Langdon, Robert W.

Patent Trials and Appeals Board

May 4, 2020

12171160 - (D) (P.T.A.B. May. 4, 2020)

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.
12/171,160 07/10/2008 Robert W. Langdon TSYP.P0002US/1000082303 2443
29053 7590 05/04/2020
NORTON ROSE FULBRIGHT US LLP
2200 ROSS AVENUE
SUITE 3600
DALLAS, TX 75201-7932
EXAMINER
PORTER, RACHEL L
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT W. LANGDON
____________

Appeal 2019-000799
Application 12/171,160
Technology Center 3600
____________

Before BARBARA A. BENOIT, JOHN F. HORVATH,
and MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–17, and 19–30, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We refer herein to the Appeal Brief (“Appeal Br.”) filed Apr. 26, 2018, the
Examiner’s Answer (“Ans.”) mailed Sept. 7, 2018, the Reply Brief (“Reply
Br.”) filed Nov. 7, 2018, the Final Office Action (“Final Act.”) mailed Oct.
24, 2017, and the original Specification (“Spec.”) and Figures (“Figs.”) filed
July 10, 2008.
2 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as T-System, Inc. Appeal Br. 2.
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Introduction
Appellant describes the disclosed invention as “relate[d] to hospital
order entry systems and more particularly to systems and methods for
improving medical order entry for high volume situations.” Spec. ¶ 1.
By arranging the input screen of a computerized medical
order entry system to display pre-defined order-set possibilities
for several categories (for example, labs, diagnostic, staff,
medications) where the displayed order-set is directly related to
a selected one of a plurality of medical emergency conditions,
the physician can easily select orders from a single screen while
conducting a patient interview or examination. The system
allows the physician to concurrently select orders from order-
sets associated with medical conditions different from the
initially selected medical condition. In one embodiment, an
elapsed time for an order is displayed for overall monitoring of
patients.
Abstract.
Claims 1, 8, and 16 are independent. Claim 1 is illustrative:
1. A machine controlled method for medical practice
order entry, said method comprising:
executing, by a processing device, a computerized
medical order entry program which is configured to populate an
order selection display to accept medical orders from a user;
displaying, under control of said processing device, a
single page display containing a first section which lists a
plurality of selectable medical conditions;
displaying in the single page display, under control of
said processing device, a plurality of columns of possible
orders, each column in said plurality of columns displayed
concurrently with each other;
associating each column of said plurality of columns with
a different category of a plurality of categories of medical order
types;
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receiving a selection, from said user, of a medical
condition of the plurality of selectable medical conditions,
wherein the selection by said user is made using an input device
of said machine;
identifying a plurality of pre-defined order sets based on
the selected medical condition, wherein each pre-defined order
set of the plurality of pre-defined order sets comprises
predefined individually selectable orders that are pre-defined to
be directly related to said selected medical condition;
determining, for each pre-defined order set of the
plurality of pre-defined order sets, with which category of a
plurality of categories of medical order types each pre-defined
order set is associated;
populating each column of the plurality of columns on
said single page display with respective pre-defined order sets
based on the associated category of medical order types;
receiving a selection, by said user, of multiple ones of
said pre-defined individually selectable orders, at least one of
said multiple ones of said predefined individually selectable
orders being further modifiable by said user upon being
selected by said user;
receiving information, from the user, modifying the at
least one of said multiple ones of said predefined individually
selectable orders;
updating the at least one of said multiple ones of said
predefined individually selectable orders based on the received
information;
providing to a centralized server, said selected multiple
ones of said pre-defined individually selectable orders, wherein
the centralized server is configured to:
record in a database said selected multiple ones of
said pre-defined individually selectable orders;
generate a workflow based on said selected
multiple ones of said pre-defined individually selectable
orders;
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send a first request to a first department ordering a
first medical service be performed by the first
department; and
send a second request to a second department
ordering a second medical service be performed by the
second department.
Appeal Br. 22–23 (Claims App’x).
Rejections and References
The Examiner rejected claims 1, 3–17, and 19–30 under 35 U.S.C.
§ 101 as directed to a judicial exception, without reciting significantly more.
Final Act. 2–7.
The Examiner rejected claims 16, 17, 19–21, and 28–30 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 7–8.
The Examiner rejected claims 8–10, 14, and 15 under 35 U.S.C.
§ 102(b) as anticipated by Rucker (US 2005/0015279 A1; Jan. 20, 2005).
Final Act. 8–12.
The Examiner rejected claims 25–27 under 35 U.S.C. § 103(a) as
unpatentable over Rucker and Coli (US 6,018,713; Jan. 25, 2000). Final
Act. 13–14.
The Examiner rejected claims 11–13 under 35 U.S.C. § 103(a) as
unpatentable over Rucker and Batch (US 2006/0200369 A1; Sept. 7, 2006).
Final Act. 14–15.
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ANALYSIS
The § 101 Rejection
For the § 101 rejection, Appellant argues all pending claims together
as a group. Appeal Br. 6–15. We select claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(iv) (2017).
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept.” Id. at 218. In this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which 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.” Id. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court
describes the second step 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.’” Id. (quoting Mayo, 566 U.S. at 72–73).
In 2019, the USPTO published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–
57 (Jan. 7, 2019) (“Guidance”) see also October 2019 Patent Eligibility
Guidance Update, 84 Fed. Reg. 55942–53 (Oct. 17, 2019) (providing
“examples as well as a discussion of various issues raised by the public
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comments” to the Guidance). Under 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) (referred to as Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to as Step 2A, prong 2 in the Guidance).
See Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to Step
2B of the Guidance, in which we look to whether the claim:
(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.
See Guidance, 84 Fed. Reg. at 56.
Alice/Mayo Step One, 2019 Guidance Step 2A, Prong One
(Does Claim 1 Recite a Patent-Ineligible Concept?)
For our prong one analysis, we set aside the following quoted
elements recited in claim 1: (1) “machine[-]controlled” from the preamble;
(2) that the first recited step recites “executing, by a processing device, a
computerized” for the medical order entry program; (3) that the second and
third steps are performed “under control of said processing device;” (4) that
user input in the fifth step is by a device “of said machine;” and (5) “server”
from the twelfth step. We consider those elements as “additional elements”
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(individually and in combination) in our analyses below under prong two of
step 2A and under step 2B. Setting aside those quoted limitations, claim 1
recites a “method for medical practice order entry” that requires:
[a] [using a] medical order entry program which is
configured to populate an order selection display to accept
medical orders from a user;
[b] displaying . . . a single page display containing a first
section which lists a plurality of selectable medical conditions;
[c] displaying in the single page display . . . a plurality of
columns of possible orders, each column in said plurality of
columns displayed concurrently with each other;
[d] associating each column of said plurality of columns
with a different category of a plurality of categories of medical
order types;
[e] receiving a selection, from said user, of a medical
condition of the plurality of selectable medical conditions,
wherein the selection by said user is made using an input device
. . . ;
[f] identifying a plurality of pre-defined order sets based
on the selected medical condition, wherein each pre-defined
order set of the plurality of pre-defined order sets comprises
predefined individually selectable orders that are pre-defined to
be directly related to said selected medical condition;
[g] determining, for each pre-defined order set of the
plurality of pre-defined order sets, with which category of a
plurality of categories of medical order types each pre-defined
order set is associated;
[h] populating each column of the plurality of columns
on said single page display with respective pre-defined order
sets based on the associated category of medical order types;
[i] receiving a selection, by said user, of multiple ones of
said pre-defined individually selectable orders, at least one of
said multiple ones of said predefined individually selectable
orders being further modifiable by said user upon being
selected by said user;
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[j] receiving information, from the user, modifying the at
least one of said multiple ones of said predefined individually
selectable orders;
[k] updating the at least one of said multiple ones of said
predefined individually selectable orders based on the received
information;
[l] providing to a centralized [entity], said selected
multiple ones of said pre-defined individually selectable orders,
wherein the centralized [entity] is configured to:
[i] record in a database said selected multiple ones
of said pre-defined individually selectable orders;
[ii] generate a workflow based on said selected
multiple ones of said pre-defined individually selectable
orders;
[iii] send a first request to a first department
ordering a first medical service be performed by the first
department; and
[iv] send a second request to a second department
ordering a second medical service be performed by the
second department.
Step (a) requires using a “medical order entry program which is
configured to populate an order selection display to accept medical orders
from a user.” This encompasses, for example, a human-run program of
creating and using paper forms that display information for placing medical
orders, which people can then use for accepting such orders. Thus, step (a)
recites an idea for managing interactions between people, following rules or
instructions, which is an abstract idea in the category of certain methods of
organizing human activity. 2019 Guidance, 84 Fed. Reg. at 52.
Steps (b) and (c) recite displaying “a single page display containing a
first section which lists a plurality of selectable medical conditions” and “a
plurality of columns of possible orders, each column in said plurality of
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columns displayed concurrently with each other” in that single page display.
Extending the previous example, these steps encompass using a binder of
forms. An initial single page form includes a section displaying checkbox
selectable medical conditions (along with other suitable information that
may be entered at the point of selecting a medical condition, e.g., patient-
identifying information). Subsequent single page forms that correspond to
selectable medical conditions are then used for selecting and entering
medical order information for those medical conditions. Each of the
subsequent forms includes the “condition selection” column from the initial
page, highlighted to indicate the medical condition selected, together with
side-by-side columns of checkbox selectable medical orders specific to the
selected medical condition. Similar to step (a), steps (b) and (c) describe
activities for managing interactions between people, following rules or
instructions, and therefore also recite abstract ideas in the category of certain
methods of organizing human activity. Id.
Step (d) recites “associating each column of said plurality of columns
with a different category of a plurality of categories of medical order types.”
Continuing on with the foregoing example, this describes an action that a
person designing the single-page medical order entry forms can perform
mentally, using no more technology than pen and paper. Thus, step (d)
recites an abstract idea in the category of mental processes. Id. We also
note that steps (a)–(c), to the extent they may be performed by people with
no more technology than pen and paper, also recite mental processes.
Step (e) recites “receiving a selection, from said user, of a medical
condition of the plurality of selectable medical conditions, wherein the
selection by said user is made using an input device.” This encompasses, in
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the example above, a doctor checking a box to select a medical condition on
the form, or flipping through the binder of forms to the page that has that
medical condition highlighted. Thus, step (e) also recites an abstract idea in
the category of certain methods of organizing human activity, i.e., managing
interactions between people, following rules or instructions. Id.
Steps (f)–(l) similarly describe abstract ideas in the categories of
certain methods of organizing human activities and mental processes.
Similar to the “associating’ limitations in step (d), the “identifying” and
“determining” limitations in steps (f) and (g) encompass mental processes.
For step (h), “populating each column of the . . . display” is similar to the
“displaying” in steps (b) and (c); the example given for those steps also
applies to step (h). Here, the “populating” is done by the form designer, who
populates each form with the checkbox selectable medical orders that are
specific to that forms selected medical condition. Similar to step (e), the
“receiving a selection” and “receiving information” limitations in steps (i)
and (j) describe certain methods of organizing human activity (i.e.,
managing interactions between people using rules or instructions) and/or
mental processes. Steps (k) and (l) similarly recite limitations that are
abstract as either or both a certain method of organizing human activity or a
mental process. For example, upon selecting an order in step (i) (e.g., a
prescription), information received in step (j) (e.g., a patient’s weight) can be
used to update the order in step (k) (e.g., by specifying a pharmaceutical
dosage on the form). Thus, each step of claim 1 recites abstract limitations
that are part of, as the preamble describes, the claim’s idea for “medical
practice order entry.” Here, we note that “[a]dding one abstract idea . . . to
another abstract idea . . . does not render the claim non-abstract.”
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RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322, 1327 (Fed. Cir.
2017); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093–94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a
combination of abstract ideas).
Accordingly, under the 2019 Guidance, claim 1 recites a judicial
exception, and our analysis proceeds to prong two.
Alice/Mayo Step One, 2019 Guidance Step 2A, Prong Two
(Does Claim 1 Integrate the Abstract Idea into a Practical Application?)
We next consider whether the claim integrates the abstract idea into a
practical application. 2019 Guidance, 84 Fed. Reg. at 54. To determine this,
we identify whether there are “any additional elements recited in the claim
beyond the judicial exception(s)” and evaluate those elements to determine
whether they integrate the judicial exception into a practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also MPEP § 2106.05(a)–(c),
(e)–(h).
Here, as discussed above, claim 1 recites the following quoted
elements in addition to the abstract idea: (1) that the method is “machine[-
]controlled” (in the preamble); (2) the use of a “processing device” in steps
(a)–(c); (3) the use of “an input device of said machine” in step (e); and (4) a
“centralized server” in step (l). All these additional elements are recited in
the claim and described in the specification at a high, generic level. See,
e.g., Spec. ¶¶ 36–39 (referring to servers), 43 (referring to a processor), 49
(explaining that the scope of the claim is not limited to any particular
machine).
Although the additionally recited elements add a certain level of
specificity to claim 1, they do not, alone or in combination, constitute an
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improvement to a technology or technical field. Instead, they constitute
generic recitations of those technologies for automating performance of the
abstract idea. Thus, they do not constitute an improvement to “the
functioning of the computer itself” or “any other technology or technical
field.” See MPEP § 2106.05(a) (quoting Alice, 573 U.S. at 225). Neither do
these computer limitations qualify as applying the judicial exception with “a
particular machine,” because these components provide their conventional
functions and require no more than general purpose computer equipment.
See MPEP § 2106.05(b); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716–17 (Fed. Cir. 2014); TLI Commc’ns LLC v. AV Automotive LLC,
823 F.3d 607, 613 (Fed. Cir. 2016) (explaining that mere recitation of
concrete or tangible components is not an inventive concept).
Appellant’s arguments similarly do not persuade us that claim 1
effects a transformation of any recited articles, which are simply used for
their ordinary purposes, or that claim 1 includes any other meaningful
(technological) limitations, i.e., limitations beyond simply “linking the use”
of the abstract idea to generic technology. See MPEP § 2106.05 (c), (e)–(f);
see also id. at (g) (use of well-known limitations beyond the judicially
excepted matter constitutes “insignificant extra-solution activity”), (h)
(claim limitations “merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more”).
Accordingly, we determine the recited judicial exception is not
integrated into a practical application, and that the Examiner did not err in
determining claim 1 is directed to an abstract idea. Accordingly, we proceed
to step two of the Alice/Mayo analysis (2019 Guidance Step 2B)
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Alice/Mayo Step Two; 2019 Guidance Step 2B
(Does Claim 1 Recite Significantly More than the Abstract Idea?)
In step two of the Alice/Mayo analysis, we consider whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. at 72–73, 77–79 (2012)). As the 2019 Guidance explains, many of
the considerations to determine whether a claim amounts to “significantly
more” under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. 84 Fed. Reg. at 56. Thus, at this point of our analysis,
we determine if claim 1 adds a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field; or whether it simply recites well-understood, routine, conventional
activities at a high level of generality. Id.
Here, as the Examiner finds, and we agree, claim 1 does not recite
limitations (or a combination of limitations) additional to those for the
abstract idea that are beyond what were known to those of ordinary skill in
the art to be well-understood, routine, and conventional prior to the
invention. Final Act. 5–6; Ans. 20–21. The high-level, generic disclosure of
computer automation features in Appellant’s Specification related to claim 1
confirm this. See, e.g., Spec. ¶¶ 36–39, 43, 49.
Discussion of Appellant’s § 101 Arguments
Appellant’s arguments of error in the § 101 rejection are unpersuasive
in view our above determination under the 2019 Guidance that claim 1 is
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directed to an abstract idea, without reciting significantly more. Regardless,
for clarification, we discuss some of Appellant’s arguments.
Appellant contends the “claims are directed to patent eligible subject
matter, especially in view of Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., [880 F.3d 1356] (Fed. Cir. 2018), and McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016).” Appeal
Br. 6; see also id. at 8–14 and Reply Br. 2–5. Appellant further contends
claim 1 is patent eligible based on its similarity to the claims at issue in
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), Diamond v.
Diehr, 450 U.S. 175 (1981), and Trading Techs. Int’l v. CGQ, 675 F. App’x
1001 (Fed. Cir. 2017). Appeal Br. 7–8. These arguments are unpersuasive.
In Core Wireless, for example, the claims at issue were “directed to a
particular manner of summarizing and presenting information in electronic
devices” that addressed identified user interface deficiencies for electronic
devices with small screens. 880 F.3d at 1362; see also id. at 1359–60
(setting forth exemplary claims), 1363 (highlighting discussion in the
specification of improvements over conventional user interfaces). The Core
Wireless claims focus on a user interface improvement that includes a
specific technological limitation for “un-launched” software applications.
Id. The user interface functionality recited in Appellant’s claim 1, on the
other hand, includes only generic technological limitations and otherwise is
abstract (e.g., as discussed above, claim 1’s limitations for displaying a
particular arrangement of information on a single page display is abstract).
Claim 1 is similarly distinguishable from the claims at issue in Enfish, see
822 F.3d at 1336–37 (claim at issue included software technology limitation
for a “self-referential” database table), and McRO, see 837 F.3d at 1307–08,
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1315–16 (claim at issue included limitations related to “sub-sequences of
phonemes, timing, and the weight to which each phoneme is expressed
visually at a particular timing (as represented by [a] morph weight set)”).
In Diehr, the Court held the claims patent eligible because they were
“drawn to an industrial process for the molding of rubber products.” 450
U.S. at 192–93 (determining there was no attempt to patent a judicial
exception (i.e., mathematical formula) also recited in the claim). Thus, in
other words, unlike Appellant’s claim 1, the claims in Diehr were directed
(“drawn”) to a technological process (industrial rubber molding), while also
reciting a judicial exception. Claim 1 is patent ineligible because it is
directed to a non-technological judicial exception (i.e., an abstract idea),
while also reciting only high-level, generic computer limitations (that do not
add significantly more). See Alice, 208 U.S. at 223.
In Trading Technologies, the claims at issue recited limitations for a
graphical user interface (GUI) to address a specific problem with prior art
GUI software for real-time trading of stocks, bonds, options, and similar
products. See 675 F. App’x at 1003–05. Every step in the illustrative claim
in Trading Technologies includes GUI-related limitations. In view of the
interrelated functionality of the GUI limitations, the court determined the
claims “require[d] a specific, structured graphical user interface paired with
a prescribed functionality directly related to the graphical user interface’s
structure.” Id. at 1004. Although Appellant’s claim 1 also includes user
interface limitations (e.g., for displaying selectable medical conditions and
medical orders in a prescribed format on a single page display and for
receiving a user selection), claim 1 is not analogous to the claims in Trading
Technologies. The court found the recited GUI limitations addressed a
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specific problem with a real-time, computerized trading system, and the
claim limitations were not to analogous interfaces for use in non-electronic
trading systems. Id. As discussed above, however, except for generic
requirements such as for “a processing device” and “an input device,” claim
1’s user interface limitations are analogous to (and could be implemented in)
a non-technological solution, i.e., one that people can use that involves no
more technology than pen and paper.
In the Reply Brief, Appellant raises a new argument: that the
Examiner errs in the Alice/Mayo step two analysis based on the Federal
Circuit’s ruling in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
and the subsequently issued USPTO “Berkheimer Memorandum,” Changes
in Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (April 19,
2018). Reply Br. 5–6. Appellant points out that the Federal Circuit decision
in Berkheimer published “prior to issuance of the Examiner’s Answer.” Id.
at 5. We note publication of both the Berkheimer decision and the
corresponding USPTO Memorandum also occurred prior to the filing of
Appellant’s Appeal Brief. Appellant provides no good cause explanation for
not raising issues related to Berkheimer in the Appeal Brief. Thus,
Appellant waived any such argument. See 37 C.F.R. § 41.41(b)(2).
Appellant’s Berkheimer arguments are, regardless, unpersuasive. The
exemplary claim limitation at issue in Berkheimer was “storing a reconciled
object structure in the archive without substantial redundancy,” which the
court found was “directed to [an] arguably unconventional inventive concept
described in the specification.” 881 F.3d at 1370. There was no evidence in
the record that this limitation described well-understood, routine, and
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conventional technology. Id. at 1368. The court held there was a “genuine
issue of material fact” and that “fact questions created by the specification’s
disclosure” precluded summary judgment of invalidity under step two of the
Alice/Mayo framework. Id.
Here, on the other hand, as the Examiner finds, and we agree,
Appellant’s Specification demonstrates that the technological elements
recited in claim 1 were, at the time of filing, well-understood, routine, and
conventional. See Final Act. 5–6 and Ans. 20–21 (both citing Spec. ¶¶ 34–
37 as published in US 2010/0010833 A1; Jan. 14, 2010); see also Spec.
¶¶ 38–39, 43, 49; Berkheimer Memorandum Section III (A)(1). Consistent
with Berkheimer and as discussed in our analysis above under prong two of
Step 2A and under Step 2B of the Guidance, the record before us supports
the determination that additional elements recited in claim 1, alone or in
combination, do not add significantly more.
§ 101 Conclusion
Accordingly, we sustain the § 101 rejection of claim 1 and, along with
it, claims 3–17 and 19–30, which Appellant argues are patent eligible for the
same reasons as for claim 1 (see Appeal Br. 14–15).
The § 112, First Paragraph Rejection
Claim 16 recites, inter alia, “said individually selectable orders in said
pre-identified set of orders being modifiable by said care giver upon being
selected by said care giver.” Appeal Br. 26 (Claims App’x). The Examiner
rejects claim 16 under § 112, first paragraph, as lacking written description
support for this recitation. Final Act. 7–8 (rejecting its dependent claims 17,
19–21, and 28–30 also for this reason).
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Appellant contends the Examiner errs because paragraphs 27 and 28
of the Specification, which discuss Figures 2 and 3, provide the requisite
support for the disputed limitation. Appeal Br. 15. The Examiner answers
that “the cited portion of the disclosure does not describe a pre-identified
order set being modified by the physician or ‘said care giver.’ There is no
description of the caregiver adding or removing [or editing or modifying]
pre-identified tests in the set of possible diagnostics.” Ans. 21.
To fulfill the written description requirement, the “specification must
clearly allow persons of ordinary skill in the art to recognize that the
inventor invented what is claimed.” Gentry Gallery, Inc. v. Berkline Corp.,
134 F.3d 1473, 1479 (Fed. Cir. 1998) (internal citation, bracketing, and
quotation omitted). Here, Appellant’s Figure 2 shows a set of individually
selectable orders for diagnostic studies (i.e., “individually selectable orders
in said pre-identified set of orders,” as recited). See Spec. ¶ 27 (explaining
that each order “can also have an expansion section”). Figure 3 shows
details of an exemplary expansion section for a particular order that is
displayed when a physician selects that order, which a physician uses to
select parameters to customize the order (i.e., information for the order that
is “modifiable by said care giver upon being selected by said care giver,” as
recited). See Spec. ¶ 28. Thus, we agree with Appellant that paragraphs 27
and 28 of the Specification demonstrates the inventor was in possession of
“said individually selectable orders in said pre-identified set of orders being
modifiable by said care giver upon being selected by said care giver,” as
recited.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first
paragraph rejection of claims 16, 17, 19–21, and 28–30.
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The §§ 102 and 103 Rejections
Appellant contends the Examiner errs in the § 102 rejection of claim 8
because Rucker fails to disclose
a plurality of additional columns configured to display a
plurality of pre-defined order sets, . . . said plurality of pre-
defined order sets based on a medical condition selected by
said user, each pre-defined order set of the plurality of pre-
defined order sets comprising individually selectable orders
that are pre-defined as being directly related to said selected
medical condition,
as recited. Appeal Br. 16; see also id. at 17–18. The Examiner responds by
explaining that Rucker’s interface for selecting order sets from a variety of
possible order sets (as shown in Rucker Figure 2) and for modifying an
initial order set (as shown in Rucker Figure 3) disclose these disputed claim
limitations. Ans. 22 (citing Rucker ¶¶ 17–18, 20–21). Appellant replies that
Rucker fails to disclose, in the context of the combined limitations, the
individually selectable orders, as recited. Reply Br. 8. Appellant’s
argument is persuasive.
Anticipation is a strict standard that requires finding each and every
element as set forth in the claim, either expressly or inherently, in a single
prior art reference, arranged as required by the claim. Verdegaal Bros., Inc.
v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
“[D]ifferences between the prior art reference and a claimed invention,
however slight, invoke the question of obviousness, not anticipation.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(emphasis added), citing In re Arkley, 455 F.2d 586, 587 (CCPA 1972); see
also Arkley, 455 F.2d at 587–88.
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Here, Appellant persuades us that Rucker does not disclose a plurality
of concurrently displayed columns of pre-defined order sets based on a user-
selected medical condition, as recited. Although Rucker Figure 2 discloses a
user interface for selecting from columns of predefined, selectable order
sets, including “illness based” order sets that correspond to various
selectable medical conditions (see Rucker ¶ 17), we agree with Appellant
that “when a user selects one of these predetermined sets, the user is actually
selecting a medical complaint.” Reply Br. 9. In other words, although the
columns of order sets displayed in Rucker Figure 2can be used to select a
medical condition and the order sets corresponding to that medical
condition, the columns are displayed prior to selection of a medical
condition rather than “based on a medical condition selected by said user,”
as recited in claim 8.
Moreover, although the Examiner also cites Figure 7 of Rucker to
meet this limitation, and although Figure 7 does disclose columns of
predefined selectable order sets that are based on a selected medical
condition (e.g., order sets based on the selection of “pneumonia” in Figure
2), Figure 7 does not display a first column in a single page display allowing
a user to select a medical condition as recited in claim 8, and the Examiner
has not found that Figures 2 and 7 constitute a single page display or can be
combined to constitute a single page display. See Final Act. 9; see also
Rucker Figs. 2, 7.
Accordingly, we do not sustain the § 102 rejection of claim 8. There
is no finding in the §§ 102 and 103 rejections of claim 8’s dependent claims
that cure this error and, thus, we also do not sustain the § 102 rejection of
claims 9, 10, 14, and 15 and the § 103 rejections of claims 11–13 and 25–27.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–17, 19–
30
101 Eligibility 1, 3–17, 19–30
16, 17, 19–
21, 28–30
112, first
paragraph
Written
Description
16, 17, 19–
21, 28–30
8–10, 14, 15 102(b) Rucker 8–10, 14, 15
11–13 103(a) Rucker, Batch 11–13
25–27 103(a) Rucker, Coli 25–27
Overall
Outcome
1, 3–17, 19–30
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED