John Michael. Williams

Patent Trials and Appeals Board

Jan 2, 2020

14336467 - (D) (P.T.A.B. Jan. 2, 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.
14/336,467 07/21/2014 John Michael Williams WILL 3.0F-001 (E) 6014
530 7590 01/02/2020
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
20 Commerce Drive
Cranford, NJ 07016
EXAMINER
MOSELEY, GREGORY D
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
eOfficeAction@lernerdavid.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT WARTENFELD, ZIV OFEK, EYAL GREENBERG,
ZIV GOME, and SHIRI BEN-TAL
____________

Appeal 2018-006175
Application 14/336,467
Technology Center 3600
____________

Before JOHN A. EVANS, BETH Z. SHAW, and STEVEN M.
AMUNDSON, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1–20, all pending claims. Appeal Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant states the real party in interest is T-Vak
Industries LLC. Appeal Br. 1.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
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STATEMENT OF THE CASE
The claims relate to a computer implemented method for prescribing a
therapeutic regimen. See Abstract.
Invention
Claims 1, 10, and 12 are independent. Appeal Br. 2. An
understanding of the invention can be derived from a reading of Claim 1,
which is reproduced in Table 1.
References and Rejections 3
Velarde US 2009/0281836 A1 Nov. 12, 2009
McCormick US 2002/0035484 A1 Mar. 21, 2002
Rooney US 2008/0177571 A1 July 24, 2008
Smith US 2014/0122127 A1 May 1, 2014
1. Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more. Final Act. 3–8.
2. Claims 1, 2, 4, 7, 8, 10–13, 15, 18, and 19 stand rejected under
35 U.S.C. § 103 as being unpatentable over Smith and Velarde. Final
Act. 9–19.

refer to the Appeal Brief (filed January 29, 2018, “Appeal Br.”), the Reply
Brief (none filed), the Examiner’s Answer (mailed March 22, 2018, “Ans.”),
the Final Action (mailed July 27, 2017, “Final Act.”), and the Specification
(filed February 13, 2017, “Spec.”) for their respective details.
3 The present application was examined under the AIA first inventor to file
provisions. Final Act. 2.
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3. Claims 3, 5, 6, 14, 16, and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Smith, Velarde, and McCormick. Final Act.
19–23.
4. Claims 9 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Smith, Velarde, and Rooney. Final Act. 23–25.

ANALYSIS
We have reviewed the rejections of Claims 1–20 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellant actually raised in the Brief. Any
other arguments which Appellant could have made but chose not to make in
the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We
provide the following explanation to highlight and address specific
arguments and findings primarily for emphasis. We consider Appellant’s
arguments as they are presented in the Appeal Brief, pages 4–14.
CLAIMS 1–20: INELIGIBLE SUBJECT MATTER
Appellant argues these claims as a group in view of the recitations of
Claim 1. Appeal Br. 10–11. Therefore, we decide the appeal of the § 101
rejection on the basis of representative Claim 1 and refer to the rejected
claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv);
In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
We reviewed the record de novo. SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
to patent-eligible subject matter is an issue of law that we review de novo.”).
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Based upon our review of the record in light of recent policy guidance with
respect to patent-eligible subject matter rejection under 35 U.S.C. § 101,4 we
affirm the rejection of Claims 1–20 for the specific reasons discussed below.
35 U.S.C. § 101
Section 101 provides that a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes “[l]aws of nature,
natural phenomena, and abstract ideas” from the realm of patent-eligible
subject matter, as monopolization of these “basic tools of scientific and
technological work” would stifle the very innovation that the patent system
aims to promote. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–78 (2012); Diamond v. Diehr, 450
U.S. 175, 185 (1981).
Under the mandatory Revised Guidance, we reconsider whether
Appellant’s claims recite:
1. any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental
processes), and

4 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).
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2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim, (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then reach the
issue of whether the claim:
3. adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
4. simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

A. Whether the claims recite a judicial exception.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract-idea
exception includes the following groupings of subject matter, when recited
as such in a claim limitation(s) (that is, when recited on their own or per se):
(a) mathematical concepts,5 i.e., mathematical relationships, mathematical
formulas, equations,6 and mathematical calculations7; (b) certain methods of

