Ex Parte Dutta et al

Patent Trial and Appeal Board

Nov 28, 2018

13995504 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/995,504 06/19/2013 Pradyumna Dutta
24737 7590 11/30/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2010P01177WOUS 6228
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRADYUMNA DUTTA,
CORNELIS CONRADUS ADRIANUS MARIA VAN ZON,
STEFFEN CLARENCE P AUWS, WILLIAM PALMER LORD,
JUERGEN TE VRUGT, and
ALPHONSUS ANTHONIUS JOZEF DE LANGE
Appeal2017-010424 1
Application 13/995,5042
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
April 18, 2017) and Reply Brief ("Reply Br.," filed August 1, 2017), and the
Examiner's Answer ("Ans.," mailed June 6, 2017) and Final Office Action
("Final Act.," mailed October 27, 2016).
2 Appellants identify Koninklijke Philips Electronics N.V. as the real party
in interest. App. Br. 1.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-7, 9-11, 13, 15, 19-21, 23-25, 27, 28, and 30-34. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED INVENTION
Appellants' claimed invention "relates generally to clinical
guidelines" (Spec. 1, 1. 1 ). Claim 1, reproduced below with bracketed
notations added, is illustrative of the claimed subject matter:
1. A system for centrally executing computer
interpretable guidelines (CIGs), said system comprising:
[ (a)] a first group of one or more clinical devices and a
second group of one or more clinical devices;
[ (b)] a clinical decision support system including one or
more processors configured to:
[ (b 1)] receive one or more update messages from
the first group of clinical device( s) over a communications
network, wherein the update message( s) include patient
data and/or end user input and identify a CIG instance
corresponding to a patient associated with the patient data;
[ (b2)] update the CI G instance using the patient data
and/ or end user input;
[(b3)] determine one or more CIG
recommendations based on the updated CIG instance;
[ (b4)] communicate the CI G recommendations to
the second group of clinical device( s) over the
communications network;
[ (b5)] after the patient has become associated with
a third group of one or more clinical devices different than
the first group of clinical device(s), receive patient data
from the third group of clinical device( s) over the
communications network;
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[(b6)] update the CIG instance on the basis of
patient data from the third group of clinical device( s );
[(b7)] receive a computer represented guideline
(CRG) from a remote guideline publisher and/or business
entity, wherein the CRG includes abstraction based on
usage; and,
[(b8)] generate a CIG from the CRG, wherein the
CRG represents guidelines at a localized level, and
wherein the CIG instance is derived from the CIG.
REJECTIONS
Claims 19 and 20 are rejected under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form for failing to further limit
the subject matter of a previous claim.
Claims 1-7, 9-11, 13, 15, 19-21, 23-25, 27, 28, and 30-34 are
rejected under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
Claims 1-7, 10, 19-21, 23-25, and 30-32 are rejected under
35 U.S.C. § I03(a) as unpatentable over Zalta (US 2010/0145722 Al, pub.
June 10, 2010) and DeVerter et al. (US 2010/0114590 Al, pub. May 6,
2010) ("DeVerter").
Claims 9, 11, 13, 15, 27, 28, 33, and 34 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Zalta, DeVerter, and Hagerty et al.
(US 2003/0167442 Al, pub. Sept. 4, 2003) ("Hagerty").
ANALYSIS
Section 112, Fourth Paragraph
In rejecting claims 19 and 20 under 35 U.S.C. § 112, fourth
paragraph, as "being of improper dependent form for failing to further limit
the subject matter of a previous claim," the Examiner ostensibly takes the
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position that claims 19 and 20 are not proper dependent claims because these
claims "conceivably" could be infringed without also infringing the base
claim, i.e., independent claim 3, from which they depend (Final Act. 2).
When, as here, an independent claim recites a particular method,
a dependent claim drawn to an apparatus, such as a processor or
a non-transitory computer readable medium, capable of
performing the method of the independent claim is not a proper
dependent claim, since the dependent claim ( the apparatus) could
conceivably be infringed by mere possession of the apparatus
without performing any particular method steps at all, thereby
infringing the dependent claim (the apparatus) without
necessarily infringing the independent claim ( the method), in
violation of the infringement test for proper dependency of
claims.
