Ex Parte Farooq et al

Patent Trial and Appeal Board

Sep 24, 2018

13228497 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/228,497 09/09/2011
46169 7590 09/26/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Faisal Farooq
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.224514 7618
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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 FAISAL F AROOQ, ROMER E. ROSALES, SHIPENG YU,
BALAJI KRISHNAPURAM, and BHARAT R. RAO
Appeal2017-004865
Application 13/228,497
Technology Center 3600
Before JEAN R. HOMERE, ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-25, which constitute all claims pending in this application. 1 Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Center Innovation, Inc. Br.
3.
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Application 13/228,497
Introduction
According to Appellants, the claimed subject matter relates to
managing a treatment plan for a patient in a health care facility so as to
provide optimal and cost-effective care to the patient within a designated
timeline. Spec. ,r 6. In particular, the system determines the severity of the
patient's condition as indicated by the patient's diagnosis from clinical data
so as to assign the patient to a corresponding diagnosis-related group as well
as to provide timely care to the patient. Id. ,r 8. Upon gathering clinical data
for the patient at the healthcare facility, a processor is used to establish a
workflow including tasks and a timeline for care of the patient as a function
of the clinical data and cost factor. The processor subsequently updates the
workflow as the clinical data and cost change. Id.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method for computer-based patient management for
healthcare, the method comprising:
gathering, with a processor, first clinical data for a patient of a
healthcare facility;
generating with the processor selecting from a library of
workflows as a function of a machine trained classifier, a workflow
for care of the patient as a function of the first clinical data and a cost
factor, the cost factor being a variable used by the processor for
establishing with severity as another variable, the variable and other
variable being relatively weighted by the processor for the
establishing of the workflow from the library of workflows, wherein a
weighted value of the variable is a threshold amount different from
the norm or mean of the variable, the workflow being for multiple
actions by different entities of the healthcare facility and including a
timeline for the actions, wherein the timeline is a schedule of the
multiple actions by different entities of a healthcare facility, the
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Application 13/228,497
selected workflow being used for the patient while at the healthcare
facility;
gathering, with the processor, second clinical data after
establishing and as part of monitoring, by the processor, the
performance of the workflow for the care of the patient, wherein the
performance is determined based on a rate of timeline compliance;
based on new data acquired that indicates different values for
variables, identifying that the workflow for care of the patient needs to
be replaced by a different workflow;
replacing by the processor, the workflow for the care of the
patient with the different workflow for the care of the patient selected
from the library of workflows, the replacing being a function of the
first and second clinical data and the cost factor, the cost factor being
a variable used by the processor for the replacing the replacing
occurring while the patient is at the healthcare facility, the different
workflow being used for the patient while the patient is at the
healthcare facility and having different actions than the multiple
actions of the earlier established workflow being replaced; and
based on adherence to action items of the different workflow,
generating, by the processor, at least one alert for at least one of the
multiple actions, the alert generated as a function of the timeline and
as a display warning while preventing entry of other information when
a combination of factors selected by a medical entity trigger an alert,
the at least one alert being via text, email, voice mail, voice response,
or network notification to a device and indicating, by the processor,
the at least one of the multiple actions to be performed in the alert.
Rejection on Appeal
Claims 1-25 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2--4.
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 3-27. 2 Appellants argue the Examiner erred in
2 Rather than reiterate the arguments of Appellants and the Examiner's
findings/conclusions, we refer to the Appeal Brief (filed March 30, 2016),
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concluding that claims 1-25 are directed to patent-ineligible subject matter.
Id. at 8-26.
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. 3 In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention (i.e., process,
machine, manufacture, and composition of matter). Id. ( citations omitted)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
75-79 (2012)) ("Mayo"). In the second step, we "consider the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. (citing Mayo, 566 U.S. at 79, 78). In other
words, the second step is to "search for an 'inventive concept'-i.e., 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."' Id. ( citing Mayo, 566 U.S. at 73).
Appellants argue that because the Examiner failed to provide any
reasoning to support that claim 1 is directed to an abstract idea similar to
"using categories to organize, store and transmit information, compares new
and stored information and uses rules to identify options," the Examiner has
and the Answer (mailed October 26, 2016) ("Ans.") for the respective
details. We have considered in this Decision only those arguments
Appellants actually raised in the Brief. Any other arguments Appellants
could have made but chose not to make in the Brief are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
3 Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 124 S. Ct. 2347, 2354 (2014).
4
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not established a prima facie case of patent ineligibility. Br. 9 ( citing Ex
parte Poisson4). Likewise, Appellants submit that the Examiner's reliance
upon SmartGene5 is conclusory. Id. at 10. This argument is not persuasive.
As an initial matter, we note Ex parte Poisson cited by Appellants is
not a precedential decision, and it is thus not binding upon us. Further, we
do not agree with Appellants that the Examiner has not established a prima
facie case of patent ineligibility. In particular, the Examiner asserts that the
claim is directed to the concept of gathering patient's clinical data from
different sources so as to organize a workflow for patient care as a function
of timeline, cost factor, and severity. Ans. 6. The Examiner also asserts that
the claimed concept of using categories for organizing, storing, and
transmitting information has been held as being directed to an abstract idea.
Id. ( citing Cyberfone6). Id. Additionally, the Examiner asserts the claim is
likewise directed to the concept of identifying and replacing workflow, as
well as using a machine trained classifier. Id. According to the Examiner,
such a concept of comparing new and stored information using rules to
identify options has likewise been held as being directed to an abstract idea.
Id. (citing SmartGene). In our view, the afore-cited explanation provided by
the Examiner, including a comparison of the claim language with similar
concepts in the cited authorities, suffices to establish a prima facie case of
patent ineligibility under the first step of the Mayo analysis.
4 Ex parte Renald Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015).
5 SmartGene, Inc. v. Advanced Biological Laboratories SA, 555 F. App'x
950 (Fed. Cir. 2014).
6 Cyberfone Systems, LLC. v. CNN Interactive Group, Inc., 558 Fed. Appx.
988 (Fed. Cir. 2014).
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Appellants argue the Examiner's characterization of the claims as
being directed to the abstract idea of "establishing [a] workflow for patient
care as [a] function of cost factor and severity through multiple actions with
[a] time line, identifying and replacing [the] workflow for care of the patient
with different workflow selected from the library of workflow[ s ]" is an
overbroad generalization of the express claim language and disregards
nearly all the express language in independent claim 1. Br. 12. Instead,
Appellants argue "independent claim 1, on its face, is not directed to an
abstract idea because the claim does not constitute that which is necessary to
cover the abstract idea, but rather, independent claim 1 leaves room for
others to operate with regard to the alleged abstract idea." Id. at 13.
This argument is not persuasive. We do not agree with Appellants
that the Examiner's characterization of the claim language is an overbroad
generalization of the claim. The summary of the claim language provided
by the Examiner is consistent with Appellants' summary of the claimed
invention as set forth at page 3 of the Appeal Brief, and paragraphs 6
through 11 of the Specification. Although the Examiner's summary does
not recite all the claim limitations, we would not reasonably expect a
summary of the claim language to recite every single claim limitation. We
are thus satisfied that the Examiner's characterization of the claim language
sufficiently and reasonably captures the essence of Appellants' claimed
subject matter. 7 Furthermore, Appellants' arguments asserting that the
7 Considerations for determining whether a claim with additional elements
amounts to "significantly more" than the judicial exception itself include
improvements to another technology or technical field (Alice Corp., 134 S.
Ct. at 2359---60 (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981);
Mayo, 566 U.S. at 79); adding a specific limitation other than what is well-
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claims do not block others from using the abstraction do not persuade us that
the claims are directed to patent eligible material. Pre-emption is not a
separate test.
To be clear, the proper focus is not preemption per se, for
some measure of preemption is intrinsic in the statutory right
granted with every patent to exclude competitors, for a limited
time, from practicing the claimed invention. See 35 U.S.C.
§ 154. Rather, the animating concern is that claims should not
be coextensive with a natural law, natural phenomenon, or
abstract idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add "significantly more" to the basic principle, with the result
that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013); see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) ("[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. "Where a patent's claims are deemed only to disclose patent
understood, routine, and conventional in the field, or adding unconventional
steps that confine the claim to a particular useful application (Mayo, 566
U.S. at 82, 87); or other meaningful limitations beyond generally linking the
use of the judicial exception to a particular technological environment (Alice
Corp., 134 S. Ct. at 2360). See, e.g., 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 efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.").
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ineligible subject matter under the Mayo framework, ... preemption
concerns are fully addressed and made moot." Ariosa Diagnostics, 788 F.3d
at 1379.
Appellants argue that the claim as a whole is necessarily rooted in
computer technology so as to "provide a solution that includes automated
case management that produces improved care plans for patients and
provides improved financial outcomes for care providers." Br. 19 (citing
DDR Holdings 8). In particular, Appellants argue that the claimed processor
selecting from a library of workflows "as a function of a machine trained
classifier" is leveraged as data mining. Id. at 20-24 (citing Spec. ,r,r 19, 26-
30). This argument is not persuasive.
We agree with the Examiner that the claimed subject matter is not
necessarily rooted in computer technology. Ans. 8. As correctly noted by
the Examiner, Appellants' Specification recites a general purpose computer
for performing the functions recited in claim 1. Id. (citing Spec. ,r,r 126,
128, 137). As further correctly noted by the Examiner, the functions
performed by the claimed "machine trained classifier" are analogous to
those conventionally performed by a human with a pencil and paper. Id.
( citing CyberSource9); see also Spec. ,r 4. Therefore, we agree with the
Examiner that although the claims recite a solution for a computing system,
they are unlike the claims found patent eligible in DDR Holdings because
they are directed to nothing more than the performance of an idea from the
pre-Internet era of developing and maintaining a care plan for a patient in a
8 DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014).
9 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed.
Cir. 2011) (quoting Parker v. Flook, 437 U.S. 584, 586 (1978).
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Application 13/228,497
healthcare facility, and not to any technological improvement in the
computer itself. Id.
Appellants argue that the Examiner's finding "additional elements of
the claims are 'generic computer structure that serves to perform generic
computer functions' that 'are well-understood, routine and conventional
activities previously known to the pertinent industry"' is antithetical to the
Examiner's admission that the claims are otherwise allowable. Br. 25.
Accordingly, Appellants submit that the claims amount to significantly more
than well-understood and routine functions. Id. This argument is not
persuasive.
We agree with the Examiner that the cited claim steps, as a whole, do
not amount to significantly more than the asserted abstract idea. Ans. 10. In
particular, we agree with the Examiner's finding of the following:
"[E]stablishing a workflow of patient care related to a function
Id.
of timeline, cost factor, severity, replacing workflow of patient
care from different workflow, generating an alert as function of
timeline; monitoring task across multiple medical professional
as function of timeline; establishing third care for the patient
after discharge ... " are well understood, routine conventional
data-gathering activities. See Alice, 134 S. Ct. at 2359; Mayo,
132 S. Ct. at 1298. In Mayo, simply appending conventional
steps, specified at high level of generality, was not enough to
supply an "inventive concept". See Mayo 132 S. Ct. at 1300,
1397, 1294.
Appellants are reminded that "the 'inventive concept' [under step two
of the Mayol Alice test] 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
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idea." Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore,
J., concurring). "It has been clear since Alice that a claimed invention's use
of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept." BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018). We therefore agree with the Examiner that the computer
functions recited in the claims were in fact generic, and are met by numerous
case law establishing that using a generic computer to expedite and automate
processes traditionally performed manually or that are otherwise abstract is a
well-understood, routine, and conventional use of such computers. Ans. 11,
see, e.g., Intellectual Ventures I LLC v. Symantec Cm7J., 838 F.3d 1307,
1321 (Fed. Cir. 2016) (utilizing an intermediary computer to forward
information); Bancorp Servs., LLC v. Sun Life Assurance Co. 1 687 F.3d
1266, 1278 (Fed. Cir. 2012) (wrhe computer required by some ofBancorp's
claims is employed only for its most basic function, the performance of
repetitive caku1ations1 and as such does not impose meaningful limits on the
scope of those claims.~} Appellants are further reminded that "relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible." OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice Corp.,
134 S. Ct. at 2359 ("use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions" is not an
inventive concept)). Therefore, the functions recited in claim 1 do not add
any meaningful limitations beyond generally linking the abstract idea to the
particular technological environment. Id. 10
1° Considerations for determining whether a claim with additional elements
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Accordingly, we are not persuaded of error in the Examiner's
conclusion that claim 1 is directed to patent-ineligible subject matter.
Regarding claims 2-25, Appellants reiterate substantially the same
patent eligibility arguments of claim 1 discussed above. Br. 5-26. We are
similarly not persuaded of error in the Examiner's conclusion that claims 2-
25 are directed to patent-ineligible subject matter.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
1-25, as set forth above.
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
amounts to "significantly more" than the judicial exception itself include
improvements to another technology or technical field (Alice Corp., 134 S.
Ct. at 2359---60 ( citing Diehr, 450 U.S. at 177-78)); adding a specific
limitation other than what is well-understood, routine, and conventional in
the field, or adding unconventional steps that confine the claim to a
particular useful application (Mayo, 566 U.S. at 82, 87); or other meaningful
limitations beyond generally linking the use of the judicial exception to a
particular technological environment (Alice Corp., 134 S. Ct. at 2360). See,
e.g., Intellectual Ventures I LLC, 792 F.3d at 1370 ("[M]erely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.").
11