5 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . .
reduced to a mathematical formula . . . is an unpatentable abstract idea.”).
6 Diehr, 450 U.S. at 191 (“A mathematical formula as such is not accorded
the protection of our patent laws”); Parker v. Flook, 437 U.S. 584, 594
(1978) (“[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.”).
7 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
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organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions)8; and (c) mental processes—concepts performed in the human
mind (including observation, evaluation, judgment, opinion).9
The preamble of independent Claim 1 recites: “A computer
implemented method for prescribing a therapeutic regimen, comprising.”
The limitations recited in the body of the claim are analyzed in Table I
against the categories of abstract ideas as set forth in the Revised Guidance.
Claim 1 Revised Guidance, p. 52
[a]10 receiving, by one or more
computing devices, prescription
information for a patient, the
Insignificant extra-solution activity,
e.g., mere data-gathering. Rev.
Guid. 55, n. 31.

(holding that claims to a “series of mathematical calculations based on
selected information” are directed to abstract ideas).
8 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate
settlement risk is a “fundamental economic practice” and thus an abstract
idea); see Revised Guidance, at 52 n.13 for a more extensive listing of
“certain methods of organizing human activity” that have been found to be
abstract ideas.
9 Mayo, 566 U.S. at 71 (“‘[M]ental processes[ ] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work’” (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972))).
10 Step designators, e.g., “[a],” were added to facilitate discussion.
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prescription information including
information representing a medical
condition identified by a prescriber
and a prescription identifier;
[b] extracting from the prescription
information, by the one or more
computing devices, the prescription
identifier and the information
representing the identified medical
condition;
Mental processes—concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion).
[c] determining, by the one or more
computing devices, the prescription
identifier indicates a diagnostic-
based prescription request, the
diagnostic-based prescription
request being associated with a
treatment database storing one or
more virtual treatment kits, the one
or more virtual treatment kits each
associated with one or more medical
conditions;
Mental processes—concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion).
[d] retrieving from the treatment
database, by the one or more
computing devices, a first virtual
treatment kit from the one or more
virtual kits based on the identified
medical condition extracted from
the prescription information, the
first virtual treatment kit including
component information representing
at least one predetermined
medication and a treatment plan for
administering the at least one
predetermined medication for
treating the identified medical
Mental processes—concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion).
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condition extracted from the
prescription information; and
[e] transmitting, by the one or more
computing devices, the component
information associated with the first
virtual treatment kit to a user device
for display.
Insignificant extra-solution activity.