Id. at 3 ( citing Manual of Patent Examining Procedure ("MPEP")
§ 608.0l(n)(III)).
We do not agree that claims 19 and 20 are dependent claims.
Although both claim 19 and claim 20 refer to claim 3, claims that refer to
other claims are not necessarily dependent claims.
35 U.S.C. § 112, fourth paragraph, provides that a claim in dependent
form shall (1) contain a reference to a claim previously set forth and
(2) specify a further limitation of the subject matter claimed. A claim in
dependent form also "shall be construed to incorporate by reference all the
limitations of the claim to which it refers." Id. But, notably, the statute does
not state that every claim containing a reference to another claim is a
dependent claim.
Here, claim 3 is directed to "[a] method for centrally executing
computer interpretable guidelines"; claim 19 recites "[ o ]ne or more
processors preprogrammed to perform the method according to claim 3" and
claim 20 recites "[a] non-transitory computer readable medium carrying
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software which controls one or more processors to perform the method
according to claim 3." Claim 19, thus, recites an apparatus, i.e., one or more
processors preprogrammed to perform a particular method, and refers to
claim 3 as "shorthand" to describe the method that the claimed apparatus
performs. In other words, claim 19 is drafted in a "shorthand" format to
avoid rewriting the particulars of the method of claim 3, not to further define
the method of claim 3 - an indication that claim 19 is an independent, not
dependent, claim. Claim 20 is drafted in this same "shorthand" format, and
like claim 19, is properly considered an independent claim.
The claims involved here are similar to those the Board considered in
Ex parte Porter, 25 USPQ2d 1144 (BPAI 1992). There, claim 7 was
directed to "[a] nozzle suitable for use in discharging a controlled stream of
fluid into a reactor tube of a catalyst unloading apparatus"; claim 6 recited
"[a] method for unloading non-packed, non-bridging and packed, bridging
flowable particle catalyst and bead material from the opened end of a reactor
tube which comprises utilizing the nozzle of claim 7." Id. at 1145. The
Board noted that the manner in which claim 6 is drafted "has been an
acceptable format for years" and suggested that such a claim "could be
construed as an independent claim, drafted in a short-hand format." Id.
at 1147 (citing In re Kuehl, 475 F.2d 658 (CCPA 1973)).
Because each of claims 19 and 20, in our view, is properly considered
an independent claim, we do not sustain the Examiner's rejection of these
claims under 35 U.S.C. § 112, fourth paragraph.
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
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35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "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., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
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In rejecting the pending claims under § 101, the Examiner determined
that the claims are directed to "creating, updating, and routing clinical
guidelines," i.e., to an abstract idea similar to ideas previously identified by
the courts as abstract (Final Act. 3--4 ( citing SmartGene, Inc. v. Advanced
Biological Labs, SA, 555 F. App'x 950 (Fed. Cir. 2014); Cybeifone Sys.,
LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988 (Fed. Cir. 2014); and
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343 (Fed. Cir. 2014)). The Examiner also determined that "[t]he
claims do not include additional elements that are sufficient to amount to
significantly more because the additional elements when considered both
individually and as an ordered combination do not amount to significantly
more than the abstract idea" (id. at 4--5).
Appellants first argue that the Examiner erred in rejecting the claims
under § 101 because, like the claims held patent-eligible in BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016),
the present claims solve problems arising in a specific technical area, i.e.,
medical technology and computer networking technology (App. Br. 10; see
also Reply Br. 2-3). Appellants assert that the claimed invention
advantageously allows a patient (and also a clinician) to move between
clinical devices while maintaining a computer interpretable guideline
("CIG") instance (i.e., by maintaining a CIG that is patient specific at a
central server, and assigning, to the CIG instance, a unique identifier, which
can be used by a plurality of clinical devices to receive clinical
recommendations for the instance and/ or provide updated patient data to the
instance), and that the claimed invention also results in improved scalability
across the diversity of medical devices at the point-of-care that deploy
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different technologies and proprietary protocols to exchange information
between each other (App. Br. 11 ). Appellants assert that CI Gs currently
offered are not scalable across the large diversity of medical devices, and
that claim 1, for example, addresses this problem by generating a CIG from
a computer represented guideline ("CRG") where the CRG represents
guidelines at a localized level, and deriving a CIG instance from the
generated CIG. According to Appellants, this "allows the system of claim 1
to handle the large amounts of data generated by each clinical department
having [its] own requirements in various clinical specialties," and, thus,
improves the technical functioning of the claimed system (id. at 11-12).
Responding to the Examiner's suggestion that the advantage of
allowing a patient or clinician to move between clinical devices could be
obtained by transporting a patient chart, with a listing of the patient's clinical
guidelines, from room to room with the patient, Appellants argue that
carrying a piece of paper "would not allow for [the] real time update that
claim 1 provides" and that "maintaining an instance of a computer
interpretable guideline (CIG) at a central server is not achievable with a
piece of paper" (id. at 11 ). But, we fail to see how storing a patient
healthcare guideline instance, i.e., a CIG instance, electronically, i.e., on a
centralized clinical decision support system, so different remote devices can
update the patient data to the centralized system and receive updated patient
data transmitted from the centralized system amounts to a technological
improvement analogous to that in BASCOM.
Concluding that an "inventive concept" can be found in the non-
conventional and non-generic arrangement of known conventional pieces,
and applying that standard in relation to claims directed to filtering content
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from the Internet, the Federal Circuit held, in BASCOM, that the second step
of the Mayo/Alice framework was satisfied because the claimed invention
"represents a 'software-based invention[] that improve[s] the performance
of the computer system itself."' BASCOM, 827 F.3d at 1351 (stating that
like DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014 ), where the patent "claimed a technical solution to a problem unique to
the Internet," the patent in BASCOM claimed a "technology-based solution .
. . to filter content on the Internet that overcomes existing problems with
other Internet filtering systems ... making it more dynamic and efficient")
( citations omitted).
Appellants maintain that the claimed invention here, like that in
BASCOM, provides a technical improvement (App. Br. 18). But we are not
persuaded that storing a CIG at a central server so that a clinician can move
between clinical devices, and/or generating clinical guidelines customized
for a particular clinical department amount to technological improvements,
as opposed to improvements in a business practice, i.e., distributing
guidelines to clinicians at a point of care, where there is no indication that
the operations recited in claim 1, for example, require any specialized
computer hardware or other inventive computer components, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions.
We conclude, as did the Examiner (see Ans. 6), that the present claims
involve no more than the centralized collecting, storing, and transmission of
data - activities squarely within the realm of abstract ideas. See, e.g.,
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed.
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Cir. 2016) (holding that receiving e-mail (and other data file) identifiers,
characterizing e-mail based on the identifiers, and communicating the
characterization is an abstract idea); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) ("[t]hat a computer receives and sends the
information over a network - with no further specification - is not even
arguably inventive"); Cyberfone Systems, 558 F. App'x at 992 (collecting
information in classified form, then separating and transmitting that
information according to its classification, is an abstract idea that is not
patent-eligible).
We also are not persuaded that there is any parallel between the
present claims and the claims in McRO that the court determined were not
directed to an abstract idea (App. Br. 12-14; see also Reply Br. 4--5).
Appellants ostensibly maintain that the present claims, like those found
patent-eligible in McRO, improve a computer-related technology (e.g.,
medical equipment technology) by allowing the performance of a function
not previously performable by a computer, i.e., receiving a computer
represented guideline ("CRG") from a remote guideline publisher and/or
business entity, where the CRG includes abstraction based on usage; and
generating/deriving, a CIG from the CRG, where the CRG represents
guidelines at a localized level, e.g., limitations (b7) and (b8), as recited in
claim 1 (App. Br. 13). But, Appellants do not identify any specific rules that
enable the computer to generate CIGs in the same way the specific rules
enabled the computer in McRO to generate the computer-animated
characters. We also find no evidence of record here to support the argument
that the present situation is like the one in McRO where computers were
unable to make certain subjective determinations, i.e., regarding morph
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weight and phoneme timings, which could only be made prior to the claimed
invention by human animators.
The '576 patent, at issue in McRO, 3 describes that prior to the claimed
invention, character animation and lip synchronization were accomplished
by human animators, with the assistance of a computer, and involved the use
of a so-called "keyframe" approach in which animators set appropriate
parameters, i.e., morph weights, at certain important times, i.e., "keyframes,"
in order to produce accurate and realistic lip synchronization and facial
expressions. McRO, 837 F.3d at 1305. Animators knew what phoneme a
character pronounced at a given time from a time-aligned phonetic
transcription (a "timed transcript"). Id. In accordance with the prior
technique, animators, using a computer, thus, manually determined the
appropriate morph weight sets for each keyframe based on the phoneme
timings in the timed transcript. Id. at 1306.
In McRO, the improvement in computer animation was realized by
using "rules, rather than artists [i.e., human animators], to set the morph
weights and transitions between phonemes" (id. at 1313), i.e., in McRO, the
invention used "rules to automatically set a keyframe at the correct point to
depict more realistic speech, achieving results similar to those previously
achieved manually by animators." Id. at 1307. The rules in McRO, thus,
allowed the computer to produce accurate and realistic synchronization in
animated characters that could only previously be produced by humans. We
are not persuaded that any comparable situation is presented here.
3 U.S. Patent No. 6,307,576.
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Appellants further argue that claim 1 is not directed to an abstract idea
because"[ c ]laim 1 calls for a system including first, second, and third
groups of clinical devices" and "further calls for a clinical decision support
system including one or more processors," i.e., specific physical components
(App. Br. 14; see also Reply Br. 5). Yet, as the court noted in In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016), "not every
claim that recites concrete, tangible components escapes the reach of the
abstract-idea inquiry." Id. at 611. Although claim 1 recites physical
components, it is clear from the Specification that the recited physical
components merely provide a generic environment in which to carry out the
abstract idea of "creating, updating, and routing clinical guidelines" (see,
e.g., Spec. 2-3 ( describing that an update message from a first group of one
or more clinical devices is received over a communications network, where
the update message includes patient data and/ or end user input and identifies
a CIG instance corresponding to a patient associated with the patient data;
that the CIG instance is updated using the patient data and/or end user input
and one or more CIG recommendations are determined based on the updated
CIG instance; and that the CIG recommendations are communicated to a
second group of one or more clinical devices over the communications
network.)). The Specification's indication that the claimed invention
provides a new and improved system and method for distributing clinical
guidelines to a point of care (Spec. 2), and that an advantage of the claimed
invention resides in its ability to provide clinical decision support ("CDS")
recommendations based on data collected from a plurality of devices (id.
at 3) and its ability to provide CDS recommendations across devices and
platforms (id.) also underscore that the claims are directed to the abstract
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idea identified by the Examiner, and not to an improvement in any physical
components.
Specifically addressing dependent claim 2, Appellants argue that
claim 2 is "not [ directed to] an abstract idea and also results in significantly
more" because "updat[ing] the CIG instance," as recited in claim 2 is "a
specific technical feature" and further improves on "allowing a patient to
move between clinical devices while maintaining a single updated CIG
instance" (App. Br. 15-16; see also Reply Br. 7). That argument is not
persuasive.
Although claim 2 recites that the claimed clinical decision support
system, i.e., one or more processors, "updates the CIG instance on the basis
of the electronic medical record," the claim recites a result without
meaningfully limiting how the clinical decision support system achieves that
result. For example, we find nothing in the Specification, nor do Appellants
point us to anything in the Specification, to indicate that any specialized
computer hardware or inventive computer components or programming is
required, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions.
Further referencing dependent claims 25, 27, and 28, Appellants quote
the language of claim 25, and summarily assert that "these features, when
considered in combination with others result[] in significantly more" (App.
Br. 16; see also Reply Br. 7). But, that assertion is not persuasive at least
because Appellants offer no persuasive argument or technical reasoning to
support their position. Moreover, as the Examiner observes, claims 25, 27,
and 28 merely recite that displays configured to display the CIG or CIG
instance may be of various types, e.g., a LCD display, LED display, plasma
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display, projection display, and touch screen display (Ans. 14). These are
generic computer components, and are not enough to make an otherwise
ineligible claim patent-eligible. See, e.g., DDR Holdings, 773 F.3d at 1256
("[ A ]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible. The
bare fact that a computer exists in the physical rather than purely conceptual
realm is beside the point." (internal citations and quotation marks omitted)).
We also do not agree with Appellants that there is any parallel
between the present claims and those at issue in DDR Holdings (App.
Br. 16-17; see also Reply Br. 7-9). There, the claims at issue were directed
to retaining website visitors, and in particular to a system that modified the
conventional web browsing experience by directing a user, who clicks an
advertisement on a host website, to a "store within a store" on the host
website, rather than directing the user to the advertiser's third-party website.
DDR Holdings, 773 F.3d at 1257-1258. The court determined that "the
claims address a business challenge (retaining website visitors) [that] is a
challenge particular to the Internet." Id. at 1257. The court also determined
that the invention was "necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks," and that the claimed invention did not simply use computers to
serve a conventional business purpose. Id. Rather, there was a change to the
routine, conventional functioning of Internet hyperlink protocol. Id.
Appellants argue that the present claims are not directed to an abstract
idea, and are analogous to the claims at issue in DDR Holdings, because the
claims do not merely recite some business practice from the pre-internet
world (App. Br. 16). And Appellants assert that the claims also address two
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additional problems arising in the realms of medical technology and
computer networks, i.e., (1) a large diversity of medical devices at the point
of care, and (2) clinical departments having their own requirements in
various clinical specialties) (id. at 17).
Appellants maintain that the claims, thus, recite features that solve
problems that are necessarily rooted in medical technology and computer
networking technology (id.). Yet, as described above, we are not persuaded
that storing a CIG instance, electronically, i.e., on a centralized clinical
decision support system, so different remote devices can update the patient
data to the centralized system and receive updated patient data transmitted
from the centralized system amounts to an improvement in medical
technology and computer networks where, as here, there is no indication that
the operations recited in claim 1, for example, require any specialized
computer hardware or other inventive computer components, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform the
claimed method steps.
As for clinical departments having their own requirements in various
clinical specialties, we agree with the Examiner that this appears to refer to
localizing/customizing clinical guidelines for particular departments
(Ans. 15), which we are not persuaded is a challenge particular to computer
networks or one necessarily rooted in computer technology.
Turning to step two of the Mayo/Alice framework, Appellants argue
that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because "[t]aken as a whole, the claims include
limitations that result in significantly more than any alleged abstract idea"
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(App. Br. 17). Appellants assert that independent claims 1, 3, and 13
provide a solution to problems that are specific to medical equipment
technology and computer networking technology by "generating a computer
interpretable guideline (CIG) from the CRG, wherein the CRG represents
guidelines at a local level, and wherein the CIG instance is derived from the
CIG" (id.). But this limitation is part of the abstract idea itself, i.e.,
"creating, updating, and routing clinical guidelines," it is not an additional
limitation to be considered in determining whether the claims include
elements or a combination of elements that amount to significantly more
than the judicial exception. See Berkheimer v. HP, Inc., 890 F.3d 1369,
1374 (Fed. Cir. 2018) (Moore, J., concurring) ("It is clear from Mayo that
the 'inventive concept' cannot be the abstract idea itself, and Berkheimer . ..
leave[s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged 'inventive concept' is the abstract
idea."); see also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018) ("Our precedent has consistently employed this same
approach. If a claim's only 'inventive concept' is the application of an
abstract idea using conventional and well-understood techniques, the claim
has not been transformed into a patent-eligible application of an abstract
idea.").
Finally, we are not persuaded of Examiner error by Appellants'
argument that the claims do not preempt the field of executing computer
interpretable guidelines (App. Br. 18-19; see also Reply Br. 10-11). There
is no dispute that the Supreme Court has described "the concern that drives
[the exclusion of abstract ideas from patent-eligible subject matter] as one of
pre-emption." Alice Corp., 134 S. Ct. at 2354. But characterizing
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preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. "The
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 Corp., 134 S. Ct. at 2354). Although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id.
