Ex Parte UTECH et alDownload PDFPatent Trials and Appeals BoardApr 18, 201913900502 - (D) (P.T.A.B. Apr. 18, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/900,502 05/22/2013 80236 7590 04/22/2019 Morgan, Lewis & Bockius LLP (OC)(BD) 600 Anton Boulevard Suite 1800 Costa Mesa, CA 92626-7653 FIRST NAMED INVENTOR Thomas William UTECH 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. 080625-0472 8192 EXAMINER NGUYEN, HIEP VAN ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 04/22/2019 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): ocipdocketing@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS WILLIAM UTECH, MARIA CONSOLACION JASKELA, and WILLIAM LEE WEBSTER Appeal2018-003502 1 Application 13/900,502 Technology Center 3600 Before JEREMY J. CURCURI, ADAM J. PYONIN, and NABEEL U. KHAN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is listed as CareFusion 303, Inc. Br. 3. Appeal2018-003502 Application 13/900,502 STATEMENT OF THE CASE Introduction The Application is directed "to medication distribution, and, in particular, relates to systems and methods for managing retrieval of a prepared medication in a healthcare facility." Spec. ,r 2. Claims 1-5, 7-16, and 18-24 are pending; of these, claims 1, 11, 12, 22, 23, and 24 are independent. Br. 23-31. Claim 1 is reproduced below for reference ( emphasis added): 1. A system for managing a retrieval of an unused medication, the system comprising: a memory comprising instructions; and one or more processors configured to execute the instructions to: receive an identification of a plurality of unused medications that have been delivered to patients at a plurality of patient locations, and an identification of a current location of each of the plurality of unused medications at their respective patient locations; determine an order in which to instruct a person to retrieve at least two of the plurality of unused medications from their respective patient locations and return the at least two of the plurality of unused medications to a return location, wherein the determination is based on at least one of an expiration date of the at least two of the plurality of unused medications, an estimated amount of time to retrieve each of the at least two of the plurality of unused medications, a degree of urgency associated with each of the at least two of the plurality of unused medications, a cost associated with each of the at least two of the plurality of unused medications, or an estimated distance to retrieve each of the at least two of the plurality of unused medications; and provide, for display, an ordered listing in which the at least two of the plurality of unused medications should be retrieved from their respective patient locations, the ordered 2 Appeal2018-003502 Application 13/900,502 listing based on the order for retrieving the at least two of the plurality of unused medications. Rejection Claims 1-5, 7-16, and 18-24 stand rejected under 35 U.S.C. § 101 as being patent ineligible. Final Act. 2. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments. Arguments Appellants could have made but chose not to make are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner determines claim 1 is patent ineligible under 35 U.S.C. § 101, because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. Final Act. 2-5; see also Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (describing the two-step framework "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts"). After the docketing of this Appeal, the US PTO published revised guidance on the application of§ 101 ("Guidance"). See USPTO' s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Pursuant to the Guidance "Step 2A," the office first looks to whether the claim recites: (1) Prong One: 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); and 3 Appeal2018-003502 Application 13/900,502 (2) Prong Two: additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.0S(a}- ( C ), ( e }-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then (pursuant to the Guidance "Step 2B") look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP § 2106.0S(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. See Memorandum. We are not persuaded the Examiner's rejection is in error. We adopt the Examiner's findings and conclusions as our own, and we add the following primarily for emphasis and clarification with respect to the Guidance. A. Step 2A Appellants argue the Examiner errs in determining claim 1 is abstract, because "the alleged identified abstract idea is not similar on its face to the alleged abstract ideas" previously identified, and "further the Office Action fails to 'explain why [the alleged abstract idea] corresponds to a concept that the courts have identified as an abstract idea."' Br. 16 ( quoting the May 2016 Update: Memorandum - Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection.). 4 Appeal2018-003502 Application 13/900,502 We are not persuaded the Examiner errs in determining claim 1 is directed to an abstract idea. See Ans. 9-10. Particularly, we determine the claim "recites a judicial exception" ( Guidance Prong One) and does not "integrate the exception into a practical application of that exception" (Guidance Prong Two). Memorandum Section III (Instructions for Applying Revised Step 2A During Examination), 84 Fed. Reg. at 54. Prong One Pursuant to Step 2A, Prong One of the Guidance, we are not persuaded the Examiner errs in determining claim 1 recites an abstract idea. See Final Act. 3; Memorandum Section III (A) (1) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception), 84 Fed. Reg. at 54. Claim 1 recites a "system for managing a retrieval of an unused medication," with the system configured to perform the method steps italicized supra. These steps coordinate a delivery person's route so the "delivery person may then retrieve the discontinued medications and return them to a workroom in the pharmacy" (Spec. ,r 20), and are steps of "managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)" (Memorandum Section I, 84 Fed Reg. at 52). The italicized limitations are therefore "[ c ]ertain methods of organizing human activity." Memorandum Section I, 84 Fed Reg. at 52; see also Spec. ,r 130. Accordingly, we conclude the claims recite an abstract idea under Prong One of the Guidance. Memorandum, 84 Fed. Reg. at 52, 54. 5 Appeal2018-003502 Application 13/900,502 Prong Two We are also not persuaded the Examiner's rejection is in error pursuant to Step 2A, Prong Two of the Guidance. Other than the limitations reciting the judicial exception, the claim recites a memory and one or more processors to implement the judicial exception. Thus, the "additional element[ s] merely recites the words 'apply it' ( or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea." Memorandum, 84 Fed. Reg. at 55. Further, Appellants' argument regarding preemption does not show Examiner error (see Br. 17-19). Appellants broadly claim a method of determining a retrieval order for unused medications. See Final Act. 3. Based on the record before us, claim 1 would appear to "pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea." Bilski v. Kappas, 561 U.S. 593, 612, (2010). More importantly, we agree with the Examiner that any questions on preemption in the instant case have been resolved by the analysis herein, the Final Action, and the Examiner's Answer. See Ans. 3; Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) ("[W]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Alice framework, as they are in this case, preemption concerns are fully addressed and made moot."). Accordingly, we determine claim 1 does not integrate the judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54. As the "claim recites a judicial exception and fails to integrate the 6 Appeal2018-003502 Application 13/900,502 exception into a practical application" (id. at 51 ), "the claim is directed to the judicial exception" (id. at 54). B. Step 2B Appellants argue "Claim 1 as a whole amounts to significantly more than the abstract idea because, for example, Claim 1 adds specific limitations other than what is well-understood, routine, and conventional in the field." Br. 19. Particularly, Appellants contend claim 1 does not "instruct a pharmacist to fill a new order for medication in response to a need for the medication, but instead describes 'a process that differs from the routine and conventional sequence of events normally conducted by' a pharmacist, such as receiving an order and filling the order." Br. 19-20. We are not persuaded the Examiner errs in determining the claim does not recite additional elements which "transform an otherwise abstract idea into patent-eligible subject matter." Ans. 12. Outside of the identified judicial exception, the claim recites hardware limitations that "merely provide typical computer system, or existing computing devices, or general purpose computing system environment" and that "perform no more than their basic computer functions." Ans. 12-13; Spec. ,r,r 30, 32-34, 45-54; see also Alice, 573 U.S. at 226. The claimed unique sequence of events argued by Appellants (see, e.g., Br. 19) is part of the identified judicial exception, as these limitations are steps of the organizing human activity of "managing a retrieval of an unused medication." Final Act. 2. Thus, the disputed limitations are not additional elements that amount to significantly more than the exception itself. See Memorandum 84 Fed. Reg. at 56; see also Memorandum Fn. 24 ("USPTO guidance uses the term 'additional 7 Appeal2018-003502 Application 13/900,502 elements' to refer to claim features, limitations, and/ or steps that are recited in the claim beyond the identified judicial exception."). Accordingly, we agree with the Examiner that claim 1 is patent ineligible. C. Claim 11 Appellants' arguments with respect to independent claim 11 are similar to arguments provided for independent claim 1 : Claim 11 adds specific limitations other than what is well- understood, routine, and conventional in the field. For example, the combination of "receiv[ing] an identification of a first medication to be delivered to a first patient location" and "determin[ing] a route comprising an order in which to deliver by a person the first medication to the first patient location and retriev[ing] by the person at least one second medication previously delivered to a patient at a second patient location" ( emphasis added) (instead of simply delivering the first medication) does not merely instruct a person to deliver a new order for medication in response to a need for the medication, but instead describes "a process that differs from the routine and conventional sequence of events normally conducted by" a delivery person, such as by the delivery person also retrieving a medication. Br. 20. We are not persuaded of Examiner error, for similar reasons discussed above with respect to independent claim 1. The claimed steps are part of the identified judicial exception, as these limitations are steps of the organizing human activity of managing delivery of medications. 2 See Final Act. 3. 2 Specifically, claim 11 recites the following limitations which are certain methods of organizing human activity ( e.g., managing personal behavior or relationships or interactions between people (including social activities, 8 Appeal2018-003502 Application 13/900,502 Thus, the disputed limitations are not additional elements that amount to significantly more than the judicial exception itself, and we agree with the Examiner that claim 11 is patent ineligible. See Final Act. 2--4. CONCLUSION We sustain the Examiner's rejection of independent claims 1 and 11. Appellants advance no further substantive argument on the remaining claims. See Br. 21. Accordingly, we sustain the Examiner's rejection of these claims for the same reasons discussed above. DECISION The Examiner's decision rejecting claims 1-5, 7-16, and 18-24 is affirmed. 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). teaching, and following rules or instructions)): receive an identification of a first medication to be delivered to a first patient location; determine a route comprising an order in which to deliver by a person the first medication to the first patient location and retrieve by the person at least one second medication previously delivered to a patient at a second patient location, wherein the determination is based on the first patient location, the second patient location, and at least one of an expiration date of the first or the at least one second medication, an estimated amount of time to deliver the first medication, an estimated amount of time to retrieve the at least one_second medication, a degree of urgency associated with each of the first and the at least one second medication, a cost associated with each of the first or the at least one_second medication, and an estimated distance to retrieve each of the first and the at least one second medication; and provide, for display, the determined route. 9 Appeal2018-003502 Application 13/900,502 AFFIRMED 10 Copy with citationCopy as parenthetical citation