In view of Table I, we find limitations [b]–[d] of independent Claim 1
recites abstract ideas, i.e., mental processes. Thus, Claim 1 recites a judicial
exception, per se.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the “practical application” Step 2A(ii) wherein we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
For the reasons which follow, we conclude that Appellant’s claims do
not integrate the judicial exception into a practical application.
MPEP § 2106.05(a) “Improvements to the Functioning of a Computer
or to Any Other Technology or Technical Field.”
“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“any other technology or technical field.” MPEP § 2106.05(a).
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With respect to technological improvements, Appellant analogizes to
Enfish and contends “Appellant’s technological improvement concerns . . .
[the] claims increase the accuracy of delivering prescription therapeutics to
patients.” Appeal Br. 6. Appellant argues “the disclosed system is designed
to allow prescribers ‘to prescribe an effective treatment for the patient’s
condition without having to be updated on the latest medications that can be
used for that condition.’” Id. (quoting Spec. ¶ 30).
The Enfish Court found the claims provided an improvement in
computer function because “the claims are not simply directed to any form
of storing tabular data, but instead are specifically directed to a self-
referential table for a computer database.” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1337 (Fed. Cir. 2016). However, in contrast to Enfish, the
fact that the doctor does not have to be “updated on the latest medications
that can be used,” as argued by Appellant, is not a technology, per se. The
claims recite “computing devices” and “treatment databases.” We find that
such generic recitations of computing elements fail to transform a patent-
ineligible concept into an eligible one. See Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic
computer components, such as an “interface,” “network,” and “database,”
fail to satisfy the inventive concept requirement); Alice, 573 U.S. at 226
(“Nearly every computer will include a ‘communications controller’ and a
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”).
Appellant contends, similarly to Enfish, the claims improve the
ability of the system to prescribe an effective treatment for a patient’s
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condition which is an improvement in the medical device and medical
software arts. Appeal Br. 6 (citing Spec. ¶ 69). Appellant argues the
claimed system [as recited in Claim 9], by providing therapeutics based on
the medical diagnosis rather than specific medications, allows for the
determination of medical outbreaks in a given area or community based on a
real-time assessment of the location at which the virtual treatment kits
associated with the medical diagnosis are prescribed. Id. Appellant further
argues such real-time processing cannot be performed by a human using
pencil or paper, nor can a human perform any of the claimed features which
interpret computer information. Id.
The Examiner finds Appellant’s analogy to Enfish to be inapt because
the claims do not improve a technological environment. Ans. 4. Rather, the
Examiner finds the claims merely implement the abstract idea using a
generic computer. Id. (citing Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (“The present case is different: the focus of
the claims is not on such an improvement in computers as tools, but on
certain independently abstract ideas that use computers as tools.”). The
Examiner finds the “speed and accuracy of a physician determining a proper
treatment regimen to a patient has been a problem that has required
improvement long before computers, and the problem was caused by the
limitations on humans, not by limitations on the technology. Therefore, the
claims do not perform the abstract [idea] to improve the technology’s
capability to function as a tool. Rather, it uses the technology as a tool to
improve the performance of the abstract idea.” Id. at 5.
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Appellant argues contrary to the Examiner, that in the claimed system
the physician does not determine the treatment regimen, but only determines
the diagnosis from which the system determines the treatment regimen.
Appeal Br. 6 (citing Spec. ¶ 69). Appellant further argues the claimed
system allows for the determination of medical outbreaks in a given area or
community based on the locations at which the claimed virtual treatment kits
are used, a technology not within the capabilities of medical professionals.
Appeal Br. 6. Appellant’s argument is not commensurate in scope with
independent Claims 1, 10, and 12 which do not recite limitations relating to
determination of medical outbreaks. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”); In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not
commensurate with the claim scope and are therefore unpersuasive.”). That
is, Appellant cannot rely on unclaimed features for eligibility. See
ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019);
Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir. 2018); Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1338–39
(Fed. Cir. 2017).
Dependent Claims 9 and 20 further recite limitations relating to “the
determin[ation of] occurrence information indicating a prevalence of the
given medical condition, as Appellant contends.” See Appeal Br. 6.
The claims collect data, recognize certain data within the collected
data set, and present the data for display, which the courts have recognized
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as abstract. See Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014).
MPEP § 2106.05(b) Particular Machine.
The Bilski machine-or-transformation test is only applicable to
method (process) claims on appeal in the present application. Appellant
discloses generic computer devices. See Spec. ¶ 36 (“[e]ach processor of the
one or more processors 312 may be a conventional processor, such as a
processor found in commercially available computers.”). Nor do we find
disclosure of anything other than generic computer hardware or software.
MPEP § 2106.05(c) Particular Transformation.
This section of the MPEP guides: “Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing.” “‘Transformation and reduction of an article to a different state or
thing is the clue to the patentability of a process claim that does not include
particular machines.’” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S.
at 70).
The claims select and analyze certain electronic data. The selection of
electronic data is not a “transformation or reduction of an article into a
different state or thing constituting patent-eligible subject matter[.]” See In
re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (emphasis added); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“The mere manipulation or reorganization of data . . . does not satisfy
the transformation prong.”). Applying this guidance here, we conclude
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Appellant’s method claims fail to satisfy the transformation prong of the
Bilski machine-or-transformation test.
MPEP § 2106.05(e) Other Meaningful Limitations.

This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment.
450 U.S. 175 . . . (1981). In Diehr, the claim was directed to
the use of the Arrhenius equation (an abstract idea or law of
nature) in an automated process for operating a rubber-molding
press. 450 U.S. at 177-78 . . . . The Court evaluated additional
elements such as the steps of installing rubber in a press,
closing the mold, constantly measuring the temperature in the
mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184, 187
. . . . In contrast, the claims in Alice Corp. v. CLS Bank
International did not meaningfully limit the abstract idea of
mitigating settlement risk. 573 U.S. . . . . In particular, the
Court concluded that the additional elements such as the data
processing system and communications controllers recited in
the system claims did not meaningfully limit the abstract idea
because they merely linked the use of the abstract idea to a
particular technological environment (i.e., “implementation via
computers”) or were well-understood, routine, conventional
activity.
MPEP § 2106.05(e).
“[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. Similarly as in Alice, we find
that “[t]aking the claim elements separately, the function performed by the
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computer at each step of the process is ‘[p]urely conventional.’” Id. “In
short, each step does no more than require a generic computer to perform
generic computer functions.” Id. We find that Appellant’s claims do not
add meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment.
MPEP § 2106.05(f) Mere Instructions to Apply an Exception.
Appellant does not persuasively argue that their claims do any more
than to merely invoke generic computer components merely as a tool in
which the computer instructions apply the judicial exception.

MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
The claims acquire and display data, which are classic examples of
insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en
banc), aff’d sub nom, Bilski, 561 U.S. 593.
MPEP § 2106.05(h) Field of Use and Technological Environment.

[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity—such as identifying a relevant audience,
a category of use, field of use, or technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). We
find the claims manipulate “prescription information for a patient,” which is
simply a field of use that attempts to limit the abstract idea to a particular
technological environment. We do not find Appellant’s arguments to be
persuasive because “[t]he courts have also identified examples in which a
judicial exception has not been integrated into a practical application.”
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Revised Guidance, 84 Fed. Reg. at 55. The claims fail to recite a practical
application where the additional element does more than generally link the
use of a judicial exception to a particular technological environment or field
of use. Id. The mere application of an abstract idea in a particular field is
not sufficient to integrate the judicial exception into a practical application.
See id. at 55 n.32. In view of the foregoing, we conclude the claims are
“directed to” a judicial exception.
3. Well-understood, routine, conventional.
Because the claims recite a judicial exception and do 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.
The written description describes the claimed computer system
consistent with its being “well-understood, routine, [and] conventional”:
[e]ach processor of the one or more processors 312 may be a
conventional processor, such as a processor found in
commercially available computers.
Spec. ¶ 35.
[t]he memory 314 may be of a type of memory including a non-
transitory computer-readable medium, or other medium that
stores data that may be read with the aid of an electronic device,
such as a hard-drive, memory card, read-only memory
(“ROM”), random access memory (“RAM”), digital versatile
disc (“DVD”) or other optical disks, as well as other write-
capable and read-only memories.
Spec. ¶ 36.
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the data 318 may be stored in computer registers, in a relational
database as a table having a plurality of different fields and
records, XML documents, or flat files.
Spec. ¶ 38.
4. Specified at a high level of generality.
It is indicative of the absence of an inventive concept where the
claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, 84 Fed. Reg. at 56.
The claims fail to recite any specific steps of an algorithm, nor does
Appellant cite any Specification disclosure for the required specificity.
We find the limitations are specified at such a high level of generality
consistent with the absence of an inventive concept. Considering the claim
limitations as an ordered combination adds nothing to the abstract idea that
is not already present when the limitations are considered separately. See
Mayo, 566 U.S. at 79. The ordered combination of limitations amounts to
nothing more than certain mental processes implemented with generic
computer components that operate “in a conventional way.” See also Alice,
573 U.S. at 225–26. Therefore, we conclude that none of the claim
limitations, viewed “both individually and as an ordered combination,”
amount to significantly more than the judicial exception in order to
sufficiently transform the nature of the claims into patent-eligible subject
matter. See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting
Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of claims 1–20
under 35 U.S.C. § 101.
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CLAIMS 1–20:
OBVIOUSNESS
Appellant argues these claims as a group in view of the recitations of
Claim 1. Appeal Br. 14. Therefore, we decide the appeal of the § 103
rejection on the basis of representative Claim 1 and refer to the rejected
claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv);
In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Prescription Identifier.
The Examiner finds Smith generally teaches the invention recited in
Claim 1 except Smith fails to teach “the prescription having a prescription
identifier, extracting the prescription identifier, and determining the
prescription identifier indicates a diagnostic-based prescription request.”
Final Act. 12. The above quotation, presented by the Examiner is a
paraphrase, but not a direct quote, of Claim 1.
The Examiner finds Velarde teaches a “document containing a
prescription identifier, extracting the prescription identifier, and determining
the prescription identifier indicates a diagnostic-based prescription request.”
Id. The Examiner finds this limitation is taught by a synthesis of Velarde
¶ 27 (“the medical records data comprise documents; the documents include
document identifiers; the documents are sortable into predetermined
categories responsive to the document identifier; and the sorted document is
associated with a category”), Velarde ¶ 120 (“[t]he retrieved medical records
are in the form of documents 1703 that each has at least one unique
document identifier 1704. The unique document identifier 1704 may be
used to assist in sorting the documents, for example, by report type”), and
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Appellant’s Specification ¶ 20 (“[t]he prescription identifier is used to
identify that a prescription is a diagnostic based prescription, such as
DBRx”).11
Appellant contends Velarde is silent as to what information the
document identifier may contain, but only discloses the identifier may be
used to sort the documents into predetermined categories. Appeal Br. 12.
Appellant argues Velarde fails to teach a document identifier indicates a
diagnostic-based prescription request. Id.
The Examiner finds Velarde teaches document identifiers that identify
documents by type. Ans. 14. The Examiner finds “there is no explicit
definition as to what exactly Velarde defines as a document identifier.” Id.
The Examiner explains Velarde does not disclose what type of information
is indicated by the document identifier, but finds that in principle, Velarde’s
document identifier “is capable” of indicating the claimed “diagnostic-based
prescription request.” Id. (emphasis added).
Claim 1 recites, inter alia, “determining, by the one or more
computing devices, the prescription identifier indicates a diagnostic-based
prescription request.” The Examiner explicitly finds Smith fails to teach this
limitation, but cites a combination of Velarde (“[t]he retrieved medical
records are in the form of documents 1703 that each has at least one unique
document identifier”) and Appellant’s Specification (“[t]he prescription
identifier is used to identify that a prescription is a diagnostic based
prescription, such as DBRx”). Final Act. 12 (citing Spec., ¶ 20).

11 The citation to Spec. ¶ 20 is not a direct quote.
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We “recognized that any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning. But so long as
it takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made, and does not include
knowledge gleaned only from the applicant’s disclosure, such a
reconstruction is proper.” MPEP 2145(X)(A)), quoting In re McLaughlin,
443 F.2d 1392 (CCPA 1971). The present prima facie case was synthesized,
in part, from Appellant’s disclosure of a “diagnostic based prescription,”
without a finding that Appellant disclosed admitted prior art, and thus is
impermissible hindsight. “[T]he path that leads an inventor to the invention
is expressly made irrelevant to patentability by statute.”). Life Techs., Inc. v.
Clontech Labs., Inc., 224 F.3d 1320, 1325 (Fed. Cir. 2000).
In view of the foregoing, we do not sustain the rejection of
Claims 1–20 under 35 U.S.C. § 103.

CONCLUSION

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 2, 4, 7, 8,
10–13, 15,
18, and 19
103 Smith and
Velarde, Rooney,
and McCormick
1, 2, 4, 7, 8,
10–13, 15,
18, and 19
3, 5, 6, 14,
16, and 17
103 Smith, Velarde,
and McCormick
3, 5, 6, 14,
16, and 17
9 and 20 103 Smith, Velarde,
and Rooney
9 and 20
Overall
Outcome
1–20
Appeal 2018-006175
Application 14/336,467

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)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED