International Business Machines Corporation

Patent Trials and Appeals Board

Nov 30, 2020

2020003550 (P.T.A.B. Nov. 30, 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.
15/268,965 09/19/2016 Corville O. Allen SVL920160100US1 3398
45725 7590 11/30/2020
Walder Intellectual Property Law PC
445 Crestover Circle
Richardson, TX 75080
EXAMINER
SANGHERA, STEVEN G.S.
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
11/30/2020 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 CORVILLE O. ALLEN and TIMOTHY A. BISHOP
____________

Appeal 2020-003550
Application 15/268,9651
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–5, 7–15, and 17–22. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies International Business Machines
Corporation as the real party in interest. Appeal Br. 2.
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THE INVENTION
Appellant states, “[t]he present application relates generally to…
mechanisms for providing automatic adjustment of treatment
recommendations based on economic status of patients.” Spec. ¶ 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method, in a data processing system comprising at
least one processor and at least one memory, the at least one
memory comprising instructions executed by the at least one
processor to cause the at least one processor to implement a
cognitive medical treatment recommendation system, the
method comprising:
ingesting, by the cognitive medical treatment
recommendation system, medical treatment information data
structure for a medical payment provider, wherein the medical
treatment information data structure provides treatment
information including costs to patients for one or more medical
treatments;
generating, by the cognitive medical treatment
recommendation system, a set of insight data structures based
on the ingested medical treatment information for the at least
one medical payment provider;
processing, by the cognitive medical treatment
recommendation system, personal information about a patient
to determine an economic status of the patient;
processing, by the cognitive medical treatment
recommendation system, an electronic medical record for the
patient identifying a medical condition of the patient to select a
set of candidate medical treatments, from a plurality of
candidate treatment options, for treating the medical condition
of the patient;
selecting, by the cognitive medical treatment
recommendation system, a recommended medical treatment
from the set of candidate medical treatments, based on the set of
insight data structures and the economic status of the patient;
and
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outputting, by the cognitive medical treatment
recommendation system, the selected treatment option for use
in treating the medical condition of the patient, wherein
selecting a medical treatment comprises:
weighting scores associated with each candidate medical
treatment in the set of candidate medical treatments based on
whether or not the candidate medical treatment falls within a
tier, of a plurality of different tiers of the medical treatment
information data structure, corresponding to the determined
economic status of the patient; and
selecting a candidate medical treatment, from the set of
candidate medical treatments, based on a ranking of scores
associated with each of the candidate medical treatments in the
set of candidate medical treatments.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Graettinger et al.
(“Graettinger”)
US 5,839,438 Nov. 24, 1998
Camarda et al.
(“Camarda”)
US 6,578,003 B1 June 10, 2003
Berlin et al.
(“Berlin”)
US 2005/0021240 A1 Jan. 27, 2005
Underwood et al.
(“Underwood”)
US 2005/0222867 A1 Oct. 6, 2005
Ullman US 2006/0026041 A1 Feb. 2, 2006
McCallie et al.
(“McCallie”)
US 2006/0265245 A1 Nov. 23, 2006
Fiedotin et al.
(“Fiedotin”)
US 7,509,263 B1 Mar. 24, 2009
Benser et al.
(“Benser”)
US 7,519,425 B2 Apr. 14, 2009
Oscar et al. US 7,917,372 B2 Mar. 29, 2011
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(“Oscar”)
Ramarajan et al.
(“Ramarajan”)
US 2012/0016690 A1 Jan. 19, 2012
Boissel US 2013/0041683 A1 Feb. 14, 2013
Nee US 2013/0060575 A1 Mar. 7, 2013
Rosenberg et al.
(“Rosenberg”)
US 2014/0244292 A1 Aug. 28, 2014

The following rejections are before us for review:
Claims 1–5, 7–15, and 17–22 under 35 U.S.C. § 101 as being directed
to a judicial exception.
Claims 1, 3, 8, 11, 13, 18, and 20 under 35 U.S.C. § 103 as being
unpatentable over Rosenberg, Underwood, and Ramarajan.
Claims 2 and 12 under 35 U.S.C. § 103 as being unpatentable over
Rosenberg, Ramarajan, Underwood, and Fiedotin.
Claims 4 and 14 under 35 U.S.C. § 103 as being unpatentable over
Rosenberg, Ramarajan, Underwood, and Camarda.
Claims 5 and 15 under 35 U.S.C. § 103 as being unpatentable over
Rosenberg, Underwood, Ramarajan, and McCallie.
Claims 7 and 17 under 35 U.S.C. § 103 as being unpatentable over
Rosenberg, Underwood, Ramarajan, and Berlin.
Claims 9 and 19 under 35 U.S.C. § 103 as being unpatentable over
Rosenberg, Underwood, Ramarajan, and Ullman.
Claim 10 under 35 U.S.C. § 103 as being unpatentable over
Rosenberg, Underwood, Ramarajan, and Nee.
Claim 21 under 35 U.S.C. § 103 as being unpatentable over
Rosenberg, Underwood, Ramarajan, Graettinger, Boissel, and Benser.
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Claim 22 under 35 U.S.C. § 103 as being unpatentable over
Rosenberg, Underwood, Ramarajan, Oscar, and McCallie.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–6 in the
Final Office Action2 and on pages 3–10 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–5, 7–15, and 17–22 under
35 U.S.C. § 101.
The Appellant argues claims 1–5, 7–15, and 17–22 as a group (Appeal
Br. 5). We select claim 1 as the representative claim for this group, and so
the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.

2 All references to the Final Office Action refer to the Final Office Action
mailed on June 12, 2019.
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Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).3 “All USPTO personnel are, as a matter of internal agency

