Ex Parte Griffin et al

Patent Trial and Appeal Board

Aug 10, 2017

12982668 (P.T.A.B. Aug. 10, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/982,668 12/30/2010 SARA J. GRIFFIN CRNI.153635 8819
46169 7590 08/14/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/14/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON @ SHB .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARA J. GRIFFIN and SARA J. BOSWELL
Appeal 2016-005758
Application 12/982,6681
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and SCOTT B. HOWARD,
Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1 and 2, which constitute all of the claims pending in this
application. Claim 3 has been cancelled. Br. 20 (Claims App’x). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
According to Appellants, the disclosed and claimed invention is
directed to “[mjethods, systems, and computer storage media . . . provided
for managing patient-specific research consents. In embodiments, the
1 Appellants identify Cemer Innovation, Inc. as the real party in interest. Br.
3.
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Application 12/982,668
present invention gives health care providers the ability to view a
participant’s up to date consent information and documentation within their
clinical workflow.” Abstract
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computerized method carried out by a server
running on one or more processors, for managing patient-specific
clinical research consent, comprising:
receiving a request from a caregiver associated with a
patient to access the patient’s electronic health record, wherein
the patient’s electronic health record is stored in association with
a comprehensive electronic health record system of a healthcare
facility caring for the patient;
presenting the patient’s electronic health record on a first
user interface associated with the caregiver, the patient's
electronic health record representing general health data
associated with the patient;
while in the patient’s electronic health record, receiving a
request from the caregiver for clinical research consent
information corresponding to a plurality of clinical studies for
which the patient is currently enrolled to be presented on the first
user interface simultaneously with the patient's general health
data;
determining, using the one or more processors, that the
clinical research consent information includes a first set of
distinct consents relating to a plurality of protocols of the
plurality of clinical studies;
associating the first set of distinct consents with the
plurality of protocols of the plurality of clinical studies for which
the patient is currently enrolled; and
presenting simultaneously on the first user interface the
patient's general health data and the first set of distinct consents
for the patient;
receiving a selection of a particular consent of the first set
of distinct consents on the first user interface;
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retrieving an electronic version of a consent document
corresponding to the particular consent of the first set of distinct
consents; and
presenting the electronic version of the consent document
corresponding to the particular consent of the first set of distinct
consents.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Califano US 2003/0033168 A1 Feb. 13, 2003
Perednia US 2003/0120516 A1 June 26, 2003
Rao US 2005/0159654 A1 July 21, 2005
Clements US 8,321,284 B2 Nov. 27, 2012
REJECTIONS
Claims 1 and 2 stand rejected under 35U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2.
Claims 1 and 2 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Rao in view of Clements, Califano, and Perednia.
Final Act. 3—6.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding claims 1 and 2,
and we incorporate herein and adopt as our own: (1) the findings and
2 Although Clements was filed on March 18, 2011, it is a continuation of an
application filed on May 2, 2006. Appellants have not challenged the status
of Clements as prior art.
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reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2—6), and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellants’ arguments (Ans. 6—8). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis as follows.
Section 101 Rejection
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract idea, itself, is
patent-ineligible, an application of the abstract idea may be patent-eligible.
Alice, 134 S. Ct. at 2355. Thus, we must consider “the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1297—98). The
claim must contain elements or a combination of elements that are
“sufficient to ensure that the patent in practice amounts to significantly more
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than a patent upon the [abstract idea] itself.” Id. (citing Mayo, 132 S. Ct. at
1294).
The Supreme Court set forth a two-part “framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Id. at
2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S.Ct., at
1296—1297. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., at------- , 132 S.Ct., at 1297. To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. Id., at------- , 132 S.Ct.,
at 1298, 1297. We have described step two of this analysis as a
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., at------- , 132 S.Ct., at
1294.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim's
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
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cases.” Enfish, 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(explaining that, in determining whether claims are patent eligible under
§101, “the decisional mechanism courts now apply is 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”).
We agree with the Examiner that the claims are directed to the
abstract idea “of a method of organizing human activities” (Final Act. 2)
and, more particularly, to “the abstract idea of using categories to organize,
store and transmit information (presenting consent information and general
health data, associating consents with protocols, retrieving a consent
document)” (Final Act. 6—7). In this regard, the claims of the instant
application are similar to the claims in Electric Power, which did “not go
beyond requiring the collection, analysis, and display of available
information in a particular field, stating those functions in general terms,
without limiting them to technical means for performing the functions that
are arguably an advance over conventional computer and network
technology.” 830 F.3d at 1351. Specifically, our reviewing Court held that
“collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas” and that “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 1353—54 (citations
omitted). As in Electric Power, the combination of various abstract ideas
relating to data collection and analysis is itself and abstract idea.
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Appellants argue the Examiner did not make a prima facie case
because the Examiner “has provided no rationale in support of its conclusion
that the elements recited in each of the claims, both independent and
dependent, amount to an abstract idea, the patenting of which would preempt
all implementations of ‘a method of organizing human activities.’” Br. 6.
According to Appellants, the Examiner “should follow the example set by
the Supreme Court in Alice and provide evidence supporting its assertion.”
Id. at 7.
As an initial matter, we find nothing in Alice that requires the Office
to identify specific references to support a finding that a claim is directed to
an abstract idea.
The Federal Circuit has repeatedly noted that “the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the USPTO carries its procedural burden when its rejection satisfies
the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons
for rejection, “together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of [the]
application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all
that is required of the Office is that it set forth the statutory basis of the
rejection, and the reference or references relied on, if any, in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132. Id.', see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 “is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
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for rejection.”); see also Ex parte Craske, Appeal 2017-002559, 2017 WL
2928866, *5 (PTAB June 29, 2017) (holding that “there is no requirement
that examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea”).
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Mayo two-step framework in view of the
Supreme Court Decision in Alice and Mayo. The Examiner, thus, notified
Appellants of the reasons for the rejection “together with such information
... as may be useful in judging of the propriety of continuing the
prosecution of [the] application.” 35 U.S.C. § 132. The burden then shifted
to Appellants to explain why the claims are patent-eligible.
Evidence may be helpful in certain situations where, for instance,
facts are in dispute. But it is not always necessary and it is not necessary in
this case. We note that, despite criticizing the Examiner for not citing any
evidence in support of the rejection, Appellants have put forward no rebuttal
evidence showing the claims are not directed to an abstract idea.
Appellants further argue “part 1 of the Mayo framework is not
satisfied — claims 1—2 cannot be considered as directed to an abstract idea —
merely because these claims may cover a method for organizing human
activity.” Br. 10; see also id. at 8—10.
We are not persuaded by Appellants’ arguments that the Examiner
erred. First, for the reasons discussed above, we agree with the Examiner
that the claims are directed to an abstract idea. Second, Appellants’
arguments do not address the Examiner’s conclusion that the claims are also
directed to “the abstract idea of using categories to organize, store and
transmit information (presenting consent information and general health
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data, associating consents with protocols, retrieving a consent document).”
See Final Act. 6—7.
Appellants further argue the claims are not directed to an abstract
idea, but, instead, like the claims in DDR3 4, “are necessarily rooted in, and
address a technological challenge confined to, a computer technology.”
Br. 10.
We are not persuaded by Appellant’s arguments. First, as our
reviewing court held in DDR, “not all claims purporting to address Internet-
centric challenges are eligible for patent.” 775 F.3d at 1258. As the Federal
Circuit recognized:
For example, in our recently-decided Ultramerciaf4] opinion,
the patentee argued that its claims were “directed to a specific
method of advertising and content distribution that was
previously unknown and never employed on the Internet before.”
772 F.3d at 1264. But this alone could not render its claims
patent-eligible. In particular, we found the claims to merely
recite the abstract idea of “offering media content in exchange
for viewing an advertisement,” along with “routine additional
steps such as updating an activity log, requiring a request from
the consumer to view the ad, restrictions on public access, and
use of the Internet.” Id. at 1265.
Id. Because Appellants have merely identified routine additional steps, they
are insufficient to render the claims patent-eligible.
Moreover, we disagree with Appellants that the claims in this case are
directed to a computer-centric problem similar to that in DDR. In DDR, the
Court found that the claims “do not merely recite the performance of some
business practice known from the pre-Internet world along with the
3 DDR Holdings, LLCv. Hotel.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
4 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
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requirement to perform it on the Internet. Instead, the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” Id. at 1257. Unlike
the claims in DDR, we agree with and adopt the Examiner’s determination
that the claims in this case are merely adopting a pre-existing practice or
organizing patient consent documents for use with computer technology.
See Ans. 6—7.
Appellants also argue the Examiner erred in applying the second step
of the Alice!Mayo framework. Br. 12—13. Specifically, Appellants assert
the combination of elements in the instant claims “amounts to significantly
more than the abstract idea of organizing human activities.” Id. at 12; see
also id. at 13 (asserting “the claim elements of the present Application
comprise significantly more than an abstract idea, itself’).
We are not persuaded by Appellants’ assertions the Examiner erred.
Although Appellants contend the claim limitation are a “specific
combination of novel, non-generic (i.e. not well known, routine, or
conventional) functions,” Appellants do not identify which limitations are
not generic nor offer any evidence in support of the contention. See Br. 13.
Instead, we agree with the Examiner the claim limitations, considered either
individually or in combination, are no more than “a general purpose server
with appropriate programming” which is “not significantly more than the
abstract idea itself.” Ans. 7. Such “generic computer components [are]
insufficient to add an inventive concept to an otherwise abstract idea.” In re
TLI Comm. LLCPatent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016).
Finally, Appellants argue the claims do not preempt the use of an
abstract idea. Br. 13—14. However, although the extent of preemption is a
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consideration, the absence of complete preemption is not dispositive. See,
e.g.,Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (“While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility.”); Ultramercial Inc. v. HuluLLC, 722 F.3d 1335, 1346 (Fed. Cir.
2013) (“[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.”) (citations omitted), vacated and remanded,
Wildtangent, Inv. v. Ultramercial LLC, 134 S. Ct. 2870 (2014) (remanding
for consideration in light of Alice, 134 S. Ct. 2347).
Accordingly, we sustain the Examiner’s rejection of claims 1 and 2 as
being unpatentable by being directed to patent-ineligible subject matter.
Section 103 Rejection
Appellants compare the claimed invention to the teachings of Rao,
Clements, and Califano. Br. 14—15. In doing so, Appellants do not identify
any errors made by the Examiner in finding those references teach or
suggest various limitations of the claims. Id. “If an appellant fails to present
arguments on a particular issue—or, more broadly, on a particular
rejection—the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential). Accordingly, we do not review those
findings.
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Appellants argue the Examiner erred in relying on Perednia to teach
“receiving a selection of a particular consent of the first set of distinct
consents on the first user interface; retrieving an electronic version of a
consent document corresponding to the particular consent of the first set of
distinct consents; and presenting the electronic version of the consent
document corresponding to the particular consent of the first set of distinct
consents,” as recited in claim 1. Br. 16; see also id. at 15—17. According to
Appellants, Perednia teaches “creating multiple consent forms for a single
medication but does not teach associating a plurality of consents with a
plurality of protocols.” Id. at 15 (citing Perednia 192). Appellants further
argue the Examiner’s reason to modify Perednia to accommodate multiple
consents is conclusory and lacks sufficient support. Id. at 16.
We are not persuaded by Appellants’ arguments that the Examiner
erred. The Examiner finds, and we agree, that “[i]t would have been
obvious to one of ordinary skill in the art at the time of the invention to
archive multiple consents associated with multiple active protocols to
improve legal compliance and retain associated evidence.” Final Act. 5.
Specifically, as the Examiner pointed out in the Answer, Perednia explicitly
teaches using multiple consent forms and is “therefore capable of creating
multiple consent forms for different protocols such as medical procedures
and medications.” Ans. 8 (citing Perednia 193); see also Perednia 193
(teaching multiple “consent form(s)”).
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
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(2007). The Examiner’s findings in the Answer—which Appellants have
not argued are erroneous—provide an articulated reasoning with rational
underpinnings to support a reason to modify Perednia.
Accordingly, we sustain the Examiner’s rejection of claim 1 as
unpatentable as obvious, along with the rejection of dependent claim 2,
which is not argued separately.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1 and 2.
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. § 41.50(f).
AFFIRMED
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