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Patent Trials and Appeals Board

Dec 4, 2019

14936898 - (D) (P.T.A.B. Dec. 4, 2019)

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.
14/936,898 11/10/2015 Bhavesh S. Padmani 3712044.04805 4724
29200 7590 12/04/2019
K&L Gates LLP-Chicago
Baxter
P.O. Box 1135
Chicago, IL 60690-1135
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/04/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BHAVESH S. PADMANI, GHALIB A. ABBASI,
BAPU LAXMAN HIRAVE, MATTHEW CROOKS,
and MAHER F. YASSINE
____________

Appeal 2019-001826
Application 14/936,898
Technology Center 3600
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
GARTH D. BAER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–3, 5, 7–13, 129–131, 133, 136–141, and 143,
which are all the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

THE INVENTION
Appellant’s claimed invention is directed to a “pharmacy workflow
management application” (Spec. 2:12–13) used in “preparing a plurality of
dose orders in a common batch according to a batch workflow” (Spec. 2:13–
14).
Independent claim 1, reproduced below with emphases added, is
representative of the subject matter on appeal:
1. A method of batch processing of a plurality of dose
orders in a pharmacy workflow management application for
preparation of doses corresponding to said plurality of dose
orders, the method comprising:

accessing, by a processor executing said pharmacy
workflow management application, a plurality of dose order
records corresponding to dose orders received by said
pharmacy workflow management application, wherein said
plurality of dose orders comprise identical constituent
products, and wherein said plurality of dose orders have not
been prepared;

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Baxter Corporation Englewood as the
real party in interest (Appeal Br. 3).
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aggregating said plurality of dose orders to create to an
aggregated plurality of said dose orders;

displaying, at a user interface of a dose compounding
station in operative communication with the pharmacy
workflow management application, a dose preparation protocol
corresponding to said aggregated plurality of dose order
records, wherein said dose preparation protocol comprises a
requirement for an aggregate amount of at least one of said
identical constituent products needed to prepare each of said
aggregated plurality of dose order records;

receiving, from a user by way of a user input at said user
interface of said dose compounding station, a product scan
indicating possession of said requirement of said aggregate
amount of said at least one constituent product by the user at
the dose compounding station;

presenting to the user, via said user interface of the dose
compounding station, a plurality of preparation steps
comprising physical steps required to prepare said product
scan indicating possession of said requirement of said
aggregated plurality of doses upon said receiving said product,
wherein verification data confirming that each step of said
plurality of preparation steps has been performed is entered
using the user interface of the dose compounding station by
said user and confirmed by said pharmacy workflow
management application by capturing certain information
presented by said user before continuing to a subsequent step in
said plurality of preparation steps;

printing a dose label for each dose order of said
aggregate plurality of dose orders, upon completion of said
plurality of preparation steps;

printing a work-in-progress label only upon said
receiving said product scan indicating possession of said
requirement of said aggregate amount of at least one
constituent product and completion of all of said plurality of
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preparation steps, wherein said work-in-progress label is
indicative of a remaining volume of said one or more formulary
products after said completion of said one or more preparation
steps; and

applying one of the respective dose label or the
respective work-in-progress label, associated with a respective
dose order, to a product associated with the respective dose
order of the plurality of dose orders such that an indication of
completion of the plurality of preparation steps is associated
with the product.

(Corrected Claims Appendix 3–4).

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:

Name Reference Date
Buker US 2003/0076736 A1 Apr. 24, 2003
Matsui US 2014/0022569 A1 Jan. 23, 2014
Utech US 2014/0214436 A1 July 31, 2014

REJECTIONS
The Examiner made the following rejections:
Claims 1–3, 5, 7–13, 129–131, 133, 136–141, and 143 stand rejected
under 35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. Final Act. 3.
Claims 1–3, 5, 7–13, 129–131, 133, 136–141, and 143 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Utech, Buker, and Matsui.
Final Act. 5.
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ISSUES
The issues are whether the Examiner erred in finding that:
1. claims 1–3, 5, 7–13, 129–131, 133, 136–141, and 143 are directed to
ineligible subject matter; and
2. the combination of Utech, Buker, and Matsui teaches or suggests the
limitation of:
presenting to the user, via said user interface of the dose
compounding station, a plurality of preparation steps
comprising physical steps required to prepare said product scan
indicating possession of said requirement of said aggregated
plurality of doses upon said receiving said product, wherein
verification data confirming that each step of said plurality of
preparation steps has been performed is entered using the user
interface of the dose compounding station by said user and
confirmed by said pharmacy workflow management application
by capturing certain information presented by said user before
continuing to a subsequent step in said plurality of preparation
steps,

as recited in independent claim 1, and similarly recited in independent
claims 129 and 143.

ANALYSIS
We note that if Appellant failed to present arguments on a particular
rejection, we will not unilaterally review those uncontested aspects of the
rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir.
2008) (the Board may treat arguments Appellant failed to make for a given
ground of rejection as waived).
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Patent Eligibility
The Examiner determines claim 1 is patent ineligible under 35 U.S.C.
§ 101, because “the claimed invention is directed to a judicial exception (i.e.,
a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” Final Act. 3; see also Alice Corp. Pty. Ltd. v. CLS Bank
Int’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 docketing of this appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Memorandum”). Pursuant to the Guidance “Step 2A,” the office
first looks to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice,
or mental processes); and
(2) Prong Two: additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
Ed., Rev. 08.2017 (Jan. 2018))).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then (pursuant to the
Guidance “Step 2B”) look to whether the claim:
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(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.
Pursuant to Step 2A, Prong One of the Guidance, the Office first looks
to “evaluate whether the claim recites a judicial exception, i.e., an abstract
idea” (Memorandum, 84 Fed. Reg. at 54). Here, claim 1 recites “[a] method
of batch processing of a plurality of dose orders in a pharmacy workflow
management application for preparation of doses corresponding to said
plurality of dose orders.” Specifically, claim 1 recites the limitations
italicized supra. The italicized portions of claim 1 represent the steps
performed as part of the workflow to arrive at “a product associated with the
respective dose order of the plurality of dose orders” that has the properly
applied “respective dose label or the respective work-in-progress label” such
that “an indication of completion of the plurality of preparation steps is
associated with the product.”
These limitations recite the steps that a person would perform when
preparing a pharmaceutical product, and are recitations of “following rules
or instructions,” which is an example of “fundamental economic principles
or practices,” and “managing personal behavior.” Memorandum, 84 Fed.
Reg. at 52. The Guidance provides that these limitations, therefore, recite
the abstract idea of “[c]ertain methods of organizing human activity.” Id.;
see also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
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F.3d 1336, 1344 (Fed. Cir. 2013) (holding that a system for generating tasks
to be performed in an insurance organization when an event occurs by
assigning tasks to various individuals authorized to complete them and
decomposing an insurance claim into different levels based on rules was an
abstract idea).
Accordingly, claim 1 “recites a judicial exception . . . [and] requires
further analysis in Prong Two” of the Guidance. See Memorandum, 84 Fed.
Reg. at 54.
Pursuant to Step 2A, Prong Two, we are not persuaded the Examiner
has erred in finding that claim 1 is directed to an abstract idea. That is, we
determine claim 1 does not integrate the recited judicial exception into a
practical application. See Memorandum, 84 Fed. Reg. at 54.
Appellant argues that the “present claims are comparable to the claims
found to be patent eligible in BASCOM Global Internet Servs. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. June 27, 2016)” (Appeal Br. 30).
Appellant further argues that the “claimed systems and methods improve
efficiency by aggregating the dose orders so that a plurality of dose orders
can be processed efficiently in batches instead of on a one-by-one basis”
(Reply Br. 4). Appellant contends that the batch workflow process
“eliminat[es] repetitive preparation steps” (Reply Br. 4, citing Spec. 30:6–
31:11) and “promote[s] reliability and accuracy” (Reply Br. 4, citing Spec.
34:7–36:8). Consequently, “viewed in light of McRO, the claims are
directed to the recited improvement and not to the abstract idea” (Reply Br.
4, citing MPEP § 2106.04(a)(1)).
Appellant additionally contends the claims “improv[e] the accuracy of
preparing medication dose orders to obtain fulfilled dose orders,” and are
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similar to the claimed invention in Thales Visionix Inc. v. United States, 850
F.3d 1343 (Fed. Cir. 2017), which “increased the accuracy of the sensor
measurement” (Reply Br. 4).
We are not persuaded by Appellant’s arguments. Here, the claims do
not include the type of technological improvement of Thales Visionix, in
which a “combination of sensor placement and calculation based on a
different reference frame mitigates errors by eliminating inertial calculations
with respect to the earth” (850 F.3d at 1348). The savings efficiency via the
“elimination” of “repetitive steps” (Spec. 31:5), and resulting “reduce[d]
errors” (Spec. 31:10) is part of the abstract idea, and does not result from
improvements to technology, as that found in Thales Visionix.
Additionally, the claimed invention uses computer functionality to
increase efficiency. “[M]erely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.” Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); see also Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1057 (Fed. Cir. 2017).
Moreover, Appellant’s purportedly improved abstract concept is still
an abstract concept under the Guidance. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea.”) (emphasis omitted). That is, the
highlighted limitations, which form the workflow steps, is part of the recited
abstract idea as discussed above. As the argued elements are part of the
abstract idea, they are not additional elements that integrate the identified
abstract idea into a practical application. See Memorandum, 84 Fed. Reg.
54–55 (“evaluate integration into a practical application by: (a) Identifying
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whether there are any additional elements recited in the claim beyond the
judicial exception(s)”).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. We determine the “claim recites a judicial exception and fails to
integrate the exception into a practical application,” therefore we proceed
with “further analysis pursuant to the second step of the Alice/Mayo test
(USPTO Step 2B).” Memorandum, 84 Fed. Reg. at 51.
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 Final Act. 4; see also Memorandum, 84 Fed.
Reg. at 56. Independent claim 1 additionally recites “a processor” (for
executing a pharmacy workflow management application) and a “user
interface” of a dose compounding station. We agree with the Examiner that
[t]he “processor” [recited in independent claim 1], “user
interface” [recited in independent claim 1,] and “access
terminal” [recited in independent claim 129] are recited at a
high level of generality and are recited as performing generic
computer functions routinely used in computer applications.
Generic computer components recited as performing generic
computer functions that are well-understood, routine and
conventional activities amount to no more than implementing
the abstract idea with a computerized system

(Final Act. 4).
Appellant argues that “[t]he claimed systems and methods are far
more than a generic computer structure and general purpose computing
system” (Reply Br. 3), but does not point to any portion of the disclosure as
describing the processor or user interface. The disclosure does not appear to
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describe the processor at all. While the Figures provide several screenshots
of the user interface (see Figs. 5–7, 8a–8c, 9, 11, 12), the disclosure
describes user interface 108 as being “generally operable to present and
receive information associated with the batch workflow per the operation of
the pharmacy workflow application 114” (Spec. 33:17–18), with no
indication that the user interface is other than generic. See Alice, 573 U.S. at
226 (“But what petitioner characterizes as specific hardware . . . is purely
functional and generic. Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (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].”).
Accordingly, we affirm the Examiner’s rejection of independent claim
1, and independent claims 129 and 143 and dependent claims 2, 3, 5, 7–13,
130, 131, 133, and 136–141 not separately argued with particularity. See
Appeal Br. 31–38.

Obviousness
Independent claim 1 recites (with emphases added) that

presenting to the user, via said user interface of the dose
compounding station, a plurality of preparation steps
comprising physical steps required to prepare said product scan
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indicating possession of said requirement of said aggregated
plurality of doses upon said receiving said product, wherein
verification data confirming that each step of said plurality of
preparation steps has been performed is entered using the user
interface of the dose compounding station by said user and
confirmed by said pharmacy workflow management application
by capturing certain information presented by said user before
continuing to a subsequent step in said plurality of preparation
steps.

Regarding the claimed “verification data,” Appellant argues that
the Examiner does not explicitly assert what component of
[Buker] allegedly corresponds to i) verification data, ii) each
step of said plurality of preparation steps; iii) a dose
compounding station; v) a pharmacy workflow management
application; and vi) [] information presented by a user

(Appeal Br. 42, emphases in original). The Examiner finds that this
limitation is taught at paragraphs 124 and 125 of Buker, stating only that
“paragraph 124 [teaches] out-of-sequence message, paragraph 125 [teaches]
incorrect scale” (Final Act. 10).
Then in response to Appellant’s argument, the Examiner finds that the
claimed “presenting” step “is actually two separate steps” (Ans. 7), and that
[t]here is no claimed connection between the displayed
information and the verification step. There must be two steps,
displaying and verifying, however the relationship between the
two steps is not explicitly claimed

(Ans. 8). We do not agree with the Examiner that there is “no claimed
connection between the displayed information and the verification step.”
The limitation recites that the user must confirm each step of the plurality of
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preparation steps. Further, each conformation is provided by verification
data that is entered and confirmed before continuing to a subsequent step.
We further find the Examiner has not provided sufficient explanation
in (a) the Final Action’s statement “paragraph 124 out-of-sequence message,
paragraph 125, incorrect scale” (Final Act. 10) or (b) the Answer, regarding
how Buker (itself or in combination with the other references) teaches or
suggests this limitation. Accordingly, we are constrained by the record to
reverse the Examiner’s obviousness rejection of independent claim 1,
independent claims 129 and 143 commensurate in scope, and dependent
claims 2, 3, 5, 7–13, 130, 131, 133, and 136–141.

CONCLUSION
The Examiner did not err in finding claims 1–3, 5, 7–13, 129–131,
133, 136–141, and 143 are directed to ineligible subject matter.
The Examiner erred in finding the combination of Utech, Buker, and
Matsui teaches or suggests the limitation of:
presenting to the user, via said user interface of the dose
compounding station, a plurality of preparation steps
comprising physical steps required to prepare said product scan
indicating possession of said requirement of said aggregated
plurality of doses upon said receiving said product, wherein
verification data confirming that each step of said plurality of
preparation steps has been performed is entered using the user
interface of the dose compounding station by said user and
confirmed by said pharmacy workflow management application
by capturing certain information presented by said user before
continuing to a subsequent step in said plurality of preparation
steps,

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as recited in independent claim 1, and similarly recited in independent
claims 129 and 143.

DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 7–
13, 129–
131, 133,
136–141,
143
101 Eligibility 1–3, 5, 7–
13, 129–
131, 133,
136–141,
143

1–3, 5, 7–
13, 129–
131, 133,
136–141,
143
103 Utech, Buker,
Matsui
1–3, 5, 7–
13, 129–
131, 133,
136–141,
143
Overall
Outcome
1–3, 5, 7–
13, 129–
131, 133,
136–141,
143

The Examiner’s decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See 37
C.F.R. § 41.50(a)(1) (2017).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED