Samuel I. Brandt et al.

Patent Trials and Appeals Board

Dec 17, 2019

11285807 - (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.
11/285,807 11/23/2005 Samuel I. Brandt 27098.224419 8629
46169 7590 12/17/2019
SHOOK, HARDY & BACON L.L.P.
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
WINSTON III, EDWARD B
ART UNIT PAPER NUMBER
3626
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):
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 SAMUEL I. BRANDT, JAN DEHAAN,
JOHN D. HALEY, and ZHIJING LIU
____________

Appeal 2018–005693
Application 11/285,807
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
SCOTT C. MOORE, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Samuel I. Brandt, Jan DeHaan, John D. Haley, and Zhijing Liu
(Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed November 3, 2017) and Reply Brief (“Reply Br.,” filed May 16,
2018), and the Examiner’s Answer (“Ans.,” mailed March 22, 2018), and
Final Action (“Final Act.,” mailed May 22, 2017).
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claims 1–20, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a predictive user interface system enabling
user selection of related parameters identifying an order for providing an
item. Specification 1:9–12.
An understanding of the invention can be derived from a reading of
exemplary claim 20, which is reproduced below (bracketed matter and some
paragraphing added).
20. A method for
providing a user interface enabling user selection of
related parameters identifying an order for providing an
item,
comprising the activities of: using at least one computer system
for:
[1] storing,
in a repository,
information identifying candidate items for order and
associated corresponding related order parameters,
an individual item for order identifying a type of
medication and being associated with a plurality of
related order parameters including at least two of, (a)
quantity, (b) a route of administration, (c) a frequency of
administration, and (d) a form of medication and an order
comprising a record indicating a medication for
administration to a patient;

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 Cerner
Innovation, Inc. (Appeal Br. 3).

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[2] in response to user entry of data identifying order
parameters,
using the user entry and the information in the repository
to provide data
representing a display image identifying an initial
complete candidate order of a medication that is
relevant to the user entry,
wherein the initial complete candidate order
includes the plurality of related order parameters;
[3] in response to user selection of one or more of the plurality
of related order parameters included in initial complete
candidate order in the display image, using
the user selection,
the repository,
and
a user's ordering history
for a plurality of different patients
to select additional related order parameters for
concatenation into complete candidate orders that include
the one or more of the plurality of related order
parameters of the user selection;
[4] using the repository and the user's ordering history,
concatenating the selected additional related order parameters
into a plurality of complete candidate orders that are responsive
to the user selection,
wherein each of the plurality of complete candidate
orders are different and individually selectable;
[5] provid[ing] data for display representing the plurality of
different individually user selectable complete candidate orders
that include the selected additional related order parameters,
wherein each of the selected additional related order
parameters are individually constrained to sets of
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allowable values specific to each respective individual
related order parameter,
the sets of allowable values having a highest probability
of being selected by a user based on frequency of
selection of the respective individual parameter for an
ordered item by the user based on the user's ordering
history for a plurality of different patients;
[6] in response to a subsequent user selection of one of the
plurality of different individually user selectable complete
candidate orders provided,
selecting all of the additional related parameters
concatenated into the one complete candidate order of the
subsequent user selection;
and
[7] communicating data representing the selected one complete
candidate order to a pharmacy.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
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ANALYSIS
STEP 13
Claim 20, 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 has
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.”
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

3 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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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 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 20 recites storing information, providing data, selecting parameters
using data, concatenating parameters using data, providing data for display
based on frequency of selection, selecting parameters into an order, and
communicating data. Providing and communicating data are data
transmission. Selecting data is rudimentary data analysis. Concatenating
data is data update. Thus, claim 20 recites storing, receiving, updating,
analyzing, and transmitting data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 20 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
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extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,4 (2) certain methods of organizing
human activity,5 and (3) mental processes.6 Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 20 recites the concept of
creating and sending an order to a pharmacy. Specifically, claim 20 recites
operations that would ordinarily take place in advising one to create and
send to a pharmacy an order based on parameters selected from other orders
based on frequency of selection. The advice to create and send to a
pharmacy an order based on parameters selected from other orders based on
frequency of selection involves sending an order to a pharmacy, which is an
economic act, and creating the order, which is an act ordinarily performed in
the stream of commerce. For example, claim 20 recites “communicating data
representing the selected one complete candidate order to a pharmacy,”
which is an activity that would take place whenever one is sending an order
to a pharmacy. Similarly, claim 1 recites “identifying an initial complete

4 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).
5 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).
6 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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candidate order of a medication” which is also characteristic of creating an
order for a pharmacy.
The Examiner determines the claims to be directed to comparing new
and stored information using rules to identify options. Final Act. 2.
The preamble to claim 20 recites that it is a method for providing a
user interface enabling user selection of related parameters identifying an
order for providing an item. The steps in claim 20 result in communicating
an order built from parameters selected by various data and rules, to a
pharmacy absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitation 1 recites data storage and
limitations 2 and 5 recite providing data. Limitation 7 recites data
transmission. Limitations 3 and 6 recite conventional analysis in the form of
data selection. Limitation 4 recites rudimentary concatenation of parameter
data, one of the most primitive data operations. The limitations thus recite
advice for creating and sending to a pharmacy an order based on parameters
selected from other orders based on frequency of selection. To advocate
creating and sending to a pharmacy an order based on parameters selected
from other orders based on frequency of selection is conceptual advice for
results desired and not technological operations.
The Specification at 1:9–12 describes the invention as relating to a
predictive user interface system enabling user selection of related parameters
identifying an order for providing an item. Thus, all this intrinsic evidence
shows that claim 20 recites creating and sending an order to a pharmacy.
This is consistent with the Examiner’s determination.
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This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because ordering from a
pharmacy is a generic commercial transaction. The concept of creating and
sending an order to a pharmacy by creating and sending to a pharmacy an
order based on parameters selected from other orders based on frequency of
selection is one idea for automating order creation. The steps recited in
claim 20 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 1084, 1089 (Fed. Cir. 2019) (receiving information,
displaying such information, and sending an order to an electronic exchange
based on a user input).
From this we conclude that at least to this degree, claim 20 recites
creating and sending an order to a pharmacy by creating and sending to a
pharmacy an order based on parameters selected from other orders based on
frequency of selection, which is a commercial and legal interaction, one of
certain methods of organizing human activity identified in the Revised
Guidance, and, thus, an abstract idea.

STEP 2A Prong 2
The next issue is whether claim 20 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.7

7 See, e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S.
175 (1981)).
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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. Step 1 is a pure data storage step, and
steps 2 and 5 are the complement of transferring data. Limitations
describing the nature of the data do not alter this. Step 7 is generic post
solution activity, such as storing, transmitting, or displaying the results.
Steps 3, 4, and 6 recite generic computer processing expressed in terms of
results desired by any and all possible means and so present no more than
conceptual advice. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant’s claim 20 simply recites the concept of
creating and sending an order to a pharmacy by creating and sending to a
pharmacy an order based on parameters selected from other orders based on
frequency of selection as performed by a generic computer. This is no more
than conceptual advice on the parameters for this concept and the generic
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computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 20 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 17+ pages of Specification spell out
different generic equipment8 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of creating and sending an order to a pharmacy by
creating and sending to a pharmacy an order based on parameters selected
from other orders based on frequency of selection under different scenarios.
They do not describe any particular improvement in the manner a computer
functions. Instead, claim 20 at issue amounts to nothing significantly more
than an instruction to apply creating and sending an order to a pharmacy by
creating and sending to a pharmacy an order based on parameters selected
from other orders based on frequency of selection using some unspecified,
generic computer. Under our 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

8 The Specification describes a personal computer (PC), a·desktop
computer, a laptop computer, a workstation, a minicomputer, a mainframe, a
supercomputer, a network-based device, a personal digital assistant (PDA), a
smart card, a cellular telephone, a pager, and a wristwatch. Spec. 5:9–14.
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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 20 is directed to achieving the result of
creating and sending an order to a pharmacy by advising one to create and
send to a pharmacy an order based on parameters selected from other orders
based on frequency of selection, as distinguished from a technological
improvement for achieving or applying that result. This amounts to
commercial or legal interactions, 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 20 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
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
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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 storing, receiving, updating, analyzing, and transmitting data
amounts to electronic data query and retrieval—one of the most basic
functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp., LLC 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
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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 20 add nothing that is not already present when the steps
are considered separately. The sequence of data storage-reception-update-
analysis-transmission 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); see also 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, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 20 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 20 is representative. The remaining method claims merely
describe process parameters. We conclude that the remaining method claims
at issue are directed to a patent-ineligible concept itself, and not to the
practical application of that concept.
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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 commercial and
legal interaction of creating and sending an order to a pharmacy by creating
and sending to a pharmacy an order based on parameters selected from other
orders based on frequency of selection, 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 5–6 and
reach similar legal conclusions. We now turn to the Reply Brief.

Appellant argues that the asserted claims are akin to the claims
found patent-eligible in Core Wireless Licensing S.A.R.L. v. LG Electronics,
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Inc., 880 F.3d 1356 (Fed. Cir. 2018). Reply Br. 2–8. But the Court in
Trading Techs. addressed Appellant’s Core Wireless argument.
Relying principally on Core Wireless, TT argues the claimed
invention provides an improvement in the way a computer
operates. We do not agree. The claims of the ’999 patent do
not improve the functioning of the computer, make it operate
more efficiently, or solve any technological problem. Instead,
they recite a purportedly new arrangement of generic
information that assists traders in processing information more
quickly.
Trading Techs., 921 F.3d at 1093 (citations omitted). The instant claims do
not improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem. Instead, they recite a
purportedly new arrangement of generic information that assists users in
processing information more quickly.

We are not persuaded by Appellant’s argument that
because a question of fact exists with regard to independent
claim 1, the examiner bears the burden of providing factual
support or evidence for its determination that features are well-
understood, routine, or conventional. Currently the record does
not include support or evidence. As such, it has not been
established that the features of amended independent claim 1
are well-understood, routine, and/or conventional.
Reply Br. 8. Such support and evidence are made of record supra.
CONCLUSIONS OF LAW
The rejection of claims 1–20 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.

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CONCLUSION
The rejection of claims 1–20 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED