Michael Ash et al.

Patent Trials and Appeals Board

Jan 4, 2021

2020003913 (P.T.A.B. Jan. 4, 2021)

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.
11/359,012 02/22/2006 Michael A. Ash 27098.120351 8044
46169 7590 01/04/2021
SHOOK, HARDY & BACON L.L.P.
(CERNER CORPORATION)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/04/2021 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
shbdocketing@shb.com
PTOL-90A (Rev. 04/07)
TED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. ASH and JOHN Q. DEVERTER
Appeal 2020-003913
Application 11/359,012
Technology Center 3600
Before JAMES R. HUGHES, NORMAN H. BEAMER, and
JASON M. REPKO, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1, 3–9, 12, 14–20, 23–27, and 33 are pending, stand rejected,
are appealed by Appellant,1, 2 and are the subject of our decision under

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2015). Appellant identifies the real party in interest as Cerner
Innovation, Inc. Appeal Br. 3.
2 Claim 2 was canceled by Appellant. Claim 3, as currently written,
improperly depends from canceled claim 2. See Appeal Br. 37 (Claims
App.). Correction is required. For the purposes of this appeal, we interpret
claim 3 as depending from independent claim 1, similar to claim 14 (which
depends from independent claim 12).
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35 U.S.C. § 134(a). See Non-Final Act. 1–2.3 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, generally “relate
to methods in a clinical computing environment for modifying a clinical
order.” Spec. ¶ 8. A clinical computing environment is “an electronic
healthcare order environment” where “a set of orders is placed for a
healthcare plan” such that the orders may be requested by healthcare
providers and “electronically dispersed” to the appropriate location. Spec. ¶
4; see Spec. ¶¶ 3–4. Related subject matter “describe[s] methods and
systems for creating and maintaining associations among the orders in a
healthcare plan in a computerized environment such that the associations
may be accessed and viewed after one or more of the orders is distributed.”
Spec. ¶ 4. A set of orders may have components which span multiple phases
(i.e., “a plan within a plan,” which may include, for example, a unit of time,
or a diagnostic grouping). Spec. ¶ 5. When a set of orders spans multiple
phases, each component of each phase appears as a separate order.
Conventionally, each component must be entered into an electronic system
separately and modifications made to a particular component must be
entered for that component in each of the phases. Spec. ¶ 6. More

3 Throughout our decision we refer to Appellant’s Specification (“Spec.”)
filed Feb. 22, 2006; Appeal Brief (“Appeal Br.”) filed Nov. 11, 2019; and
Reply Brief (“Reply. Br.”) filed Apr. 28, 2020. We also refer to the
Examiner’s Non-Final Office Action (“Non-Final Act.”) mailed Apr. 11,
2019; and Answer (“Ans.”) mailed Mar. 6, 2020.
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specifically, the claimed subject matter relates to a method of receiving a
clinical order with multiple components associated with multiple phases
having a common attribute, modifying the attribute, and automatically
modifying the associated components. See Spec. ¶¶ 8–13, 45–49, 52, 53, 57,
64, 71; Abstract. Claims 1 (directed to a method), 12 (directed to a method),
and 23 (directed to a computer storage medium) are independent and recite
automatic component modification functionality. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method of providing an improved user interface in a
clinical computing environment for automatically applying
modifications to associated components of cross-phase groups in
clinical orders, the method comprising:
receiving, utilizing a first computing process, a clinical
order that was prescribed to a particular patient, the clinical order
having a first component associated with a first phase and a
second component associated with a second phase, wherein the
first and second components have a first attribute in common,
wherein the first phase and the second phase are separated by
more than one day, wherein a phase is a sub-plan within a
healthcare plan, and wherein the healthcare plan includes
multiple orders for the treatment of a particular ailment in a
patient;
generating the user interface, wherein the user interface
comprises:
a navigation portion configured to present clinical
orders that have been received and to receive a user selection of
a component of a clinical order,
a cross-phase group details portion configured to
present information concerning the selected component and to
provide an option to add the selected component to a cross-phase
group, wherein the cross-phase group associates components
which span multiple phases of the healthcare plan, and
an attribute modification portion configured to
receive modifications to one or more attributes of one or more
components in the healthcare plan, wherein the attribute
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modification portion is presented in response to a user selection
of an initiation icon in the user interface;
receiving, via the navigation portion, a user selection of
the first component;
receiving, via the cross-phase group details portion, an
indication to associate the first component with a cross-phase
group;
receiving, via the navigation portion, a user selection of
the second component;
receiving, via the cross-phase group details portion, an
indication to associate the second component with the cross-
phase group;
associating, utilizing a second computing process, the first
and second components of the clinical order to form the cross-
phase group, wherein membership in the cross-phase group is
indicated by displaying a cross-phase group icon associated with
members of the cross-phase group, and wherein a user selection
of the cross-phase group icon displays the members of the cross-
phase group in the user interface;
responsive to a selection of the initiation icon, presenting
the attribute modification portion in the user interface;
receiving, via the attribute modification portion in the user
interface, utilizing a third computing process, after the clinical
order is prescribed to the patient, an indication to modify the first
attribute of the first component;
determining, utilizing a fourth computing process,
whether the second component has been dithered;
responsive to a determination that the second component
has not been dithered, modifying, utilizing a fifth computing
process, the first attribute of the first component and, based on
the association of the first component and the second component
in the cross-phase group, modifying the second component in the
same way, whereby a modification applied to the first component
is automatically applied to the second component;
responsive to a determination that the second component
has been dithered, modifying, using a sixth computing process,
the first attribute of the first component, but not the first attribute
of the second component, wherein the first, second, third, fourth,
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fifth and sixth computing processes are executed utilizing one or
more computing devices.
Appeal Br. 35–37 (Claims App.).
REJECTION
The Examiner rejects claims 1, 3–9, 12, 14–20, 23–27, and 33 under
35 U.S.C. § 101 as being directed to patent ineligible subject matter. See
Non-Final Act. 3–4.
ANALYSIS
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012). “[F]or distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
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‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
claim for an “inventive concept,” “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.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
The Patent Office has published revised guidance concerning this
framework and the application of § 101—USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).4 Under
this subject matter eligibility guidance in the Manual of Patent Examining
Procedure (MPEP), we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”) (see MPEP § 2106.04); and
(2) additional elements that integrate the judicial exception into
a practical application (hereinafter “Step 2A, prong 2”) (see
MPEP §§ 2106.04; 2106.04(d); 2106.05(a)–(c), (e)–(h)).
See MPEP §§ 2106.04, 2106.05; 2019 Revised Guidance, 84 Fed. Reg. at
51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a

4 The Office’s current eligibility guidance may also be found in the most
recent update to the Manual of Patent Examination Procedure (MPEP), 9th
ed., rev. 10.2019 (revised June 2020). See MPEP §§ 2103 through
2106.07(c).
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meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg. at
54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; see also Alice, 573 U.S. at 217–18.
For example, 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.5
See MPEP § 2106.05. With these principles in mind, we turn to the merits
of the § 101 rejection.
The Examiner’s Conclusions and Appellant’s Arguments
The Examiner rejects Appellant’s claims 1, 3–9, 12, 14–20, 23–27,
and 33 as being directed to patent-ineligible subject matter. See Non-Final
Act. 3–4; Ans. 3–5. Appellant does not separately argue the claims with
specificity and, instead, argues the claims together for this rejection. See
Appeal Br. 14–33. Accordingly, we address the Examiner’s rejection of

5 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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independent claim 1 and the claims not separately argued by Appellant as a
group based on claim 1, as permitted by 37 C.F.R. § 41.37(c)(1)(iv) (2018).
With respect to claim 1, the Examiner concludes that the “claimed
invention is directed to an abstract idea without significantly more” (Non-
Final Act. 3) because, inter alia, the “judicial exception is not integrated into
a practical application” in that “the generically recited additional computer
elements (i.e.[,] a computer . . .)” “do not add a meaningful limitation to the
abstract idea because they amount to simply implementing the abstract idea
on a computer” (Non-Final Act. 4), and “[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the additional limitations (i.e.[,] processor,
etc.) only store and retrieve information, and these are well-understood,
routine, conventional computer functions as recognized by the court
decisions listed in MPEP § 2106.05(d)” (Non-Final Act. 4).
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 14–33;
Reply Br. 2–10. Specifically, Appellant contends, inter alia, that “the
[E]xaminer’s assertion that the ‘additional elements’ are well-understood,
routine and conventional does not meet the requirements of the Office’s
Berkheimer Memorandum” because “the Specification do[es] not describe
the GUI or the recited combination of additional elements as conventional,
and the [E]xaminer did not provide any . . . citations named in the
Berkheimer Memo establishing that the claimed additional elements,
individually and as a combination, are conventional. Appeal Br. 31–32; see
Appeal Br. 27–33; Reply Br. 8–10.

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Inventive Concept
We have reviewed Appellant’s claims and contentions in detail and in
light of current precedent and guidance (supra). For the reasons explained
below, Appellant has persuaded us that the Examiner erred regarding Step
2B of the Eligibility Analysis. Because this issue is dispositive, we begin
with Step 2B rather than a detailed claim construction or analysis under the
2019 Revised Guidance Step 2A.
As directed by our reviewing court, a proper rejection under Step 2B
requires a search for an “‘inventive concept’ sufficient to ‘transform the
nature of the claim into a patent-eligible application.’” McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting Alice, 573 U.S. at 217). Under the second step of the Mayo/Alice
framework, i.e., Step 2B, the Examiner must “look with more specificity at
what the claim elements add, in order to determine ‘whether they identify an
‘inventive concept’ in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). An “inventive concept”
requires more than “well-understood, routine, conventional activity already
engaged in” by the relevant industry. Rapid Litig. Mgmt. Ltd. v. CellzDirect,
Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–
80); see Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l
Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014). The “inventive concept”
“must be significantly more than the abstract idea itself, and cannot simply
be an instruction to implement or apply the abstract idea on a computer.”
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
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1349 (Fed. Cir. 2016) (citation omitted). But a “non-conventional and non-
generic arrangement of known, conventional pieces” may provide an
“inventive concept” satisfying Mayo/Alice Step 2. Id. at 1350.
“The second step of the Alice test is satisfied when the claim
limitations ‘involve more than performance of []well-understood, routine,
[and] conventional activities previously known to the industry.’”
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting
Content Extraction, 776 F.3d at 1347–48 and Alice, 573 U.S. at 225).
“Whether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination.”
Berkheimer, 881 F.3d at 1369. See MPEP § 2106.05(d)(I)(2); 2019 Revised
Guidance, 84 Fed. Reg. at 56.
As previously discussed, the Examiner rejects Appellant’s claim 1
(and the other pending claims) as being directed to patent-ineligible subject
matter (supra), and concludes (with respect to Step 2B) that claim 1 recites
additional elements such as “a computer” and “a processor”—i.e., the
“additional computer elements”—that “amount to simply implementing the
abstract idea on a computer” computing system in that “the additional
limitations . . . only store and retrieve information, and these are well-
understood, routine, conventional computer functions.” Non-Final Act. 4;
see Ans. 4. The Examiner, however, fails to even mention the “user
interface” recited in claim 1 and discussed by Appellant. See Appeal Br. 32;
Reply Br. 9–10. The Examiner fails to make the requisite findings, much
less support such findings with evidence as required by Berkheimer.
The Examiner’s conclusions with respect to the Step 2B (inventive
concept) analysis are not supported by sufficient evidence and, therefore, are
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erroneous. The Examiner’s rejection and response (supra) have not
provided the evidence required by Berkheimer to support the Examiner’s
determinations that the claims do not recite an inventive concept (that the
additional elements are generic—i.e., well-understood, routine, and
conventional). See Berkheimer, 881 F.3d at 1369; MPEP
§§ 2106.05(d)(I)(2) and 2106.07(a)(III); 2019 Revised Guidance, 84 Fed.
Reg. at 56 n.36.
We agree with Appellant (see Appeal Br. 32; Reply Br. 9–10) that the
Examiner has not established a prima facie case. With respect to the specific
features and operations of the GUI, the Examiner has not provided any of
the four categories of information required by the USPTO’s guidance in its
Berkheimer Memo,6 now incorporated in MPEP
§ 2106.07(a)(III):
(A) A citation to an express statement in the specification or to
a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s) . . . .
(B) A citation to one or more of the court decisions discussed
in MPEP § 2106.05(d), subsection II, as noting the well-
understood, routine, conventional nature of the additional
element(s).
(C) A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s) . . . .

6 Memorandum from Robert W. Bahr, entitled “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject
Matter Eligibility Decision (Berkheimer v. HP, Inc.),” dated April 19,
2018 (“Berkheimer Memo”). The Berkheimer Memo is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF.
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(D) A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s) . . . .
MPEP § 2106.07(a)(III).
In summary, the Examiner has not provided sufficient persuasive
evidence that Appellant’s claim 1 recites additional elements that are well-
understood, routine, and conventional with respect to Step 2B of the
Alice/Mayo framework in the Revised Guidance. Accordingly, we are
constrained by the record to reverse the Examiner’s rejection of claims 1, 3–
9, 12, 14–20, 23–27, and 33 under 35 U.S.C. § 101 on procedural grounds.
CONCLUSION
For the reasons discussed above, we determine that claims 1, 3–9, 12,
14–20, 23–27, and 33 are not directed patent-ineligible subject matter. We,
therefore, do not sustain the Examiner’s rejection of claims 1, 3–9, 12, 14–
20, 23–27, and 33.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–9, 12,
14–20, 23–
27, 33
101 Eligibility 1, 3–9, 12,
14–20, 23–
27, 33

REVERSED