Ex Parte Hertel et al

Patent Trial and Appeal Board

Jun 14, 2017

11777589 (P.T.A.B. Jun. 14, 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.
11/777,589 07/13/2007 CHERYL HERTEL CRNI.129819 8852
46169 7590 06/16/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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 CHERYL HERTEL, CINDY STAFFORD,
and JODY YOUNT
Appeal 2016-001639
Application 11/777,5891
Technology Center 3600
Before DEBRA K. STEPHENS, CARL W. WHITEHEAD JR., and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1—20, which are all the claims pending
in the application. 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. Appeal Br. 4.
2 Our Decision refers to Appellants’ Appeal Brief filed March 11, 2015
(“Appeal Br.”); Reply Brief filed November 16, 2015 (“Reply Br.”);
Examiner’s Answer mailed September 18, 2015 (“Ans.”); Non-Final Office
Action mailed September 16, 2014 (“Non-Final Act.”); and original
Specification filed July 13, 2007 (f‘Spec.”).
Appeal 2016-001639
Application 11/777,589
STATEMENT OF THE CASE
Appellants’ invention relates to “facilitating clinicians in the
management of patient activities. A patient activity list may be provided
with a common view that allows a clinician to review assigned patients
and activities for a work period.” Spec. 17.
Claims 1,10, and 16 are independent. Claim 1 is illustrative of
Appellants’ invention and is reproduced below:
1. One or more computer storage media storing
computer-usable instructions that, when used by one or more
computing devices, causes the one or more computing devices to
perform a method in a clinical computing environment for
facilitating management of clinical activities for a clinician, the
method comprising:
presenting a timeline view area showing one or more
scheduled clinical activities corresponding with one or more
patients assigned to the clinician, the timeline view area
comprising a plurality of time periods, wherein each scheduled
clinical activity for the clinician is shown in a time period
corresponding with a scheduled time for the scheduled clinical
activity;
presenting an ad hoc area showing one or more as-needed
clinical activities corresponding to the one or more patients
assigned to the clinician, wherein each as-needed clinical activity
does not correspond to a scheduled time;
receiving a user selection of one or more time periods
corresponding with at least one patient having at least one
scheduled clinical activity assigned to the clinician; and
upon receiving the user selection of the one or more time
periods corresponding with at least one patient, concurrently
presenting a clinical activity detail area separate from the
timeline view area, wherein the concurrently presented clinical
activity detail area provides:
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(1) an indication of the user-selected one or more time
periods,
(2) an indication of the at least one patient corresponding
to the user-selected one or more time periods, and
(3) details of at least one scheduled clinical activity
corresponding with the user-selected one or more time periods
and the at least one patient, wherein the details of the at least one
scheduled clinical activity include a medical order associated the
clinician; and
wherein the concurrently presented clinical activity detail
area and the separate timeline view area include:
(1) the details of the at least one scheduled clinical activity
for the clinician corresponding with the user-selected one or
more time periods,
(2) the indication of the user-selected one or more time
periods; and
(3) the indication of the at least one patient in context of
other scheduled clinical activities for the clinician in the timeline
view area.
Appeal Br. 20-21 (Claims App’x).
Examiner’s Rejection
Claims 1—20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject. Non-Final Act. 2.
CONTENTIONS AND ANALYSIS
With respect to independent computer storage medium claim 1, and
similarly, computer storage medium claims 10 and 16, the Examiner finds
these claims are directed to an abstract idea of managing clinical activities
that “compares new and stored information, and uses rules to identify
options.” Non-Final Act. 2; Ans. 3. The Examiner also finds Appellants’
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claims 1—20 “do not include additional elements that are sufficient to amount
to significantly more than the judicial exception.” Ans. 3^4.
Appellants present several arguments against the § 101 rejection.
We do not find Appellants’ arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellants’
arguments supported by a preponderance of evidence. Ans. 2—12. As such,
we adopt the Examiner’s findings and explanations provided therein. Id. At
the outset, we note the Supreme Court has long held that “[ljaws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc, for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The “abstract ideas” category embodies the longstanding rule that
an idea, by itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting
Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical “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 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). 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 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.” Id.
(quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is
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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.
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition
against patenting an abstract idea “cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment’ or
adding ‘insignificant postsolution activity’.” Bilski v. Kappos, 561 U.S. 593,
610-11 (2010).
Here, turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants’ “claims 1—20 are directed to an abstract idea
because an abstract idea is recited in the claims.” Ans. 3. Specifically, steps
recited in claim 1 include: (i) “presenting a timeline view area showing one
or more scheduled clinical activities corresponding with one or more
patients”; (ii) “presenting an ad hoc area showing one or more as-needed
clinical activities . . . wherein each as-needed clinical activity does not
correspond to a scheduled time”; (iii) “receiving a user selection of one or
more time periods” and (iv) “upon receiving the user selection of the one or
more time periods corresponding with at least one patient, concurrently
presenting a clinical activity detail area separate from the timeline view
area.” Accordingly, claim 1 merely recites the familiar concepts of
receiving a user selection, analyzing, and presenting/publishing information.
As the Federal Circuit has explained in a number of cases, claims involving
information/data collection, analysis, and publication are directed to an
abstract idea. Easy Web Innovations, LLC v. Twitter, Inc., 2017 WL
1969492, 2 (Fed. Cir. 2017). See Elec. Power Grp. LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “collecting information,
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analyzing it, and displaying certain results of the collection and analysis” are
“a familiar class of claims ‘directed to’ a patent-ineligible concept”);
FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349
(Fed. Cir. 2015); Digitech Image Techs., LLC v. Flees, for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Claim 1, unlike
claims found to be non-abstract in prior cases, uses generic computer
technology to perform receiving a user selection, analyzing, and presenting
information and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, we agree with the Examiner that claim 1 is directed to an abstract
idea.
Turning to the second step of the Alice inquiry, we find nothing in
Appellants’ claim 1 that adds “significantly more,” sufficient to transform
the abstract concept of collecting, analyzing, and presenting information into
a patent-eligible application. Alice, 134 S. Ct. at 2357. Appellants do not
argue any particular step or steps recited in claim 1 is individually inventive.
None of Appellants’ arguments persuade us that some inventive concept
arises from the ordered combination of these steps, which, even if true,
would be unpersuasive given that they are ordinary steps in data collection
and presentation and are recited in an ordinary order. Instead, claim 1
simply relates to “[displaying data in various areas on a computer screen
based on categories and receiving input data [which] are functions that are
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well-understood, routine, and conventional activities previously known to
the pertinent industry,” as the Examiner correctly recognizes. Ans. 4.
Likewise, Appellants fail to demonstrate that computer storage media
claim 10 is substantively different than claim 1. Claim 10 is merely directed
to displaying a timeline view area and, in response to a user selection,
displaying a clinical activity detail area separate from the timeline view area,
and, therefore, is directed to an abstract idea. The additional elements or
combination of elements in the claim merely further describe how the data is
displayed and thus, amount to no more than instructions to implement the
idea on a computer or electronic device that are well-understood, routine,
and conventional activities previously known to the pertinent industry. For
example, the claim recites “the clinical activity detail area is concurrently
presented with the separate timeline view area,” which include “(1) the
details of scheduled clinical activities assigned to the particular clinician . . .
(2) the indication of the user-selected at least one time period, and (3) the
indication of at least one patient.” Viewed as a whole, these additional claim
limitations do not provide meaningful limitations to transform the abstract
idea into a patent eligible application of the abstract idea such that the claims
amount to significantly more than the abstract idea itself.
Appellants further argue that “because the clinical activity detail view
area is presented with the timeline view area such that said areas are visible
and do not obstruct one another” the claim provides for “a specific technical
objective that improves a computer’s ability to display information and
interact with the user by allowing a user to view large amounts of clinical
information in a single graphical interface and with minimal navigation to
additional window(s) and/or tab(s).” Reply Br. 8—9 (citing Versata
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Software, Inc. v. Zoho Corp., No. A-13-CA-00371-SS, 2015 WL 6506368,
at 3 (W.D. Tex. 2015). We find this argument unpersuasive because,
regardless of whether the view areas are presented to avoid obstructing one
another, we agree with the Examiner’s finding that “[displaying data in
various areas on a computer screen based on categories and receiving input
data are functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry” and thus do not add
“significantly more,” sufficient to transform the abstract concept into a
patent-eligible application. Alice, 134 S. Ct. at 2357.
Appellants next argue that the appealed claims will not preempt or, in
Appellants’ language, “tie up,” the “entire alleged judicial exception of
‘managing (clinical) activities.’” Appeal Br. 14. We find Appellants’
argument unpersuasive because we agree with the Examiner that “[t]he fact
that the claims do not preempt do not make them any less abstract.” See,
e.g., OIP Technologies Inc. v. Amazon.com Inc., 788 F.3d 1359, 1364—65
(Fed. Cir. 2015) (finding that the claims do not become “any less abstract”
due to lack of preemption); Fairwarning IP LLC, 839 F.3d 1098 (finding
that “the absence of complete preemption does not demonstrate patent
eligibility.”). Moreover, the Federal Circuit has held that “[wjhile
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 Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
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Similarly, Appellants fail to demonstrate that computer storage media
claim 16 is substantively different than claim 1 or 10. With respect to claim
1, Claim 16 additionally limits the timeline view area as “comprising a two-
dimensional representation in which a first dimension corresponds with
patients assigned to the particular clinician and a second dimension
corresponds with time periods.” Claim 16 further recites that “the timeline
view area is displayed such that all patients assigned to the particular
clinician and all time periods for the particular clinician’s shift are
substantially simultaneously displayed.” The additional elements or
combination of elements in the claim merely further describe the data to be
displayed and how the data is displayed and thus amount to no more than
instructions to implement the idea on a computer or electronic device that
are well-understood, routine, and conventional activities previously known
to the pertinent industry. For example, claim 16 recites “concurrently
presenting a clinical activity detail area adjacent to the timeline area view in
a single interface” which includes “details for at least one scheduled clinical
activity corresponding with the user selection of the at least one cell selected
from the timeline view area, an indication of the particular patient, and an
indication of the at least one time period.” Viewed as a whole, these
additional claim limitations do not provide meaningful limitations to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claims amount to significantly more than the abstract idea
itself.
Because Appellants’ claims 1,10, and 16 are directed to a patent-
ineligible abstract concept and do not recite something “significantly more”
under the second prong of the Alice analysis we sustain the Examiner’s
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rejection of these claims under 35 U.S.C. § 101 as being directed to non-
statutory subject matter in light of Alice and its progeny.
With respect to the dependent claims, we agree with the Examiner’s
findings that the additional claimed limitations “pertain to displaying various
information on the computer display and providing links on the computer
display” and as such, are conventional activities and insufficient to amount
to “significantly more” under the Alice analysis. We therefore also sustain
the Examiner’s rejection of dependent claims 2—9, 11—15, and 16—20 under
35 U.S.C. § 101.
Appellants argue that the Examiner has failed to make a prima facie
case of unpatentability because the Examiner “did not identity or set forth
any explanatory reasons in support of the alleged patent ineligibility of all
the claims during prosecution.” Appeal Br. 10.
We disagree because we find the Examiner did identify reasons in
support of the alleged patent ineligibility. See e.g., Ans. 2—10. Moreover,
there is no requirement that the Examiner provide any such evidence to
make a prima facie case. In rejecting claims 1—20 under 35 U.S.C. § 101,
the Examiner notified Appellants of the reasons for the rejection “together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35 U.S.C.
§132. And, in doing so, we find that the Examiner set forth a prima facie
case of unpatentability.
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CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1—20 under 35 U.S.C.
§101.
DECISION
As such, we AFFIRM the Examiner’s rejection of claims 1—20.
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) (iv).
AFFIRMED
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