Ex Parte Cullen et al

Patent Trial and Appeal Board

Mar 28, 2017

12418829 (P.T.A.B. Mar. 28, 2017)

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.
12/418,829 04/06/2009 Peter Cullen 23840-0279 9338
99255 7590 03/30/2017
Eversheds Sutherland (US) LLP/McK
999 Peachtree Street N.E.
Suite 2300
Atlanta, GA 30309
EXAMINER
PATEL, NEHA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
patentdocket @ eversheds-Sutherland, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER CULLEN and ELIZABETH S. KAYE
Appeal 2015-004481
Application 12/418,829
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—5, 7—13, and 15—25 which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-004481
Application 12/418,829
THE INVENTION
The Appellants’ claimed invention relates to processing electronically
transmitted healthcare related transactions (Spec., para. 2). Claim 1,
reproduced below with bracketed numerals added, is illustrative of the
subject matter on appeal.
1. A computer implemented method comprising:
[1] storing, by one or more switch provider computers, in
memory, logic comprising one or more preset rules for
implementing a value-add service on an electronic prescription
transaction;
[2] receiving, by one or more switch provider computers,
from a healthcare provider system associated with a healthcare
provider, the electronic prescription transaction, wherein the
one or more switch provider computers are separate and remote
from the healthcare provider system and any pharmacy system
comprising one or more networked computers associated with a
pharmacy or provider of a prescribed drug or product;
[3] accessing, by the one or more switch provider computers
from the memory, the stored logic;
[4] determining, by the one or more switch provider
computers from a plurality of value-add services, the value-add
service to perform on the electronic prescription transaction,
wherein the determining is based at least in part on information
in the electronic prescription transaction and the stored logic;
[5] editing the electronic prescription transaction by
performing, by the one or more switch provider computers, the
determined value-add service upon the electronic prescription
transaction based at least in part on the stored logic, wherein the
determined value-add service creates a modified electronic
prescription transaction correcting an error in the information
contained within the electronic prescription transaction; and
[6] forwarding, from the one or more switch provider
computers, the modified electronic prescription transaction to a
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pharmacy system associated with a pharmacy specified in the
electronic prescription transaction.
THE REJECTIONS
The Examiner relies upon the following as
rejections:
Rosenblum US 2003/0050731 A1
Henderson et al. US 2003/0236683 A1
(hereinafter “Henderson”)
Denny US 2007/0162309 Al
Piovanetti-Perez US 2009/0198520 Al
(hereinafter “Perez”)
evidence in support of the
Mar. 13, 2003
Dec. 25, 2003
July 12, 2007
Aug. 6, 2009
The following rejections are before us for review:
1. Claims 1—5, 7—13, and 15—25 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claims 1, 3—5, 7—9, 11—13, 15—19, and 25 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Denny and Perez.
3. Claims 2 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Denny, Perez, and Henderson.
4. Claims 20—24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Denny, Perez, and Rosenblum.
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Appeal 2015-004481
Application 12/418,829
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANALYSIS
35 U.S.C.§ 101
The Examiner has rejected claims 1—5, 7—13, and 15—25 under 35
U.S.C. § 101 (Ans. 2-4).
In contrast, the Appellants have argued that this rejection under 35
U.S.C. § 101 is improper (Reply Br. 2—10). The Appellants have argued that
the claim is not directed to an abstract idea, that the claims recite more than
generic computer functions, and that the claims avoid preemption and
improve a technological process (Reply Br. 4-10).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “laws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CIS
BankInt’l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 12/418,829
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea
{Id.). This is a search for an “inventive concept,” an element, or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself {Id.). The Court also stated
that “the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention” {Id. at 2358).
Here, we find that the claim is directed to a method of organizing
human activities in the concept of correcting errors. In this case, the method
of correcting errors is directed to correcting errors associated with electronic
prescription transactions and is a method of organizing human activities and
an abstract idea beyond the scope of § 101.
The Appellants have argued that claim 1 is an improvement in the
technological process of identifying and correcting errors in electronic
prescription transactions electronically transmitted and processed over a
network, such as the Internet (Reply Br. 4—6, 9—10). We disagree and find
the claim is not rooted in technology but rather directed to the abstract idea
of correcting errors associated with electronic prescription transactions in a
conventional computer network environment. See, e.g., Spec., para. 27
(“These network devices and systems may also include a processor for
processing data and executing computer-executable instructions, as well as
other internal and peripheral components that are well known in the art”); id.
at para. 28 (“healthcare provider system 102, switch provider 104, and third
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party system 108 may be in communication with each other via a network
such as network 106, which, as described below, can include one or more
separate or shared private and public networks, including the Internet or a
publicly switched telephone network”). The invention does not solve a
problem unique to the Internet or any other network or communication
technology. Rather, the invention addresses a business need, namely “a
need to provide clinical, administrative and/or financial value-add services
to the healthcare service being provided, as well as provide clinical,
administrative and/or financial messages related to the healthcare related
transaction processing to healthcare providers, patients, pharmacists, and/or
the like” (Spec., para. 5).
We note the point about pre-emption (Reply Br. 5—6, 8—9). While
pre-emption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws’” {Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), “the absence of complete preemption
does not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015)(“[T]hatthe claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
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abstract idea using generic computer components. We conclude that it does
not. Considering each of the claim elements, both individually and as an
ordered combination, the function performed by the computer at each step of
the process is purely conventional. Although the method is nominally
“computer-implemented,” each step of the claimed method does no more
than require a generic “one or more switch provider computers” to perform
routine computer functions (“storing,” “receiving,” “accessing,”
“determining,” “editing,” and “forwarding” information) that traditionally
have been provided manually. Cf. OIP Techs., 788 F.3d at 1363 (“relying
on a computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible”). The Specification supports
the view that the computer implementation is entirely conventional. See,
e.g., paragraph 31 of the Specification:
The switch provider 104 (also referred to as the “switch”)
may include any processor-driven device that is configured for
receiving, processing, and/or fulfilling healthcare related
transactions from the healthcare provider system 102 or from a
third party system 108. Such processor-driven device may be a
server computer, a mainframe computer, one or more networked
computers, a desktop computer, a personal computer, a laptop
computer, a mobile computer, a handheld portable computer, a
digital assistant, a personal digital assistant, a digital tablet, or
any other processor-based device.
For these reasons, the rejection of claim 1 and its dependent claims is
sustained. Independent claims 9 and 17 are each directed to a generic
“system” comprising “at least one memory device” and “at least one
processor associated with one or more switch provider computers” that
performs the same concept as claim 1. Accordingly, the rejection of
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independent claims 9 and 17, and their corresponding dependent claims, is
sustained for the same reasons.
35 U.S.C. § 103(a)
The Appellants argue, inter alia, that the rejection of claim 1 is
improper because the Examiner has not shown that the prior art discloses
limitation [5] of claim 1 (App. Br. 17—19). According to the Appellants, the
portions of Perez cited by the Examiner teach sending the transaction back
to the prescriber (healthcare provider) to let them review and correct the
transaction {Id. at 25).
In contrast, the Examiner has determined that the above limitation [5]
is found in Perez at paragraph 137 (Final Act. 5—6; Ans. 5—6). According to
the Examiner, the cited disclosure in Perez of a prescriber correcting and re­
submitting a corrected transaction is considered to disclose creating a
modified electronic prescription transaction (Ans. 6).
We agree with the Appellants.
Here, the argued claim limitation requires “[5] editing the electronic
prescription transaction by performing, by the one or more switch provider
computers . . . based at least in part on the stored logic [in the one or more
switch provider computers] . . . correcting an error” (emphasis added).
Thus, claim 1 requires that the switch provider computer, using the logic
stored therein at step [1], performs the claimed function of correcting an
error. The above citations to Perez fail to disclose this. Although Perez at
paragraph 137 discloses a pharmacy-network-exchange finding a
discrepancy (error) in an electronic prescription and returning a message
back to the ordering prescriber, and that the prescriber can then correct and
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re-submit the corrected prescription to the pharmacy-network-exchange,
Perez does not disclose that the correction is performed by the pharmacy-
network-exchange based on logic stored therein as required by claim 1.
For these reasons, the rejection of claim 1 and its dependent claims is
not sustained. The remaining claims contain a similar limitation, and the
rejection of these claims is not sustained for the same reasons given above.
CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting the claims under 35U.S.C. § 101.
We conclude that the Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a) as listed in the rejections
section above.
DECISION
The Examiner’s rejection of claims 1—5, 7—13, and 15—25 is affirmed.
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)(l)(iv).
AFFIRMED
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