Ex Parte Kashyap

Patent Trials and Appeals Board

Jun 6, 2019

14195900 - (D) (P.T.A.B. Jun. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/195,900 03/04/2014
46169 7590 06/10/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Suman Kashyap
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.224531 4214
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/10/2019 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 SUMAN KASHY AP
Appeal2018-005410
Application 14/195,900 1
Technology Center 3600
Before JOHN A. JEFFERY, CATHERINE SHIANG, and
NORMAN H. BEAMER, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Cemer Innovation, Inc. as the real party in interest.
App. Br. 3.
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STATEMENT OF THE CASE
Introduction
The present invention relates to "systems and methods for guiding a
user through workflows." Spec. ,r 2.
The present disclosure relates to a framework for
providing workflow guidance. In accordance with one aspect, a
workflow graph is retrieved from a pre-built knowledge base.
An end node of the workflow graph may represent a user's
desired workflow point-state associated with a workflow
system. The workflow graph may be used to determine the
most efficient path from a current workflow point-state to the
desired workflow point-state. A suggestion of the next task to
be performed by the user may then be provided in accordance
with the most efficient path.
Spec. ,r 7. Claim 1 is exemplary:
1. Non-transitory computer-readable media having
computer-executable instructions stored thereon, that when
executed, cause a processor to execute steps comprising:
building a workflow graph including nodes, each node
representative of different workflow point-states, and including
links representative of user tasks performed via a workflow
system, the links connecting the nodes;
updating the workflow graph based on use of the
workflow system by one or more expert users, the updating
increasing efficiency of the workflow graph, wherein updating
includes:
each time the one or more expert users performs a user
task:
(i) increasing a preference level of a link corresponding
to the user task performed, wherein the preference level of the
link is increased each time the user task is performed by the one
or more expert users,
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(ii) transitioning from one node representing one point-
state to a next node representing another point-state, the one
node connected to the next node by the link corresponding to
the user task performed, and
(iii) having transitioned to the next node, determining a
most efficient path among one or more links within the
workflow graph for transitioning from said node to another
node representing a respective point-state, wherein the most
efficient path includes at least one link of the one or more links,
the at least one link having a highest preference level among the
one or more links within the workflow graph for transitioning
from said node to another node; and
providing user guidance including user tasks to perform,
based on the workflow graph as updated and the most efficient
path, to perform a desired workflow via the workflow system.
Rejection2
Claims 1-20 are rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter. Final Act. 2-13.
ANALYSIS 3
We disagree with Appellant's arguments. To the extent consistent
with our analysis below, we adopt the Examiner's findings and conclusions
in (i) the action from which this appeal is taken (Final Act. 2-13) and (ii) the
Answer (Ans. 3-9).
2 Throughout this opinion, we refer to the ( 1) Final Office Action dated June
2, 2017 ("Final Act."); (2) Appeal Brief dated Sept. 13, 2017 ("App. Br.");
(3) Examiner's Answer dated March 8, 2018 ("Ans."); and (4) Reply Brief
dated May 2, 2018 ("Reply Br.").
3 To the extent Appellant advance new arguments in the Reply Brief without
showing good cause, Appellant has waived such arguments. See 37 C.F.R.
§ 41.41 (b )(2).
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The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2-13; Ans. 3-
9. In particular, the Examiner concludes the claimed processes and
functions are directed to "automating the use of a workflow graph to track
tasks that the user prefers by performing those tasks most often, and provide
suggestions regarding the most efficient workflow with regards to those
tasks that the user prefers without any particular inventive technology."
Ans. 4. The Examiner determines the claims do not identify an inventive
concept to transform the nature of the claims into a patent-eligible
application. See Ans. 4--9. Appellant argues the Examiner erred. See App.
Br. 7-15; Reply Br. 2---6.
Appellant has not persuaded us of error. Section 101 of the Patent Act
provides "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title." 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. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,216 (2014)
(internal quotation marks and citation omitted).
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
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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.").
