Ex Parte Jaskela et al

Patent Trial and Appeal Board

May 16, 2018

13901504 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/901,504 05/23/2013
80236 7590 05/18/2018
McDermott Will & Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
FIRST NAMED INVENTOR
Maria Consolacion JASKELA
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.
080625-0491 1701
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
mweipdocket@mwe.com
ip.docket@bd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIA CONSOLACION JASKELA, WILLIAM LEE
WEBSTER, THOMAS WILLIAM UTECH, and
TIMOTHY W. VANDERVEEN
Appeal2017-001346
Application 13/901,504
Technology Center 3600
Before MICHAEL J. STRAUSS, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-27, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is the Applicant,
CareFusion 303, Inc. App. Br. 3.
Appeal2017-001346
Application 13/901,504
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention generally relates to "managing preparation and
delivery of a medication in a healthcare facility." Spec. i-f 22. Claim 1,
which is illustrative, reads as follows:
1. A system for managing preparation of a medication for a
patient, the system comprising:
a memory comprising instructions; and
one or more processors configured to execute the
instructions to:
receive information indicative of an order for
medication for a patient from an electronic data feed;
determine whether the order for medication for the
patient can be filled with a returned medication;
when the determination indicates the order can be
filled with a returned medication, provide a notification to fill the
order with the returned medication; and
when the determination indicates a returned
medication is not available to fill the order, provide a notification
to fill the order by preparing the medication.
(App. Br., Claims Appendix, 19.)
2 We refer to the Specification, filed May 23, 2013 ("Spec."); [2nd] Non-
Final Office Action, mailed Dec. 7, 2015 ("Non-Final Act."); Appeal Brief,
filed Jul. 11, 2016 ("App. Br."); Examiner's Answer, mailed Sept. 13, 2016
("Ans."); and the Reply Brief, filed Nov. 1, 2016 ("Reply Br.").
2
Appeal2017-001346
Application 13/901,504
Rejection
Claims 1-27 stand rejected under 35 U.S.C. § 101 as being directed to
judicially excepted subject matter under 35 U.S.C. § 101. Non-Final Act. 2-
4.
ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 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." Alice Corp. v.
CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S.Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. The inquiry
often is whether the claims are directed to "a specific means or method" for
improving technology or whether they are simply directed to an abstract
end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1311,
1314 (Fed. Circ. 2016). If the claims are not directed to a patent-ineligible
concept, the inquiry ends. Otherwise, the inquiry proceeds to the second
step, where the elements of the claims are considered "individually and 'as
an ordered combination' to determine whether the additional elements
3
Appeal2017-001346
Application 13/901,504
'transform the nature of the claim' into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79-80, 1297). 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 itself is the abstract idea and merely invokes generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016).
Appellants contend the claims are not directed to an abstract idea.
App. Br. 15; Reply Br. 2---6. According to Appellants, the claims are
directed to "a method for 'managing preparation of a medication for a
patient' and produces results including 'preventing a compound medication
from being made that is no longer needed ... thereby preventing waste' and
'decreasing the inefficient use of labor."' Reply Br. 5 (citing Spec. i-f 24).
Appellants argue the claims would not patent "'the result or effect
produced'" and, therefore, are not directed to an abstract idea. Id. at 4 (citing
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312, 1314
(Fed. Cir. 2016)).
Appellants further argue "the identification of 'collecting ... and
comparing known information ... , which was found to be an abstract idea
by the courts (Classen) in the Examiner's Answer does not meet the
requirements of identifying a similar abstract idea that has been held patent
ineligible" because the Examiner has not relied on the knowledge generally
available to those in the art, on the case law precedent, on Appellants' own
disclosure, or on evidence. Reply Br. 4 (citing "May 19, 2016, Memo Re
Subject Matter Eligibility ... May 2016 Update: Memorandum - Formulating
a Subject Matter Eligibility Rejection and Evaluating the Applicant's
4
Appeal2017-001346
Application 13/901,504
Response to a Subject Matter Eligibility Rejection ... July 2015 Update on
Subject Matter Eligibility," 80 Fed. Reg. 45,429 (July 30, 2015)).
Appellants further argue:
Claim 1 relates to a genus for "managing preparation of a
medication for a patient" and the incorporation of at least the
limitation of "determin[ing] whether the order for medication for
the patient can be filled with a returned medication" improves
the existing process for "managing preparation of a medication
for a patient" and does not preempt all techniques for "managing
preparation of a medication for a patient" that use different
techniques. The specific limitations of exemplary independent
Claim 1 would prevent broad preemption of all methods for
"managing preparation of a medication for a patient", and there
has been no showing by the Examiner that any process for
"managing preparation of a medication for a patient" must
"determine whether the order for medication for the patient can
be filled with a returned medication".
Reply Br. 6.
We are not persuaded. We find the claims are directed to receiving
and analyzing data and outputting a result of the analysis. For example,
claim 1 recites: "[(1 )] receiv[ing] information indicative of an order for
medication for a patient from an electronic data feed; [(2)] determin[ing]
whether the order for medication for the patient can be filled with a returned
medication; [(3)] when the determination indicates the order can be filled
with a returned medication, provid[ing] a notification to fill the order with
the returned medication; and [ ( 4)] when the determination indicates a
returned medication is not available to fill the order, provid[ing] a
notification to fill the order by preparing the medication." Independent
claims 13 and 25-27 recite similar limitations directed to receiving and
analyzing data and outputting a result of the analysis. Information as such is
intangible. See, e.g., Microsoft Corp. v. AT&T Corp., 127 S. Ct. 1746, 1756
5
Appeal2017-001346
Application 13/901,504
n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed.
Cir. 2003). Information collection and analysis, and outputting a result
based thereon, including when limited to particular content, is also within
the realm of abstract ideas. See, e.g., Elec. Power Grp. v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v.
Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
We also are not persuaded by Appellants' argument that the pending
claims are not directed to an abstract idea because the features of the claims
would not preempt "all methods for "managing preparation of a medication
for a patient."' Reply Br. 6. Although the Supreme Court has described
"the concern that drives this exclusionary principle [i.e., the exclusion of
abstract ideas from patent eligible subject matter] as one of pre-emption,"
see Alice, 134 S. Ct. at 2354, characterizing pre-emption as a driving
concern for patent eligibility is not the same as characterizing pre-emption as
the sole test for patent eligibility. "The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability" and "[f]or this reason, questions on preemption are inherent in
and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
Although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility." Id.
Turning to the second step of the analysis, Appellants assert that, even
if the claims are directed to an abstract idea, the claims are nonetheless
directed to patent-eligible subject matter because the claims include
6
Appeal2017-001346
Application 13/901,504
elements that amount to "significantly more than the [] exception". App.
Br 15-16; Reply Br. 2-3. We disagree.
We find unpersuasive Appellants' argument that the limitations "when
the determination indicates the order can be filled with a returned
medication, provide a notification to fill the order with the returned
medication" and "when the determination indicates a returned medication is
not available to fill the order, provide a notification to fill the order by
preparing the medication," as recited in claim 1, are "not well-understood,
routine, and conventional in the field." App. Br. 15. The steps of "when the
determination indicates the order can be filled with a returned medication,
provid[ing] a notification to fill the order with the returned medication" and
"when the determination indicates a returned medication is not available to
fill the order, provid[ing] a notification to fill the order by preparing the
medication" are all steps that can be performed by a human with pen and
paper or by a general purpose computer using well-understood, routine, and
conventional functions. And Appellants do not provide adequate evidence
to the contrary. See Content Extraction and Transmission LLC v. Wells
Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--49 (Fed. Cir. 2014) ("The
concept of data collection, recognition, and storage is undisputedly well-
known."). The Specification supports this view in discussing general
purpose computer( s) for performing the steps of the method. See Spec. i-fi-1
69-78. There is no further specification of particular technology for
performing the steps. Instead, the Specification provides "aspects of the
present disclosure are not limited to any specific combination of hardware
circuitry and software." Spec. i175. See Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, 822
7
Appeal2017-001346
Application 13/901,504
F.3d. at 1336 (focusing on whether the claim is "an improvement to the
computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity."); DDR, 773 F.3d at 1256
("[A ]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.")
(citing Alice, 134 S. Ct. at 2358)).
We also find unpersuasive Appellants' argument that the claims are
significantly more because the recited limitations "improve[] the existing
process for 'managing preparation of a medication for a patient"' (Reply
Br. 6) and "produces results including 'preventing a compound medication
from being made that is no longer needed ... thereby preventing waste' and
'decreasing inefficient use of labor"' (Reply Br. 5). Managing preparation
of a medication for a patient by using fewer resources and thereby
preventing waste, as described in paragraphs 55---68 of the Specification, is
not a technological improvement, but a business one. Further, it does not
improve the technology of the computer itself; rather, it makes the process of
managing preparation of medications more efficient. "[O]ur precedent is
clear that merely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise
abstract idea." Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.").
Based on the foregoing reasons, we find the claims do not recite
significantly more than the abstract idea.
8
Appeal2017-001346
Application 13/901,504
Thus, we are not persuaded that the Examiner erred in rejecting claims
1-27 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1-27 under 35 U.S.C.
§ 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9