Ex Parte HANF et al

Patent Trial and Appeal Board

Jul 7, 2017

12651105 (P.T.A.B. Jul. 7, 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.
12/651,105 12/31/2009 Thomas HANF CRNI.153577 8493
46169 7590 07/11/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/11/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS HANF and CHRISTOPHER FINN
Appeal 2016-004431
Application 12/651,1051
Technology Center 3600
Before JOHN A. EVANS, NORMAN H. BEAMER, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—6, 9, 10, and 13—15, which constitute all
claims pending in the application. Claims 2, 7, 8, 11, 12, and 16 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Cemer Innovation, Inc.
App. Br. 3.
Appeal 2016-004431
Application 12/651,105
STATEMENT OF THE CASE
The Claimed Invention
According to the Specification, “new standards of care and [new]
knowledge” in the health care field often are slow to be integrated into the
actual practice of clinicians in a health care entity. Spec. ^fl[ 4—5.
Accordingly, the claimed invention is directed to computer-implemented
updating of a patient’s care plan with newly acquired “clinical knowledge,”
so patients may receive the highest, most up to date level of care. Id. ^fl[ 3—6.
Claim 1, the lone independent claim, is illustrative of the invention and reads
as follows:
1. One or more non-transitory computer-readable media
storing computer-useable instructions that, when used by one or
more computing devices, cause the one or more computing
devices to perform a method for presenting a healthcare entity
with an option to automatically analyze a set of patient records
of the healthcare entity's patient population with regard to a piece
of clinical information, the method comprising:
receiving a clinical knowledge publication from a third-
party publication source recognized by the healthcare entity as
an authority for medical or healthcare-related clinical
knowledge;
analyzing the clinical knowledge publication for a relevant
piece of clinical information comprising an update to a standard
of care guideline;
extracting the relevant piece of clinical information from
the clinical knowledge publication;
transforming the relevant piece of clinical information into
executable code;
distributing a uniform resource identifier (URI) to the
executable code to the healthcare entity, wherein selection of the
URI by the healthcare entity initiates execution of the executable
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Application 12/651,105
code against the set of patient records to register matches of the
relevant piece of clinical information with data contained in the
set of patient records; and
initiating system activity based on the results of the
matching, wherein the system activity includes editing
information regarding the update to the standard of care
guideline within a file of the healthcare entity.
App. Br. 16 (Claims App.).
The Rejection on Appeal
Claims 1, 3—6, 9, 10, and 13—15 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter. Final Act. 2—5.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are unpersuaded
the Examiner has erred. We adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Appellants argue the Examiner erred in concluding the claims are
directed to an abstract idea and therefore constitute ineligible subject matter.
App. Br. 7—14.2 3Specifically, Appellants argue (under step one of Alice)
claim 1 on its face is not directed to the abstract idea of “providing
healthcare,” because the phrase “providing healthcare” appears nowhere in
the claim, and the claim includes detailed limitations directed to “analyzing
2 Appellants argue all claims as a group, and we choose claim 1 as
representative of the group. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/651,105
patient records” with respect to “clinical knowledge.” App. Br. 7—8.
Appellants further argue (under step two of Alice) even if claim 1 as a whole
were directed to an abstract idea, it recites features “sufficient to ensure the
claim[] amount[s] to significantly more than the abstract idea[] itself.” App.
Br. 9. The additional features include, according to Appellants, a computer
with a “non-generic structure that performs non-routine and non-
conventional computer functions,” that “transforms” data into a different
state or thing, and that does not preempt all means of providing healthcare.
App. Br. 9-14. We, however, are not persuaded by Appellants’ arguments.
The Supreme Court has long interpreted § 101 to include an implicit
exception, excluding from patentability “[l]aws of nature, natural
phenomena, and abstract ideas.” See, e.g., Alice Corp. Pty Ltd. v. CLSBank
Int’l, 134 S. Ct. 2347, 2354 (2014). In Alice, the Court reiterated the two-
step framework previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66 (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 is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” such as an
abstract idea, as the Examiner concludes in this case. If the claims are not
directed to an abstract idea, 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 there
are additional elements that “‘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).
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Application 12/651,105
As to step one of Alice, the Examiner concludes claim 1 is directed to
the “basic concept of providing healthcare” based upon the best clinical
information available to the physician or other healthcare provider. Final
Act. 2; Ans. 4—6. We agree. The claim recites a computing element that
performs the functions of analyzing information (patient record), collecting
information (clinical knowledge publication), analyzing the information
collected, and then distributing further data (code and a URL, matching the
clinical knowledge to patient record). App. Br. 16. We discern no error in
the Examiner’s conclusion that the foregoing elements are little more than
the collection and manipulation of information or data related to health care.
Ans. 4; Final Act. 3^4; see also Elec. Power Grp., LLC v. Alstrom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (“collecting information, including when
limited to particular content” is an abstract idea). Although the claim also
recites “distributing” code and “updating” information as a result of the data
analysis performed, “the result[] of abstract processes of collecting and
analyzing information, without more ... is abstract as an ancillary part of
such collection and analysis.” Elec. Power, 830 F.3d at 1354. Accordingly,
on this record, we are not persuaded the Examiner erred in finding claim 1
abstract under step one of the Alice test.
As to Alice step two, the Examiner finds, and we agree, Appellants’
Specification contradicts the argument, App. Br. 9-10, that computing
elements recited in the claim are “non-generic.” Ans. 5. The Specification
explains the “invention is operational with numerous . . . general purpose or
special purpose computing system environments or configurations”
including personal computers, server computers, hand-held or laptop
devices, and cellular telephones. Spec. 119 (emphasis added); Ans. 5.
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Moreover, the Specification further states the “computing system
environment [disclosed therein] is only one example of a suitable computing
environment and is not intended to suggest any limitation.'1'’ Spec. 118
(emphasis added); see also Spec. 121 (“exemplary system for implementing
the invention includes a general purpose computing device”). Accordingly,
we are not persuaded by Appellants’ contention that the claims are
implemented by a “computer with a non-generic structure that performs non­
routine and non-conventional computer functions.” App. Br. 9; cf. DDR
Holdings, LLCv. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014).
Appellants further argue claim 1 “transforms” subject matter and does
not preempt the field of providing healthcare. App. Br. 11—14. As the
Examiner finds, however, the alleged “transformation” claim 1 recites is,
simply, a script and URL added to health care information that will “allow
the particular healthcare entity to ‘update to the standard of care guideline
within a file.’” Ans. 6—7. Moreover, even a more tangible transformation
(and alleged lack of preemption) do not demonstrate error in the Examiner’s
findings or conclusion. See, e.g., FairWarning IP, LLC v. Iatric Systems,
Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015). Accordingly,
on the record before us, we discern no error in the Examiner’s conclusion
that claim 1 does not recite features sufficient to demonstrate that it amounts
to “significantly more than the abstract idea itself.” App. Br. 9.
For the foregoing reasons, we sustain the non-statutory subject matter
rejection of claims 1, 3—6, 9, 10, and 13—15.
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DECISION
We affirm the Examiner’s rejections of claims 1, 3—6, 9, 10, and IS­
IS.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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