Chaudhri, Imran N. et al.

Patent Trials and Appeals Board

Dec 13, 2019

13798031 - (D) (P.T.A.B. Dec. 13, 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.
13/798,031 03/12/2013 Imran N. Chaudhri APX-1301-US 9893
36088 7590 12/13/2019
KANG LIM
3494 Camino Tassajara #444
Danville, CA 94506
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
12/13/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IMRAN N. CHAUDHRI, SHAHRAM SHAWN DASTMALCHI,
ROBERT DERWARD ROGERS, VISHNUVYAS DERWARD
SETHUMADHAVAN, and SHAMSHAD ALAM ANSARI
Appeal 2019-000278
Application 13/798,031
Technology Center 3600
Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS, and
NABEEL U. KHAN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
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Application 13/798,031
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DECISION ON APPEAL
STATEMENT OF THE CASE1,2
Pursuant to 35 U.S.C. § 134(a), Appellant3 appeals from the
Examiner’s decision to reject claims 1–16, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification, filed March 12, 2013 (“Spec.”); Final Office
Action, mailed October 17, 2017 (“Non-Final Act.”); Appeal Brief, filed
April 17, 2018 (“Appeal Br.”); and Examiner’s Answer, mailed August 9,
2018 (“Ans.”).
2 Appellant indicates “there are no appeals or interferences that could
directly affect or be directly affected by or having a bearing on the decision
by the Board of Patent Appeals and Interferences in the pending appeal.”
Appeal Br. 3, Related Appeals and Interferences. We initially note
Appellant erroneously names the predecessor to this tribunal (i.e., BPAI)
which was replaced by this Board (i.e., PTAB) effective September 16,
2012. Substantively, Appellant omits mention of appeals filed in
applications related to the instant application before this Board by virtue of
claiming priority to a common earlier filed application, serial number
13/223,228, including an appeal filed in connection with that earlier
application. Thus, the following appeals are considered related to the
current appeal and should have been identified by Appellant:
1. Appeal No. 2017-010346 in connection with serial number
13/223,228 decided on July 27, 2018, in which the Board reversed the
Examiner’s 35 U.S.C. § 103(a) rejections of all of the claims then
pending.
2. Appeal No. 2018-001790 decided on March 1, 2019 in connection
with serial number 13/769,261, in which, in connection with all
pending claims, the Board reversed a rejection under 35 U.S.C. § 101
and affirmed a rejection under 35 U.S.C. § 103(a).
3. Appeal No. 2020-000377, notice of appeal filed on November 27,
2018 in connection with serial number 13/801,947, now pending
before the Board and awaiting decision.
In connection with the omission, Appellant and Appellant’s counsel are
reminded of their duty to inform the Board of related appeals. See 37 C.F.R.
41.37(c)(l)(ii).
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Application 13/798,031
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a patient retention network using referral
analytics. Spec., Title. Claim 1 is representative of the claimed subject
matter:
1. In a medical information navigation engine (“MINE”), a
method for referral analysis, the method comprising:
inferring referral activity not reported into a referral
workflow system for a plurality of physicians utilizing intent-
based clustering of medical information;
calculating compliance to preferred referral reporting for
each physician by dividing a number of in-network referrals
reported by the given physician by total number of in-network
referrals inferred;
calculating an opportunity metric for each physician by
dividing a number of out-of-network referrals reported by the
given physician by total number of out-of-network referrals
inferred; and
training physicians on referral practices based on the
calculated compliance to preferred referral reporting and
opportunity metric.
REJECTION4
Claims 1–16 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2–3.

3 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 Apixio, Inc. Appeal
Br. 3.
4 Rejections of claims 1–16 under 35 U.S.C. § 103(a) have been withdrawn.
Ans. 3.
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Application 13/798,031
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ANALYSIS
Except as noted, we adopt as our own the findings and reasons set
forth by the Examiner in (1) the action from which this appeal is taken (Final
Act. 2–3) and (2) the Examiner’s Answer in response to Appellant’s Appeal
Brief (Ans. 3–6) and concur with the conclusions reached by the Examiner.
We highlight the following for emphasis.
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The U.S. Supreme Court, however, has “long held
that this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law,
based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018).
To determine patentable subject matter, we undertake a two part test.
“First, we determine whether the claims at issue are directed to one of those
patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017) (citation omitted). A court must be cognizant that “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
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nature, natural phenomena, or abstract ideas” (Mayo, 566 U.S. at 71), and
“describing the claims at . . . a high level of abstraction and untethered from
the language of the claims all but ensures that the exceptions to § 101
swallow the rule.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337
(Fed. Cir. 2016). Instead, “the claims are considered in their entirety to
ascertain whether their character as a whole is directed to excluded subject
matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). 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).
The Office recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”); see also USPTO,
October 2019 Update: Subject Matter Eligibility, available at https://www.
uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf (Oct. 17,
2019) (“Oct. 2019 Guidance”). Under the Revised Guidance, we look to
whether the claim recites
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(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Revised Guidance, 84 Fed. Reg. at 52, 55, 56. Under the Revised
Guidance, if the claim does not recite a judicial exception, then it is eligible
under § 101, and no further analysis is necessary. Id. at 54. Similarly, under
the guidance, “if the claim as a whole integrates the recited judicial
exception into a practical application of that exception,” then no further
analysis is necessary. Id. at 53, 54.
Step 2A, Prong 1
In connection with Step 2A the Examiner determines “Claims 1–16
are directed to the abstract idea of using a medical information navigation
engine for physician referral” including “performing the steps of inferring
information, calculating information, and training on the information
calculated.” Final Act. 2. According to the Examiner “[t]hese steps
correspond[] to concepts identified as abstract ideas by the courts, such as
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‘an idea of itself’ in Digitech[5].” Id. The Examiner addresses each of the
limitations, as follows:
The limitations are correlated to the concept of []organizing
information through mathematical correlations by inferring
referral activity not reported in a referral workflow system
utilizing intent-based clustering of medical information
(collecting information); calculating compliance to preferred
referral reporting . . . by dividing . . . referrals reported by the . . .
total number of . . . referrals inferred (mathematical
calculations); and training physicians on referral practices based
on the calculated compliance to preferred referral reporting and
opportunity metric (organizing the information).
Final Act. 2–3.
Appellant argues the step of training is not merely the organization of
information but “is an affirmative action, which falls outside of any
identified category of ‘abstract’ concept.” Appeal Br. 9.
The Examiner responds, finding:
[T]he training feature of claims 1 and 9 (“training physicians on
referral practices based on the calculated compliance to preferred
referral reporting and opportunity metric”) fails to disclose how
the training is implemented (for example, is it a computer based
training, in-person training). The Appellant’s [S]pecification
merely states “ . . . The MINE 112 provides the ability to track
patient referrals in a manner which may guide practitioners to
refer patients in network, and can provide tools for targeting
physician education and training on referral practices”
(paragraph 82 of Appellant's specification).
Ans. 4–5.

5 Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,
1350 (Fed. Cir. 2014) (holding claims directed to “a process of organizing
information through mathematical correlations” are patent-ineligible under
§ 101)
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Appellant’s contention is unpersuasive of Examiner error. Appellant
provides insufficient evidence or argument in support of the assertion that
training is not merely the organization of information similar to concepts
found to be abstract ideas as asserted by the Examiner.
In support of the training step Appellant directs attention to paragraph
82 of the Specification. Appeal Br. 4. The cited portion of the Specification
discloses employing patient retention systems that “collect data, generate
referral analytics, and otherwise compile and analyze relevant data.” Spec.
¶ 82. We find no mention thereat or elsewhere in the Specification of
training. Thus, consistent with Appellant’s disclosure, we agree with the
Examiner the training limitation is reasonably interpreted as the organizing
of information as recited by the claim, i.e., “training physicians on referral
practices based on the calculated compliance to preferred referral reporting
and opportunity metric.” Based on this interpretation, the training limitation
may be characterized as (i) a certain method or organizing human behavior
including managing personal behavior or relationships or interactions
including teaching (see Revised Guidance, 84 Fed. Reg. at 52); and (ii)
organizing information that can be performed in the human mind, i.e., a
mental process and thus corresponds to an abstract idea.
We further agree with the Examiner, and Appellant does not dispute,
the steps of inferring and calculating involve collecting information and
performing mathematical calculations that are mental processes (e.g.,
making observations, evaluating, and making judgments that can be
performed in the human mind and/or with pen and paper) and mathematical
concepts, all of which are considered to be abstract ideas. See Final Act. 2–
3.
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Furthermore, consistent with Appellant’s Specification, the claims are
also directed toward patient retention and marketing activities. Spec. ¶ 81.
Marketing is a type of commercial activity that, like teaching, is a certain
method of organizing human activity corresponding to an abstract idea.
For the reasons discussed above, the claims recite mental processes
and certain methods of organizing human activity (i.e., teaching and/or
marketing) that are considered to be abstract ideas under the Revised
Guidance.
Step 2A, Prong 2
The Examiner determines “[t]he claim(s) do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to significantly
more than the abstract idea.” Final Act. 3. The Examiner further finds
“[t]here is no indication that the combination of elements improves the
functioning of a computer or improves any other technology.” Id.
Appellant contends the claims amount to significantly more than the
abstract concepts identified by the Examiner because, rather than just
reciting using mathematical equations in the abstract, the claims recite
“using mathematical equations to analyze for referral opportunities and
using this information to train physicians.” Appeal Br. 9. The Examiner
responds, finding “the claims simply instruct the additional elements to
implement the concept described in the abstract idea with routine,
conventional activity specified at a high level of generality in a particular
technological environment.” Ans. 4.
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We are unpersuaded the claims integrate the judicial exception into a
practical application. Appellant’s emphasis on the training of physicians is
unavailing because, as discussed above, the training step is interpreted as the
organizing of information that can be performed in the human mind and, as
such, a mental process. In addition, the training step is also considered to be
a certain method or organizing human activity by managing personal
behavior, i.e., teaching and/or commercial or legal interactions, i.e.,
marketing. Certain methods of organizing human activity and mental
processes are identified in the Revised Guidance as abstract ideas. In
contrast, we find no features of the recited training that involve some
improvement to a technology such as improved operation of the inference
engine of claim 9 or any of the underlying technology such as any processor
supporting indexing and searching operations.
For the reasons discussed and in the absence of sufficient evidence or
argument to the contrary, we determine the claims do not include additional
elements that integrate the judicial exception into a practical application
because the additional elements: (1) do not improve the functioning of a
computer or other technology; (2) are not applied with any particular
machine (except for a generic computer); (3) do not effect a transformation
of a particular article to a different state; and (4) are not applied in any
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. See
MPEP § 2106.05(a)–(c), (e)–(h). Instead, any improvement is to the
underlying idea of using a medical information navigation engine for
physician referral requiring only the collection, manipulation, and
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organizing of information. Thus, claim 1 does not integrate the judicial
exception into a practical application.
Step 2B
Because claim 1 recites a judicial exception and does not integrate
that exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field.
Revised Guidance, 84 Fed. Reg. at 56. We analyze the claim elements, that
are well-understood, routine, conventional both individually and as an
ordered combination. See Alice, 573 U.S. at 217-18, 221-22 (“we consider
the elements of each claim both individually and ‘as an ordered
combination’” to determine whether the claim includes “significantly more”
than the ineligible concept) (quoting Mayo, 566 U.S. at 78-79); see also
Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016) (“an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional
pieces.”).

The Examiner finds:
The claims are merely generic components that perform
functions well-understood, routine, and conventional activities
that amount to no more than implementing the abstract idea with
a computerized system. The Applicant’s published application
recites “The interface 113, in some embodiments, is a software
program that executes on one or more servers 232, which can be
a server of any kind of suitable computing engine, such as
personal computer (PC). The servers 232 receive secure
information through the link 342 from the sources 114. The
processor 116, in some embodiments, includes the module 236
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and one or more servers 234, which may be any suitable
computing engine, similar to the servers 232, including but not
limited to PCs or servers.” (paragraph 49).
Final Act. 3.
We agree with the Examiner. Appellant has not identified any
limitation or combination of limitations of claim 1 or claim 9 that is not
“well-understood, routine, conventional” in the field as per MPEP
§ 2106.05(d). Therefore, we conclude claims 1 and 9, each viewed “both
individually and as an ordered combination,” do not recite significantly more
than the judicial exception to transform the claim into patent-eligible subject
matter. See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting
Mayo, 566 U.S. at 79).
Accordingly, for the reasons discussed, independent claims 1 and 9
are directed to certain methods of organizing human activity and mental
processes identified as abstract ideas. Furthermore, the claims do not recite
limitations that amount to significantly more than the abstract idea itself.
Therefore, we sustain the rejection of independent claims 1 and 9 under 35
U.S.C. § 101, together with the rejection of dependent claims 2–8 and 10–16
which are not argued separately with particularity.
DECISION
We affirm the Examiner’s rejection under 35 U.S.C. § 101.
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–12 101 Eligibility 1–16

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FINALITY AND RESPONSE
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). See
37 C.F.R. § 41.50(f).

AFFIRMED