Ex Parte HENDERSON et al

Patent Trial and Appeal Board

Aug 27, 2018

12498037 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/498,037 07/06/2009
46169 7590 08/29/2018
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
TODD R. HENDERSON
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.145968 7673
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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 TODD R. HENDERSON, STEVEN G. KIRSCH,
KATY S. ALLEN, and ZACHARY R. FIRL
Appeal2017-005146
Application 12/498,037 1
Technology Center 3600
Before CARL W. WHITEHEAD JR., IRVINE. BRANCH, and
NABEEL U. KHAN, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16 and 18-20, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "dispensing medications from a medication
storage and dispensing apparatus." Spec., Abstract.
Illustrative Claim
Claim 1 is illustrative and reproduced below:
1 According to Appellants, the real party in interest is Cemer Innovation,
Inc. Br. 3.
Appeal2017-005146
Application 12/498,037
1. One or more non-transitory computer-storage media
storing computer-useable instructions for causing a computing
device to perform a method of dispensing medications from a
medication storage and dispensing apparatus, the method
compnsmg:
accessing medication order information associated with a
patient, the medication order information including one or more
verified medication orders and one or more unverified
medication orders;
providing the medication order information for display on
a single user interface that allows for selection of a medication
order from the medication order information for dispensing a
corresponding medication from the medication storage and
dispensing apparatus, wherein each of the one or more unverified
medication orders is displayed using at least one visual
characteristic that differs from display of each of the one or more
verified medication orders to identify the one or more verified
medication orders as having a verified status and the one or more
unverified medication orders as having an unverified status;
receiving a selection of a first unverified medication order
from the one or more unverified medication orders; and
causing the medication storage and dispensing apparatus
to dispense a first medication associated with the first unverified
medication order.
Rejection2
Claims 1-16 and 18-20 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly more. Ans.
2--4.
2 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
Examiner's Answer mailed December 8, 2016 ("Ans.").
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Application 12/498,037
ANALYSIS
Section 101 defines patent-eligible subject matter as "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
"'long held that this provision contains an important implicit exception[:]
Laws of nature, natural phenomena, and abstract ideas are not patentable."'
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013) (internal brackets omitted) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)).
To distinguish "patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications of those
concepts," the Supreme Court has set up an analytical framework. Alice
Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo, 566
U.S. at 71-73). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an "inventive concept" sufficient to "transform the nature of
the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355
( quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
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Application 12/498,037
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that in itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Claim 1, which is representative of the claims before us, is directed to
accessing information, displaying it, receiving a selection from within the
displayed information, and taking action (i.e., causing a machine to
dispense) in accordance with the selection. The Examiner finds that the
claims are directed to non-statutory subject matter, the judicial exception of
an abstract idea, the abstract idea being "using categories to organize, store
and transmit information." Ans. 2-10. We agree and adopt the Examiner's
findings as our own.
Appellants raise several arguments challenging the Examiner's
conclusion that the claims are directed to an abstract idea. See Br. 7-12.
For instance, Appellants argue the Examiner has analyzed the claims at too
high a level of abstraction and that the claims are directed to the problem of
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Application 12/498,037
"how to safely control the dispensing of medications from a medication
storage and dispensing apparatus." Br. 7-8. We disagree because, once the
various categories of information are identified in the claim (e.g., verified
and unverified medication orders), the claim merely amounts to processing
information in accordance with the categories and selections thereof.
Accordingly we agree with the Examiner at step one of the Alice
analysis.
Step Two: Whether Additional Elements Transform the Abstract Idea
Into Patent-Eligible Subject Matter
The Examiner also finds that the claim limitations, viewed as a whole,
"do not seem to provide anything significantly more than applying the
abstract idea to a generic computer, such as being an improvement to the
functioning of a computer itself, or offer meaningful limitations beyond
generally linking the use of the judicial exception to a particular
technological environment." Ans. 4. We agree and adopt the Examiner's
conclusion as our own.
Appellants raise several arguments contending that the claims amount
to significantly more than the abstract idea. Br. 12-20. Appellants do not
dispute that their claimed invention encompasses generic computer
technology. Rather, Appellants contend, for example, that "the claims
include features that address and provide solutions to the technical problem
of controlling dispensing of medications from a medication storage and
dispensing apparatus." Id. at 16. Appellants further contend that "the claims
are directed to a specific combination of elements that facilitate the safe
dispensing of medications from a medication dispensing apparatus that is not
well-understood, routine, or conventional." Id. at 18.
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Application 12/498,037
For the reasons stated by the Examiner (Ans. 10-16) we are not
persuaded by Appellants' arguments. In particular, we see no improvement
in the functioning of the generic computer used to implement the recited
methods, which, as the Examiner finds, "generally link[] the use of the
judicial exception to a particular technological environment." Id. at 15.
In view of the foregoing, we are not persuaded the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter, or in rejecting claims 2-16 and 18-20 on the same
basis.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-16 and 18-20.
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.
§ 4I.50(f).
AFFIRMED
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