Ex Parte Fung et al

Patent Trial and Appeal Board

Feb 7, 2019

14039125 (P.T.A.B. Feb. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/039,125 09/27/2013
46169 7590 02/11/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Glenn Fung
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.224525 3349
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/11/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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 GLENN FUNG, BALAJI KRISHNAPURAM,
FAISAL F AROOQ, SHIPENG YU, MARK OVERHANGE,
JOHN HALEY, JAN DEHAAN, and VIKRAM ANAND 1
Appeal 2017-011830
Application 14/039,125
Technology Center 3600
Before CAROLYN D. THOMAS, JON M. JURGOV AN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 4-8, 10, 11, and 14-22, all the
pending claims in the present application. Claims 2, 3, 9, 12, and 13 are
canceled (see Claims Appendix). We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants name Cemer Innovation, Inc. as the real party in interest
(App. Br. 3).
Appeal 2017-011830
Application 14/039,125
The present invention relates generally to "automatic medical
documentation adaption for predicted or probable patient medical
conditions" (see Spec. ,i 2).
Claim 1 is illustrative:
1. A computerized method carried out by at least one
server having at least one processor for adaptive medical data
collection, the method comprising:
triggering a probabilistic analysis of electronic
records in response to a first set of information input into an
Electronic Medical Record (EMR) of a patient;
determining, with the at least one processor, a first
potential condition for the patient based on the probabilistic
analysis;
identifying, with the at least one processor, a
second set of information indicated as relevant to the first
potential condition of the patient;
generating, with the at least one processor, a first
request for the second set of information by identifying an
established collection of information associated with the first
potential condition of the patient and providing the first request
for the second set of information in a preformatted medical
form established for the collection of the second set of
information, wherein the preformatted medical form is
populated using the established collection of information
associated with the first potential condition of the patient, and
wherein the preformatted medical form is automatically adapted
based on the first set of information input into the EMR;
receiving at least a portion of the second set of
information;
repeating the triggering of the probabilistic
analysis;
re-performing, with the at least one processor, the
probabilistic analysis using the second set of information to
identify a second potential condition and a third set of
information relevant to the second potential condition of the
patient; and
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Application 14/039,125
generating, with the at least one processor, a
second request for the third set of information wherein the
preformatted medical form is automatically adapted based on
the second set of information received subsequent to the first
request.
Appellants appeal the following rejection:
Claims 1, 4-8, 10, 11, and 14-22 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter
(Final Act. 3-5).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Rejection under§ 1 OJ
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with the framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
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Application 14/039,125
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk."). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63,
67 (1972)).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 22l(intemal quotation marks
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely require[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we first look
to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
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human interactions such as a fundamental economic practice, or
mental processes); and
(2) 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, do we then 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.
With respect to independent method claim 1, and similarly, system
claim 11 and computer readable medium claim 18, the Examiner determines
that the claims are at least directed to the abstract idea of "comparing new
(information identified) and stored information (medical records, first
probabilistic analysis) and using rules to identify options (requesting
additional information in a pre-formatted automatically adapted
prepopulated form)" (Final Act. 4; see also claim 1 ), which we conclude are
mental processes (i.e., see claim 1 ).
Similarly, in SmartGene, Inc. v. Advanced Biological Laboratories,
SA, the Federal Circuit concluded that claims reciting methods and systems
of selecting a therapeutic treatment regimen for a patient with a known
disease were directed to an abstract idea. SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014) (nonprecedential).
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The court concluded the claims at issue were abstract because the claims did
"no more than call on a 'computing device,' with basic functionality for
comparing stored and input data rules, to do what doctors do routinely"
SmartGene, 555 F. App'x at 954. The court explained that "every [claimed]
step is a familiar part of the conscious process that doctors can and do
perform in their heads." SmartGene, 555 F. App'x at 955.
Thus, we agree with the Examiner that method claim 1 is at least
directed to "mental processes" that can be performed in the human mind.
See also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011) ( noting, in the context of the claims in that case, that "a
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
The Examiner also determines that the claims are directed to "using
categories to organize, store[,] and transmit information (labeling data with
categories to identify additional data label categories to generate, request and
transmit)" (Final Act. 4), which we conclude are certain methods of
organizing human activity, i.e., managing interactions between patients and
a medical personnel when filling out forms.
Similarly, in Cyberfone, the Court held that "using categories to
organize, store, and transmit information is well-established," and "the well-
known concept of categorical data storage, i.e., the idea of collecting
information in classified form, then separating and transmitting that
information according to its classification, is an abstract idea that is not
patent-eligible." Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F.
App'x. 988, 992 (Fed. Cir. 2014) (emphasis omitted).
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We conclude that even if we agree with the Examiner that claim 1
recites a judicial exception, i.e., either a mental process and/or certain
methods of organizing human activity ( and do not integrate that exception
into a practical application), Appellants raise a persuasive issue regarding
whether claim 1 adds additional limitations beyond the judicial exception
that are not "well-understood, routine, and conventional" in the field (see
MPEP § 2106.05(d)).
Specifically, Appellants contend that claim 1 includes the following
steps: generating ... the first request for the second set of information in a
preformatted medical form ... associated with the first potential condition
of the patient (App. Br. 31-32) to identify a second potential condition and
that "[t]hese process steps allow for the system to request information from
the patient that is relevant to a possible clinical problem which the user did
not anticipate ... these steps do not represent a routine and conventional
mental process" (id. at 32). Appellants further contend that "[t]he Office has
presented no evidence supporting the assertion that these steps are routine
and conventional" (id.).
In response, the Examiner determines that "the claims do not include
additional limitations that are sufficient to amount to significantly more than
the judicial exception because the claims recite processes that are routine
and well-understood in the art of healthcare communication systems" (Ans.
7). The Examiner further determines that the additional limitations amount
to no more than a recitation of a "generic computer structure" (id. at 8, citing
Spec. ,-J,-J 54-57). However, although the Examiner points out the generic
components, i.e., processor, memory, etc. (see Ans. 8), the Examiner fails to
specifically address the above-noted limitations highlighted by Appellants.
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Additionally, regarding Appellants' request for "evidence supporting the
assertion" of being routine and conventional, the Examiner notes that
"documentary evidence is not required" (see Ans. 17).
However, a factual determination is required. See Berkheimer v. HP
Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.").
On the record before us, the Examiner has not provided any factual
finding (see Ans. 16-18; see also Final Act. 3-5) that the specifically
claimed manner of providing the first request ... in a preformatted medical
form ... associated with the first potential condition ... to identify a second
potential condition is well-understood, routine, or conventional, mainly
because the Examiner wrongly believes none is required. Thus, under Alice
Step Two and Memorandum (3), the Examiner has not properly consider the
elements of the claims, both individually and "as an ordered combination,"
to determine whether the additional elements transform the Examiner's
asserted abstract idea into a patent-eligible application.
For at least the above reasons, the Examiner's rejection of claims 1,
4-8, 10, 11, and 14-22 under 35 U.S.C. § 101 is reversed.
DECISION
We reverse the Examiner's§ 101 rejection.
REVERSED
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