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.4
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
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 look, under
Step 2B, 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 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior
to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should
not be relied upon.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] 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.” Guidance, 84
Fed. Reg. at 53; see also MPEP §§ 2106.04–2106.05.
The Specification states:
Decision-support systems exist in many different
industries where human experts require assistance in retrieving
and analyzing information. An example that will be used
throughout this application is a diagnosis system employed in
the healthcare industry. Diagnosis systems can be classified
into systems that use structured knowledge, systems that use
unstructured knowledge, and systems that use clinical decision
formulas, rules, trees, or algorithms. The earliest diagnosis
systems used structured knowledge or classical, manually
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constructed knowledge bases. The Internist-I system developed
in the 1970s uses disease-finding relations and disease–disease
relations. The MYCIN system for diagnosing infectious
diseases, also developed in the 1970s, uses structured
knowledge in the form of production rules, stating that if certain
facts are true, then one can conclude certain other facts with a
given certainty factor. DXplain, developed starting in the
1980s, uses structured knowledge similar to that of Internist-I,
but adds a hierarchical lexicon of findings.
Spec. ¶ 2.
The preamble of claim 1 states it is for “implement[ing] a cognitive
medical treatment recommendation system.”
Understood in light of the Specification, claim 1 recites in pertinent
part,
ingesting . . . medical treatment information data
structure for a medical payment provider, wherein the medical
treatment information data structure provides treatment
information including costs to patients for one or more medical
treatments;
generating . . . a set of insight data structures based on the
ingested medical treatment information for the at least one
medical payment provider;
processing . . . personal information about a patient to
determine an economic status of the patient;
processing . . . an electronic medical record for the
patient identifying a medical condition of the patient to select a
set of candidate medical treatments, from a plurality of
candidate treatment options, for treating the medical condition
of the patient;
selecting . . . a recommended medical treatment from the
set of candidate medical treatments, based on the set of insight
data structures and the economic status of the patient; and
outputting . . . the selected treatment option for use in
treating the medical condition of the patient, wherein selecting a
medical treatment comprises:
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weighting scores associated with each candidate medical
treatment in the set of candidate medical treatments based on
whether or not the candidate medical treatment falls within a
tier, of a plurality of different tiers of the medical treatment
information data structure, corresponding to the determined
economic status of the patient; and
selecting a candidate medical treatment, from the set of
candidate medical treatments, based on a ranking of scores
associated with each of the candidate medical treatments in the
set of candidate medical treatments.
This intrinsic evidence shows that claim 1 recites a cognitive medical
treatment recommendation process weighting scores associated with a
candidate medical treatment based on whether or not the candidate medical
treatment falls within a tier of different tiers of a medical treatment
information data structure. This is consistent with the Examiner’s
determination that the steps of claim 1 “correspond to Mental Processes.”
(Final Act. 4).
The claimed steps of ingesting, generating, processing, selecting,
outputting, weighting, and selecting are steps which mimic human thought
processes of selecting certain information over others, i.e., evaluation, and
creating, perhaps with paper and pencil, graphic data interpretation
perceptible only in the human mind. See In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). The Federal Circuit has
held similar concepts to be abstract. For example, the Federal Circuit has
held that abstract ideas include the concepts of collecting data, analyzing the
data, and reporting the results of the collection and analysis, including when
limited to particular content. See, e.g., Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340–41 (Fed. Cir. 2017)
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(identifying the abstract idea of organizing, displaying, and manipulating
data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (characterizing collecting information, analyzing information by steps
people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas). Thus, under the first prong,
claim 1 recites the patent ineligible judicial exception of a mental process.
Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “data processing system comprising at least one
processor and at least one memory.” These components are described in the
Specification at a high level of generality. See Spec. ¶¶ 30–34, Figs. 1, 2.
We fail to see how the generic recitations of these most basic computer
components and/or of a system so integrates the judicial exception as to
“impose[] a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification,
nor does Appellant direct us to any indication, that the operations recited in
independent claim 1 invoke any assertedly inventive programming, require
any specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014).
Thus, we find that the claims recite the judicial exception of a mental
process not integrated into a practical application.
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That the claims do not preempt all forms of the abstraction or may be
limited to medical recommendation, does not make them any less abstract.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed.
Cir. 2015) (“And that the 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.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step, the Examiner found the following:
[T]he claims do not include additional elements that amount to
significantly more than the judicial exception because the
Specification recites mere generic computer components, as
discussed above that are being used to apply mental steps. To
be sure, the Examiner is not presently asserting that the steps
are well-known, routine, and conventional, rather that they
merely recite limitations that the courts have found not to be
enough to qualify as significantly more.
Final Act. 6.
We agree with the Examiner. “[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
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computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. Limitations such as, “generating, by
the cognitive medical treatment recommendation system, a set of insight
data structures based on the ingested medical treatment information for the
at least one medical payment provider,” are not steps, but a recitation of data
characterization, viz. an expectation, which is aspirational. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. See Elec. Power Grp., 830 F.3d at 1354;
see also In re Katz Interactive Call Processing Patent Litig., 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.”). In short,
each step does no more than require a generic computer to perform generic
computer functions.
The claims do not, for example, purport to improve the functioning of
the computer itself. In addition, as we stated above, the claims do not effect
an improvement in any other technology or technical field. The
Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios (see, e.g., Spec. ¶¶ 30–34, Figs. 1, 2). Thus,
the claims at issue amount to nothing significantly more than instructions to
apply the abstract idea 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 225–226.
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Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (ingesting,
generating, processing, selecting, outputting, weighting, selecting) and
storing is equally generic and conventional or otherwise held to be abstract.
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); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract); Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
The remaining method claims merely describe process parameters.
We conclude that the method claims at issue are directed to a patent-
ineligible concept itself.
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 (quoting Mayo, 566 U.S. at 72). As a corollary, the
claims are not directed to any particular machine.
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We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101 (Appeal Br. 5–22, Reply Br. 2–22). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues:
The claimed invention is clearly not directed to a Mental
Process as the Final Office Action alleges. For a claim to be
properly classifiable into the class of a Mental Process, the
claimed features that are alleged by to a part of the alleged
abstract idea must be entirely able to be practically performed
within the human mind.
Appeal Br. 8.
We disagree with Appellant. “The ‘abstract idea’ step of the inquiry
calls upon us to look at the ‘focus of the claimed advance over the prior art’
to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Texas v. DirectTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at 1353).
Read, as a whole, we find, on balance, that claim 1 is directed to
implementing a cognitive medical treatment recommendation for the reasons
specified above with respect to our “directed to” findings. As found supra,
claim 1 only includes the following generically recited device limitations:
“data processing system comprising at least one processor and at least one
memory.” These components are described in the Specification at a high
level of generality. See Spec. ¶¶ 30–34, Figs. 1, 2. What remains in the
claim after disregarding these device limitations, are abstractions, i.e.,
“weighting scores associated with each candidate medical treatment in the
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set of candidate medical treatments based on whether or not the candidate
medical treatment falls within a tier, of a plurality of different tiers of the
medical treatment information data structure, corresponding to the
determined economic status of the patient.” “[A] claim for a new abstract
idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 566 U.S. at 90).
Appellant argues: “The claims cannot be practically performed
entirely within the human mind because a human mind does not go through
the specific ordered combination of operations recited in the present claims
when determining a treatment recommendation for a patient.” Appeal Br. 8;
see also id. at 11.
We disagree with Appellant because as early as Parker v. Flook, the
Supreme Court held that calculations, while “primarily useful for
computerized calculations producing automatic adjustments in alarm
settings,” “can [still] be made by pencil and paper calculations.” Parker,
437 U.S. at 586. As such, the Court did not deem the alleged primacy of
computer implementation to be persuasive in its 35 U.S.C. § 101 analysis.
Appellant here has not produced evidence showing that the claimed
computations cannot be made by human interaction using a pen and paper.
Instead, Appellant appears to be relying on attorney argument alone. It is
well settled merely using a computer to perform more efficiently what could
otherwise be accomplished manually does not confer patent-eligibility. See
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d 1266, 1279
(Fed. Cir. 2012) (“Using a computer to accelerate an ineligible mental
process does not make that process patent-eligible.”); MySpace, Inc. v.
GraphOn Corp., 672 F.3d 1250, 1267 (Fed. Cir. 2012) (Mayer, J.,
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dissenting) (“While running a particular process on a computer undeniably
improves efficiency and accuracy, cloaking an otherwise abstract idea in the
guise of a computer-implemented claim is insufficient to bring it within
section 101.”).
Citing to various claimed functions performed by the cognitive
medical treatment recommendation system, Appellant asserts e.g., “a human
mind does not output, by the cognitive medical treatment recommendation
system, the selected treatment option for use in treating the medical
condition of the patient.” (Appeal Br. 10). The argument is without merit
because the issue is whether absent the device, i.e., the cognitive medical
treatment recommendation system, the human mind is capable of outputting,
processing, selecting, weighting, etc., without such a computing device. As
we found above, these steps mimic human thought. See, e.g., In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607; FairWarning IP, 839 F.3d
1089.
Appellant argues the “claimed invention is directed to a specific
computer tool and specific computer process for addressing the problem of
computer medical treatment recommendation systems” (Appeal Br. 11).
We disagree with Appellant. The claim is not focused on any
technical improvement but rather on implementing a cognitive medical
treatment recommendation. As described above, the only claim elements
beyond the abstract idea are the “data processing system comprising at least
one processor and at least one memory.” Appellant cannot reasonably deny,
nor does Appellant, that the operation of these components is well-
understood, routine, or conventional, where, as here, there is nothing in the
Specification to indicate that the operations recited in claim 1 require any
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specialized hardware or inventive computer components or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions, e.g., receiving, processing, and
transmitting information.
Appellant’s arguments based on USPTO's Subject Matter Eligibility
Examples6 likewise are not persuasive. We address Example 42 which
seems most pertinent. Appellant argues, “the USPTO found that this claim
recited a practical application because the claims recited an improvement
over prior art systems by allowing remote users to share information in real
time in a standardized format.” (Appeal Br. 14). However, under the
analysis in Example 42, a practical application was found to exist because:
The claim recites a combination of additional elements
including storing information, providing remote access over a
network, converting updated information that was input by a
user in a non-standardized form to a standardized format,
automatically generating a message whenever updated
information is stored, and transmitting the message to all of the
users.
Example 42 at 18. As we found above, claim 1 on appeal only generically
requires a “data processing system comprising at least one processor and at
least one memory.” These components are described in the Specification at
a high level of generality. See Spec. ¶¶ 30–34, Figs. 1, 2. Nowhere in
appealed independent claim 1 is there anything technically comparable in
detail to converting updated information that was input by a user in a non-
standardized form to a standardized format. In short, we find that the
additional elements of claim 1 before us on appeal fail to integrate the

