Jeffrey Lee. Mclaren et al.

Patent Trials and Appeals Board

Dec 17, 2019

12789783 - (D) (P.T.A.B. Dec. 17, 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.
12/789,783 05/28/2010 Jeffrey Lee McLaren 080415.0102 9273
5073 7590 12/17/2019
BAKER BOTTS L.L.P.
2001 Ross Avenue, 9th Floor
Dallas, TX 75201
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
PTOmail1@bakerbotts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY LEE MCLAREN,
WILLIAM DYER RODES II,
and JOHN MALCOLM TOUPS
____________

Appeal 2018-006780
Application 12/789,783
Technology Center 3600
____________

Before ANTON W. FETTING, DAVID C. MCKONE, and
MATTHEW S. MEYERS, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Jeffrey Lee McLaren, William Dyer Rodes II, and John Malcolm
Toups (Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection
of claims 1–19, the only claims pending in the application on appeal. This is
the second time this Application has come before us.3 We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of managing medical case and
chronology information for one or more medical practices. Spec. para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 8, which is reproduced below (bracketed matter and some
paragraphing added).
8. A method comprising:
[1] receiving electronic medical case board information
from a central medical information management system,
wherein the electronic medical case board information
includes a plurality of patient treatment entries that
correspond to patients scheduled for care
by a medical practice at a practice location during
a predetermined period of time,

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed December 11, 2017) and Reply Brief (“Reply Br.,” filed June 18,
2018), and the Examiner’s Answer (“Ans.,” mailed April 19, 2018), and
Final Action (“Final Act.,” mailed July 10, 2017).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as is Medaxion,
LLC (Appeal Br. 2).

3 In a Decision, mailed May 20, 2016, we reversed the Examiner’s sole
rejection of claims 1–19 under 35 U.S.C. § 102(b).
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wherein each of the patient treatment entries includes a
patient identifier, and one of a plurality of predefined
phases of care;
[2] providing a plurality of display modes corresponding to the
plurality of phases of care,
wherein each of the display modes displays the patient
treatment entries having the one of the predefined phases
of care corresponding to the display mode;
[3] receiving a patient update corresponding to one of the
patient treatment entries using a user interface,
the user interface comprising
a display and capable of receiving user input
and
the patient update comprising
information associated with a medical care event
for the patient associated with the corresponding
patient treatment entry;
[4] communicating the patient update to the medical
information management system;
[5] receiving updated electronic medical case board information
from the central medical information management
system,
the updated electronic medical case board information
incorporating the information from the patient update;
and
[6] updating the display based on the updated electronic
medical case board information.
Claims 1–19 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
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ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “display
mode.”
Facts Related to Appellant’s Disclosure
02. Patient treatment interface 508 may present a patient treatment
record in three different display modes. One mode may present
patient and case information in such a manner that facilitates
modification of specific data elements. Another display mode
may display case chronology and facilitate the tracking of medical
events for the case in corresponding time records. Another
display mode of patient treatment interface 508 may permit the
recording of case data items corresponding to medical events or
items not having a time or duration associated with them. Such
case items may be listed in a checklist form. Spec. para. 104.
ANALYSIS
Initially we construe the term “display mode.” This is not
lexicographically defined. Three examples are described, viz., (1) a manner
that facilitates modification of specific data elements; (2) display case
chronology and facilitate the tracking of medical events for the case in
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corresponding time records; and (3) recording of case data items
corresponding to medical events or items not having a time or duration
associated with them. FF 01 and 02. Each of these is a manner of display
that facilitates some way of data display and update. In particular, none of
these describes a physical or structural attribute, and no technological
attribute of the display or manner of display. Thus a “display mode” is
construed as a manner of display that facilitates some way of data display
and update, i.e., a manner of layout.
STEP 14
Claim 8, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question,
. . . 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. [The Court] described step two of
this analysis as 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.”

4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed.
Reg. at 54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 8 recites receiving information, providing display modes, receiving
and communicating update data, receiving more information, and updating a
display. Providing display modes is no more than using a display with its
generic capabilities of displaying different data layouts, i.e., display.
Communicating data is data transmission. Updating a display is data update
and display. Thus, claim 8 recites receiving, displaying, transmitting, and
updating data. None of the limitations recite technological implementation
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details for any of these steps, but instead recite only results desired by any
and all possible means.
From this we see that claim 8 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts5, (2) certain methods of organizing
human activity6, and (3) mental processes7. Among those certain methods
of organizing human activity listed in the Revised Guidance are managing
personal behavior or relationships or interactions between people. Like
those concepts, claim 8 recites the concept of displaying patient medical
information to those needing it. Specifically, claim 8 recites operations that
would ordinarily take place in advising one to update and display patient
medical information including medical care event information, the display
mode based on phase of care. The advice to update and display patient
medical information including medical care event information, the display

