulas or relationships. Id. at 2355-57. If the claims are not directed to a
patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds
to the second step where the elements of the claims are considered
"individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or instead are directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F .3d
1327, 1336 (Fed. Cir. 2016).
Alice Step 1
Considering the first part of the Alice/Mayo analysis, the Examiner
determines the claims are directed to the abstract idea of "[p ]rocessing of
prescription[ s] via in form of image object and task object" because
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"(similar with court-defined abstract idea in Cyberphone) 3 in it uses
categories to organize, store[] and transmit[] information." Final Act. 4.
The Examiner further determines the "[ c ]laimed method are series of step
that can be perform manually with the use of paper record keep (i.e. task
object can be checklist chart)" and "multiple steps of verifications are also
an abstract idea because (similar with court-defined abstract idea in
SmartGene) compares new and stored information and uses rules to identify
options (whether or not verification complies or not)." Id.
Appellants contend the Examiner erred. See App. Br. 8-10.
Appellants argue the claims "recite features that facilitate a redistribution of
processing among different computers within a computer network," which
allows dividing and distributing the order-filling process to a plurality of
entities by separating the information-processing portion of the verification
process from the overall product-filling process. App. Br. 9 (citing Spec.
,r 5). Appellants further argue the claimed subject matter "overcomes
problems associated with handling processing distribution among computing
resources that are interconnected via a computer network." App. Br. 10.
We agree with the Examiner that the claims are directed to a
fundamental economic practice of processing prescriptions "via in form of
image object and task object," i.e., capturing an image of the prescription,
creating a single task object that contains information, processing and
verifying the information, communicating the task object with another
pharmacy, and routing the task object to the pharmacy resource. See Final
3 We understand the Examiner as referring to Cyberfone Systems, LLC v.
CNN Interactive Group, Inc., 558 F. App'x 988 (Fed. Cir. 2014)
( nonprecedential).
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Act. 3--4. Appellants' argument that the claims are similar to the claims in
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), or the
claims in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016), because the claims improve the technological process of
computerized building estimation is not persuasive. See App. Br. 9; Reply
Br. 2. Unlike the claims in Enfish and McRO, the claims in the present
application fail to recite the technical details that describe the alleged
improvement of the technical process of computerized information and
verification processing in prescription filling. Instead, the claims merely
recite the abstract idea of capturing an image of a prescription and
generating a task object along with generic computer terminology ( e.g.,
"computer processor," "memory," etc.). Thus, the claims are merely
directed to the automation of manually processing a prescription over a
plurality of pharmacy resources described in Appellants' Specification (see,
e.g., Spec. ,r,r 20-22, 31-33) using a generic computer. Such an
"improvement" is not a patentable improvement in computer technology.
Moreover, our reviewing court has found similar methods to be
abstract ideas. "[W]e have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas." Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations omitted). "In
a similar vein, we have treated 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." Id. at 1354.
"And we have recognized that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
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identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis." Id.
Alice Step 2
Because the claims are directed to an abstract idea, we tum to the
second part of the Alice/Mayo analysis. We analyze the claims to determine
if there are additional limitations that individually, or as an ordered
combination, ensure the claims amount to "significantly more" than the
abstract idea. Alice, 134 S. Ct. at 2357.
The Examiner determines:
The claims do not include additional elements that are sufficient
to 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. terminal comprising, display unit, input
unit, processing component and network of computers).
Final Act. 5. Relying on Paragraphs 20, 21, and 30 of Appellants'
Specification, the Examiner finds the recited term "patient access terminal"
and other computer and network components are described as known and
conventional such that "the additional elements do not amount to
significantly more than a judicial exception" or "improve[] the functioning
of a computer or improve[] any other technology." Final Act. 5-6.
Appellants argue that even if the claims are directed to an abstract
idea, the claim features discussed above further include "features directed to
storing data as part of the single task object to cause a prescription order to
be routed to various prescription resources within a computer network" that
is "significantly more" than the abstract idea and, therefore, transforms the
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claims into patent-eligible subject matter. App. Br. 11. According to
Appellants:
[E]ach of the steps recited in the claims, when taken together,
describe a technique for routing a prescription order through
various computer resources within a network by conditionally
modifying data in a task object ( e.g., "storing, in the single task
object, a first indication that correspondence of the data
contained in the single task object to prescription information
represented by the first image contained in the image object has
been verified," "to store, in the single task object, a second
indication that the physical drug product has been prepared,"
and "to store, in the single task object, a third indication that the
physical drug product has been verified").
App. Br. 11-12 (emphasis omitted). Appellants further assert "[t]his
conditional modification of the task object allows for the prescription order
data to be accurately routed to appropriate resources so that the prescription
order may be either fulfilled or the order details corrected," which
"represents a technical improvement over traditional methods of prescription
processing and management because the task object is updated with data at
each step such that, when augmented via computer network
communications, the prescription order is efficiently routed and filled."
App. Br. 12.
In response, the Examiner further explains:
Processing of prescription via in form of image object and task
object is an abstract idea because it is analogous to the court-
defined abstract idea in Intellectual Ventures v. Symantec in that
it receives information (image of prescription order),
characterizes the information ( create task object, perform
various verification etc.) based on identifiers (first, second and
third indications), and communicates the characterization
(routing task objects).
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Ans. 5---6 ( emphasis added). The Examiner also determines, unlike the
claims in Enfish, "the focus of the claims is not on such an improvement in
computers as tools, but on abstract ideas that use computers as tools. The
claims here do not require any nonconventional computer, network or
display components, or even a 'nonconventional and non-generic
arrangement of known, conventional pieces'." Ans. 6.
We agree with the Examiner. Considered "both individually and as an
ordered combination," the computer device and program steps of
Appellants' claims add nothing that is not already present when the steps are
considered separately. See Alice, 134 S. Ct. at 2355 (quotations omitted)
( quoting Mayo, 566 U.S. 66 at 78). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). The claims
do not, for example, purport to improve the functioning of the processor or
memory, or how a task object is created and displayed. In fact, Appellants'
Specification describes the "task object" as "a single program entity" that
stores and carries a collection of tasks, list of the work performed on a
prescription, which in tum is sent over a network to another computer. See
Spec. ,r,r 39--40. Appellants' Specification does not describe how this
collection of information relates to the functioning of the computer or the
manner of handling the task object. Nor do the claimed steps effect an
improvement in any other technology or technical field. "At best, the claims
describe the automation of the [ abstract idea] through the use of generic-
computer functions." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015). That is not enough to transform an abstract idea into
a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
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Also, as discussed above, Appellants have not persuasively argued,
nor provided sufficient evidence why the claim recitations regarding "storing
data as part of the single task object to cause a prescription order to be
routed to various prescription resources within a computer network" are not
routine computer functions. See, e.g., Elec. Power Grp., 830 F.3d at 1355
("We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are insufficient to pass the test of an
inventive concept in the application of an abstract idea.") ( quotations
omitted); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an Internet
computer network' or on a generic computer is still an abstract idea.");
Alice, 134 S. Ct. at 2358 ("[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.").
In sum, Appellants' claims are "directed to nothing more than the
performance of an abstract business practice ... using a conventional
computer. Such claims are not patent-eligible." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). That is to say, they
merely describe the functions of the abstract idea itself, without particularity.
This is simply not enough under step two. Intellectual Ventures, 792 F.3d at
1370 ("[T]he 'interactive interface' simply describes a generic web server
with attendant software, tasked with providing web pages to and
communicating with the user's computer.").
We, therefore, sustain the Examiner's rejection of claims 1-8, 11-15,
and 22-33 under 35 U.S.C. § 101.
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Rejection Under 35 U.S.C § 112, Second Paragraph
Appellants do not respond to the Examiner's rejection and indicate
their intention to address this rejection "separately in an amendment after
allowance or during additional prosecution." App. Br. 6. To the extent
Appellants have not advanced separate, substantive arguments for particular
claims or issues, such arguments are considered waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2016); see alsoHyattv. Dudas, 551 F.3d 1307, 1314 (Fed.
Cir. 2008) ("When the appellant fails to contest a ground of rejection to the
Board, ... the Board may treat any argument with respect to that ground of
rejection as waived."). Additionally, "[i]f a ground of rejection stated by the
examiner is not addressed in the appellant's brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain it
unless the examiner subsequently withdrew the rejection in the examiner's
answer." Manual of Patent Examining Procedure§ 1205.02 (9th ed. Rev.
08.2017, Jan. 2018).
Accordingly, we summarily sustain the Examiner's rejection of claims
1-8 and 22-33 under 35 U.S.C. § 112, second paragraph.
DECISION
We affirm the Examiner's decision to reject claims 1-8, 11-15, and
22-33 under 35 U.S.C. § 101.
We affirm the Examiner's decision to reject claims 1-8 and 22-33
under 35 U.S.C. § 112, second paragraph.
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).
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AFFIRMED
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