Ex Parte Wager

Patent Trial and Appeal Board

May 30, 2017

11025969 (P.T.A.B. May. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/025,969 01/03/2005 Douglas W. Wager CRNI. 118264 1695
46169 7590 06/01/2017
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS W. WAGER
Appeal 2016-001048
Application 11/025,969
Technology Center 3600
Before JEAN R. HOMERE, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 11—14 and 16—20, which are all of the pending claims.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Cemer Innovation, Inc.
App. Br. 3.
2 Claims 1—10, 15, and 21—30 are cancelled, and claims 31—34 are
withdrawn. See App. Br. 3 (Status of Claims), 15—20 (Claims App’x); see
also Ans. 3 (explaining post-Final Action Amendment that cancelled claims
1—8 and 10, which were pending at the time of the Final Rejection).
Appeal 2016-001048
Application 11/025,969
Introduction
Appellant describes the invention as “relating] to the field of clinical
information technology” in general, and “more particularly to a system and
method for a management interface which presents a charge nurse or other
staffing manager with an intuitive, visual interface for generating patient-to-
care provider assignments, including capacity computation, skill set
matching, ratio management and other parameters as part of that interface.”
Spec. 13 (Field of the Invention).
Claim 11 is representative:
11. One or more non-transitory computer-storage
media having computer-executable instructions embodied
thereon that, when executed by a computing device having a
processor and memory, perform a method for generating an
interface for managing clinical workforce operations,
comprising:
receiving a patient population profile including a list of
patients and associated patient needs ratings, the patient needs
ratings corresponding to a number of normalized units of
patient care required by each patient; and
receiving a care provider population profile including a
list of care providers and associated care provider capacity
ratings based on healthcare compliance information;
assigning to each care provider a number that
corresponds to a care provider capacity rating, wherein the care
provider capacity rating indicates a maximum number of
patients to assign to each care provider such that a ratio of
assigned patients to care providers satisfies a specified ratio
under the healthcare compliance information;
scaling the number that corresponds to the care provider
capacity rating for each care provider based on an expertise
level of each care provider, specialized training of each care
provider, and patient continuity, such that the scaled number
corresponding to the care provider capacity rating indicates a
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Application 11/025,969
number of normalized units of patient care that each care
provider can provide, the number of normalized units of patient
care that each care provider can provide corresponding to the
normalized units of patient care required by each patient;
at the processor, processing care provider-to-patient
assignment information based on the patient population profile
including the patient needs ratings that correspond to the
normalized units of patient care required by each patient and the
care provider population profile including the scaled care
provider capacity ratings that correspond to the normalized
units of patient care that each care provider can provide;
generating an interactive display of coverage information
for the list of patients included in the patient population profile
based on the care provider-to-patient assignment information;
and
presenting an alert based upon detection of a coverage
exception, wherein the coverage exception includes:
(1) a care provider over capacity condition based
on healthcare compliance criteria indicating that a current
capacity of a care provider is greater than a capacity
rating associated with the care provider, and wherein the
alert allows a user to either present alternative providers
or proceed with assigning the care provider to a patient,
and
(2) a patient coverage gap.
App. Br. 15—17 (Claims App’x).
Rejection
Claims 11—14 and 16—20 stand rejected under 35 U.S.C. § 101 as
“directed to non-statutory subject matter because the claim(s) as a whole,
considering all claim elements both individually and in combination, do not
amount to significantly more than an abstract idea.” Final Act. 2—3.
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Application 11/025,969
ANALYSIS
The sole issue before us is whether the Examiner errs in the 35 U.S.C.
§ 101 rejection of claim 11. See App. Br. 6—13.3 Specifically, Appellant
contends: (a) the Examiner fails to establish a prima facie case of
unpatentability pursuant to § 101 and Alice Corp. v. CLS Bank Int’l, 134 S.
Ct. 2347 (2014) (App. Br. 6—8); and (b) the Examiner’s analysis fails to
satisfy either prong of the two-part test for patentability under § 101 as set
forth by the Supreme Court in Alice {id. at 8—13).
Analytical Framework
The Supreme Court identifies laws of nature, physical phenomena,
and abstract ideas as three exceptions of subject matter ineligible for patent
protection. Bilski v. Kappos, 561 U.S. 593, 601 (2010). In Alice Corp. v.
