Ex Parte Charlson et al

Patent Trial and Appeal Board

Aug 13, 2018

11695374 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/695,374 04/02/2007
46169 7590 08/15/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Sara J. Charlson
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.
CRNI.134461 2541
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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 SARA J. CHARLSON, MATTHEW R. HUFFMAN,
KAREN E. BERISLA VICH, JACQUELINE S. LESTER,
AARON L. HENTON, and JENNIFER L. BESCH
Appeal2017-003696
Application 11/695,374
Technology Center 3600
Before JEAN R. HOMERE, NABEEL U. KHAN, and AMBER L. HAGY,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3, 5, 7, and 10-12, which are all of the pending
claims. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Cemer Innovation as the real party in interest. (Br. 3.)
2 Claims 2, 4, 6, 8, and 9 have been canceled. (Final Act 2; Br. 3.)
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STATEMENT OF THE CASE
Introduction
By way of background in the Specification, Appellants state:
Healthcare information systems are traditionally
institutionally customized and require a tremendous amount of
time and effort to configure and/or implement from ground level
or convert from a different system. This is primarily because
such systems are manually built which is a tedious process at
best, generally taking several months and multiple in-person
consultant visits to accomplish. Accordingly, a method for
configuring, implementing and/or maintaining a healthcare
information system that diminishes the time and effort required
would be desirable.
Additionally, an automated system that utilizes existing
sources of information for configuration, implementation and/or
maintenance to alleviate some of the tedious nature of the process
would be advantageous.
(Spec. ,r,r 2--4.) Further according to Appellants, the claims are directed to
an apparatus and method "for selectively associating content items with pre-
configured alternatives based upon directed user input." (Abs.)
Exemplary Claim
Claims 1 and 5 are independent. Claim 1, reproduced below, is
exemplary of the claimed subject matter:
1. One or more computer storage devices having
computer-executable instructions embodied thereon that, when
executed, perform a method in a clinical environment for
building a customized healthcare information system based on
an existing healthcare information system by selectively
associating, through directed user input, content items from the
existing healthcare information system with pre-configured
alternatives, the pre-configured alternatives configured for use in
the customized healthcare information system and configured to
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be options to represent one or more content items from the
existing healthcare information system, the method comprising:
receiving, at a survey component, a first content item from
an existing healthcare information system for building a
customized healthcare information system, wherein the first
content item comprises a first clinical laboratory orderable item;
determining, via the survey component, that the first
content item is an exact name match with a pre-configured
content item for use in the customized healthcare information
system;
presenting, via the survey component, a representation of
the exact name match between the first content item and the pre-
configured content item for verification, from a user, of the exact
name match, the user being a healthcare facility or at least one of
a healthcare facility personnel, wherein the survey component is
configured to present a plurality of screen displays from which
the user may input information to build the customized
healthcare information system;
receiving verification from the user of the exact name
match between the first content item and the pre-configured
content item for use in the customized healthcare information
system;
receiving, at a survey component, a second content item
from an existing healthcare information system for building a
customized healthcare information system, wherein the second
content item comprises a second clinical laboratory orderable
item;
determining, via the survey component, a plurality of pre-
configured alternatives for user selection to reconcile the second
content item from the existing healthcare information system
with one or more pre-configured alternatives of the plurality of
pre-configured alternatives, the plurality of preconfigured
alternatives configured for use in the customized healthcare
information system and configured to be options to represent the
second content item in the customized healthcare information
system, wherein each of the plurality of pre-configured
alternatives is determined utilizing pre-configured content that
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comprises survey-specific tables that contain options for
configuring, implementing, or maintaining the customized
healthcare information system, facility- and personnel-specific
content derived from the existing healthcare information system,
and a facility and personnel profile;
presenting, via the survey component, the plurality of pre-
configured alternatives for user selection;
directing the user through the process of selecting one pre-
configured alternative of the plurality of pre-configured
alternatives to reconcile the second content item from the
ex1stmg healthcare information system with the one
preconfigured alternative of the plurality of pre-configured
alternatives for use in the customized healthcare information
system; and
receiving, at the survey component, user selection of the
one preconfigured alternative of the plurality of pre-configured
alternatives for association with the second content item in order
to reconcile the second content item from the existing healthcare
information system with the one pre-configured alternative of the
plurality of pre-configured alternatives.