6
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf (last visited 11/23/2020).
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judicial exception as to “impose[] a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53.
Appellant’s arguments to the dependent claims merely repeat claim
limitations without substantive argument except to assert “a human mind
does not practically go through such a process” (Appeal Br. 18). As stated
above, a statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See
37 C.F.R. § 41.37(c)(1)(iv) (2017).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection
of claims 1–5, 7–15, and 17–22.
35 U.S.C. § 103(a) REJECTION
Each of independent claims 1, 11, and 20 recites in pertinent part,
weighting scores associated with each candidate medical
treatment in the set of candidate medical treatments based on
whether or not the candidate medical treatment falls within a
tier, of a plurality of different tiers of the medical treatment
information data structure, corresponding to the determined
economic status of the patient.
The Examiner cites to Ramarajan:
Ramarajan et al. taught weighting scores associated with each
candidate medical treatment in the set of candidate medical
treatments based on whether or not the candidate medical
treatment falls within a tier, of a plurality of different tiers of
the medical treatment information data structure. Paragraphs 8,
162-170, and 181 were used to address this. The reference is
weighting scores associated with each candidate medical
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treatment in the set of candidate treatments (treatment scores
that are a ranking of treatment options) based on whether or
whether not the candidate medical treatment falls within a tier
(predefined confidence score tiers directed to the tier between a
pre-defined low and a predefined high as opposed to above a
pre-defined high (another tier) or below a predefined low
(another tier)) of a plurality of tiers (a pre-defined high tier and
a pre-defined low tier) of the medical treatment information
data structure (medical information from previous medical
cases that the system assessed).
Answer 12.
Appellant argues:
That is, while Ramarajan may calculate a preference score, as
described in paragraphs [0131]-[0157], based on a patient's risk
tolerance, lifestyle values, and “cost considerations,” there is no
specific teaching or suggestion to specifically weight scores
associated with each candidate medical treatment in a set of
candidate medical treatments based on whether or not the
candidate medical treatment falls within a tier, of a plurality
of different tiers of the medical treatment information data
structure, corresponding to the determined economic status of
the patient, and then select a candidate medical treatment based
on a ranking of scores associated with each of the candidate
medical treatments in the set of candidate medical treatments.
That is, there may be many different other ways that
“cost considerations” may be included in the calculation of the
preference score that do not include or involve any weighting of
scores associated with candidate medical treatments in a set of
candidate medical treatments based on whether or not a
candidate medical treatment falls within a tier, of a plurality of
different tiers of a medical treatment information data structure,
corresponding to a determined economic status of a patient and
then selecting a candidate medical treatment based on the
ranking of these scores. Merely mentioning “cost
considerations” is not sufficient to teach or even render obvious
these specific features of the present independent claims . . . .
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Appeal Br. 28–29.
We agree with Appellant. The independent claims require, “a
plurality of different tiers of the medical treatment information data
structure.” The Examiner maintains the calculations disclosed in paragraphs
162–170 of Ramarajan equate to “predefined confidence score tiers directed
to the tier between a pre-defined low and a predefined high as opposed to
above a pre-defined high (another tier) or below a predefined low (another
tier)) of a plurality of tiers (a pre-defined high tier and a pre-defined low
tier)” (Answer 12). But, the algorithm disclosed in paragraphs 162–170 of
Ramarajan does not use a plurality of different tiers of the information data
structure to stratify the risk tolerance score. Rather, the algorithm uses
numeric thresholds compared against a confidence score to direct the
decision making flow, e.g., “if the confidence score is less than a pre-defined
minimum . . . the decision making process of Fig. 4 is followed” (Ramarajan
¶ 162). In Ramarajan, stratifying data occurs through and algorithm rather
than fitting the calculated score into one of a plurality of different tiers of the
medical treatment information data structures. The Examiner does not
explain, and it is not apparent, how the two are obvious variants of the other.
In addition, the claims require that weighting7 scores associated with
each candidate medical treatment in the set of candidate medical treatments
be based on whether or not the candidate medical treatment falls within a
tier. Without a disclosed plurality of different tiers of the medical treatment