CLS Bank Int’l, the Court provides the following framework for analysis:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[wjhat else is there in the claims before us?” To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. We have described
step two of this analysis as a search for an “‘inventive
concept’”—i.e., an element or combination of elements that is
3 Appellant nominally contends “[cjlaims 12-14 and 16-20 further define
novel features” and that “further due to the additional features included in
each of these dependent claims, Appellant respectfully submits that none of
these claims is directed to the abstract idea of merely ‘managing clinical
workforce operations.’” App. Br. 10. This does not sufficiently argue
separate patentability. See 37 C.F.R. § 41.37(c)(l)(iv) (2014); In reLovin,
652 F.3d 1349, 1351 (Fed. Cir. 2011) (sustaining the requirement for
substantive arguments for individual claims to be treated separately).
Accordingly, claims 12—14 and 16—20 stand or fall with claim 11.
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Application 11/025,969
“sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself.”
134 S. Ct. 2347, 2355 (2014) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1297—98, 1294 (2012)).
Prima Facie Case
Appellant argues the Examiner’s rejection of claim 11 as “directed to
the abstract idea of ‘managing clinical workforce operations’” is conclusory,
contending the Examiner fails to provide a “rationale in support of its
conclusion that the elements recited in each of the claims, both independent
and dependent, amount to an abstract idea, the patenting of which would
preempt all implementations of ‘managing clinical workforce operations,”’
and thus fails to set forth a prima facie case of unpatentability under § 101 as
required by Alice. App. Br. 7.
This argument does not persuade us. As the Federal Circuit has
clarified,
“the prima facie case is merely a procedural device that enables
an appropriate shift of the burden of production.” Hyatt v.
Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). See also In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Patent and
Trademark Office (“PTO”) satisfies its initial burden of
production by “adequately explaining] the shortcomings it
perceives so that the applicant is properly notified and able to
respond.” Hyatt, 492 F.3d at 1370. In other words, the PTO
carries its procedural burden of establishing a prima facie case
when its rejection satisfies 35 U.S.C. § 132, in “notifying] the
applicant . . . [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. That section “is violated when a rejection is so
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Application 11/025,969
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
Here, we find the Examiner’s rejection satisfies the initial burden of
production by identifying that each of the pending claims “is/are directed to
the abstract idea of managing clinical workforce operations” (part 1 of the
Alice analysis) and that recited claim elements other than the abstract idea
“amount(s) to no more than: (i) mere instructions to implement the idea on a
computer, and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry. . . .”
(part 2 of the Alice analysis). Final Act. 2.
Part 1 of the Alice Analysis
Appellant argues the Examiner errs in finding claim 11 is directed to
an abstract idea under part 1 of the Alice analysis because “a claim must be
directed to an abstract idea on its face” and that “claims that are directed to
abstract ideas should include claim elements that, when considered [as] a
whole, constitute what is necessary to cover the abstract idea,” contending
that claim 11 satisfies neither of these tests. App. Br. 8—9 (citing Alice, 134
S. Ct. at 2355—56); see also id. at 9—10. These arguments are unpersuasive
because there is no requirement in the first prong of Alice for a claim to be
directed to an abstract idea “on its face,” or that a claim directed to an
abstract idea “cover” the abstract idea. See Alice, 134 S. Ct. at 2355—57.
We agree with the Examiner’s response, which is that under part 1 of
the Alice analysis, claim 11 is “directed to the abstract idea of managing
clinical workforce operations, which is a mental process of managing people
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Application 11/025,969
that could be performed in the human mind, or by a human using a pen and
paper,” and that the recited steps “describe the concept of managing clinical
workforce operations.” Ans. 4 (correctly identifying the idea as “similar to
other mental processes found abstract by the courts such as comparing new
and stored information and using rules to identify options in SmartGene,[4]
and obtaining and comparing intangible data in Cybersource[5]”); see also
Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (holding “the claims are directed to an abstract idea” because
“with the exception of generic computer-implemented steps, there is nothing
in the claims themselves that foreclose them from being performed by a
human, mentally or with pen and paper”). We note that while claim 11 may
not encompass all possible ways of managing clinical workforce operations,
all its limitations are “drawn to” that abstract idea.
Part 2 of the Alice Analysis
Appellant argues claim 11 includes requirements that amount to
significantly more than an abstract idea under part 2 of the Alice analysis, as
evidenced by the Examiner’s confirmation during an interview that claim 11
is “allowable over the prior art.” App. Br. 12 (emphasis omitted). Appellant
specifically contends steps such as “scaling care provider capacity ratings
based on care provider experience level, care provider specialized training,
and patient continuity” limit claim 11 “to a particular useful application” and
thus constitute “significantly more” than the abstract idea. Id. Appellant
further argues the requirements of claim 11 amount to “significantly more”
because “[m]any other implementations of ‘managing clinical workforce
4 SmartGene Inc. v. Advanced Bio. Labs., SA, 555 F. App’x. 950 (2014).
5 Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011).
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Application 11/025,969
operations’ are available,” and so there is no risk of preempting the abstract
idea. Id. at 13.
These arguments do not persuade us. “The ‘novelty’ of any element
or steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr, 450
U.S. 175, 188—89 (1981); see also Genetic Techs. Ltd. v. Merial L.L.C., 818
F.3d 1369, 1376 (Fed. Cir. 2016) (“under 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”). The Examiner finds,
and we agree, that none of claim 1 l’s recited requirements amounts to
“significantly more” than the abstract idea under part 2 of Alice. Final Act.
2—3; Ans. 4—5. As discussed above, “scaling care provider capacity ratings”
as recited “could be performed in the human mind, or by a human using a
pen and paper.” Ans. 4. The Federal Circuit recently reconfirmed its
treatment of “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). The mental step of
scaling does not add something more because “[a] claim directed to an
abstract idea does not automatically become eligible merely by adding a
mathematical formula.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322
(Fed. Cir. 2017). Similarly, performing the scaling on a computer does not
add something more because “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
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Application 11/025,969
invention.” Alice, 134 S. Ct. at 2358. Thus, claim 11 ’s “scaling”
requirements are directed to an abstract idea and do not constitute
“something more.”
Regarding Appellant’s argument that claim 11 recites significantly
more than the abstract idea to which it is directed because it does not
preempt all ways of idea of managing clinical workforce operations, we note
the underlying Federal Circuit decision affirmed by the Supreme Court in
Alice clarified:
To be clear, the proper focus is not preemption per se, for
some measure of preemption is intrinsic in the statutory right
granted with every patent. . . . Rather, the animating concern is
that claims should not be coextensive with a natural law, natural
phenomenon, or abstract idea; a patent-eligible claim must
include one or more substantive limitations that, in the words of
the Supreme Court, add “significantly more” .... Thus, broad
claims do not necessarily raise § 101 preemption concerns, and
seemingly narrower claims are not necessarily exempt. . . .
CLS Bank Inti v. Alice Corp., 717 F.3d 1269, 1281 (Fed. Cir. 2013).
Regarding preemption, that claim 11 does not cover all possible ways
to manage clinical workforce operations does not negate that steps such as
“assigning to each care provider a number . . ., scaling the number . . ., and
presenting an alert. . . describe the concept of managing clinical workforce
operations” and “could be performed in the human mind, or by a human
using a pen and paper,” and that the remaining computer-related aspects of
claim 11 are routine, generic, and do “not add meaningful limitations to the
idea of managing clinical workforce operations beyond generally linking the
system to a particular technological environment.” Ans. 4, 5.
Thus, we agree with the Examiner that, unlike for the claims at issue
in the § 101 analysis in DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d
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Application 11/025,969
1245, 1257 (Fed. Cir. 2014) (“Instead, the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks”) and Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (holding claims at issue are
“directed to a specific improvement to the way computers operate”), under
the precedent of Alice and its progeny, claim 11 is unpatentable as a routine,
computerized implementation of an otherwise abstract idea.
Accordingly, we sustain the Examiner’s rejection of claim 11, and
claims 12—14 and 16—20, which are not substantively argued separately.
DECISION
For the above reasons, we affirm the 35 U.S.C. § 101 rejection of
claims 11—14 and 16—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).
AFFIRMED
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