REJECTION
Claims 1, 3, 5, 7, and 10-12 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter (judicial exception/
abstract idea). 3
3 Although Appellants purport to argue independent claims 1 and 5
separately, the arguments presented for both claims are substantively the
same in all material respects. (Br. 14--25.) Appellants argue the dependent
claims collectively with their respective independent claims. (Id. at 12, 21.)
We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
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ANALYSIS
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71-73 (2012)). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an "inventive concept" sufficient to "'transform the nature of
the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355
( citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge-as did the Court in Mayo----that "all
inventions at some level embody, use, reflect, rest upon, or apply laws of
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nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that is itself the abstract idea and whether the claims merely invoke
generic processes and machinery. See Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
In applying the framework set out in Alice, and as the first step of that
analysis, the Examiner concludes the claims are directed to "the abstract idea
of determining an exact name match between a first content item and a
preconfigured content item and determining a plurality of alternatives for a
second content item (i.e. based on a matching algorithm)." (Final Act. 5
( emphasis omitted).) The Examiner further determines "[ t ]his concept is
similar in scope to those found to be abstract ideas by the Courts," such as
"comparing new and stored information." (Id.)
Appellants maintain that the § 101 rejection cannot be sustained
because "the Examiner has not provided any evidence, explanation, or
reasoning beyond conclusory statements to support a finding that
independent claim 1 includes the abstract ideas of 'comparing new and
stored information' and 'organizing human activity' .... " (Br. 15.) As an
initial matter, we disagree that the Office must provide "evidence" to
support a determination that a claim is directed to an abstract idea. As the
Federal Circuit has held, the Office carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection,
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application." See In
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re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here, in rejecting the
pending claims under § 101, the Examiner analyzed the claims using the
Mayo/Alice two-step framework. (Final Act. 4--6.) In so doing, the
Examiner notified Appellants of the reasons for the rejection "together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of [the] application." 35 U.S.C. § 132(a). We
find, therefore, that the Examiner set forth a prima facie case of patent-
ineligibility such that the burden then shifted to Appellants to demonstrate
that the claims are patent-eligible.
Appellants further argue the claims "improve an existing
technological process" and, thus, are not directed to a patent-ineligible
abstract idea. (Br. 14.) In particular, Appellants argue their claims are not
abstract because they are directed to "computerized building of a customized
healthcare information system based on an existing healthcare information
system." (J d.)
We are not persuaded of error. As the Examiner concludes, and we
agree, the claims here are ineligible because they are directed to data
selection, comparison of data by application of rules (matching first and
second content items with pre-configured content items), and presentation of
the results. (Final Act. 4--5; Ans. 3--4.) Our reviewing court has repeatedly
determined such data manipulation and presentation is abstract. See, e.g.,
Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that "collecting information, analyzing it, and displaying certain
results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (computer-
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implemented system for "verifying the validity of a credit card transaction[]
over the Internet" was patent-ineligible); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (patent-
ineligible claims recited "generalized software components arranged to
implement an abstract concept [ of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer").
In characterizing the claimed subject matter as directed to an abstract
idea, however, we do not discount Appellants' argument that the claimed
invention may provide many benefits. (See Br. 14.) But such an argument
is grounded in the notion that the particular selection of data, and the results
of matching one set of data to another set, are useful in the claimed context
(building a customized healthcare information system), which is not
exclusive of patent-ineligible subject matter. As many cases make clear,
even if a process of collecting and analyzing information is "limited to
particular content" or a particular "source," that limitation does not remove
the collection and analysis from the realm of the abstract. See SAP Am., Inc.
v. Investpic, LLC, No. 2017-2081, 2018 WL 3656048 at *1 (Fed. Cir. Aug.
2, 2018); Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases). The
Supreme Court and the Federal Circuit have also repeatedly made clear that
"merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract."
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016).
We are also not persuaded by Appellants' argument that the claimed
invention "improv[es] an existing technological process." (Br. 8.)
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Appellants have not persuasively argued that the claims are directed to a
technological problem. As the Examiner finds, and we agree, "[t]he
problem in the present application is the time and resource[-]intensive
process of building a customized healthcare information system. This is not
a technological problem, even if the claimed invention recites a
computerized solution." (Ans. 15 ( emphasis omitted).) That is, the claims
are directed to a business problem of alleviating the "tedious nature" of the
process of manually building a healthcare information system (Spec. ,r,r 2-
3), and they provide the business solution of automating the matching of
content items from an existing system to pre-configured content items for
use in a customized system (id. ,r 44). Thus, the focus of the claims is not on
any improved computer, but rather on automating the matching of content
items in an existing system to pre-configured content items in a new system.
Appellants' Specification also makes clear that off-the-shelf computer
technology (such as "well-known computing systems, environments, and/or
configurations" such as "personal computers," without technological
restriction) is usable to carry out the claimed invention. (Spec. ,r,r 46, 64.)
The claims, therefore, fit into the familiar class of claims that do not "focus
... on ... an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools." Elec. Power Grp.,
830 F.3d at 1354. (See also Ans. 15: "The problem of 'manually built
systems (being) a tedious process at best, generally taking several months
and multiple in-person consultant visits to accomplish', is not caused by the
conventional way that the Internet operates, nor is it caused by the way that
any other technology or device conventionally operates.") In addition, as
our reviewing court has made clear, "relying on a computer to perform
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routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible." OIP Techs. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015). (See Ans. 13-14.)
In short, we have considered all of Appellants' arguments challenging
the characterization of the pending claims as being directed to abstract ideas,
but we do not find them to be persuasive of error. (Br. 11-15, 21-23.)
Rather, we agree with the Examiner, at step one of the Alice analysis, that
the claims are directed to one or more abstract ideas. Accordingly, we tum
to the second step of the Alice analysis, in which we determine whether the
additional elements of the claims transform them into patent-eligible subject
matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Having determined that the claims are directed to an abstract idea, the
Examiner also determines that the additional elements or combinations of
elements beyond the abstract idea do not amount to "significantly more"
than the abstract idea itself because:
the additional elements or combination of elements in the claims,
other than the abstract idea per se, amount to no more than a
recitation of A) generic computer structure that serves to perform
generic computer functions that serve to merely link the abstract
idea to a particular technological environment (i.e. storage
devices having computer-executable instructions, computing
devices); and B) functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry (i.e. receiving data, comparing data to stored
information, displaying data, receiving user selections of
options).
(Final Act. 5-6.)
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Appellants argue the Examiner's determination is in error because
"the claimed embodiments are rooted in technology since the claimed
embodiments address a problem arising from the use or modem
technologies, including the computerized building of a customized
healthcare information system." (Br. 17.) In essence, Appellants' argument
distills down to the notion that automating the matching of existing content
items ("first" and "second" content items) to "pre-configured alternatives" is
patentable. As the Supreme Court has explained, however, "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice Corp., 134 S. Ct. at 2358. Thus,
automating the matching of "content items from [an] existing healthcare
information system with pre-configured alternatives" ( even based on the
selection of particular data and analysis of that data according to particular
rules) does not transform Appellants' claims into patent-eligible subject
matter. (See also Ans. 15.)
Unlike the situation addressed in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014), for example, Appellants do not claim
to change how the underlying technology operates. Claim 1 calls for"[ o ]ne
or more computer storage devices having computer executable constructions
embodied thereon that, when executed, perform a method .... " As also
noted above, the Specification describes only generic technology for
executing the programs. (Spec. ,r,r 46-54, 64.) Moreover, the Examiner
finds the tasks recited in claim I-such as receiving data, comparing data to
stored information, displaying data, receiving user selections of options-are
common computer functions. (See Final Act. 6.) Appellants do not
challenge this finding. Thus, we are not persuaded of error in the
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Examiner's finding that the solution here is rooted in routine use of
conventional computer technology to carry out the claimed abstract idea.
