Ex Parte MANSOUR et al

Patent Trial and Appeal Board

Feb 14, 2019

14059408 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/059,408 10/21/2013
141363 7590 02/19/2019
LOZA & LOZA, LLP/Allscripts
Peter Zura, Esq.
305 N. Second Avenue #127
Upland, CA 91786-6064
FIRST NAMED INVENTOR
Richard P. MANSOUR
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.
ALLS-1038CON2 9624
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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):
docketing@lozaip.com
peter@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD P. MANSOUR, LORI MULLENHOUR,
ELLEN LOCH, SASH BARIGE, TYLER DOWNS,
DAVID H. MITCHEL, JASON C. IPOCK, and
SHIV A KASARGOD
Appeal2018-001636 1
Application 14/059,408
Technology Center 3600
Before JAMES B. ARPIN, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
rejection of claims 46-52 and 60, which are all of the pending claims. Final
Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Allscripts Healthcare Solutions, Inc. is identified as the real party in
interest. App. Br. 3.
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Application 14/059,408
STATEMENT OF THE CASE
Introduction
The Application is directed to "medical records software wherein
patient record information is stored in electronic form in a database and
made available to users such as physicians, nurses and hospital staff using a
graphical user interface of a general purpose computer or workstation."
Spec. 2.
Claims 46-52 and 60 are pending, with claims 46 and 60 being
independent. See App. Br. 25-28. Claim 46 is reproduced below for
reference ( emphasis added):
46. A medical records information apparatus for use with a
networked database storing data of patients in electronic patient
records, comprising:
(a) a computing device having a processor and a machine
readable medium containing machine readable code for
performing a computer implemented method and executable by
the processor of the computing device,
(b) wherein the computing device is configured for
network communications with the networked database for
accessing data from and storing data in the networked database,
and
( c) wherein the computer implemented method comprises
the steps of,
(i) receiving, from a system administrator, first
input corresponding to configuration of administrator settings
including definition of a first category of medical data to be
associated with a first area in a patient record,
(ii) providing, to a healthcare provider user, a user
interface including one or more user interface areas configured
to allow for creation of a structured note representing clinical
documentation of a patient, the one or more user interface areas
comprising a listing of a plurality of categories of medical data
including the defined first category, and
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(ii)[2J receiving, from the healthcare provider user
via the user interface provided in step (i), second input for
creating the structured note, such second input including
(A) selection of the first category of medical
data from among the listing of the plurality of categories of
medical data, and
(B) input to be entered into the note in
association with the selected first category,
(iii) in response to the second user input, storing in
the networked database the structured note as a part of a clinical
documentation stored in the electronic patient record of the
patient, and
(iv) in conjunction with the storing of the structured
note in said step (iii), determining, based on the configured
administrator settings, that the first area of the electronic patient
record is associated with the first selected category of medical
data, and automatically storing in the networked database, as a
part of the electronic patient record of the patient, information
from the structured note in the first area of the electronic patient
record.
The Examiner's Rejection
Claims 46-52 and 60 stand rejected under 35 U.S.C. § 101 as patent
ineligible. Final Act. 2.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments. Arguments Appellants could have made, but chose not to make,
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determined the claims are patent ineligible under 35
U.S.C. § 101 because the claims are directed to an abstract idea, and do not
2 We note claim 46 lists two separate steps as step (ii).
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include additional elements that are sufficient to amount to significantly
more than the abstract idea. Final Act. 2--4; Ans. 2-3; see also Alice Corp.
Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (Describing the
two-step framework "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.").
After the mailing of the Answer and the filing of the Briefs in this
case, the Office published revised guidance on the application of§ 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under Step 2A of the
Memorandum, the Office first looks to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office, under step 2B of the
Memorandum, then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
We are not persuaded the Examiner erred in this rejection. We adopt
the Examiner's findings and conclusions as our own, and we add the
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following primarily for emphasis and clarification with respect to the
Memorandum.
Step 2A
Appellants' primary argument is the Examiner erred because "[ c ]laim
46 is clearly not at risk of pre-empting any identified idea." App. Br. 9
(emphasis omitted); see also App. Br. 10-16.
We are not persuaded the Examiner erred in finding claim 46 patent
ineligible. Preemption is not the sole test for patent eligibility, and any
questions on preemption in the instant case have been resolved by the
analysis herein and by the Examiner. As our reviewing court has explained:
"questions on preemption are inherent in and resolved by the § 101
analysis," and, 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); see also Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) ("where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Alice framework, as they are in this case, preemption concerns are fully
addressed and made moot").
Particularly, Appellants have not shown the Examiner erred in
determining "the invention claims the abstract idea of collecting medical
data into an electronic file that is organized based on what type of data is
collected." Ans. 2. 3 Claim 46 recites a computing device configured to
3 We note Appellants appear to argue both that "claim 46 clearly does not
seem to be at risk of monopolizing the ideas identified in the Office Action,"
and the "Office Action failed to make out a prima facie case of patent
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perform steps of receiving input and using the input to store information in a
patient record. Such process merely uses a computer to implement paper
billing records, and is, thus, a mental process. See Ans. 3; Spec. 2-3;
Memorandum n.14 (citing Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.")). Additionally, these claimed steps can be considered "managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions)," and, thus,
are certain methods of organizing human activity. Memorandum, Section I
(Groupings of Abstract Ideas). As such, the claim "falls within the subject
matter groupings of abstract ideas." Memorandum, Section III (A)(l ).
Appellants further argue "the claimed method in fact focuses on an
improved methodology for electronic health records which provides a
benefit that simply can't be achieved with a conventional manual process
involving a clinician printing and filling out a paper form." Reply Br. 2.
Particularly, Appellants contend "manually filling out a form would not
result in automatically transferring [the] ... handwriting to another area,
much less automatically transferring [the] ... handwriting to another area
'determined based on configured administrator settings to be associated with
ineligible subject matter because it failed to identify the particular abstract
idea." App. Br. 19 (emphasis omitted). To the extent Appellants argue the
Examiner may be relying on an abstract idea not discussed in the Office
Action, such argument is unpersuasive because (1) any such speculative
rejection is not before us, and (2) the Examiner, as admitted by Appellants,
has provided "ideas identified in the Office Action." Id.
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a selected category of medical data' as recited." Reply Br. 3 ( emphases
added); see also App. Br. 17.
Appellants' arguments are not commensurate with the scope of claim
46. Appellants refer to the recited "first area" of the patient record as
"another area," but the claim does not recite any other areas of the patient
record. Reply Br. 3, 5. Similarly, Appellants refer to "storing both" with
respect to the claim limitations (see, e.g., App. Br. 17); however, claim 46
does not require the recited "structured note" to be separately stored from
the "information from the structured note." See Ans. 2-3. We determine
these claimed features are part of the abstract idea, as they are the entering
and associating of information into the medical file. See Spec. 2--4. Using a
computer to perform such steps "does no more than generally link the use of
a judicial exception to a particular technological environment or field of
use." Memorandum, Section III (A)(2); MPEP § 2106.05(h). Accordingly,
we determine the claim does not integrate the judicial exception into a
practical application. See id.
Step 2B
Further, we agree with the Examiner that the claimed elements and
combination of elements do not amount to significantly more than the
judicial exception itself. See Ans. 3; Memorandum, Section III(B) (Step 2B:
If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim
Provides an Inventive Concept). Other than the abstract idea itself, the claim
elements only recite generic computer components that are well-understood,
routine, and conventional. See Final Act. 2--4; Spec. 2 ("using a graphical
user interface of a general purpose computer or workstation"); Aatrix
Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed.
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Cir. 2018) ("It is clear from Mayo that the 'inventive concept' cannot be the
abstract idea itself, and Berkheimer and Aatrix leave untouched the
numerous cases from this court which have held claims ineligible because
the only alleged 'inventive concept' is the abstract idea.") (internal citation
omitted); see also Spec. 4, 10, 14; Alice, 573 U.S. at 226. Accordingly, we
agree with the Examiner that claim 46 is patent ineligible. See Answer 3-5.
International Agreements
Appellants further argue the United States is a party to international
multilateral agreements, including the "Agreement on Trade-Related
Aspects of Intellectual Property Rights (the TRIPS agreement)" (App. Br.
20), and "under a proper construction of 35 U.S.C. §101 which takes into
account the TRIPS requirement ... [,] the claimed invention is clearly patent
eligible" (App. Br. 23).
We are not persuaded the Examiner erred in view of these agreements.
We note the Examiner is correct in stating "examination follows office
policy." Ans. 3. To the extent Appellants ask us to determine the propriety
of Supreme Court decisions and Office policy with respect to congressional
statutes and international agreements, we decline to reach such issues.
CONCLUSION
We sustain the Examiner's rejection of independent claim 46.
Appellants advance no separate argument on the remaining claims. See
App. Br. 9, 23. Accordingly, we sustain the Examiner's rejection of claims
47-52 and 60 for the same reasons discussed above.
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DECISION
The Examiner's decision rejecting claims 46-52 and 60 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
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