Ex Parte Gannon et al

Patent Trial and Appeal Board

Nov 2, 2017

12890326 (P.T.A.B. Nov. 2, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/890,326 09/24/2010 MARY GANNON CRNI.156533 8114
46169 7590 11/06/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
NUNEZ, JORDANY
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
11/06/2017 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 MARY GANNON, AMANDA BUCKLEY,
HANNAH FIECHTNER, and STEPHANIE L. ROGERS1
Appeal 2016-007522
Application 12/890,326
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JON M. JURGOVAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4—12, 14—18, and 20. Br. I.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We Affirm-In-Part.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
newly reject claims 1, 10, and 18 under 35 U.S.C. § 101.
1 Cemer Innovation, Inc. is listed as the real party in interest. Br. 3.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Final Action mailed June 30, 2015 (“Final Act.”); the Appeal
Brief filed December 21, 2015 (“Br.”); and the Examiner’s Answer mailed
May 11, 2016 (“Ans.”).
Appeal 2016-007522
Application 12/890,326
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
Methods, computer systems and computer readable media
for receiving data from infusion pumps in a healthcare setting
and displaying the data on a user device are provided.
Centralized clinician views are provided to enable clinician to
provide additional information for infusion data within selected
time ranges. Embodiments provide near real-time graphical
displays of infusion data to clinicians on separate user devices.
In addition, near real-time graphical displays of patient
physiologic data is displayed simultaneously to a clinician along
with the infusion data.
Abstract.
Independent claims 1,10, and 18, reproduced below, are illustrative of
the claimed subject matter on appeal:
1. One or more non-transitory computer storage media
having computer-executable instructions embodied thereon, that
when executed, perform a method for indicating an action is
required for an item associated with infusion documentation, the
method comprising:
receiving a continuous data feed from at least one device
operable to assist in treating a patient;
receiving a selection of a time range having multiple items
from a user interface containing data from the continuous data
feed;
displaying more than one item within the selected time
range that requires additional information from a clinician;
identifying the additional information required; and
displaying an action box for entering the additional
information, the action box listing each item that requires
additional information and indicating what additional
information is required, wherein the action box is configured to
receive input associated with the additional information for each
item.
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Application 12/890,326
10. Non-transitory computer storage media having computer-
executable instructions embodied thereon that, when executed by
a computing device, causes the computing device to produce a
graphical user interface (GUI), said GUI comprising:
a first display area configured for displaying data from a
continuous data feed from at least one additional device;
a second display area configured for receiving a selection
of a time range associated with the data;
a third display area configured for displaying items that
require additional information from a clinician within the
selected time range;
a fourth display area configured for displaying an action
box for entering additional information for each item, the action
box listing each item that requires additional information and
indicating what additional information is required,
wherein the action box is configured to receive the
additional information for each item; and
a fifth display area configured for indicating to a clinician
if additional information is required for a single cell.
18. A computerized system for entering additional
information associated with infusion documentation, the system
comprising:
at least one medical device comprising computer readable
media transmitting data to a server comprising at least one
component;
a device information receiving component for receiving a
continuous stream of data from the at least one medical device
associated with a patient;
a time range selection component for receiving a selection
of a time range associated with the data;
an analyzing component for determining if more than one
item of data requires additional information within the selected
time range;
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Application 12/890,326
an action component for displaying an action box for
entering additional information associated with the more than
one item, the action box listing each item that requires additional
information and indicating what additional information is
required, wherein the action box is configured to receive input
associated with the additional information for each item; and
a user device communication component for displaying
the items requiring additional information.
Claims 18 and 20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2.
Claims 1,18, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nessinger et al. (US 2008/0195422 Al;
published Aug. 14, 2008) and Ash et al. (US 2008/0004502 Al;
published Jan. 3, 2008). Final Act. 3—7.
Claims 4—12, 14—17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nessinger, Ash, and various combinations of
Henderson et al. (US 2008/0195422 ), Bello et al. (US 2005/0055242 Al,
published Mar. 10, 2005), Fiedler (US 5,592,945, issued Jan. 14, 19967),
Suwalski et al. (US 2007/0214014 Al, published Sept. 13, 2007), Radtke et
al. (US 2006/0036945 Al, published Feb. 16, 2006), Levy et al.
(US 2010/0042437 Al, published Feb. 18, 2010) and Manetta et al.
(US 2003/0200117 Al, published Oct. 23, 2003). Final Act. 7-16.
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).
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Application 12/890,326
THE § 101 REJECTION
Findings and Contentions
The Examiner finds that “[t]he ‘medical device comprising computer
readable media’ recited [in claim 18] is not necessarily a hardware device”
and the system, therefore, is claimed broadly enough to read on software per
se. Final Act. 2; see also id. at 17. The Examiner further explains in the
Examiner’s Answer that
both of Appellant’s quotes of Segen’s Medical Dictionary and
the FDA [set forth at pages 7—8 of the Appeal Brief] define the
phrase “medical device” as a contrivance intended for use in the
diagnosis. . . A contrivance may be reasonably interpreted as a
“clever plan”. Software, per se, may also be reasonably
interpreted as a clever plan. Therefore, per Appellant’s own
explanation of what the claimed “medical device” could be
reasonably interpreted as, the broadest reasonable interpretation
of the phrase “medical device” includes software, per se.
Ans. 4.
Appellants first argue that “even if claim 18 were directed to software,
the Office fails to show that claim 18 is directed to patent-ineligible subject
matter.” Br. 7. Appellants further argue that the term “medical device”
must be interpreted to include hardware. Id. at 7—8.
Principles of Law
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
In determining whether the claims set forth patent eligible subject
matter under 35U.S.C. § 101, we first must determine whether the claims at
issue are directed to laws of nature, natural phenomena, or abstract ideas.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). If so,
we then must consider whether the claims—both individually and as an
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Application 12/890,326
ordered combination—include an element that is sufficient to transform the
nature of the claim into a patent-eligible application. Id.; Alice Corp. Pty.
Ltd. v. CLS Bank Intern., 134 S.Ct. 2347, 2355 (2014).
In applying step two of the Alice analysis, we must
“determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract
idea into patentable subject matter. . . . We look to see whether
there are any “additional features” in the claims that constitute
an “inventive concept,” thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. .. . Those
“additional features” must be more than “well-understood,
routine, conventional activity.”
Intellectual Ventures ILLC v. Erie Indemnity Company, 850 F.3d 1315,
1328 (Fed. Cir. 2017) (internal citations omitted).
“[CJlaims [that] merely require generic computer implementation[]
fail to transform [an] abstract idea into a patent-eligible invention.” Id.
(citing Alice, 134 S.Ct. at 2357).
Analysis
We need not address the Examiner’s interpretation or Appellants’
arguments because answering the question, whether the claimed medical
device (or any of the other claimed components) is limited to hardware, is
not dispositive of whether the rejected claims are directed to non-patentable
subject matter. We instead address, then, the patent eligibility of
independent claims 1,10, and 18, as well as dependent claim 20, under a
different theory. Because the thrust of our reasoning differs from that of the
Examiner’s, we designate the rejection under 35 U.S.C. § 101 as constituting
a new ground pursuant to 37 C.F.R. § 41.50(b).
We first inquire whether the claims are directed to laws of nature,
natural phenomena, or abstract ideas. Ultramercial, 772 F.3d at 714. In the
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present case, claim 1 sets forth two steps of receiving data (“receiving a
continuous data feed” and “receiving a selection of a time range”), a step of
displaying and analyzing information (“displaying more than one item. . .
that requires additional information”), another step of analyzing data
(“identifying the additional information required”), and a step of requesting
the input of additional information (“displaying an action box for entering
the additional information”). As such, the steps of claim 1, in combination,
fundamentally are directed to computer automating the steps of gathering,
auditing, and updating medical records. See, e.g., Spec. ]Hf 19—21.
The concept of gathering, auditing, and updating records constitutes
an abstract idea, which is not patent eligible. “[Collecting information,
analyzing it, and displaying certain results of the collection and analysis”
constitute abstract ideas. Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350 at 1353—54 (Fed. Cir. 2016). A method that “describes a process
of organizing information through mathematical correlations and is not tied
to a specific structure or machine” constitutes an abstract idea. Digitech
Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 at
1350 (Fed. Cir. 2014).
The fact that claim 1 requires these steps be automated by using a
computer does not add significantly more to this abstract idea of gathering,
auditing, and updating records. Appellants’ Specification does not indicate
that the claim 1 ’s steps of gathering data, interpreting the data, or displaying
prompts for information in the action box require anything more than
conventional computer components be used for their conventional purposes.
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371—72
(Fed. Cir. 2011) (noting that method steps that can all be performed in the
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Application 12/890,326
human mind, or by a human using a pen and paper, constitute unpatentable
mental processes); see also Intellectual Ventures I, 850 F.3d at 1328
(repeating the Alice Court’s holding that claims merely requiring generic or
conventional computer implementation, fail to transform an abstract idea
into a patent-eligible invention); see also Preservation Wellness
Technologies, LLC. v. Allscripts Healthcare Solutions Inc., 2016 WL
2742379 (E.D. Tex. 2016) (finding claims to a system for maintaining
patient medical records that uses computer software and hardware in their
conventional manner to be directed to a patent ineligible abstract idea),
affirmed, 684 Fed.Appx. 970 (Fed. Cir. 2016) (Rule 36) (non-precedential).
Independent claims 10 and 18 set forth subject matter similar to that
of independent claim 1: Independent claim 10 recites a non-transitory
computer storage media that causes a computer to produce a graphical user
interface having display areas for performing generally the steps of claim 1.
Independent claim 18 recites a computer system that comprises at least one
medical device and various components that generally perform the method
of claim 1.
As such, we reject these independent claims as being directed to
patent ineligible subject matter for the same reason set forth above in
relation to claim 1.
The fact that a computer “necessarily existfs] in the physical,
rather than purely conceptual, realm” ... is beside the point.
There is no dispute [] that a computer is a tangible system (in
§ 101 terms, a “machine”), or that many computer-implemented
claims are formally addressed to patent-eligible subject matter.
But if that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant concept.
Such a result would make the determination of patent eligibility
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“depend simply on the draftsman’s art,” . . . thereby eviscerating
the rule that “‘[l]aws of nature, natural phenomena, and abstract
ideas are not patentable.’”
Alice, 134 S.Ct. at 2358—59 (internal citations omitted); see also
Preservation Wellness Technologies, LLC., (determining claims to a system
for maintaining patient medical records that uses computer software and
hardware in their conventional manner to be directed to a patent ineligible
abstract idea).
Dependent claim 20 reads as follows: “The system of claim 18,
wherein the user device communication component is operable to
distinguish between items that require additional information and items that
do not require additional information.” Claim 20, then, merely further
specifies which particular component performs the abstract step of analyzing
the gathered data. We therefore sustain the rejection of claim 20 for the
reasons set forth above in relation to the dependent claims.
THE § 103 REJECTIONS
Findings and Contentions
The Examiner finds that Nessinger generally teaches the limitations of
independent claim 1, but
Nessinger fails to specifically show: displaying more than one
item that requires additional information from a clinician;
identifying the additional information required; and displaying
an action box for entering the additional information: the action
box listing each item that requires additional information and
indicating what additional information is required, wherein the
action box is configured to receive input associated with the
additional information for each item.
Final Act. 3.
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The Examiner finds that Ash teaches these claim limitations
absent from Nessinger. Id. at 4 (citing Ash H 31, 46-48; Figs. 6B,
6C). Specifically, the Examiner clarifies that Ash’s inbox 608,
depicted in Fig. 6B, is interpreted as corresponding to the claimed
“action box.” Final Act. 18. The Examiner finds that motivation
existed to combine these teachings of Ash with the media as taught by
Nessinger. Final Act. 5.
Appellants argue that
Ash does not teach or suggest an action box (singular) that lists
each item requiring additional information, indicates what
additional information is required, and is configured to receive
input associated with the additional information for each item,
as is claimed by claims 1 and 18. Specifically, Ash does not
teach using a single action box that has all of these features, and
Ash[] does not teach using a single box to receive additional
information for each item that requires additional information,
rather than for a single item.
Br. 15.
Analysis
Appellants’ arguments are persuasive. As explained by Appellants,
“Ash provides an example of a doctor receiving a notification that an item is
due for a patient when viewing the patient’s electronic medical record.”
Br. 12 (citing Ash 146; Fig. 6A). “Upon placing the cursor over the
notification, a dialog provides information such as listing each due item.
After selecting the notification, the doctor is navigated to the doctor’s inbox,
which provides a list of the due items in a message summary area.” Id. at 13
(citing Ash || 46, 47; Fig. 6B). “The doctor must then open the message
associated with a single due item.” Id. at 14 (citing Ash 148). “[T]he
message may indicate that an action may be due and provide various buttons
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Application 12/890,326
corresponding to actions that doctor may take.” Id. (citing Ash 148;
Fig. 6C).
Accordingly, Ash teaches a notification box indicating
that items are due, a message viewing box that lists each message
associated with a due item, and individual messages that show
the action required for a particular due item. . . . The user must
navigate through a series of steps to determine what items are
due and require additional information and then to take action
associated with a single item.
Br. 15 (citing Ash || 46-48).
The Examiner does not explain how Ash teaches a single action box
that is configured to receive input associated with the additional information
for plural information items, as opposed to being configured merely to
receive input associated with a single information item. See Final Act. 17—
18; see also Ans. 5.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of independent claim 1, of independent claim 18, which recites similar
language, or of claim 18’s dependent claim 20. We likewise do not sustain
the obviousness rejections of claims 4—9, which depend from claim 1,
because the Examiner does not rely on any of the additionally cited
references to cure the deficiency of the obviousness rejection explained
above. See Final Act. 7—11.
Claims 10—12 and 14^17
With respect to remaining independent claim 10, the Examiner relies
on Ash for teaching the claimed action box, as explained above. Final
Act. 11—12 (finding that Ash teaches the claimed third, fourth, and fifth
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display areas). The Examiner further relies on Levy for teaching the claimed
fourth and fifth display areas. Id. at 12.
It is not completely clear why the Examiner additionally relied on
Levy for rejecting claim 10, but not for rejecting claims 1 and 18. But
whatever the reasoning may have been, the Examiner does not assert that
Levy discloses that a single action box is configured to receive additional
information for plural items. See id. at 12—13. That is, the Examiner does
not assert that Levy cures the deficiency noted above in relation to
independent claims 1 and 18.
Accordingly, we do not sustain the obviousness rejection of claims
10—12 over the combination of Nessinger, Ash, and Levy. We likewise do
not sustain the obviousness rejections of claims 14—17, which depend from
claim 10, because the Examiner does not rely on any of the additionally
cited references to cure the deficiency of the obviousness rejection of
claim 10 explained above. See final Act. 13—16.
DECISION
The Examiner’s decision rejecting claims 1, 4—12, 14—18, and 20 is
reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection under 35 U.S.C. § 101 for independent
claims 1,10, and 18.3
3 Although we decline to reject the dependent claims under 35 U.S.C. § 101
pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
emphasize that our decision does not mean that the remaining claims are
necessarily patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
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Rule 41.50(b) provides that “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Rule
41.50(b) also provides the following:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
37 C.F.R, $ 41.50(b)
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