Ex Parte Portnoy et al

Patent Trial and Appeal Board

Jul 28, 2017

12165736 (P.T.A.B. Jul. 28, 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.
12/165,736 07/01/2008 Alan M. Portnoy CRNI.224481 2430
46169 7590 08/01/2017
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
08/01/2017 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 ALAN M. PORTNOY and DEBORAH SAEGER
Appeal 2016-006447
Application 12/165,736
Technology Center 3600
Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-006447
Application 12/165,736
STATEMENT OF THE CASE
The present patent application “concerns a task management system
for informing a clinician of medication administration related tasks to be
performed by automatically adding data indicating post-administration tasks
to be performed to a task list of a clinician.” Specification 1:8—11, filed July
1, 2008 (“Spec.”). Claims 1, 12, 16, and 18 are independent. Claim 1
illustrates the claimed subject matter:
1. A task management system for informing a clinician of
medication administration related tasks to be performed,
comprising:
a repository of information associating data identifying a
plurality of different medications with a corresponding plurality
of post-administration alert messages, an individual alert
message being for notifying a clinician of a particular post­
administration task to be performed concerning a particular
medication following administration of said particular
medication to a patient;
a pharmacy information system including a configuration
processor device enabling a pharmacist to initiate incorporating
data in said repository associating a post-administration alert
message with a particular medication as well as with times for a
post-administration alert message to be generated and provided
to a clinician and enabling a pharmacist to dynamically associate
a post-administration alert message that is not in a medication
database with a particular medication and configure presentation
of said post-administration alert message on a mobile point-of-
care medication administration system;
an input processor device for receiving data indicating said
particular medication has been administered to said patient;
a workflow processor device for processing data to
determine tasks to add to or remove from a task list or to modify
tasks incorporated on, or for incorporation on, a task list and for,
in response to received data indicating said particular medication
has been administered to said patient, using information in said
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repository to identify a post-administration task associated with
said particular medication and automatically adding data
indicating an identified post-administration task to be performed
to a task list of a clinician; and
a reproduction device for presenting said identified post­
administration task and task list of said clinician and a post­
administration alert message to said clinician for viewing by a
user.
Appeal Brief 18—19, filed October 13, 2015 (“Br.”).
REJECTION
Claims 1—18 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
ANALYSIS
Appellants contend the Examiner failed to establish a prima facie case
of unpatentability under 35 U.S.C. § 101. Br. 8—16. According to
Appellants, the Examiner “merely stated, in a conclusory fashion, that the
claims are directed to the abstract idea of ‘task management’” and failed to
address the elements recited in dependent claims 2—11, 13—15, and 17. Br.
9—10. Appellants argue the claims “are not directed to the abstract idea of
‘task management’ on their face” and are distinguishable from the claims the
Federal Circuit concluded were patent-ineligible in SmartGene, Inc. v.
Advanced Biological Labs., SA. Br. 11—13. Finally, Appellants contend that
even if the claims were directed to the abstract idea of task management, the
claims would still be patent eligible because the claims amount to
“significantly more” than an abstract idea and do not preempt “the use of
basic tools of scientific and technological work.” Br. 14—16.
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We disagree. Section 101 of the Patent Act provides “[wjhoever
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.” 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013)). The Court has
set forth a two-part inquiry to determine whether this exception applies.
First, we must “determine whether the claims at issue are directed to one of
those patent-ineligible concepts.” Alice, 134 S. Ct. at 2355. Second, if the
claim is directed to one of those patent-ineligible concepts, 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.” Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012)). Put differently, we must search the claims for an “inventive
concept,” that is, “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.” Alice, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. 1294).
We first consider whether the Examiner properly concluded the
claims are directed to an abstract idea. The Examiner concluded that
independent claims 1, 12, 16, and 18 are “directed to the abstract idea of task
management, which is similar to the concept of comparing new and stored
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information and using rules to identify options.” Non-Final Office Action 2,
mailed May 12, 2015 (“Non-Final Act.”). See also Answer 3—4, mailed
April 8, 2016 (“Ans.”) (explaining the claims “are directed to associating
data, incorporating data, receiving data, processing data, presenting data,
which is similar to the abstract idea of using categories to organize, store,
and transmit information, and comparing new and stored information and
using rules to identify options”). Contrary to Appellants’ arguments, the
Examiner expressly addressed the dependent claims in the Answer. The
Examiner concluded “[t]he abstract ideas for [dependent] claims 2—11, 13,
15, and 17 are similar, but further describe aspects of alert message,
receiving data, associating data, accessing data, [and] modifying data, and
are, therefore directed to an abstract idea for similar reasons.” Ans. 4.
Appellants have not persuaded us the Examiner erred. The Federal
Circuit has described the abstract-idea inquiry “as looking at the ‘focus’ of
the claims, their ‘character as a whole’” to determine if the claims are
directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). The plain language of the claims at issue
indicate their focus is notifying clinicians about tasks related to administered
medications, or in the Examiner’s words, “task management.” For example,
claim 1 recites “a task management system for informing a clinician of
medication administration related tasks to be performed.” App. Br. 18. The
claimed system includes components that (1) incorporate data, (2) associate
medications with post-administration alert messages and alert message
generation times, (2) configure alert message presentation, (3) receive data
indicating a patient has received a particular medication, (4) identify a post­
administration task associated with the medication and adding the task to a
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task list, and (5) presenting the task, task list, and associated alert message to
a clinician. See App. Br. 4 (describing the invention recited in claim 1), 18
(claim 1). The claim does not focus on “an improvement in computer as
tools” but rather on an “abstract idea[] that use[s] computers as tools.” Elec.
Power Grp., 830 F.3d at 1354. Independent claims 12, 16, and 18 recite
similar limitations. See App. Br. 21—22, 23—26. Dependent claims 2—11,
13—15, and 17 recite various additional “interfaces” and “processors” and
extensions of existing components that do nothing to edge the abstract idea
recited in the independent claims closer to patent eligible subject matter.
The Federal Circuit has concluded similar claims are directed to
abstract ideas. For example, in SmartGene, Inc. v. Advanced Biological
Laboratories, SA, the Federal Circuit concluded that claims reciting methods
and systems of selecting a therapeutic treatment regimen for a patient with a
known disease were directed to an abstract idea. SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F. App’x 950 (Fed. Cir. Jan. 24, 2014)
(nonprecedential). The court concluded the claims at issue were abstract
because the claims did “no more than call on a ‘computing device,’ with
basic functionality for comparing stored and input data rules, to do what
doctors do routinely” SmartGene, 555 F. App’x at 954. The court explained
that “every [claimed] step is a familiar part of the conscious process that
doctors can and do perform in their heads.” SmartGene, 555 F. App’x at
955.
That reasoning applies here. The claimed system uses various
computer components to do what clinicians ordinarily do using pen and
paper—remind themselves about tasks related to administered medications.
See, e.g., Spec. 3:1—6 (explaining that the disclosed invention “reduces the
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need for a clinician to handwrite message reminders that may be lost or
inadvertently ignored”). Because clinicians perform the functions recited in
the claims using pen and paper, the claims at issue, like the claims in
SmartGene, “do no more than call on a ‘computing device’ ... to do what
doctors do routinely.” SmartGene, 555 F. App’x at 954.
Appellants argue SmartGene is distinguishable because the claims at
issue “perform[] a process that cannot be completed by the human mind
alone.'” Br. 12 (emphasis added). According to Appellants, “[o]ne person
could not keep track of a multitude of alert messages for various medications
and remember[ing] to perform a post-administration task at a particular
time.” Br. 13. But the claims do not require “keep[ing] track of a multitude
of alert messages for various medications” as asserted by Appellants. Even
if the claims did, the fact that a clinician might need pen and paper or
conventional computer components to perform the recited functions does not
mean the claims are directed to patent-eligible subject matter. As the
SmartGene court noted
section 101 covers neither “mental processes”—associated with
or as part of a category of “abstract ideas”—nor processes that
merely invoke a computer and its basic functionality for
implementing such mental processes, without specifying even
arguably new physical components or specifying processes
defined other than by the mentally performable steps.
SmartGene, 555 F. App’x at 954; see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370-72 (Fed. Cir. 2011) (concluding a
claim whose “steps can be performed in the human mind, or by a human
using a pen and paper” was directed to an abstract idea).
Other Federal Circuit decisions also indicate these claims are directed
to an abstract idea. In Electric Power Group, LLC v. Alstom S.A., the
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Federal Circuit concluded claims that essentially recited “collecting
information, analyzing it, and displaying certain results of the collection and
analysis” were directed to an abstract idea. Elec. Power Grp., 830 F.3d at
1353—54. The claims before us similarly recite collecting data (the
“receiving” and “incorporating” steps), processing it (the “associating,”
“processing,” and “adding” steps), and displaying the results of the
collection and analysis (the “configure presentation” and “presenting” steps).
And in FairWarningIP, LLC v. Iatric Sys., Inc., the Federal Circuit
concluded that analogous notification claims that recited collecting and
analyzing information to detect misuse and notifying a user when misuse is
detected were directed to an abstract idea. FairWarning IP, LLC v. Iatric
Sys., Inc. 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
The disputed claims are not meaningfully different from the claims
considered in SmartGene, Electric Power Group, and FairWarning IP. This
is sufficient to establish the disputed claims are directed an abstract idea.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016)
(explaining that when determining whether claims are directed to an abstract
idea, “both this court and the Supreme Court have found it sufficient to
compare [the] claims at issue to those claims already found to be directed to
an abstract idea in previous cases”); see also Amdocs (Israel) Limited vs.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that
the “decisional mechanism courts now apply” for deciding if claims are
directed to an abstract idea “is to examine earlier cases in which a similar or
parallel descriptive nature can be seen”).
Because we agree with the Examiner that the claims are directed to an
abstract idea, we next consider whether the Examiner correctly concluded
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the claims do not include an inventive concept. The Examiner concluded the
claims do not recite elements that amount to “significantly more” than an
abstract idea because the recited elements are “generic computing
components” that perform “generic computer functions . . . that are well-
understood, routine, and conventional activities previously known to the
industry.” Non-Final Act. 2; see also Ans. 4—5 (citing Spec. 12, 16, 18;
Fig. 1).
Appellants have not persuaded us the Examiner erred. We see
nothing in the elements of these claims, considered “both individually and
‘as an ordered combination’” that ‘transform[s] the nature of the claim[s]’
into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo,
132 S. Ct. at 1289). Appellants contend the claims include “elements or
computer functions that are not well-understood, routine and conventional in
the field, as evidenced the absence of prior-art-based rejections” such as “a
pharmacy information system” and “a workflow processor,” among others.
App. Br. 14. But the claims recite these elements and 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.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at 1351).
Appellants’ written description describes the recited elements and functions
in a similar fashion. See, e.g., Spec. 5:6—7 (“A workflow processor, as used
herein, processes data to determine tasks to add or remove from a task list or
modifies tasks incorporate on, or for incorporation on, a task list.”) 6:4—6
(“Pharmacy Information system 41 enables a user to configure Reminder
messages to be associated with a particular drug or drugs . . . .”). In fact,
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Appellants’ written description indicates that some of these elements and
functions were known to those of ordinary skill in the art. Compare Spec.
1:21—25 (explaining that messages entered in “known systems” “appear on a
BPOC (Bar-coding Point of Care) system as medication”), with Br. 23
(claim 12 reciting “a bar code point of care system”).
As found by the Examiner, the claims recite generic computing
devices that perform generic computing functions. See Ans. 4—7. An
inventive concept “requires more than simply stating an abstract idea while
adding the words ‘apply it’ or ‘apply it with a computer.’” Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332 (Fed. Cir. 2015) (quoting
Alice, 134 S. Ct. at 2358). And “the prohibition on patenting an ineligible
concept cannot be circumvented by limiting the use of an ineligible concept
to a particular technological environment.” Versata, 793 F.3d at 1332.
Appellants also argue that the claims do not risk preempting an
abstract idea itself. Even assuming this is true, the fact that the claim does
not preempt a particular abstract idea does not make the claim patent
eligible. See 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.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362—63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
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DECISION
We affirm the Examiner’s rejection of claims 1—18 under 35 U.S.C.
§101.
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).
AFFIRMED
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