Ex Parte Ruoff et al

Patent Trial and Appeal Board

Sep 26, 2017

12347575 (P.T.A.B. Sep. 26, 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.
12/347,575 12/31/2008 CHAD BARRETT RUOFF CRNI.132930 1328
46169 7590 09/28/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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 CHAD BARRETT RUOFF, MICHAEL DEAN SCHMITT, and
SUSAN TARKKA
Appeal 2016-000512
Application 12/347,575
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-000512
Application 12/347,575
BACKGROUND
Appellants’ invention is directed to a method of determining and
displaying whether patients have health care associated infections (“HAI”).
Spec. 13.
Claim 1 is illustrative:
1. One or more computer-storage media having computer-
executable instructions embedded thereon for performing steps to
determine and store notification of health care associated infections
(HAIs) associated with a patient, comprising:
applying one or more rules to patient data to determine whether
the patient has an HAI or an infection contracted outside of a health
care facility, wherein the one or more rules are configured to analyze
criteria associated with the patient, the criteria including (1) patient-
specific data including an amount of time elapsed since a surgical
procedure was performed on the patient, (2) patient-location data
including a location within the health care facility where a recent
outbreak has occurred, and (3) treating-clinician data including
infections associated with other patients that the treating clinician has
treated;
based on applying the one or more rules to the patient data,
determining a likelihood that the patient has acquired an infection as a
result of being at the health care facility;
determining the infection is an HAI that the patient has acquired
as a result of being at the health care facility;
presenting the criteria that were analyzed, and for each of the
criteria, presenting an indication of whether each criteria supports the
determination that the infection is the HAI that the patient has
acquired as a result of being at the health care facility;
receiving an indication from a clinician that the patient has the
HAI;
based on the association of the HAI and the patient, identifying
one or more suggested tasks to perform to confirm the patient has
acquired the HAI as a result of being at the health care facility; and
storing the indication that the patient has the HAL
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Application 12/347,575
Appellants appeal the following rejections:
Claims 1—20 under 35 U.S.C. § 101 as directed to non-statutory
subject matter.
Claims 1—20 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
ISSUES
Did the Examiner err in rejecting the claims under 35 U.S.C. § 101
because the claims are not directed to an abstract idea and because even if
the claims are directed to an abstract idea, the claims recite significantly
more than an abstract idea?
Did the Examiner err in rejecting the claims under 35 U.S.C. § 112,
first paragraph because the Specification discloses the step of determining
the likelihood that the patient has acquired an infection as a result of being at
the health care facility?
ANALYSIS
Rejection under 35 U.S.C. ft101
We note initially that an invention is patent-eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include implicit exceptions: “[ljaws of nature, natural phenomena, and
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Application 12/347,575
abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—95 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
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curing rubber, Diamond, 450 U.S. at 184 n. 8. “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
The Examiner determined that the claims are directed to the basic
concept of providing healthcare by applying one or more rules to patient
data, determining the likelihood that the patient has acquired an infection
and that the infection is a healthcare facility associated infection (“HAI”)
and identifying more suggested tasks. Final Act. 2. The Examiner further
found that the one or more rules constitute logic being applied, the
determination of a likelihood is a mathematical operation, and the
identifying of new tasks is organizing human activities. Final Act. 2. The
Examiner still further dertermined that the claims do not amount to
significantly more than the abstract idea and are not an improvement to the
functioning of the computer itself and that the computer related claims
require no more than a generic computer performing generic computer
functions that are well understood, routine and conventional activities
previously known to the industry. Final Act. 2—3. We agree.
Appellants argue that even if some of the elements of the claims are
directed to a method of organizing human activity, this is insufficient basis
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for concluding the claims are directed to an abstract idea. App. Br. 10. This
argument is not persuasive because the Examiner determined that the
identifying step recites the abstract idea of organizing human activity and
also determined that the remainder of the recitations are directed to a
mathematical operation. As such, the Examiner found that the claims are
directed to two abstract ideas, organizing human activities and a
mathematical operation. As such, the Examiner did not rely on only the
determination that the identifying step is directed to a method of organizing
human activities in making a determination that the claims are directed to an
abstract idea. We note that merely combining 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 (N.D. Cal. Apr. 14,
2015), aff’d, 655 F. App’x 848 (Fed. Cir. 2016).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the Examiner has not established that the steps of
organizing human activities recited in the claims are directed to the methods
or organizing human activities identified by courts as constituting abstract
ideas and thus there is insufficient basis for the conclusion that the claims
are directed to an abstract idea. Although it is true that only certain methods
or organizing human activities have been identified by the courts as
constituting abstract ideas, it follows from prior Supreme Court cases, and
Bilsld in particular, that the identifying step at issue here is directed to an
abstract idea. Like the risk hedging in Bilsld, the concept of delivering care
is a fundamental health and social assistance practice long prevalent in our
system of caregiving. The use of delivering care is also a building block of
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both ancient and modem medicine. Thus, delivering care, like hedging, is
an abstract idea beyond the scope of § 101. See Alice, 134 S. Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of delivering care at issue here. Both
are squarely within the realm of “abstract ideas” as the Court has used that
term. See Alice, 134 S. Ct. at 2357.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the absence of prior art based rejections of the
pending claims necessarily demonstrates that the claims include elements
that are not well understood, routine and conventional. App. Br. 10. To the
extent that this argument of the Appellants is that the pending claims recite
“significantly more” because the claimed invention is “novel” and “non-
obvious,” Appellants misapprehend the controlling precedent. Although the
second step in the Alice/Mayo framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non­
obviousness, but rather, a search for “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 (alteration in original) (quoting Mayo, 132 S. Ct.
at 1294). A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
In addition, we agree with the Examiner’s determination made in the
Final Action and the Answer that the elements of claim 1 in addition to the
abstract ideas on which the claim is based relate to presenting or displaying
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information, receiving input from a user and storing the input, all of which
functions are routine and well understood computer technologies and require
no more than a generic computer. Final Act. 4; Ans. 5. We note that this
finding is supported by Appellants’ Specification which discloses that a
general purpose computer is all that is needed to perform the steps of the
invention. Spec. 22, 24—25.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims pose no risk of preempting an abstract
idea itself. App. Br. 16—17. “While 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 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.”), cert, denied, 136 S.
Ct. 701 (2015) (mem.). And, “[w]here 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.”
Ariosa, 788 F.3d at 1379.
We have considered the other arguments of the Appellants and have
not been persuaded by these arguments of error on the part of the Examiner.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection as it is directed to the remaining
claims because the Appellants have not presented arguments directed to the
separate eligibility of these claims.
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Rejection under 35 U.S.C. § 112, first paragraph
We will not sustain this rejection because we agree with the
Appellants that the Specification describes determining the likelihood that a
patient has acquired an infection as a result of being at the health care
facility in such a way as to convey to the artisan that the Appellants had
possession, at the time the present application was filed, of the claimed
subject matter. App. Br. 17—18; see Vas-Cath, Inc. v.Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991); In reKaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983). Support for this subject matter can be found in the Specification
at paragraph 36 where it is disclosed that the rule applied to patient data may
raise the likelihood that the current patient contracted the infectious illness
from the x-ray room. Support is also found in original claim 17 which
recites that the server is configured to determine whether the patient has
likely been affected by at least one HAI. We note that the Examiner’s
argument that the Specification does not disclose how such likelihood or
probability is determined (Final Act. 3), appears to be directed not to the
written description requirement in the first paragraph of 35 U.S.C. § 112 but
rather to the enablement requirement in that paragraph.
DECISION
We affirm the Examiner’s § 101 rejection.
We do not affirm the Examiner’s § 112, first paragraph rejection.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2009).
ORDER
AFFIRMED
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