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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mode based on phase of care involves displaying patient information, which
is a behavioral management act, and communicating the data for display,
which is an act ordinarily performed in the stream of management. For
example, claim 8 recites “updating the display based on the updated
electronic medical case board information,” which is an activity that would
take place whenever one is conveying patient data to medical staff to
manage their activities. Similarly, claim 8 recites “communicating the
patient update to the medical information management system” which is also
characteristic of managing communications.
The Examiner determines the claims to be directed to updating,
communicating and displaying received patient treatment entries within a
surgical hospital environment. Final Act. 2.
The preamble to claim 8 does not recite what it is to achieve, but the
steps in claim 8 result in displaying patient medical information to those in
need of it, absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations 1, 3, and 5 recite data
reception. Limitation 2 recites providing display modes, i.e., data layouts
(see claim construction supra), which is part of conventional computer
display. Limitations 4 and 6 recite conventional data transmission and
display. The limitations thus recite advice for updating and displaying
patient medical information including medical care event information, the
display layout based on phase of care. To advocate updating and displaying
patient medical information including medical care event information, the
display layout based on phase of care is conceptual advice for results desired
and not technological operations.
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The Specification at paragraph 2 describes the invention as relating to
managing medical case and chronology information for one or more medical
practices. Thus, all this intrinsic evidence shows that claim 8 recites
managing medical case and chronology information for one or more medical
practices, i.e., displaying patient medical information to those needing it.
This is consistent with the Examiner’s determination.
This in turn is an example of managing personal behavior or
relationships or interactions between people as a certain method of
organizing human activity because displaying patient medical information to
those needing it is a conventional way of directing behavior of caregivers
toward patients. The concept of displaying patient medical information to
those needing it by updating and displaying patient medical information
including medical care event information, the display mode based on phase
of care is one idea for how to display such information. The steps recited in
claim 8 are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (display to help users process
information more quickly); Affinity Labs of Texas, LLC v. Amazon.com Inc.,
838 F.3d 1266, 1271 (2016) (customizing user interface and tailoring
content).
From this we conclude that at least to this degree, claim 8 recites
displaying patient medical information to those needing it by updating and
displaying patient medical information including medical care event
information, the display mode based on phase of care, which is a way of
managing personal behavior or relationships or interactions between people,
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a certain method of organizing human activity identified in the Revised
Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 8 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “‘to a new and useful end,’” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “‘buildin[g] block[s]’” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1, 3, and 5 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps
2, 4, and 6 are insignificant activity, such as storing, transmitting, or
displaying the results. All purported inventive aspects reside in how the data
are interpreted and the results desired, and not in how the process physically

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant’s claim 8 simply recites the concept of
displaying patient medical information to those needing it by updating and
displaying patient medical information including medical care event
information, the display mode based on phase of care as performed by a
generic computer. This is no more than conceptual advice on the parameters
for this concept and the generic computer processes necessary to process
those parameters, and do not recite any particular implementation.
Claim 8 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment9 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of displaying patient medical information to those needing it by
updating and displaying patient medical information including medical care
event information, the display mode based on phase of care under different
scenarios. It does not describe any particular improvement in the manner a
computer functions. Instead, claim 8 at issue amounts to nothing
significantly more than an instruction to apply displaying patient medical
information to those needing it by updating and displaying patient medical
information including medical care event information, the display mode
based on phase of care using some unspecified, generic computer. Under

9 The Specification describes workstations, laptops, netbooks, tablet
computers, personal data assistants (PDAs), or any other suitable computing
device. Spec. para. 33.
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binding precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field; applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition; implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim; effects a transformation or reduction of a
particular article to a different state or thing; or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 8 is directed to achieving the result of
displaying patient medical information to those needing it by advising one to
update and display patient medical information including medical care event
information, the display mode based on phase of care, as distinguished from
a technological improvement for achieving or applying that result. This
amounts to managing personal behavior or relationships or interactions
between people, which fall within certain methods of organizing human
activity that constitute abstract ideas. The claim does not integrate the
judicial exception into a practical application.
STEP 2B
The next issue is whether claim 8 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
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The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, displaying, transmitting, and updating data amounts
to electronic data query and retrieval—one of the most basic functions of a
computer. The limitation of a user interface is not a step, but a recitation of
what is used for data reception, viz. an interface comprising a display, which
is a generic computer data entry display. All of these computer functions are
generic, routine, conventional computer activities that are performed only
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for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible
narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’
. . . those functions can be achieved by any general purpose computer
without special programming”). None of these activities are used in some
unconventional manner nor do any produce some unexpected result.
Appellant does not contend they invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 8 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-display-
transmission-update is equally generic and conventional. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling,
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and monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 8 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 8 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the managing
personal behavior or relationships or interactions between people of
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displaying patient medical information to those needing it by updating and
displaying patient medical information including medical care event
information, the display mode based on phase of care, without significantly
more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–5 and Answer 3–7 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that
The Final Office Action and Examiner’s Answer alleges that
certain elements of the pending claims amount to well-
understood, routine, and conventional activities. See e.g., Final
Office Action, at 4; Examiner’s Answer, at 3. These
allegations, however, are entirely conclusory, fail to meet the
recent examination guidelines, and are insufficient under the
controlling Berkheimer standard. Indeed, the Examiner fails to
provide any evidentiary support that such elements comprise
well-understood, routine or conventional activity. Perhaps
more importantly, the Examiner has not even attempted to
address whether the ordered combinations of elements in the
claims constitute well-understood, routine, or conventional
activity.
Reply Br. 3–4. Evidence to support the determinations that the steps are
routine and conventional is cited supra.
We are not persuaded by Appellant’s argument that “the claims do not
need to be directed to an improvement to a computer in order to be patent-
eligible. As recognized by the Federal Circuit, claims are not abstract if they
are directed to an improvement in computer functionality or other
technology.” Reply Br. 4. The statement is factually correct, but unhelpful.
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The claims do not recite an improvement in computer functionality or other
technology.
Appellant contends “the pending claims recite an improvement to
computer technology because they recite a technological improvement to the
conventional method of distributing medical case board information (i.e., via
a physical case board).” Id. But Appellant’s contention relates to how
information is conveyed to a user, not to the underlying technology. See
Trading Techs., 921 F.3d at 1384 (“The claims are focused on providing
information to traders in a way that helps them process information more
quickly, not on improving computers or technology.”).
CONCLUSIONS OF LAW
The rejection of claims 1–19 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
CONCLUSION
The rejection of claims 1–19 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–19 101 Eligibility 1–19
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED