Jan Dehaan

Patent Trials and Appeals Board

Sep 30, 2019

12016278 - (D) (P.T.A.B. Sep. 30, 2019)

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.
12/016,278 01/18/2008 Jan DeHaan CRNI.224468 3976
46169 7590 09/30/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
BPARKERSON@SHB.COM
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAN DeHAAN
____________

Appeal 2017-0099891
Application 12/016,2782
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–5, 7–18, and 21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
Jan. 23, 2017) and Reply Brief (“Reply Br.,” filed July 17, 2017), and the
Examiner’s Answer (“Ans.,” mailed May 16, 2017) and Final Office Action
(“Final Act.,” mailed July 21, 2016).
2 Appellant identifies Cerner Innovation, Inc. as the real parties in interest.
App. Br. 3.
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CLAIMED INVENTION
Claims 1 and 21 are the independent claims one appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A clinical reporting and ordering system including at least
one processing device for enabling user selection of related
parameters identifying an order for providing an item or service,
comprising:
[(a)] a repository including information identifying
candidate items for order for treatment to be administered to a
particular patient comprising corresponding order related
parameters, an individual item or service for order comprising a
plurality of order related parameters;
[(b)] one or more computer storage media storing
computer usable instructions that, when used by the one or more
processors, cause the one or more processors to:
[(c)] display, in response to user entry of order associated
data, an image via a user interface including at least an initial
candidate order, wherein the order includes a plurality of order
related parameters, and order related parameter identifiers;
[(d)] generate, based on the candidate order, a plurality of
substantially adjacent concurrently displayed columnar image
areas including a first columnar image area, the plurality of
substantially adjacent concurrently displayed columnar image
areas defining a column table, the column table footprint having
a fixed width,
wherein each columnar image area individually presents a
corresponding different one of the plurality of order related
parameters of an order and incorporating a plurality of user
selectable values for a respective order related parameter;
[(e)] shift, in response to user selection of an element
associated with the first columnar image area, displayed
columnar image areas laterally, enabling a column of data items
associated with the selected element to be incorporated in the
display image; and
[(f)] dynamically present, in response to user selection of
a first value for a first order related parameter in a columnar
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image area for incorporation in said candidate order,
corresponding compatible sets of order related parameter values
in the remaining columnar image areas of said plurality of
concurrently displayed columnar image areas enabling user
selection of a complete candidate order.

REJECTION
Claims 1–5, 7–18, and 21 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
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 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. (citation omitted). If
the claims are not directed to a patent-ineligible concept, e.g., an abstract
idea, 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 there are additional elements
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that “‘transform the nature of the claim’ into a patent-eligible application.”
Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive
concept’ — i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the USPTO published revised guidance for use by USPTO personnel
in evaluating subject matter eligibility under 35 U.S.C. § 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) (the “Revised Guidance”).3 That guidance
revised the USPTO’s examination procedure with respect to the first step of
the Mayo/Alice framework such that a claim will generally be considered
directed to an abstract idea if (1) the claim recites subject matter falling
within one of the following groupings of abstract ideas: (a) mathematical
concepts; (b) certain methods of organizing human activity, e.g., a
fundamental economic principle or practice, a commercial or legal
interaction; and (c) mental processes (“Step 2A, Prong One”), and (2) the
claim does not integrate the abstract idea into a practical application, i.e.,
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception (“Step 2A,
Prong Two”). See Revised Guidance 52–55. The Revised Guidance

3 The Revised Guidance, by its terms, applies to all applications, and to all
patents resulting from applications, filed before, on, or after January 7, 2019.
Id. at 50.

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references MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”)
§§ 2106.05(a)–(c) and (e)–(h) in describing the considerations that are
indicative that an additional element or combination of elements integrates
the judicial exception, e.g., the abstract idea, into a practical application. Id.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
Only if the 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 “[a]dds a specific limitation or combination of
limitations” that is not “well-understood, routine, conventional activity in the
field” or 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”). Id. at 56. With the legal principles
outlined above, and the Revised Guidance in mind, we turn to the
Examiner’s § 101 rejection.
Step One of the Mayo/Alice Framework (USPTO Guidance Step 2A)
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determined that, considered as an ordered combination, the claims recite the
concept of
displaying user selectable candidate items for order for
treatment to be administered to a patient retrieve from a
repository in response to user entry, comprising order related
parameters and identifiers provided by the repository for
enabling a user to incorporate a set of selected parameters in a
complete order including displaying corresponding compatible
sets of order related parameters presented in response to
selecting a first order related parameter.
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Id. at 2–3 (emphasis omitted). The Examiner concluded that this concept is
“a method of organizing human activity[] (i.e., a mental process that a doctor
should follow when treating (i.e. formulating an order for treatment for) a
patient.” Id. at 3 (citation and emphasis omitted). The Examiner
alternatively determined that the claimed subject matter could be described
as selecting and displaying sets of order-related parameters corresponding to
an order, which the Examiner likened to using categories to organize, store,
and transmit information. Id. (citing Cyberfone Systems, LLC v. CNN
Interactive Group, Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014)).
The Examiner determined that the additional limitations include a
repository for storing information; a user interface for displaying an image,
and shifting displayed columns laterally. Id. at 3–4. However, the Examiner
found each of these limitations was no more than well-understood, routine,
and conventional functions of a generic computer. Final Act 3–4.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). The inquiry asks whether the focus of the
claims is on a specific improvement in relevant technology or on a process
that itself qualifies as an “abstract idea” for which computers are invoked
merely as a tool. See id. at 1335–36.
Here, the Specification describes that known ordering systems use
drop-down or pop-up lists to display allowable values of a data field,
sentence, or a text statement. Spec. 1, ll. 16–17. A user needs to open and
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interact with an individual drop down list or a popup list to select an
allowable value for a data field. Id. at 1, ll. 19–21. If a user wants to change
values in seven different data fields, the user would need to open seven
different selection lists, and select a value for each data field from the list.
Id. at 1, ll. 21–23. Moreover, the lists typically are not displayed
concurrently. Id. at 1, ll. 23–24. Some lists allow concurrent value selection
lists, but these lists are static in nature and cover only a limited number of
data fields. Id. at 1, ll. 25–27. As a result, known ordering systems require a
relatively large number of interactions with an application and, therefore,
involve burdensome data entry tasks and expenditures of time. Id. at 1,
ll. 27–29. Appellant’s invention is intended to address these technological
problems. Id. at 1, ll. 29–30.
For example, the Specification provides that Appellant’s ordering
system shortens time involved in performing a data entry task by
concurrently displaying the most often used values in a single display image,
which allows the user to select the desired values just by clicking on them or
pointing to them. Spec. 3, ll. 29–32. Non-displayed (invisible) lists or non-
displayed values in a list can be brought into view with a single user
interaction, while still maintaining the advantage of being able to select
values in other displayed lists. Id. at 3, ll. 32–34. The system also enables
the selecting values for multiple data entry fields from multiple codependent
dynamic value lists with minimum user interaction. Id. at 3, l. 34–4, l. 2.
In particular, based on a user-entered candidate order, the system
generates a plurality of substantially adjacent concurrently displayed
columnar image areas. Id. at 11, l. 29–12, l. 5. Each columnar image area
has a fixed footprint width and individually presents a corresponding order
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related parameter, having user-selectable values. Id. at 5, l. 24–6, l. 5. In
response to a user’s selection of an element, the system laterally shifts the
displayed columnar image area, incorporating a column of data items
associated with the element into the display image as a new columnar image
area. Id. at 7, ll. 3–15. The system dynamically presents corresponding sets
of order related parameter values based on the selection in the remaining
columnar image areas. Id. at 1, l. 34–2, 1. 20; 7, ll. 16–28; Fig. 6.
Consistent with this disclosure, claim 1 recites the following step:
[(c)] display, in response to user entry of order associated
data, an image via a user interface including at least an initial
candidate order, wherein the order includes a plurality of order
related parameters, and order related parameter identifiers[.]
Limitation (c) when given its broadest reasonable interpretation, recites
displaying order associated information for an order for treatment to be
administered to a particular patent, i.e., a commercial interaction, which is a
method of organizing human activity and, therefore, an abstract idea. See
Revised Guidance 52.
Having concluded that claim 1 “recites” a judicial exception, i.e., an
abstract idea, under Step 2A, Prong One of the Revised Guidance, we next
consider whether the claim recites “additional elements that integrate the
exception into a practical application” (Step 2A, Prong Two). Revised
Guidance 54; see also MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) § 2106.05(a)–(c), (e)–(h).
Beyond the abstract idea, claim 1 additionally recites computer
components (e.g., a user interface, a repository, a processing device, and
computer storage media), as well as the following functions:
[(a)] a repository including information identifying
candidate items for order for treatment to be administered to a
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particular patient comprising corresponding order related
parameters, an individual item or service for order comprising a
plurality of order related parameters;
[(b)] one or more computer storage media storing
computer usable instructions that, when used by the one or more
processors, cause the one or more processors to [perform
limitations (c)–(f)];
[(d)] generate, based on the candidate order, a plurality of
substantially adjacent concurrently displayed columnar image
areas including a first columnar image area, the plurality of
substantially adjacent concurrently displayed columnar image
areas defining a column table, the column table footprint having
a fixed width,
wherein each columnar image area individually presents a
corresponding different one of the plurality of order related
parameters of an order and incorporating a plurality of user
selectable values for a respective order related parameter;
[(e)] shift, in response to user selection of an element
associated with the first columnar image area, displayed
columnar image areas laterally, enabling a column of data items
associated with the selected element to be incorporated in the
display image; and
[(f)] dynamically present, in response to user selection of
a first value for a first order related parameter in a columnar
image area for incorporation in said candidate order,
corresponding compatible sets of order related parameter values
in the remaining columnar image areas of said plurality of
concurrently displayed columnar image areas enabling user
selection of a complete candidate order.
The Appellant argues that the additional elements improve existing
clinical ordering systems by providing the generation of constrained
dynamic display grids comprising co-dependent and dynamic value lists, and
enabling value lists of the grids to shift and become visible or invisible
through single interactions while maintaining the advantage of concurrent
data field valuations. App. Br. 8, 14; see also Reply Br. 9 (the claims
“provide an improved clinical ordering system by generating constrained
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dynamic display grinds comprising co-dependent and dynamic value lists to
improve a technical process). We agree with Appellant that the additional
claim elements, considered in light of the Specification’s description of the
shortcomings associated with conventional clinical ordering systems and the
solution, shows that a specific asserted improvement in computer
capabilities of existing, clinical ordering systems is being claimed.
In particular, the present invention addresses these shortcomings by
generating a plurality of substantially adjacent concurrently displayed
columnar image concurrently displayed columnar image areas including a
first columnar image area, the plurality of substantially adjacent
concurrently displayed columnar image areas defining a column table, and
the column table footprint having a fixed width; shifting, in response to user
selection of an element associated with the first columnar image area,
displayed columnar image areas laterally, enabling a column of data items
associated with the selected element to be incorporated in the display image;
and dynamically presenting, in response to user selection of a first value for
a first order related parameter in a columnar image area for incorporation in
said candidate order, corresponding compatible sets of order related
parameter values in the remaining columnar image areas of said plurality of
concurrently displayed columnar image areas enabling user selection of a
complete candidate order. Specific asserted improvements in computer
capabilities, when claimed, can render claimed subject matter not directed to
an abstract idea. See McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299, 1316 (Fed. Cir. 2016) (“When looked at as a whole, claim 1 is
directed to a patentable, technological improvement over the existing,
manual 3–D animation techniques.”).
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We conclude, for the reasons set forth above, that claim 1 is integrated
into a practical application under Step 2A, Prong Two of the Revised
Guidance and, thus, not directed to an abstract idea. Therefore, we do not
sustain the Examiner’s rejection of claim 1, and its dependent claims under
35 U.S.C. § 101.
Independent claim 21 includes language substantially similar to the
language of independent claim 1. We are persuaded that the Examiner erred
in rejecting claim 21 under 35 U.S.C. § 101 for the same reasons set forth
with respect to claim 1. Therefore, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 101 of independent claim 21.

DECISION
The Examiner’s rejection of claims 1–5, 7–18, and 21 under 35 U.S.C.
§ 101 is reversed.

REVERSED