Ex Parte HERBST et al

Patent Trials and Appeals Board

Jan 24, 2019

13957627 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/957,627 08/02/2013
46169 7590 01/28/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Damon HERBST
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.189886 6591
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/28/2019 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 DAMON HERBST, CARLA LEIGHOW, and
DAVID A. ROBASKA
Appeal2018-000602
Application 13/957,627
Technology Center 3600
Before: MAHSHID D. SAADAT, BETH Z. SHAW, and
NORMAN H. BEAMER, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-000602
Application 13/957,627
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to prepopulating clinical events with image
based documentation. Claims App 'x.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. One or more computer storage devices having computer-
executable instructions embodied thereon, that when
executed, perform a method of prepopulating clinical events
with image based documentation, the method comprising:
receiving, by a medical information system, an image of
a patient and metadata associated with the image, the image
captured by an image capturing device communicatively
coupled with the medical information system;
extracting the metadata, the metadata comprising an
identification of the patient and clinical documentation
associated with the image;
creating a tag describing a body part associated with the
image, wherein the tag is selectable;
storing the image, the corresponding metadata, and the
tag in an electronic medical record for the patient, wherein the
electronic medical record for the patient is within the medical
information system and is identified based on the identification
of the patient;
embedding the tag, the image, and the corresponding
metadata at a location on a silhouette of a human body
corresponding to the body part described by the tag, wherein
the silhouette of the human body is a graphical representation
of the human body and is included in the electronic medical
record for the patient;
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Application 13/957,627
providing, via the electronic medical record, the
silhouette of the human body to a clinician device;
receiving, on the clinician device, a selection of the tag;
and
displaying the image and the associated clinical
documentation on the clinician device.
REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 101.
CONTENTIONS AND ANALYSIS
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. 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 that 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
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.").
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Appeal2018-000602
Application 13/957,627
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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
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Application 13/957,627
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 221 ( 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 requir[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. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance ("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
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 is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
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Application 13/957,627
( 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.
In this case, the claims do not recite any of the judicial exceptions.
Specifically, taking claim 1 as representative, under its broadest reasonable
interpretation, claim 1 does not cover performance in the mind but for the
recitation of generic computer components. In particular, the step of:
"embedding the tag, the image, and the corresponding metadata at a location
on a silhouette of a human body corresponding to the body part described by
the tag, wherein the silhouette of the human body is a graphical
representation of the human body and is included in the electronic medical
record for the patient," requires action by a processor that cannot be
practically performed in the mind. The same or similar limitations are found
in independent claims 12 and 20. The claimed step of "embedding the tag,
the image, and the corresponding metadata at a location on a silhouette of a
human body corresponding to the body part described by the tag, wherein
the silhouette of the human body is a graphical representation of the human
body and is included in the electronic medical record for the patient," is not
practically performed in the human mind, at least because it requires a tag,
an image, corresponding metadata, a graphical representation of the human
body, and an electronic medical record for the patient.
Further, the claim does not recite any method of organizing human
activity, such as a fundamental economic concept or managing interactions
between people. Finally, the claim does not recite a mathematical
relationship, formula, or calculation. Therefore, the claim is patent eligible
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because it is not directed to an abstract idea or any other judicial exception.
For these reasons, we do not sustain the Examiner's rejection of claims 1-20
under 35 U.S.C. § 101.
DECISION
For the above reasons, the Examiner's rejection of claims 1-20 is
reversed.
REVERSED
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