Neal Patterson et al.

Patent Trials and Appeals Board

Mar 27, 2020

14048349 - (D) (P.T.A.B. Mar. 27, 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.
14/048,349 10/08/2013 NEAL PATTERSON 27098.176025 7886
46169 7590 03/27/2020
SHOOK, HARDY & BACON L.L.P.
(CERNER CORPORATION)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
AUGUSTINE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
BPARKERSON@SHB.COM
IPDocket@shb.com
docket.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NEAL PATTERSON, RYAN HAMILTON,
BHARAT SUTARIYA, and TEHSIN SYED
____________________

Appeal 2018-006331
Application 14/048,349
Technology Center 3600
____________________

Before DAVID M. KOHUT, BETH Z. SHAW, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Cerner Innovation, Inc. as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant identifies that the present application is related to
Application No. 14/048,377 (Appeal No. 2018-008194, currently pending).
Appeal Br. 3. In addition, we note the present application is also related to
Application No. 14/048,365 (Appeal No. 2018-000645, decision mailed
March 27, 2019).
Appellant’s disclosed and claimed invention generally relates to
“organizational management of population health.” Spec. ¶ 4. More
particularly, Appellant describes the managing population health techniques
includes building and maintaining data stores related to healthcare
organizations, healthcare providers, and information concerning contractual
provisions between healthcare organizations and payers. Spec. ¶¶ 4–5. In
one embodiment, the disclosed system “builds, maintains, and updates data
stores that include longitudinal patent-centric [sic: patient centric]
information drawn from a variety of disparate data sources.” Spec. ¶ 28.
Patient information from various reference records is combined “to form
person-centric longitudinal health records known as population records.
Each record is longitudinal in that it contains information on all of the
patient’s health encounters even though the encounters may have occurred at
disparate locations and with disparate providers.” Spec. ¶ 61; see also Spec.
¶¶ 65–67 (describing converting raw patient data from different sources into
a longitudinal population record).
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
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1. A system for organizational management of patient
population health, the system comprising:
a computing device having one or more processors and
one or more computer-storage media;
one or more data stores; and
a population health management service run via the
computing device and coupled to the one or more data stores
wherein the population health management service:
receives a plurality of sets of organizational data
associated with one or more healthcare organizations;
stores the plurality of sets of organizational data in the one
or more data stores;
receives raw data associated with a population of patients
from one or more raw data sources;
creates source-specific reference records from the raw
data, each source-specific reference record including raw data
received from a single corresponding raw data source, wherein
the source-specific reference records are created via the one or
more processors by:
(i) when the raw data contains conflicting data, reconciling
the conflicting data,
(ii) transforming the raw data received from the one or
more raw data sources into multiple medical nomenclatures,
(iii) for each of the one or more raw data sources,
compiling the raw data, as transformed, into a source-specific
reference record, the source-specific reference record supporting
each of the multiple medical nomenclatures, and
(iv) storing the source-specific reference records as
accessible to the one or more of a disease condition-specific
program or objective-specific program;
generates longitudinal population records, each
longitudinal population record including patient data for a single
patient in the population associated with the raw data, wherein
the longitudinal population records are generated via the one or
more processors by:
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(i) matching each patient to corresponding source-specific
reference records based on the raw data associated with the
patient and used to create the source-specific reference records,
wherein matching each patient includes, when the source-
specific reference records utilize multiple identifiers for the same
patient, reconciling the multiple identifiers with one another;
(ii) upon matching each patient to the corresponding
source-specific reference records, creating the longitudinal
population records of patient data obtained from the
corresponding raw data in the source-specific reference records,
and
(iii) storing the longitudinal population records for use by
the one or more of a disease condition-specific program or
objective-specific program; and
provides the plurality of longitudinal population records to
one or more of a disease condition-specific program or objective-
specific program.

The Examiner’s Rejections
1. Claim 13 stands rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.
2. Claims 1–20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 3–15.

ANALYSIS2
Rejection under 35 U.S.C. § 112(b)
Claim 13 depends from independent claim 10 and recites “wherein the
multiple medical nomenclatures comprise two or more Logical Observation

2 Throughout this Decision, we have considered the Appeal Brief, filed
October 24, 2017 (“Appeal Br.”); the Reply Brief, filed May 29, 2018
(“Reply Br.”); the Examiner’s Answer, mailed April 5, 2018 (“Ans.”); and
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Identifiers Names and Codes (LOINC), Unified Medical Language System
(UMLS), or Systemized Nomenclature of Medicine (SNOMED).”
The Examiner indicates the claim does not recite the specific
implementation of these protocols, stating that the claim would be
“subjected to future revisions of these protocols to include when the
protocols become obsolete.” Final Act. 2. Additionally, the Examiner
explains SNOMED is a trademark and is being used in the claim to identify
or describe a particular material or product and, therefore, does not comply
with 35 U.S.C. § 112(b). Ans. 3 (citing Manual of Patent Examining
Procedure (“MPEP”) § 2173.05(u) (9th ed. Rev. 08.2017, Jan. 2018)).
The presence of a trademark in a claim is not, per se, improper under
35 U.S.C. § 112(b). MPEP § 2173.05(u). Because a trademark is used to
identify a source of goods rather than the goods themselves, the scope of the
claim including a trademark may be uncertain if the trademark is being used
to identify a particular material or product. MPEP § 2173.05(u).
In Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982), the claim at
issue recited, in part, “a surface comprising a thin Hypalon membrane.”
Simpson, 218 USPQ at 1021. Addressing the Hypalon trademark term, the
Board concluded it was uncertain as to the particular material that forms the
Hypalon membrane (i.e., a chlorosulphonated polythene). Simpson, 218
USPQ at 1021. The Board explained that other manufacturers could
produce a synthetic resin like chlorosulphonated polythene, either alone or
with other materials or additives. Simpson, 218 USPQ at 1021. Thus, the
Board explained it was unclear “how much, if any, chlorosulphonated

the Final Office Action, mailed June 5, 2017 (“Final Act.”), from which this
Appeal is taken.
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polythene must be present in a material that is employed in the claimed
combination before infringement occurs.” Simpson, 218 USPQ at 1022. As
such, the use of Hypalon did not sufficiently circumscribe the metes and
bounds of the claim. Simpson, 218 USPQ at 1021.
However, in Ex parte Regen, Appeal No. 2011-005683, 2013 WL
6253158, at *1–2 (PTAB Dec. 2, 2013), the Board reversed the Examiner’s
indefiniteness rejection of claim 31, which recites in part “a transmitter
operating according to a protocol compatible at least with Bluetooth external
wireless devices.” The Board explained that “the term ‘Bluetooth’ identifies
a source of interoperability standards . . . [and] one skilled in the relevant art
would have understood that the terms ‘Bluetooth external wireless devices,’
in the context of the claimed invention, refers to devices that conform to the
Bluetooth interoperability standard.” Regen, 2013 WL 6253158, at *2.
We find the reasoning of Regen to be applicable to the pending
rejection of claim 13 under 35 U.S.C. § 112(b). Similar to the
interoperability standard of Bluetooth (see Regen, 2013 WL 6253158, at *2),
the LOINC, UMLS, and SNOMED nomenclatures set forth a standard
format and terminology for medical terms and clinical documentation that
allows for interoperability. An ordinarily skilled artisan would understand,
in the context of the claimed invention and in light of the Specification (see,
e.g., Spec. ¶ 59) that use of the trademarked terms refers to transforming the
raw data into a nomenclature that conforms to the SNOMED (for example)
format.
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 112(b) of claim 13.
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Rejection under 35 U.S.C. § 101
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 11–24; Reply
Br. 2–4. In particular, Appellant argues the Examiner overgeneralizes the
claims and that the claims recite specific steps, rooted in computer
technology, to accomplish a desired result that improves a computer-related
technology (e.g., “provides a new computer-based functionality and/or
improves computer functionality through the creation of new data structures
from raw data for specific use by computer programs”). Appeal Br. 16–21;
Reply Br. 3. In addition, Appellant challenges the Examiner’s findings that
the claims recite computer functions that are well-understood, routine, and
conventional. Reply Br. 2.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014). In addition, the Office has published
revised guidance for evaluating subject matter eligibility under 35 U.S.C.
§ 101, specifically with respect to applying the Alice framework. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Office Guidance”). If a claim falls within one of the
statutory categories of patent eligibility (i.e., a process, machine,
manufacture, or composition of matter) then the first inquiry is whether the
claim is directed to one of the judicially recognized exceptions (i.e., a law of
nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217.
As part of this inquiry, we must “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 Tex., LLC v.
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DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed. Cir. 2016). Per Office
Guidance, this first inquiry has two prongs of analysis (i) does the claim
recite a judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial
exception integrated into a practical application. 84 Fed. Reg. at 54. Under
the Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim passes muster under § 101. 84 Fed. Reg. at
54–55. If the claim is directed to a judicial exception (i.e., recites a judicial
exception and does not integrate the exception into a practical application),
the next step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea because
they recite mental processes. If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (holding that the incidental use of a “computer” or “computer readable
medium” does not make a claim otherwise directed to a process that “can be
performed in the human mind, or by a human using a pen and paper” patent
eligible); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
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71 (2012) (explaining mental processes are not patentable); 84 Fed. Reg. at
52–53 nn.14–15.
More specifically, Appellant’s claims are directed to generating
longitudinal population records from raw patient-centric data drawn from
disparate sources that has been transformed into industry-standard
nomenclatures. See Spec. ¶¶ 28 (describing the disclosed system as building
data stores that include “longitudinal patent-centric [sic: patient-centric]
information drawn from a variety of disparate data sources”), 61–69, Fig. 7;
Appeal Br. 3 (“the claimed embodiments include a population management
service that builds, maintains, and updates electronic source-specific
reference records and electronic longitudinal patent-centric [sic: patient-
centric] information, that are usable by various computer programs and
which create technological compatibility across different and/or
incompatible electronic record systems”). Generating longitudinal
population records from raw patient-centric data drawn from disparate
sources that has been transformed into industry-standard nomenclatures is an
evaluation that can be performed by a human, mentally or with pen and
paper.
Consistent with our Office Guidance and case law, we conclude that
generating longitudinal population records from raw patient-centric data
drawn from disparate sources that has been transformed into industry-
standard nomenclatures is a mental process and, thus, an abstract idea. See
84 Fed. Reg. at 52; see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (concluding that “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
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category”); Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (concluding the claimed method
of processing information from various sources (i.e., hard copy documents)
was directed to the abstract idea of “1) collecting data, 2) recognizing certain
data within the collected data set, and 3) storing that recognized data in a
memory”); Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d
1363, 1367 (Fed. Cir. 2019) (concluding claims to collecting physiologic
data from disparate medical devices, converting the data to a common
format, analyzing the data, and displaying the data were directed to an
abstract idea); HealthTrio LLC v. Aetna, Inc., 673 F. App’x 1006 (mem.)
(Fed. Cir. 2017) (affirming district court decision holding “collection of data
from various sources with the goal of compiling a single, comprehensive,
patient health record” is patent ineligible); EResearchTechnology, Inc. v.
CRF, Inc., 681 F. App’x 964 (mem.) (Fed. Cir. 2017) (affirming district
court ruling that “using an electronic device to obtain clinical trial data that
would otherwise be collected by pen-and-paper diary, and analyzing the data
to decide whether to prompt action” and “[c]lassifying clinical trial results
by obtaining data using a portable electronic device and comparing same to
a norm” are patent ineligible).
Claim 1 is reproduced below and includes the following claim
limitations that recite generating longitudinal population records from raw
patient-centric data drawn from disparate sources that has been transformed
into industry-standard nomenclatures, emphasized in italics:
1. A system for organizational management of patient
population health, the system comprising:
a computing device having one or more processors and
one or more computer-storage media;
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one or more data stores; and
a population health management service run via the
computing device and coupled to the one or more data stores
wherein the population health management service:
receives a plurality of sets of organizational data
associated with one or more healthcare organizations;
stores the plurality of sets of organizational data in the one
or more data stores;
receives raw data associated with a population of patients
from one or more raw data sources;
creates source-specific reference records from the raw
data, each source-specific reference record including raw data
received from a single corresponding raw data source, wherein
the source-specific reference records are created via the one or
more processors by:
(i) when the raw data contains conflicting data, reconciling
the conflicting data,
(ii) transforming the raw data received from the one or
more raw data sources into multiple medical nomenclatures,
(iii) for each of the one or more raw data sources,
compiling the raw data, as transformed, into a source-specific
reference record, the source-specific reference record
supporting each of the multiple medical nomenclatures, and
(iv) storing the source-specific reference records as
accessible to the one or more of a disease condition-specific
program or objective-specific program;
generates longitudinal population records, each
longitudinal population record including patient data for a single
patient in the population associated with the raw data, wherein
the longitudinal population records are generated via the one or
more processors by:
(i) matching each patient to corresponding source-specific
reference records based on the raw data associated with the
patient and used to create the source-specific reference records,
wherein matching each patient includes, when the source-
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specific reference records utilize multiple identifiers for the same
patient, reconciling the multiple identifiers with one another;
(ii) upon matching each patient to the corresponding
source-specific reference records, creating the longitudinal
population records of patient data obtained from the
corresponding raw data in the source-specific reference records,
and
(iii) storing the longitudinal population records for use by
the one or more of a disease condition-specific program or
objective-specific program; and
provides the plurality of longitudinal population records to
one or more of a disease condition-specific program or objective-
specific program.
More particularly, the concept of generating longitudinal population
records from raw patient-centric data drawn from disparate sources that has
been transformed into industry-standard nomenclatures comprises
(i) receiving raw patient-centric data from disparate data sources (i.e., the
claimed step of receiving raw data associated with a population of patients
from one or more raw data sources); (ii) transforming the raw data into
industry-standard nomenclatures (i.e., the claimed steps of creating source-
specific reference records from the raw data by transforming the raw data
into multiple medical nomenclatures); and (iii) generating longitudinal
population records from the transformed raw data (i.e., the claimed steps of
generating longitudinal population records by matching each patient to
corresponding source-specific reference records).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
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are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also MPEP § 2106.05(a)–(c),
(e)–(h).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55.
Rather, the additional limitations merely provide additional detail on
the creation of the source-specific reference records or generation of the
longitudinal population records (i.e., the judicial exception). Also, the
additional limitations recite such extra-solution activities such as storing the
transformed raw data as source-specific reference records, or storing the
longitudinal population records. See, e.g., Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011) aff’d, 687
F.3d 1266 (Fed. Cir. 2012) (explaining that “storing, retrieving, and
providing data . . . are inconsequential data gathering and insignificant post
solution activity”). Similarly, merely providing the longitudinal population
records for use by other programs does not confer patent eligibility. See,
e.g., Elec. Power, 830 F.3d at 1354 (recognizing “that merely presenting the
results of abstract processes of collecting and analyzing information, without
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more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis”). Further, the steps of
receiving and storing sets of organizational data and the elements of one or
more data stores and a computing device running a population health
management service also fail to confer patent eligibility.
Contrary to Appellant’s assertions (see, e.g., Appeal Br. 12–16, 20–
21; Reply Br. 3), the claims do not recite a new functionality in computer
capabilities or address a problem necessarily rooted in computer technology
to overcome a problem arising in the realm of computer networks. See
Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). Instead, as
the Examiner notes (see Ans. 4–6), the claims merely use computers and
computer devices that operate in their normal, expected manner. See also
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir.
2014). Additionally, as the court in Enfish explained, “the first step in the
Alice inquiry . . . asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities . . . or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016). As discussed above, the focus of the pending claims is on
generating longitudinal population records from raw patient-centric data
drawn from disparate sources that has been transformed into industry-
standard nomenclatures and the recited computing elements are invoked
merely as a tool. See Enfish, 822 F.3d at 1335–36. Further, we note that
using a computer to perform tasks more quickly or efficiently does not
confer patent eligibility on an otherwise ineligible abstract idea. See, e.g.,
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
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1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 77–
79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply append well-understood, routine, conventional activities at a
high level of generality. 84 Fed. Reg. at 56. “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer, 881 F.3d at 1369.
Here, Appellant’s claims do not recite specific limitations (alone or
when considered as an ordered combination) that are not well-understood,
routine, and conventional. For example, when describing the computers of a
computing environment for practicing the claimed invention (see, e.g.,
Fig. 1), Appellant describes the components at a high level of generality and
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note the components are “well-known computing systems” such as personal
computers or laptop devices. Spec. ¶ 31; see also Spec. ¶¶ 35–38. As the
Examiner finds, our reviewing court has recognized that receiving,
processing (i.e., transforming), and storing data; and receiving or
transmitting data over a network are well-understood, routine, and
conventional activities. Final Act. 5–6; Ans. 4–5. Consistent with the
Berkheimer Memorandum,3 we agree with the Examiner’s findings that the
claims merely recite generic computer components (e.g., a computing device
comprising a processor and memory) performing generic computing
functions that are well-understood, routine, and conventional (e.g., receiving
and transmitting data, processing data, and presenting the results of the data
processing). See Mortgage 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.”); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends

3 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF). Support for a finding that an element was well-understood,
routine, or conventional may be shown by citation to one or more court
decisions noting the well-understood, routine, conventional nature of the
element(s). See Berkheimer Memorandum 3–4.
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the information over a network—with no further specification—is not even
arguably inventive.”).
Additionally, to the extent Appellant contends the claims do not seek
to preempt an abstract idea (see Reply Br. 3–4), we are unpersuaded of
Examiner error. “‘[W]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.’” FairWarning IP, 839 F.3d at 1098 (quoting Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015));
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“[T]hat 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.”). Further, “[w]here a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa, 788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 101. Appellant relies on similar arguments
regarding the Examiner’s rejection of independent claims 10 and 18. See
Appeal Br. 24. For similar reasons, we are unpersuaded of Examiner error
and sustain the Examiner’s rejection of these claims. Further, we sustain the
Examiner’s rejection of claims 2–9, 11–17, 19, and 20, which depend
directly or indirectly therefrom and were not argued separately with
particularity. See Appeal Br. 24; see also 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2018-006331
Application 14/048,349

18
CONCLUSION
We reverse the Examiner’s decision rejecting claim 13 under
35 U.S.C. § 112(b).
We affirm the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 101.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13 112(b) Indefiniteness 13
1–20 101 Eligibility 1–20
Overall
Outcome
1–20

TIME PERIOD FOR 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED