Ex Parte HENDERSON et alDownload PDFPatent Trial and Appeal BoardAug 27, 201812498037 (P.T.A.B. Aug. 27, 2018) Copy Citation 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."). 2 Appeal2017-005146 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 3 Appeal2017-005146 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 4 Appeal2017-005146 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. 5 Appeal2017-005146 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 6 Copy with citationCopy as parenthetical citation