Philippe, Richard

Patent Trials and Appeals Board

Jan 7, 2020

12853709 - (D) (P.T.A.B. Jan. 7, 2020)

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.
12/853,709 08/10/2010 Richard Philippe 16712-P35383US00 6373
1059 7590 01/07/2020
BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l.
40 KING STREET WEST
40TH FLOOR
TORONTO, ONTARIO M5H 3Y2
CANADA
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/07/2020 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):
ipprocessingcentre@bereskinparr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD PHILIPPE

____________

Appeal 2019-001809
Application 12/853,709
Technology Center 3600
____________

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

BAER, 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, 4–13, and 16–23, which are all pending claims.
Appeal Br. 8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
A. The Invention
Appellant’s invention is directed to “provisioning medical supplies for
specific procedures and tracking medical supplies associated with those
medical procedures.” Spec. ¶ 1. Independent claim 1 is representative and
reproduced below, with added text enclosed in square brackets:
1. A system for automatically managing a retrieval and
return process of medical supplies for a medical procedure, the
system comprising:
[a] a data storage device for storing, at least, medical supply
data related to one or more medical supplies available to be
retrieved;
[b] a supply retrieval monitor operable to automatically
collect supply preference data related to one or more retrieval
and return processes for one or more medical procedures
associated with at least one of:
[c] a procedure type of the medical procedure,
[d] an attending surgeon identifier associated with a
surgeon scheduled to perform the medical procedure, and
[e] at least one nursing staff identifier associated with a
nursing staff scheduled to perform the medical procedure;
[f] a microphone operable to receive a voice command
associated with the retrieval and return process of the medical
supplies;

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Logi D Inc. as the real party in interest.
Appeal Br. 3.
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[g] a case cart for collecting the medical supplies retrieved
from one or more storage locations within a medical facility, the
case cart being movable within the medical facility;
[h] a processor in communication with the at least one data
storage device and the supply retrieval monitor, wherein in
response to receiving a retrieval trigger indicating the medical
procedure is scheduled, the processor is operable to:
[i] continuously receive the supply preference data
from the supply retrieval monitor and, in response to receiving
the supply preference data, to automatically update a medical
supply template generated for the medical procedure;
[j] automatically generate an electronic pick list
identifying a set of predictable medical supplies for the medical
procedure based on the updated medical supply template;
[k] for each predictable medical supply retrieved,
receive a supply retrieved data for that predictable medical
supply via at least one of a user interface and the microphone,
and to store the supply retrieved data in the data storage device,
the supply retrieved data comprising a retrieval status, a retrieved
quantity and a retrieval location;
[l] continuously detect an availability of information in
respect of one or more unpredictable medical supplies, wherein
the unpredictable medical supplies comprises pre-procedure
unpredictable medical supplies and in-procedure unpredictable
medical supplies;
[m] in response to detecting the information in respect
of one or more unpredictable medical supplies is available,
automatically update the electronic pick list to include the one or
more unpredictable medical supplies and to send the updated
electronic pick list to the one or more storage locations;
[n] after completion of the medical procedure, receive
a supply returned data for each unused medical supply returned
to the one or more storage locations via the at least one of the
user interface and the microphone, wherein the supply returned
data comprises a return status and a return location; and
[o] automatically update the medical supply template
based on the supply returned data and data identifying the one or
more unpredictable medical supplies identified for the medical
procedure.

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Appeal Br. 17–18 (Claims Appendix).
B. The Rejection on Appeal
The Examiner rejects claims 1, 4–13, and 16–23 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. 2.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Except where noted, we adopt
the Examiner’s findings and conclusions as our own, and add the following
primarily for emphasis.
A. Ineligible Subject Matter Rejection of Claims 1, 4–13, and 16–23
The Examiner determines the claims are 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. 2; see also Alice Corp. 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:
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(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)).
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:
(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 Section III.
We are not persuaded the Examiner’s rejection is in error.
1. Step 2A
Appellant argues that “the claimed subject matter is directed at a
specific improvement to a retrieval and return process of medical supplies
for a medical procedure.” Appeal Br. 11. Particularly, Appellant contends
that electronic pick lists “can be updated ‘on-the-fly’ as more accurate
predictions are made for a particular procedure (e.g. as further details are
learned about the patient, about the personnel assisting with the procedure,
and so on)” (Appeal Br. 11 (quoting Spec. ¶ 46)), and that “the supply
management module can ‘learn’ to provide improved predictions as more
and more data is collected” (Appeal Br. 12 (quoting Spec. ¶ 49)).
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Prong One
Pursuant to Step 2A, Prong One of the Guidance, we are not
persuaded the Examiner erred in determining claims 1, 4–13, and 16–23
recite an abstract idea. See Final Act. 2–6; Ans. 3–10; Memorandum
Section III(A)(1) (Prong One: Evaluate Whether the Claim Recites a
Judicial Exception), 84 Fed. Reg. at 54. Particularly, the Examiner finds
claim 1 is “directed to the abstract idea of receiv[ing] data about actual
supplies for actual procedures, generat[ing] a template based on the received
data, receiv[ing] data about predictable and un-predictable medical supplies
picked, and updat[ing] and transmit[ing] the updated pick list.” Final Act. 2.
(emphasis omitted). We first note claim 1’s preamble recites “managing a
retrieval and return process of medical supplies for a medical procedure.”
We find that when analyzing claim 1 under the Guidance, claim 1 recites:
(1) “certain methods of organizing human activity” including “managing
personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or
instructions)”; and
(2) “mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, [and] opinion.”
Memorandum, 84 Fed. Reg. at 52.
Particularly, claim 1’s limitations [i]–[o] recite the actions or
instructions followed by hospital personnel in preparation for, during, and
after a medical procedure. These actions or instructions often require
observation, evaluation, and/or judgment. The Specification supports this
finding. It states that “it is preferable that a higher percentage of the supplies
necessary for a particular procedure are picked by lesser-skilled personnel to
optimize allocation of the time of the highly-skilled personnel,” and that “it
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is more efficient for such tasks to be delegated to lesser-skilled individuals
while highly-skilled medical personnel can focus on medical tasks.” Spec.
¶ 29; see also id. at Fig. 1, ¶¶ 56–82 (describing duties performed by “first
user 22,” “second user 32,” “third user 42,” and “fourth user 52”). For
example, actions such as “update a medical supply template generated for
the medical procedure” (step [i]) and “detect an availability of information in
respect of one or more unpredictable medical supplies” (step [l]) are (a)
instructions followed by medical personnel that (b) require the medical
personnel to perform observations, evaluation, and/or judgment.
These steps are abstract ideas because they accomplish both
“managing personal behavior or relationships between people” and
performing “observation, evaluation, judgment, [and] opinion.”
Memorandum Section I, 84 Fed. Reg. at 52. Thus, this claim portion recites
both “[c]ertain methods of organizing human activity” and “mental
processes.” Id. Accordingly, claim 1 “recites a judicial exception . . . [and]
requires further analysis in Prong Two” of the Guidance. Memorandum, 84
Fed. Reg. at 54.
Prong Two
We also are not persuaded the Examiner erred pursuant to Step 2A,
Prong Two of the Guidance. Limitations [a] (“a data storage device”), [b],
(“a supply retrieval monitor”) and [f] (a “microphone”) perform mere data
gathering and/or data displaying functions, and are therefore insignificant
extra-solution activity. Memorandum, 84 Fed. Reg. at 55; see also n.31.
Limitations [c] (“a procedure type”), [d] (“an attending surgeon identifier”),
[e] (“at least one nursing staff identifier”), and [g] (“a case cart”) recite
elements that generally link the use of the judicial exception to the surgical
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environment and are insufficient to integrate the judicial exception into a
practical application. 84 Fed. Reg. at 55; see also n.32.
Regarding remaining limitation [h] (“a processor”), the Examiner
finds, and we agree, that the disclosure “discusses the generic computer
structure used to implement the invention” (Final Act. 5, citing Spec. ¶ 36),
and that “[g]eneric 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. 5. The limitation, thus, represents the
mere use of “a computer as a tool to perform an abstract idea,” and “does no
more than generally link the use of a judicial exception to a particular
technological environment.” Memorandum, 84 Fed. Reg. at 55; see also
Final Act. 8–9; Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385
(Fed. Cir. 2019) (“[T]he purported advance is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions.”) (citation and quotation marks omitted).
Appellant argues that “the claimed subject matter is directed at a
specific improvement to a retrieval and return process of medical supplies
for a medical procedure,” (Appeal Br. 11) with improvements including pick
lists that “can be updated ‘on-the-fly’” (Appeal Br. 11), and a “supply
management module” that “can ‘learn’ to provide improved predictions as
more and more data is collected.” Appeal Br. 12.
Appellant has not shown the claim includes additional elements that
improve the underlying computer, or other technology. See Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) (“[M]erely adding computer functionality to increase the speed or
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efficiency of the process does not confer patent eligibility on an otherwise
abstract idea.”); cf. Trading Techs. Int’l, Inc. v. IBG LLC, No. 2017-2257,
2019 WL 1716242, at *3 (Fed. Cir. 2019) (“This invention makes the trader
faster and more efficient, not the computer. This is not a technical solution
to a technical problem.”). 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).
Accordingly, we determine independent claim 1 does not integrate the
judicial exception into a practical application. See Memorandum, 84 Fed.
Reg. at 54. Because the “claim recites a judicial exception and fails to
integrate the exception into a practical application” (id. at 51), “the claim is
directed to the judicial exception” (id. at 54).
2. Step 2B
Appellant has not shown the recited additional elements (or
combination of elements) amount to significantly more than the judicial
exception itself. See Final Act. 4–6; Ans. 5–7; Memorandum, Section III(B)
(Step 2B), 84 Fed. Reg. at 56. The Examiner finds, and we agree, that “[t]he
claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
elements when considered both individually and as an ordered combination
do not amount to significantly more than the abstract idea.” Final Act. 4.
The Examiner further finds, and we agree, that the disclosure describes a
“generic computer structure used to implement the invention” (Final Act. 5,
citing Spec. ¶ 36), in which “[g]eneric computer components recited as
performing generic computer functions that are well-understood, routine and
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conventional activities amount to no more than implementing the abstract
idea with a computerized system.” Final Act. 5; see also Alice, 573 U.S. at
226. Based on the record before us, we agree with the Examiner that the
claimed additional elements and combination of elements when considered
both individually and as an ordered combination do not amount to
significantly more than the abstract idea, but instead recite only generic
components and steps that are well-understood, routine, and conventional.
Accordingly, we agree with the Examiner that independent claim 1 is
patent ineligible. We conclude the same for independent claim 13, and all
dependent claims.

CONCLUSION
In summary:
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

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–13,
16–23
101 Eligibility 1, 4–13,
16–23