Ex Parte Siddiqui

Patent Trials and Appeals Board

Apr 30, 2019

13466362 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/466,362 05/08/2012
46169 7590 05/02/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Salman Siddiqui
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.
27098.224522 4153
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
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 SALMAN SIDDIQUI
Appeal2018-000388
Application 13/466,362
Technology Center 3600
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-19 and 21-26, which are all the claims pending in this
application. 1 Claims 4 and 20 are canceled. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is Cemer Innovation, Inc. Appeal Br. 3.
Appeal2018-000388
Application 13/466,362
STATEMENT OF THE CASE
Introduction
Appellant's claimed invention relates to "a medication ordering
system, involving compiling a list of medication orders, by finding and
collating order items to provide a compiled list with itemized hierarchical
priority." Spec. ,r 1.
Exemplary Claim
1. A medication ordering system, comprising:
at least one repository configured to store medication
orders received from a plurality of users, each medication order
having medication information identifying:
(1) a medication,
(2) one or more parameters relevant to the
medication order and the medication, and
(3) information identifying a user having placed
the medication order; and
an order processor configured to, in response to a user
input identifying a user of the user input and including text
identifying a first medication for a patient, compile a list of
medication orders for the patient, the compiling comprising:
( 1) searching the medication orders stored in the
at least one repository,
(2) identifying one or more phase-one
medication orders by matching at least one of the
medication orders stored in the at least one repository to
the first medication, based on the text,
(3) identifying one or more phase-two
medication orders by matching a user associated with at
least one of the medication orders stored in the at least
one repository to the identified user, based on the user
input, and further matching the at least one medication
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Application 13/466,362
order matching the identified user to the first medication,
based on the text,
wherein the list compiled by the order processor
comprises a priority-based hierarchy of medication orders
including:
( 1) at least one of the one or more phase-one
medication orders, wherein the at least one phase-one
medication order is determined to be a medication order
most frequently placed system-wide by the plurality of
users of the ordering system,
(2) at least one of the one or more phase-two
medication orders, wherein the at least one phase-two
medication order is a medication order previously placed
by the identified user and is determined to be a
medication order most frequently placed by the identified
user, and
(3) at least one other medication order placed by
the plurality of users of the ordering system,
wherein the at least one phase-two medication order is
prioritized over the at least one phase-one medication order,
and the at least one phase-one medication order is prioritized
over the at least one other medication order; and
a display processor configured for initiating generation of
a display image including the compiled list and enabling the
user to select one or more medication orders from the-compiled
list.
Appeal Br. 25-26, "Claims Appendix." (Emphasis added regarding
limitations contested under 35 U.S.C. § 103).
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Application 13/466,362
Rejections
A. Claims 1-3, 5-19 and 21-26 are rejected under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more.
B. Claims 1-3, 5-19 and 21-26 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being obvious over the combined teachings and suggestions of
Brandt et al. (US 2006/0143093 Al, published June 29, 2006) (hereinafter
"Brandt"), and Joao et al. (US 2002/0032583 Al; published Mar. 14, 2002)
(hereinafter "Joao").
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
Subject Matter Eligibility-2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). This
new guidance is applied in this opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain
methods of organizing human activity such as a fundamental
economic practice or managing personal behavior or relationships or
interactions between people); and
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Application 13/466,362
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
("MPEP") §§ 2106.05(a}-(c), (e}-(h)). 2 See 2019 Revised Guidance,
84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under§ 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217-18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. See 2019 Revised Guidance, 84
Fed. Reg. at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
2 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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Appeal2018-000388
Application 13/466,362
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes- concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, "[ c ]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
(abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
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Application 13/466,362
1. Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b );
3. Effecting a transformation or reduction of a particular
article to a different state or thing - see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception -
see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application," include:
1. Adding the words "apply it" ( or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely using
a computer as a tool to perform an abstract idea - see
MPEP § 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception - see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
Rejection A of claims 1-3, 5-19 and 21-26 under 35 USC§ 101
The Examiner identifies the specific claim 1 language that recites the
abstract idea:
While the claims may not explicitly recite, "comparing new and
stored information and using rules to identify options", the
concept of "comparing new and stored information and using
rules to identify options" is described, for example, by the
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Application 13/466,362
receiving, determining, determining, selecting, receiving, and
executing steps as recited in currently amended independent
Claim 1.
Final Act. 3 ( emphasis added).
The Examiner finds the claims do not include additional elements that
amount to significantly more than the judicial exception, because:
the additional elements or combination of elements in the claims
in conjunction with the abstract idea per se amount[] to no more
than mere instructions to implement the idea on a computer,
and/or the recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry.
Final Act. 3
For the aforementioned reasons, the Examiner concludes that all
claims 1-3, 5-19 and 21-26 are not patent eligible under 35 U.S.C. § 101. 3
2019 Revised Guidance, Step 2A, Prong One 4
The Judicial Exception
Under the 2019 Revised Guidance ( 1 ), we consider whether the
claims recite any judicial exceptions, including certain groupings of abstract
ideas, in particular: (a) mathematical concepts, (b) mental steps, and ( c)
certain methods of organizing human activities.
3 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
4 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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We agree with the Examiner that an abstract idea is recited in claim 1
as a whole, and particularly by the two "identifying" functions and the two
functions that determine whether a medication order is a phase-one
medication order, or a phase-two medication order. We conclude at least
these "identifying" and "determining" functions could be performed
alternatively as mental steps. 5
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
As noted above, we conclude the "identifying" and "determining"
functions of claim 1 each recite an abstract idea that could be performed as a
mental step. Under MPEP § 2106.05(a) ("Improvements to the Functioning
of a Computer or to Any Other Technology or Technical Field"), Appellant
contends:
Each claim, when viewed as a whole and viewed in light of the
Specification, directly provides for specific improvements to
the existing process of computerized search technology. For
example, with regard to the above-quoted independent claim 1,
user input including text of a first medication and user-
5 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under§ 101. CyberSource Corp., 654 F.3d at 1372-73; see also Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
("While the Supreme Court has altered the § 101 analysis since CyberSource
in cases like Mayo and Alice, we continue to 'treat[] analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category."' (brackets in original) ( quoting Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)); CyberSource, 654 F.3d at 1375
("That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
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Application 13/466,362
identifying information are used to conduct a search of a
repository of medication orders, to identify phase specific
medication orders as described in detail within the claim, and to
display a list of user selectable medication orders that is
presented in a particular manner reflecting a phase-based
prioritized hierarchy.
Appeal Br. 14 (footnotes omitted).
However, we do not consider the recited "identifying" and
"determining" functions of claim 1 as improving the functioning of the
computer itself. We agree with the Examiner that, without more, "[ t ]here is
no indication that the combination of elements improves the functioning of a
computer or improves any other technology. Their collective functions
merely provide conventional computer implementation." Ans. 15.
Appellant advances no arguments pertaining to the Bilski "Machine or
Transformation" (MoT) test. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
Nor do we conclude that the recited "identifying" and "determining"
functions of claim 1 provide a meaningful limitation beyond generally
linking the use of the judicial exception to a particular technological
environment. We conclude Appellant's "identifying" and "determining"
functions of claim 1 are unlike the case in Diehr, in which the claim was
directed to the use of the Arrhenius equation ( an abstract idea or law of
nature) for use in an automated process for operating a rubber-molding
press. See 450 U.S. at 177-78. See MPEP § 2106.05(e) "Other Meaningful
Limitations."
The remaining elements of claim 1 merely specify the informational
content of the medication orders (including the phase-one and phase-two
medication orders), or involve functions which perform insignificant extra-
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solution or post-solution activity, such as searching, list compiling, and
displaying information. See MPEP § 2106.05(g) "Insignificant Extra-
Solution Activity." Thus, under Step 2A, Prong Two (MPEP §§ 2106.0S(a}-
(c) and (e}-(h)), we conclude claims 1-3, 5-19 and 21-26 do not integrate
the judicial exception into a practical application. Therefore, we proceed to
Step 2B, The Inventive Concept.
The Inventive Concept - Step 2B
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Under the 2019 Revised Guidance, only if a claim: ( 1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.0S(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
We note Berkheimer was decided by the Federal Circuit on
February 8, 2018. Appellant's Reply Brief was filed almost four months
earlier, on October 10, 2017. On April 19, 2018, the PTO issued the
Memorandum titled: "Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer Memorandum"). 6
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements ( or a
6 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
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combination of elements) are well-understood, routine, or conventional. In
reviewing the prosecution history, we recognize that the Appellant has not
yet had an opportunity to advance arguments based upon the change in the
law effected by Berkheimer. Thus, Berkheimer (881 F.3d at 1369) and the
USPTO Berkheimer Memorandum are intervening authorities.
However, regarding the use of the recited generic "order processor"
and "display processor" as recited Appellant's claims, the Supreme Court
has held "the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 573
U.S. 208, 223. Our reviewing court provides additional guidance, including
in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) ("the use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter"), and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
13 59, 13 63 (Fed. Cir. 2015) ( claims reciting, inter alia, sending messages
over a network, gathering statistics, using a computerized system to
automatically determine an estimated outcome, and presenting offers to
potential customers found to merely recite "'well-understood, routine
conventional activit[ies]"' by either requiring conventional computer
activities or routine data-gathering steps (alteration in original, internal
citation omitted)).
Accordingly, on the record before us, the Appellant has not shown
that claims 1-3, 5-19 and 21-26 add a specific limitation, beyond the
judicial exception, that is more than what was "well-understood, routine, and
conventional" in the field (see MPEP § 2106.05(d)).
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In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellant's claims 1-3, 5-19 and 21-26, considered
as a whole, is directed to a patent-ineligible abstract idea that is not
integrated into a practical application and does not include an inventive
concept. Accordingly, for the reasons discussed above, we sustain the
Examiner's Rejection A under 35 U.S.C. § 101 of claims 1-3, 5-19,
and 21-26. 7
Rejection B of Claims 1-3, 5-19 and 21-26
under 35 US.C. § 103(a)
We have reviewed Appellant's arguments in the Briefs, the
Examiner's obviousness rejections, and the Examiner's responses to the
Appellant's arguments. Appellant does not proffer sufficient argument or
evidence to persuade us of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). For at least the reasons
discussed below, we agree with and adopt the Examiner's findings and legal
conclusions in the Final Action and Answer.
Regarding Rejection B, the Examiner finds the proffered combination
of Brandt and J oao teaches or suggests all limitations of independent
claims 1, 16, and 17, and dependent claims 2, 3, 5-15, 18, 19, and 21-26.
(Final Act. 4--15).
7 To the extent the Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/466,362
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding Brandt
and Joao collectively teach or suggest the contested limitation:
wherein the at least one phase-two medication order is
prioritized over the at least one phase-one medication order,
and the at least one phase-one medication order is prioritized
over the at least one other medication order[,]
within the meaning of representative claim 1? 8 (Emphasis added).
The Examiner finds Brandt (i1i1 49--56, 64-69) teaches hierarchical
priority. See Final Act. 5. 9
Regarding the disputed limitation of claim 1, Appellant contends:
Importantly, Brandt's nested decision tree is different and
distinguishable from the phase-based prioritized hierarchy list
compiled by an order processor, both in appearance and
generation, as recited in Appellant's independent claim 1.
Compare Brandt at FIG. 6 to Appellant's as-filed Specification
at FIG. 2. The Brandt reference generates the nested decision
tree by employing complex heuristic mechanisms. See, e.g.,
Brandt at ,r,r [0049] - [0056] (heuristics), ,r,r [0064] - [0069],
[0074], [0086] - [0087] (value prediction). The Brandt
reference does not make statements that teach or suggest the
specific operations of the order processor and the compilation
of the phase-based prioritization hierarchy list, as recited in
Appellant's independent claim 1, however.
App. Br. 21.
8 See supra n.4. (We give the contested claim limitations the broadest
reasonable interpretation consistent with the Specification).
9 As referenced by the Examiner in the Final Action, we refer to paragraph
numbers in Appellant's Specification: U.S. Patent Application Publication
US 2013/0304482 Al; Pub. Nov. 14, 2013.
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Application 13/466,362
Appellant further argues:
Joao does not cure the deficiency of Brandt in this regard.
Generally, Joao discusses a device which is used to edit
information in an electronic patient record and is used to
produce a diagnostic report. See, e.g., Joao at Abstract, ,r,r
[0220], [0224] - [0227]. But like Brandt, Joao is silent with
regard to the above-cited features of independent claim 1 and
cannot cure the deficiency of Brandt. Thus, Brandt and Joao,
whether taken alone or in combination, do not teach the
aforementioned feature of claim 1.
App. Br. 22.
In response, the Examiner further explains the basis for the rejection:
the Examiner notes that Brandt in view of Joao discloses:
" ... complete candidate orders are derived using the repository
and based on user ordering history." [i-f0020 of Brandt], Brandt
in view of Joao also discloses: " ... system uses heuristics to
determine which combination of menu items should be
represented ... " [i-f0049 of Brandt], Brandt in view of Joao
further discloses: " ... heuristics takes into account the likelihood
that a particular combination of menu items is selected ... to open
multiple menus and locate and select desired items ... " [i-f 005 3
of Brandt], Brandt in view of Joao still further discloses: " ... the
attribute values are represented as a hierarchical decision tree, it
is possible to still fix attribute values in any order, and at any
level. .. system may employ various methods of presenting the
attribute values and is not limited to a hierarchical decision
tree." [i-f0087 of Brandt], Brandt in view of Joao still further
discloses: " ... engine retrieves a hierarchical decision tree that
embeds multiple attributes and their associated values for
construction of an order ... " [,IO 102 of Brandt]. As such, the
Examiner respectfully submits that Brandt in view of Joao
seemingly suggest[ s ], "the at least one phase-two medication
order is prioritized over the at least one other medication
order", as claimed by the Appellant.
Ans. 15-16.
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Claim Construction
We begin our analysis with claim construction. 10 We tum to the
Specification for context. Applying a broad but reasonable interpretation to
the language of claim 1, we construe "wherein the at least one phase-two
medication order is prioritized over the at least one phase-one medication
order, and the at least one phase-one medication order is prioritized over the
at least one other medication order" as being based upon frequently placed
orders, consistent with the supporting description found in the Specification:
"The hierarchical priority comprises, ( 1) orders most frequently
placed by the user for a patient with a particular hospital admission
department, (2) orders most frequently placed by multiple different users of
the ordering system, and (3) other orders placed by users of the ordering
system." Spec. 4, ,r,r 18, 19; Fig. 2. 11 ( emphasis added).
1° Claim construction is an important step in a patentability determination. A
legal conclusion that a claim is obvious involves two analytical steps,
assuming the references have been properly combined under § 103. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) ("Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims .... The
second step in the analyses requires a comparison of the properly construed
claim to the prior art." (internal citations omitted)). Under the second step,
the Board must compare the construed claim to one or more prior art
references and make factual findings regarding the limitations contested by
Appellant. See In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Because
the PTO is entitled to give claims their broadest reasonable interpretation, a
court's review of the Board's claim construction is limited to determining
whether it was reasonable. See Morris, 127 F.3d at 1055.
11 See Spec. ,r 19 ("FIG. 2 shows list of medication orders 203 ranked based
on, orders most frequently placed by a user 205, orders most frequently
placed by multiple different users 207 and other orders 209 placed by users
of an ordering system. The other orders 209 encompass orders most
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Given this construction (id.), we tum to the evidence relied upon by
the Examiner (Final Act. 4--6; Ans. 15-16). We find the cited paragraphs of
Brandt (i1i120, 49-56, 60-69, 87, 102, and Fig. 1 and 2) collectively teach or
suggest "a priority based hierarchy of medication orders" based upon the
user order history, within the meaning of independent claim 1. 12 In
particular, Brandt ,r 54 teaches: "A node is assigned frequencies or
probabilities, based upon global, group, and independent historical ordering
frequencies." ( emphasis added).
Moreover, our reviewing court guides: "'the question under 35 USC
103 is not merely what the references expressly teach but what they would
have suggested to one of ordinary skill in the art at the time the invention
was made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
(Emphasis added); see also MPEP § 2123.
We reproduce Figure 1 of Brandt, below:
frequently placed by multiple different users 207 which in tum encompass
orders most frequently placed by an individual user 205."); See also orders
frequently placed 205 and 207, as depicted in Figure 2.
12 "Combining two embodiments disclosed adjacent to each other in a prior
art patent does not require a leap of inventiveness." Boston Scientific
Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Moreover,
an obviousness inquiry is not limited to the prior art's preferred
embodiment. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370
(Fed. Cir. 2007).
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Figure 1 of Brandt is reproduced below depicting
element 142 "User Ordering History"
100
System
,,. ,,
Jt.'
11 I
0
l
User
FIG. l
107
106
HJ2 Repository
User lnterface 128 I Executable Applkation I
Data Input l 14
Device
Display I 18
Processor
116
Data Output Device
Display lmage 120
······························_···············1········')···································.
11
- 104
126
Data
Processor
Processor
127
Communication
Processor
112
l08
Data Source
122
U~er Interface
Proc:essoI
124
Pre,iic1im1
Process.or
112
152
130 l!ems
132 Orders
134 Related Order Parameter,.
136
Initial Complete
Candid,1te Order
133
140
148
Sets of DJforen.t
Rcfatw Or-dcr Parameters
Order .A!-i~odated Darn
144 !ndiviclual P;,rameters
146
Da:a Representing
Di$p{uy lrrmges
Diffe-rent Individually
User_ Selectable Complete
Candidate Orders
I
1so L ________ _, _ Clinical Logic
Values Of Rcm;;in.ing Paramcwrs
154
156
Predetermined
Tre-atment Pre.ferences .............................................
Predetermined
Clinical Guidelines
Figure 1 of Brandt is illustrated above, depicting Repository 106.
18
I
Appeal2018-000388
Application 13/466,362
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred regarding Rejection B of
claims 1-3, 5-19 and 21-26, under 35 U.S.C. § 103(a).
CONCLUSIONS
The Examiner did not err in rejecting claims 1-3, 5-19, and 21-26
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner did not err in rejecting claims 1-3, 5-19, and 21-26, as
being obvious under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5-19,
and 21-26 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-3, 5-19,
and 21-26 under 35 U.S.C. § 103(a).
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
19