7 The Specification decribes “weighted” in terms of a “value that is applied
to . . . represent . . . relative importance” (Spec. ¶ 69). The claim requires
that weighting occurs “based on whether or not the candidate medical
treatment falls within a tier, of a plurality of different tiers of the medical
treatment information data structure.”
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information data structure, there can be no weighting according to the
claims.
Since claims 2–5, 7–10, 12–15, 17–19, 21, and 22 depend from claims
1, 11, and 20 and since we cannot sustain the rejection of independent claims
1, 11, and 20 the rejection of the dependent claims 2–5, 7–10, 12–15, 17–19,
21, and 22 likewise cannot be sustained. We note that only dependent
claims 3, 8, 13 and 18 were rejected under 35 U.S.C. § 103(a) using
Rosenberg, Underwood, and Ramarajan. The remaining dependent claims
were rejected under 35 U.S.C. § 103(a) using additional references. These
additional reference fail to cure the deficiency we found concerning
Ramarajan.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–5, 7–15,
and 17–22 under 35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1–5, 7–15, and
17–22 under 35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–15,
17–22
101 Eligibility 1–5, 7–15,
17–22

1, 3, 8, 11,
13, 18, 20
103 Rosenberg,
Ramarajan,
Underwood,
Ramarajan
1, 3, 8, 11,
13, 18, 20
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 12 103 Rosenberg,
Ramarajan,
Underwood,
Fiedotin
2, 12
4, 14 103 Rosenberg,
Underwood,
Camarda
4, 14
5, 15 103 Rosenberg,
Ramarajan,
Underwood,
Ramarajan,
McCallie
5, 15
7, 17 103 Rosenberg,
Underwood,
Ramarajan, Berlin
7, 17
9, 19 103 Rosenberg,
Underwood,
Ramarajan, Ullman
9, 19
10 103 Rosenberg,
Underwood,
Ramarajan, Nee
10
21 103 Rosenberg,
Underwood,
Ramarajan,
Graettinger,
Boissel, Benser
21
22 103 Rosenberg,
Underwood,
Ramarajan, Oscar,
McCallie
22
Overall
Outcome
1–5, 7–15,
17–22

Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
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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).
AFFIRMED