Ex Parte Miller et al

Patent Trial and Appeal Board

Oct 31, 2016

11458071 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111458,071 07/17/2006
52716 7590 11/02/2016
FRANCIS C KOWALIK
WALGREEN CO. LAW DEPARTMENT
104 WILMOT ROAD
M.S. #1425
DEERFIELD, IL 60015
FIRST NAMED INVENTOR
Scott A. Miller
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.
WHS-840 8204
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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
kathryn.collins@walgreens.com
pto@walgreens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT A. MILLER and CARL T. BER TRAM
Appeal2014-009263
Application 11/458,071 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott A. Miller and Carl T. Bertram (Appellants) seek our review
under 35 U.S.C. § 134 of the final rejection of claims 1-26. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellants identify Walgreen Co. as the real party in interest. App.
Br. 1.
Appeal2014-009263
Application 11/458,071
THE INVENTION
Claim 1 7, reproduced below with bracketed matter added, is
illustrative of the subject matter on appeal.
17. A computer-readable storage medium having computer-
executable instructions stored in a memory to be executed on a
processor for implementing a method of assessing health risks for a
group of persons, the computer executable instructions comprising
instructions for:
[ 1] receiving patient parameter data relating to one or more patient
risk factors for each of a plurality of persons;
[2] receiving medical condition data relating to a medical condition
for each of the plurality of persons;
[3] receiving medication data relating to a medication for each of
the plurality of persons for the medical condition, wherein the
medication comprises at least part of an actual medical treatment
received by the person to treat the medical condition;
[ 4] creating a subset of persons from the plurality of persons based
on the patient parameter data;
[5] evaluating the medical condition data and the medication data
to identify an adverse health outcome for each of the persons in the
subset;
[ 6] evaluating a likelihood of each identified adverse health
outcome occurring based on the patient parameter data, the medical
condition data and the medication data for each of the persons in the
subset, and evaluating the level of risk of each identified adverse
health outcome to determine an intervention severity index for each of
the persons in the subset, wherein the intervention severity index is
representative of the urgency involved in intervening in the medical
treatment of the person;
[7] providing a result from evaluating the likelihood of the
identified adverse health outcome for each of the persons in the
subset; and
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Application 11/458,071
[8] intervening in the medical treatment of the person in
accordance with the intervention severity index, wherein an identified
adverse health outcome having an intervention severity index greater
than a predetermined threshold receives a different type of
intervention than an identified adverse health outcome having an
intervention severity index less than the predetermined threshold.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Martin
Fitzgerald
Teagarden
Burkeen
Olson
US 2003/0154109 Al
US 2003/0191667 Al
US 6,694,298B1
US 2005/0021368 Al
US 2006/0190323 Al
The following rejections are before us for review:
Aug. 14, 2003
Oct. 9, 2003
Feb. 17,2004
Jan.27,2005
Aug.24,2006
1. Claims 1-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teagarden, Martin, and Burkeen.
2. Claims 22-25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teagarden, Martin, Fitzgerald, and Burkeen.
3. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Teagarden, Fitzgerald, and Olson.2
2 Claim 26 depends from claim 22, so we assume the Examiner meant to
find claim 26 unpatentable over Teagarden, Martin, Fitzgerald, Burkeen, and
Olson.
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Application 11/458,071
ISSUES
Did the Examiner err in rejecting claims 1-21under35 U.S.C.
§ 103(a) as being unpatentable over Teagarden, Martin, and Burkeen?
Did the Examiner err in rejecting claims 22-25 under 35 U.S.C.
§ 103(a) as being unpatentable over Teagarden, Martin, Fitzgerald, and
Burkeen?
Did the Examiner err in rejecting claim 26 under 35 U.S.C. § 103(a)
as being unpatentable over Teagarden, Fitzgerald, and Olson?
ANALYSIS
The independent claims are claims 1, 17, and 22. Independent claim
1 7 includes the limitation:
intervening in the medical treatment of the person in
accordance with the intervention severity index, wherein an
identified adverse health outcome having an intervention
severity index greater than a predetermined threshold receives a
different type of intervention than an identified adverse health
outcome having an intervention severity index less than the
predetermined threshold
(App. Br. 33, Claims Appendix). Claims 1 and 22 contain similar
limitations.
The Examiner takes the position, regarding limitation [8], that "the
'wherein clause' merely expresses the intended results; therefore it does not
limit the claim and is not given patentable weight" (Final Act. 13) (emphasis
omitted). In the Answer, for the first time, the Examiner finds that
paragraphs 15, 29, 30, 33, and 34 of Burkeen describe the above limitation
(Ans. 16-17).
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Application 11/458,071
The Appellants argue that the Examiner erred by failing to give
patentable weight to the "wherein" clause because this clause gives "further
meaning and purpose to the step of intervening, rather than expressing an
intended result of the step of intervening" (App. Br. 9-13). The Appellants
also contend that the cited portions of Burkeen do not disclose this limitation
(App. Br. 17-21 ).
We agree with the Appellants that the Examiner erred by not giving
patentable weight to the limitation in question because it requires a specific
way of performing the intervening step (i.e., using a "predetermined
threshold") rather than merely an intended outcome of the intervening step.
We also agree with the Appellants that the cited passages of Burkeen do not
disclose this limitation. Said passages describe configuring clinical safety
checks that trigger clinical interventions, such as by using the user interface
of Figures 10 and 11. Although each clinical intervention has a significance
level 937 (see Figure 10), and each safety check is associated with specific
interventions (see Figure 11 ), we see no evidence of comparing significance
level 937 to a "predetermined threshold" of significance in order to
determine "a different type of intervention" as required by the claim.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, the rejections are
not sustained.
NEW GROUND OF REJECTION
Claims 1-26 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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Application 11/458,071
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Id. at 2355.
Taking claim 17 as representative of the claims on appeal, the claimed
subject matter is directed to information gathering and then evaluating the
gathered information. Information gathering and evaluation are fundamental
building blocks of human ingenuity. As such it is an abstract idea.
Step two of Alice is "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 2355.
We see nothing in the subject matter claimed that transforms the
abstract idea of information gathering and evaluation into an inventive
concept.
The computer-readable storage medium of claim 17 includes
instructions for performing eight steps of gathering and evaluating particular
information; that is, gathering particular data ("receiving patient parameter
data ... medical condition data ... medication data"), identifying a first
information ("subset of persons"), identifying a second information
("adverse health outcome"), evaluating the data ("likelihood ... level of risk
... intervention severity index"), providing resulting data ("result from
evaluating"), and intervening in the medical treatment based on the resulting
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data. Claim 1 is similar but omits steps [ 4] and [7]. Claim 22 is directed to
"receiving a request" and "providing a medication therapy management
service" that performs a service similar to the steps of claim 17.
The receiving, evaluating, and providing steps are known operations
for obtaining a desired information and thus add little to patentably
transform the information gathering abstract idea.
Furthermore, each of the receiving, evaluating, and providing steps
are themselves abstract ideas. For example, "comparing new and stored
information and using rules to identify medical options" is an abstract idea.
See SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950,
955 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 58 (2014). See also Blue
Spike, LLC v. Google Inc., No. 14-CV-01650-YGR, 2015 WL 5260506
(N.D. Cal. Sept. 8, 2015), ajf'd sub nom., Blue Spike, LLC, v. Google Inc.,
No. 2016-1054, 2016 WL 5956746, *5 (Fed. Cir. Oct. 14, 2016)
("comparing one thing to another" is an abstract idea). Merely combining
three abstract ideas does not render the combination any less abstract. Cf
Shortridge v. Found. Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS,
2015 WL 1739256, *11 (N.D. Cal. Apr. 14, 2015), ajf'd, No. 2015-1898,
2016 WL 3742816 (Fed. Cir. July 13, 2016).
As for the final step, "intervening in the medical treatment of the
person" (claim 17), it simply expresses a mere post-solution activity. The
claim does not specify any particular entity that performs the intervening
step. The Specification discloses, for example, that the system "prompts a
user, such as the patient's pharmacist or a pharmacist at a pharmaceutical
care center 20, to intervene" via, e.g., "a daily print-out of interventions," or
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"a prompt on a computer display" (Spec. para. 88), and that "interventions
may be performed by a pharmacist" or "by a medical provider" (Spec., para.
105). Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371
(Fed. Cir. 2011) ("The Court [Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable"). Moreover, the
intervening step is not linked to any device and thus could be practiced
mentally (e.g., by a person such as a pharmacist). Adding a mental step
cannot patentably transform an otherwise abstract idea into an inventive
concept. In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("mental
processes---or processes of human thinking-standing alone are not
patentable even if they have practical application").
Finally, we note that claim 17 calls for the recited instructions to be
"computer-executable instructions stored in a memory to be executed on a
processor." But any general-purpose computer available at the time the
application was filed would have satisfied these limitations. The
Specification supports that view. See paragraph 124 of the Specification
("routine(s) described herein may be implemented in a standard multi-
purpose CPU"). "[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea 'while adding the words 'apply it" is not enough for
patent eligibility." Alice at 2358.
For the foregoing reasons, we find that claim 17 covers subject matter
that is judicially-excepted from patent eligibility under § 101. The other
independent claims - computer-readable storage medium claims 1 and 22
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parallel claim 17 - similarly cover claimed subject matter that is judicially-
excepted from patent eligibility under § 101. The dependent claims describe
various information gathering schemes which do little to patentably
transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 1-26 under
35 U.S.C. § 101.
CONCLUSIONS
The rejection of claims 1-21under35 U.S.C. § 103(a) as being
unpatentable over Teagarden, Martin, and Burkeen is reversed.
The rejection of claims 22-25 under 35 U.S.C. § 103(a) as being
unpatentable over Teagarden, Martin, Fitzgerald, and Burkeen is reversed.
The rejection of claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Teagarden, Fitzgerald, and Olson is reversed.
Claims 1-26 are newly rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
DECISION
The decision of the Examiner to reject claims 1-26 is reversed.
Claims 1-26 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37 C.F.R.
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§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant(s), WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
REVERSED; 37 C.F.R. § 41.50(b)
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