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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 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 187; see also id. at 191 ("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
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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.").
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 ( citation 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, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the
guidance set forth in the 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 activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
PROCEDURE ("MPEP") § 2106.05(a}-(c), (e}-(h)) (9th ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
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:
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(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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54--56.
Turning to Step 2A, Prong 1 of the Guidance, claim 1 ( with
emphases) recites:
1. Non-transitory computer-readable media having
computer-executable instructions stored thereon, that when
executed, cause a processor to execute steps comprising:
building a wodiflow graph including nodes, each node
representative of different wodiflow point-states, and including
links representative of user tasks performed via a wodiflow
system, the links connecting the nodes;
updating the wodiflow graph based on use of the
woriflow system by one or more expert users, the updating
increasing efficiency of the woriflow graph, wherein updating
includes:
each time the one or more expert users performs a user
task:
(i) increasing a preference level of a link corresponding
to the user task performed, wherein the preference level of the
link is increased each time the user task is performed by the one
or more expert users,
(ii) transitioning from one node representing one point-
state to a next node representing another point-state, the one
node connected to the next node by the link corresponding to
the user task performed, and
(iii) having transitioned to the next node, determining a
most efficient path among one or more links within the
woriflow graph for transitioningfrom said node to another
node representing a respective point-state, wherein the most
efficient path includes at least one link of the one or more links,
the at least one link having a highest preference level among
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the one or more links within the wodiflow graph for
transitioning from said node to another node; and
providing user guidance including user tasks to perform,
based on the wodiflow graph as updated and the most efficient
path, to perform a desired wodiflow via the wodiflow system.
All of the italicized limitations are associated with following
instructions. Specifically, "building a workflow graph including nodes, each
node representative of different workflow point-states, and including links
representative of user tasks performed via a workflow system, the links
connecting the nodes" and "updating the workflow graph based on use of the
workflow system by one or more expert users, the updating increasing
efficiency of the workflow graph" follow instructions for building a
workflow graph and updating that workflow graph. Likewise, the below
limitations follow instructions for updating the workflow graph:
wherein updating includes:
each time the one or more expert users performs a user
task:
(i) increasing a preference level of a link corresponding
to the user task performed, wherein the preference level of the
link is increased each time the user task is performed by the one
or more expert users,
(ii) transitioning from one node representing one point-
state to a next node representing another point-state, the one
node connected to the next node by the link corresponding to
the user task performed, and
(iii) having transitioned to the next node, determining a
most efficient path among one or more links within the
workflow graph for transitioning from said node to another
node representing a respective point-state, wherein the most
efficient path includes at least one link of the one or more links,
the at least one link having a highest preference level among the
one or more links within the workflow graph for transitioning
from said node to another node[.]
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Finally, "providing user guidance including user tasks to perform, based on
the workflow graph as updated and the most efficient path, to perform a
desired workflow via the workflow system" follows instructions for
providing user guidance to perform a desired workflow.
Our determination is supported by the Specification, which describes
following instructions for building a workflow graph, updating that
workflow graph, and providing user guidance to perform a desired
workflow:
The present disclosure relates to a framework for
providing workflow guidance. In accordance with one aspect, a
workflow graph is retrieved from a pre-built knowledge base.
An end node of the workflow graph may represent a user's
desired workflow point-state associated with a workflow
system. The workflow graph may be used to determine the
most efficient path from a current workflow point-state to the
desired workflow point-state. A suggestion of the next task to
be performed by the user may then be provided in accordance
with the most efficient path.
In accordance with another aspect, a workflow graph is
built. The workflow graph may include nodes representative of
workflow point-states and links connecting the nodes and
representative of user tasks performed via a workflow system.
The workflow graph may be updated as one or more expert
users use the workflow system. Based on the workflow graph,
user guidance may be provided to perform a desired workflow
via the workflow system.
Spec. ,r,r 7-8.
Because following instructions is managing interactions between
people (Guidance, Step 2A, Prong 1 (Groupings of Abstract Ideas)), we
conclude claim 1 recites managing interactions between people, which is one
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of certain methods of organizing human activity identified in the Guidance,
and thus an abstract idea. 4
Appellant's following arguments about "a Computerized Physician
Order Entry (CPOE) system" are not commensurate with the scope of claim
1, which does not require a CPOE system.
claim 1 ... recites computer readable media that specifically
involves a Computerized Physician Order Entry (CPOE)
system. The computer-readable media builds task-based
workflow graphs comprising nodes ( work states) and links
(user tasks) for the CPOE system. The task-based workflow
graphs are employed with the CPOE system to represent and
document performance of real-world tasks, and to recommend
real-world tasks to users of the CPOE system.
Accordingly, the claimed embodiment of independent claim 1
dynamically updates preference levels for links between nodes
in a workflow graphs in order to reflect whether a user
performed or did not perform a task, as documents in the CPOE
system.
4 As a result, we agree with the Examiner that claim 1 recites an abstract
idea (Ans. 4). Further, it is well established that during examination, claims
are given their broadest reasonable interpretation consistent with the
specification and should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art, but without importing
limitations from the specification. See In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted); SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). We decline to
import descriptions of exemplary embodiments from the Specification into
claim 1, and disagree with Appellant's assertions that "the claims have been
overgeneralized" and "the examiner's interpretation of the claims is
unreasonably broad" (App. Br. 11, Reply Br. 4; see also Reply Br. 2-3). We
further note contrary to Appellant's assertion (Reply Br. 3), paragraphs 25-
30 of the Specification merely describe non-limiting, exemplary
embodiments, and do not specifically define "preference levels" or "links."
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App. Br. 9, 10; see also App. Br. 10-11; Reply Br. 4--5.
Appellant's assertion that "claim 1 is ... highly specific" (App. Br.
11) is unpersuasive, as Appellant does not persuasively explain why being
"highly specific" renders claim 1 patent eligible. To the extent Appellant's
assertion that the "features place reasonable limits on the scope of the claim"
(Reply Br. 6) is about pre-emption, that argument is unpersuasive, because
[ w ]hile preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate
patent eligibility .... \Vhere a patent's claims are deemed only
to disclose patent ineligible subject matter under the 1\1ayo
framework, as they are in this case, preemption concerns are
fully addressed and rnade moot
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-
63 (Fed. Cir. 2015) ("that the claims do not preempt all price optimization or
may be Hmhed to price opthnization in the e-commerce setting do not rnake
them any less abstract").
Turning to Step 2A, Prong 2 of the Guidance, contrary to
Appellant's arguments (App. Br. 7-15; Reply Br. 2---6), Appellant has
not shown claim 1 recites additional elements that integrate the
judicial exception into a practical application. In particular, Appellant
has not shown the additional element "[n]on-transitory computer-
readable media having computer-executable instructions stored
thereon, that when executed, cause a processor to execute steps
comprising ... " integrates the abstract idea into a practical
app li cation.
Appellant's argument about a new "feedback mechanism" (App. Br.
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14) is unpersuasive because "a claim for a new abstract idea is still an
abstract idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016). "[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility .... " Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Appellant's arguments that "[t]he features of claim 1 provide a
technological improvement to a computerized workflow graph with nodes
and links in a CPOE system," "[ claim 1] is a technological improvement that
improves the efficiency of workflows deployed in CPOE systems," and "the
features recited in ... claim 1 ... provide an inventive concept" because "a .
. . technological improvement ... dynamically updates link preferences in a
workflow graph using CPOE task performance documentation to improve
the efficiency ofworkflow performance in CPOE systems" (App. Br. 13-15;
see also Reply Br. 4--5) are not commensurate with the scope of claim 1,
which does not require a CPOE system. In any event, claim 1 merely recites
"[ n ]on-transitory computer-readable media having computer-executable
instructions stored thereon, that when executed, cause a processor to execute
steps comprising" the abstract idea of following instructions. Appellant does
not persuasively explain why using a computer processor to implement an
abstract idea is a technological improvement or renders the claim patent
eligible. 5
To the extent Appellant is arguing the claimed processor "improves
5 Similarly, Appellant's assertion that "claim 1 is technologically driven"
(App. Br. 11) is unpersuasive.
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the efficiency of workflows" (App. Br. 14), our reviewing court has
declared:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.").
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) ( emphases added).
Applying this reasoning to claim 1, we similarly find any purported
efficiency comes from the capabilities of a general-purpose computer (the
recited "processor"}-not a technological improvement. Similar to the
claims of FairWarning, the rejected claims "are not directed to an
improvement in the way computers operate" and "the focus of the claims is
not on ... an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools." Fair Warning, 839
F.3d at 1095.
As a result, we conclude claim 1 does not recite additional elements
that integrate the judicial exception into a practical application. See
Guidance, Step 2A, Prong 2.
Turning to Step 2B of the Guidance, Appellant does not persuasively
argue any specific limitation is not well-understood, routine, or conventional
in the field. Nor does Appellant persuasively argue the Examiner erred in
that aspect. In particular, Appellant's argument that under Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018), "the Office bears the burden of
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providing factual support or evidence for its determination that features are
well-understood, routine, or conventional. Currently the record does not
include support or evidence" (Reply Br. 6) is unpersuasive. According to
the Memorandum of Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) ("Berkheimer Memorandum"), whether "an
additional element ( or combination of elements) is ... well-understood,
routine or conventional" is a factual inquiry. Berkheimer Memorandum at 3.
As pointed out by the Examiner, the Final Action "makes a finding that the
computer invoked by the claims is a generic computer at best (page 4 of the
Final Action mailed on 2 June 2017, discussing page 14 of parent
application 61773260's Specification)." Ans. 9. Appellant does not critique
that factual finding. That factual finding is additionally supported by the
Specification, which states:
It is to be understood that the system and methods
described herein may be implemented in various forms of
hardware, software, firmware, special purpose processors, or
a combination thereof. Preferably, the present invention is
implemented in software as an application ( e.g., n-tier
application) comprising program instructions that are
tangibly embodied on one or more program storage devices
(e.g., magnetic floppy disk, RAM, CD ROM, ROM, etc.),
and executable by any device or machine comprising
suitable architecture. If written in a programming language
conforming to a recognized standard, sequences of
instructions designed to implement the methods can be
compiled for execution on a variety of hardware platforms
and for interface to a variety of operating systems. In
addition, embodiments of the present framework are not
described with reference to any particular programming
language. It will be appreciated that a variety of
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programming languages may be used to implement
embodiments of the present invention.
The present technology may be implemented in various
forms of hardware, software, firmware, special purpose
processors, or a combination thereof, either as part of the
microinstruction code or as part of an application program or
software product, or a combination thereof, which is
executed via the operating system. In one implementation,
the techniques described herein may be implemented as
computer-readable program code tangibly embodied in non-
transitory computer-readable media 104. Non-transitory
computer-readable media 104 may include one or more
memory storage devices such as random access memory
(RAM), read only memory (ROM), magnetic floppy disk,
flash memory, and other types of memories, or a
combination thereof.
Spec. ,r,r 18, 21.
Therefore, Appellant has not persuaded us that the Examiner
erred in finding the additional element "[ n ]on-transitory computer-
readable media having computer-executable instructions stored
thereon, that when executed, cause a processor to execute steps
comprising" is well-understood, routine, and conventional in the field.
See Berkheimer Memorandum at 3--4. As a result, Appellant has not
persuaded us the Examiner erred with respect to the Guidance's Step
2B analysis. See Guidance, Step 2B.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner's rejection of independent claim 1 under 35 U.S.C.
§ 101.
Appellant contends claims 2-20 are patent eligible for the same
or similar reasons associated with claim 1. See App. Br. 12-13, 15.
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Therefore, for similar reasons discussed above, we sustain the
Examiner's rejection of claims 2-20 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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