Obviousness
Independent Claim 1 and Dependent Claims 2, 21, 25, and 30-32
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because DeVerter,
on which the Examiner relies, does not disclose or suggest "receiv[ing] a
computer represented guideline (CRG) from a remote guideline publisher
and/or business entity, wherein the CRG includes abstraction based on
usage" and "generat[ing] a CIG from the CRG, wherein the CRG represents
guidelines at a localized level, and wherein the CIG instance is derived from
the CIG," as recited in claim 1 (App. Br. 19-21).
De V erter is directed to computerized methods and systems for
permitting clinicians and other healthcare providers to designate
performance locations for clinical orders having one or more associated
phases (DeVerter Abstract). DeVerter discloses that generally, a healthcare
plan having multiple phases that are not all to be performed at the same
location cannot be ordered by placing a single clinical order (id. ,r 8). This is
because the order catalog options made available to the ordering clinician
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are limited to those plans that can be performed in their entirety at a single
location, i.e., the location of the chart encounter (id.). Thus, healthcare plans
that include multiple phases must be ordered as separate orders rather than
as a single unit if at least two of the phases are to be performed at different
locations (id.).
De Verter discloses, with reference to Figure 8, an exemplary user
interface for placing a clinical order (id. ,r 49). A user may specify the
desired location at which the clinical order is to be performed (id. ,r 54) and,
based on the location designation, content from the plan catalog, i.e.,
available plans, are displayed to the user for selection (id. ,r 56). De Verter
discloses that a location may be specified only for the clinical order and then
applied to each of the phases of the clinical order without further designation
(id. ,r 75). Alternatively, location designations may be made on a phase-
level if all phases of the clinical order are not to be performed at the same
location (id., see also Fig. 5).
In rejecting claim 1 under§ 103(a), the Examiner cites paragraph 56
and Figure 8 of De Verter as disclosing the argued limitation (Final Act. 8).
We, however, agree with Appellants that there is nothing in that portion of
DeVerter that discloses or suggests "generat[ing] a CIG from the CRG,
wherein the CRG represents guidelines at a localized level, and wherein the
CIG instance is derived from the CIG," as recited in claim 1 (App. Br. 20).
As Appellants observe, a guideline ( e.g., a recommendation for caring for a
patient) is different than simply showing which phases of a healthcare plan
are available at which locations (id.).
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
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also do not sustain the Examiner's rejection of dependent claims 2, 21, 25,
and 30-32. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("dependent claims are nonobvious if the independent claims from which
they depend are nonobvious").
Independent Claims 3, 19, and 20 and Dependent Claims 4-7, 10, 23, and
24
Independent claim 3 (and, therefore, independent claims 19 and 20)
includes language substantially similar to the language of claim 1, and
stands rejected based on the same rationale applied with respect to claim 1
(Final Act. 8-9). Therefore, we do not sustain the Examiner's rejection
under 35 U.S.C. § 103(a) of independent claims 3, 19 and 20, and claims 4--
7, 10, 23, and 24, which depend from claim 3, for the same reasons set forth
above with respect to claim 1.
Dependent Claims 9, 11, 15, 27, 33, and 34
Each of claims 9, 11, 15, 27, 33, and 34 ultimately depends from one
of independent claims 1 and 3. The rejection of these dependent claims does
not cure the deficiency in the rejection of independent claims 1 and 3.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of dependent claims 9, 11, 15, 27, 33, and 34 for the same reasons
set forth above with respect to independent claims 1 and 3.
Independent Claim 13 and Dependent Claim 2 8
Independent claim 13 includes language substantially similar to the
language of claim 1, and stands rejected based on the same rationale,
regarding De Verter, applied with respect to claim 1 (Final Act. 16).
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
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§ 103 (a) of independent claim 13, and claim 2 8, which depends therefrom,
for the same reasons set forth above with respect to claim 1.
DECISION
The Examiner's rejection of claims 19 and 20 under 35 U.S.C. § 112,
fourth paragraph, is reversed.
The Examiner's rejection of claims 1-7, 9-11, 13, 15, 19-21, 23-25,
27, 28, and 30-34 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 1-7, 9-11, 13, 15, 19-21, 23-25,
27, 28, and 30-34 under 35 U.S.C. § 103(a) are reversed.
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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