(See id. at 5---6; see also Ans. 13-17.)
In that regard, we note that there is a fundamental difference between
computer functionality improvements, on the one hand, and uses of existing
computers as tools to perform a particular task, on the other. Indeed, the
Federal Circuit applied this distinction in Enfish in rejecting a§ 101
challenge because the claims at issue focused on a specific type of data
structure, i.e., a self-referential table for a computer database, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data, and not merely on asserted advances in uses to which
existing computer capabilities could be put. Enfish, 822 F.3d at 1335-36.
We find no parallel here between the claims before us and the claims
in Enfzsh nor any comparable aspect in the claims before us that represents
"an improvement to computer functionality," i.e., an improvement in the
way a computer carries out its basic functions. Id. The alleged advantages
that Appellants tout do not concern an improvement to computer
capabilities, but instead relate to an alleged improvement in building a
customized healthcare system by associating content items from an existing
healthcare system with pre-configured alternatives, for which a computer is
used as a tool in its ordinary capacity-that is, providing processing
technology to execute computer programs that, in tum, receive and
manipulate the selected data. (See also Ans. 13-16.)
In short, Appellants' claims are properly characterized, as noted
above, as ones in which generic computer technology is used merely as a
tool to implement the claimed abstract ideas. Thus, the Examiner finding of
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the generic nature of the component parts recited in the claims, coupled with
the Specification's characterization of such components as "well-known,"
provides sufficient evidence of a generic computer system used to
implement the abstraction. See Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 1057 (Fed. Cir. 2017) ("Significantly, the claims do
not provide details as to any non-conventional software for enhancing the
financing process."). See Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that "[o]ur law
demands more" than claim language that "provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it").
Appellants do not expressly challenge the Examiner's finding that the
recited computer structure is "well-understood, routine, and conventional."
Appellants argue, however, that the claimed feature of "using input from a
number of information sources prior to initiation of the configuration,
implementation, and/or converting process allows for a more resource
efficient (improved) computerized process," and is not well-understood,
routine and conventional as evidenced by the "lack of prior-art rejections."
(Br. 18.) We find no support for the assertion that "using input from a
number of sources" before building the customized healthcare information
system is somehow unconventional, and, as noted above, even
unconventional abstract ideas are not patent-eligible. See SAP Am., 2018
WL 3656048 at* 1. Relatedly, to the extent Appellants maintain that the
limitations of the claims necessarily amount to "significantly more" than an
abstract idea because the claimed method is allegedly patentable over the
prior art ( an issue that is not before us), Appellants misapprehend the
controlling precedent. Although the second step in the Alice/Mayo
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framework is termed a search for an "inventive concept," "the concept of
inventiveness [ under § 101] is distinct from that of novelty" and "[ t ]he
inventiveness inquiry of§ 101 should therefore not be confused with the
separate novelty inquiry of§ 102 or the obviousness inquiry of§ 103." See
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1312 (Fed.
Cir. 2016). Instead, the analysis is based on 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. A novel and nonobvious claim directed to
a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct.
at 1304.
We are similarly unpersuaded by Appellants' argument that "these
claims pose no risk of preemption." (Br. 19.) We agree the Supreme Court
has described "the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre-
emption." Alice, 134 S. Ct. at 2354. But characterizing pre-emption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. As our reviewing court has
explained, "[ t ]he Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability" and "[ f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). And although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id.
Moreover, "[ w ]here a patent's claims are deemed only to disclose patent
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ineligible subject matter under the [Alice/Mayo] framework ... , preemption
concerns are fully addressed and made moot." Id.; see also OIP Techs., 788
F.3d at 1362---63 ("[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the ecommerce setting do not make
them any less abstract.").
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter, or in rejecting on the same basis independent claim
5, for which Appellants present the same substantive arguments as for claim
1. (Br. 21-25.) We also sustain the rejection of dependent claims 3, 7, and
10-12, which Appellants do not argue separately. (Id. at 12, 21.)
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1, 3, 5, 7, and 10-
12 is affirmed.
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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