Ruth E. Skocic

Patent Trials and Appeals Board

Dec 31, 2019

13531888 - (D) (P.T.A.B. Dec. 31, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/531,888 06/25/2012 Ruth E. Skocic SK-3194 5610
33055 7590 12/31/2019
Law Offices of John D. Gugliotta, P.E. Esq., LPA
P.O. Box 506
Richfield, OH 44286
EXAMINER
COBANOGLU, DILEK B
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
12/31/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUTH E. SKOCIC
Appeal 2018-008630
Application 13/531,888
Technology Center 3600
Before JAMES R. HUGHES, LINZY T. McCARTNEY, and
JAMES W. DEJMEK, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 21–28, 30–38, 41, and 47–53. Claims
1–20, 29, 39, 40, and 42–46 have been canceled. See Final Act. 1–2; Appeal
Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2015). Appellant identifies the real party in interest as MLP
Technology, Inc. Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed June 25, 2012
(claiming benefit of US 12/204,560 (filed Sept. 4, 2008), US 11/962,267
(filed Dec. 21, 2007), US 11/592,913 (filed Nov. 6, 2006), and US
60/876,048 (filed Dec. 21, 2006)); Appeal Brief (“Appeal Br.”), filed
Nov. 25, 2015; Supplemental Appeal Brief (“Supp. Appeal Br.”), filed
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates generally “to health care data management,” and
more specifically, systems and methods utilizing “a biometric identifier of a
patient . . . . to access . . . patient information” “including health
information.” Spec. ¶ 5; see Spec. ¶¶ 5–8; Abstract. Claims 21, 38, and 51
are independent. Claim 21, reproduced below, is illustrative of the claimed
subject matter:
21. A system for providing health care data to a
caregiver, the system including:
at least one biometric reader;
a data communication interface;
an output device;
a processor device, operatively coupled to the at least one
biometric reader, the communication interface, and the output
device; and
at least one computer storage medium, the at least one
computer storage medium storing data instructions, wherein the
data instructions are executable by the processor device to:
[A] identify a caregiver based on a biometric identifier of
the caregiver received via the at least one biometric reader;
[B] identify the patient based on a biometric identifier of
the patient received via the at least one biometric reader;
[C] access a health care information database and health
care information of the patient contained therein via the data

Apr. 12, 2016; and Reply Brief (“Reply Br.”), filed May 21, 2018. We also
refer to the Examiner’s Final Office Action (“Final Act.”), mailed May 29,
2015; and Answer (“Ans.”) mailed Nov. 7, 2017.
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communication interface based on the patient's biometric
identifier; and
[D] provide the accessed health care information to the
caregiver via the output device upon identifying both the
caregiver and the patient.
Supp. Appeal Br. 5 (Claims App.) (bracketed claim limitation designations
added).3
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Lancelot et al.
(“Lancelot”)
US 6,434,531 B1 Aug. 13, 2002
Otworth et al.
(“Otworth”)
US 2002/0059030 A1 May 16, 2002
Yellin et al.
(“Yellin”)
US 2005/0125258 A1 June 9, 2005
Winkler et al.
(“Winkler”)
US 2006/0164259 A1 July 27, 2006
Hekmatpour et al.
(“Hekmatpour”)
US 2007/0279187 A1 Dec. 6, 2007 (claiming
benefit to US 60/791,490
filed Apr. 12, 2006

3 Appellant filed a Supplemental Appeal Brief (on Apr. 12, 2016) including
the Claim Appendix and Summary of Claimed Subject Matter.
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REJECTIONS4
1. The Examiner rejects claims 25, 48, and 52 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 2–4.5
2. The Examiner rejects claims 21–28, 30–38, 41, and 47–53
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Final Act. 4–5.
3. The Examiner rejects claims 21, 26–28, 38, 41, 47, 49, 51, and
53 under 35 U.S.C. § 103(a) as being unpatentable over Yellin and Otworth.
Final Act. 5–10.
4. The Examiner rejects claims 22–24 under 35 U.S.C. § 103(a) as
being unpatentable over Yellin, Otworth, and Lancelot. Final Act. 10–11
5. The Examiner rejects claims 25, 48, 50, and 52 under 35 U.S.C.
§ 103(a) as being unpatentable over Yellin, Otworth, and Hekmatpour.
Final Act. 10–14.
6. The Examiner rejects claims 30–37 under 35 U.S.C. § 103(a) as
being unpatentable over Yellin, Otworth, and Winkler. Final Act. 15.

4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. §§ 103 and 112, e.g., to rename
35 U.S.C. §§ 103 and 112’s subsections. Because the present application
has an effective filing date prior to the AIA’s effective date for applications,
this decision refers to the pre-AIA versions of 35 U.S.C. §§ 103 and 112,
i.e., § 103(a) and § 112, first paragraph.
5 Appellant does not address the Examiner’s written description rejection.
Appellant, instead, states the rejection “will be addressed after the present
appeal process has completed.” Appeal Br. 3. Accordingly, we summarily
affirm the uncontested written description (§ 112) rejection.
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ANALYSIS
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. 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)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
claim for an “inventive concept,” “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
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The Patent Office has published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(hereinafter “Step 2A, prong 2”).6
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg.
at 54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate

6 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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whether the claim provides an inventive concept. See 2019 Revised
Guidance 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look 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) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.7
See 2019 Revised Guidance, 84 Fed. Reg. at 56. With these principles in
mind, we turn to the merits of the § 101 rejection. The Examiner rejects
Appellant’s claims 21–28, 30–38, 41, and 47–53 as being directed to patent-
ineligible subject matter. See Final Act. 4–5; Ans. 3–4. Appellant does not
separately argue the claims with specificity and, instead, argues the claims
together for this rejection. See Appeal Br. 7. Accordingly, we address the
Examiner’s rejection of independent claim 21 and the claims not separately
argued by Appellant as a group based on claim 21, as permitted by 37 C.F.R.
§ 41.37(c)(1)(iv).
Statutory Subject Matter
Claim 21 recites a “system” (infra). Appellant’s “system” uses a
processor device coupled to at least one biometric reader, a communication
interface, an output device, and at least one computer storage medium that
stores data instructions executable by the processor device to implement a
number of functions. See claim 21 (Supp. Appeal Br. 5 (Claims App.)).

7 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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Accordingly, we analyze Appellant’s system as a process, which is a
statutory category of invention (subject matter) (USPTO’s Step 1).
Abstract Idea
The Examiner rejects Appellant’s claim 21 as being directed to patent-
ineligible subject matter. See Final Act. 4–5; Ans. 3–4. Specifically, the
Examiner concludes “the claimed invention is directed to a judicial
exception (. . . an abstract idea) without significantly more” and claim 21
(and the other pending claims) is “directed to ‘identifying a provider and a
patient via a biometric identifier and providing the accessed health care
information to the caregiver via an output device upon identifying both the
caregiver and the patient.’” Final Act. 4 (quoting claim 21). The Examiner
also concludes the claim is drawn to “‘using categories to organize, store,
and transmit information’ [(similar to Cyberfone)] and ‘comparing new and
stored information and using rules to identify options’ [(similar to
SmartGene),] which the courts have considered to fall within the judicial
exceptions, e.g., as abstract ideas.” Final Act. 4 (quoting Cyberfone Sys.,
LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014)
and SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950,
955 (Fed. Cir. 2014)); see Final Act. 4–5; Ans. 3–4. The Examiner further
explains that claim 21 is drawn to “an idea of itself” similar to Cyberfone
and SmartGene, which amount to mental processes similar to Electric Power
Group—“collect[ing] information, analyzing it and displaying certain results
of the collection and analysis.” Ans. 3 (quoting Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 3–7; Reply
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Br. 2–3. Specifically, Appellant contends, with respect to the first step of
the Alice analysis, that the Examiner improperly interpreted the claims (in
particular claim 21) (see Appeal Br. 6–7), that the claims (in particular claim
21) “do not embody an abstract idea” (Appeal Br. 7), and the claims do not
preempt “accessing health information based on an identified provider and
patient” (Appeal Br. 6). See Appeal Br. 3–7; Reply Br. 2–3. Appellant
further contends the claims (in particular claim 21) embody a technical
improvement—“the present invention . . . provides a technological solution
to providing medical authentication” (Reply Br. 2) and “the present claims
are directed to an improvement of existing technologies” (Reply Br. 3). See
Appeal Br. 7; Reply Br. 2–3. Appellant also contends claim 21 is (and the
other pending claims are) similar to the “patent eligible subject matter” in
DDR Holdings (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014)). Appeal Br. 7.
For the reasons discussed below, we conclude Appellant’s claim 21
(and the other pending claims) recites abstract ideas, these abstract ideas are
not integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we clarify and expand the
Examiner’s reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant’s claim 21 (see Supp. Appeal Br. 5 (Claims App.)). Claim 21
recites “[a] system for providing health care data to a caregiver” including
“at least one biometric reader,” “a data communication interface,” and “an
output device.” Claim 21 also recites “a processor device . . . coupled to the
. . . biometric reader, the communication interface, and the output device.”
Claim 21 further recites “at least one computer storage medium” “storing
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data instructions . . . [that] are executable by the processor device” to
perform a number of functions. In other words, claim 21 recites a system
including a processor device executing software to manage health care data
access. See Spec. ¶¶ 5–6. This is consistent with Applicant’s description of
the system—“this disclosure is directed to health care data management”
(Spec. ¶ 5), in particular, a “heath care data management system . . . [that]
operate[s] to provide quick and convenient access to patient data [], while
protecting the privacy of patient data [] from unauthorized access” (Spec.
¶ 36).
The system recited in claim 21 includes non-abstract elements
(physical structure), including a processor device coupled to at least one
biometric reader, a communication interface, an output device, and at least
one computer storage medium that stores data instructions executable by the
processor device. These non-abstract elements, in particular the processor
device, perform a health care data management process (function) to
“identify a caregiver based on a biometric identifier of the caregiver received
via the at least one biometric reader” (Limitation A), “identify the patient
based on a biometric identifier of the patient received via the at least one
biometric reader” (Limitation B), “access a health care information database
and health care information of the patient contained therein . . . based on the
patient’s biometric identifier” by means of “the data communication
interface” (Limitation C), and “provide the accessed health care information
to the caregiver . . . upon identifying both the caregiver and the patient” by
means of “the output device” (Limitation D). That is, identifying a caregiver
using data—a biometric identifier—and identifying a patient using data—a
biometric identifier—received from a biometric reader, accessing data—the
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patient’s healthcare information in a health care information database—
utilizing a data communication interface, and providing (outputting) data—
the patient’s health care information—to a caregiver utilizing an output
device based on the identifications. See Spec. ¶¶ 35–36, 40, 45, 48, 68–69,
72, 74; Figs. 1, 5.
In summary, claim 21 recites a system including a processor device
and user interfaces for identifying a patient and caregiver, accessing patient
healthcare data, and providing the healthcare data to a caregiver.
Hereinafter, we refer to this process as the “health care data management
process.”
Appellant’s contentions (supra) focus on the Examiner’s purported
improper interpretation of the claims (in particular claim 21). See Appeal
Br. 6–7. Here, in rejecting the claims (in particular claim 21) under
35 U.S.C. § 101, the Examiner analyzed the claims using the Mayo/Alice
two-step framework, consistent with the guidance set forth in the USPTO’s
“2014 Interim Guidance on Patent Subject Matter Eligibility,” 79 Fed. Reg.
74618 (Dec. 16, 2014), in effect at the time the rejection was made on
May 29, 2015. The Examiner notified Appellant of the reasons for the
rejection “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of . . . [the]
application.” 35 U.S.C. § 132. See Final Act. 4–5. In doing so, the
Examiner set forth a prima facie case of unpatentability such that the burden
of production shifted to Appellant to demonstrate that the claims are patent
eligible.
Appellant also contends the at-issue claims are not abstract and that
the claims (in particular claim 21) demonstrate a technical improvement.
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See Appeal Br. 7; Reply Br. 2–3. Claim 21, however, recites no substantive
limitations on how the health care data management process exchanges data
(except that the exchanges occur via interfaces), identifies the patient and
caregiver, or what the biometric data from the biometric reader (from the
interface) entails. The limitations are entirely functional in nature, or
characterize various data (e.g., biometric data received form the biometric
reader, which is an interface) utilized in Limitations A–D. The recited
system devices (e.g., the processor device and biometric reader) are
additional elements that are not part of the abstract idea analysis.
Although Appellant contends the claims describe purported
technological improvements or advances provided by health care data
management process, claim 21 (and the other pending claims) does not
explicitly recite any specific improvements to technology, i.e., the system
performing any improved processing or analysis. Claim 21, instead, simply
recites exchanging data and identifying a patient and caregiver to access a
patient’s healthcare information.
A person can practically perform the function of Limitations A–D
mentally, or by using pen and paper. Nowhere does Appellant point to
specific claim limitations that distinguish over a human process. Further, the
revised guidance explains that “mental processes” include acts that people
can perform in their minds or using pen and paper, even if the claim recites
that a generic computer component performs the acts. See 2019 Revised
Guidance, 84 Fed. Reg. at 52 n.14 (“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.”)
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Because each of the limitations discussed above encompasses an act that
people can perform in their minds or using pen and paper, claim 21 recites
mental processes. Appellant’s arguments have not persuaded us otherwise.
To the extent Appellant argues utilizing devices (e.g., the processor
device and biometric reader) to perform the recited functionality is not
abstract, Appellant misconstrues the inquiry. As we explained supra, the
devices are additional elements that are not part of this part of the abstract
idea analysis. The relevant inquiry is whether the processes (functionality)
recited in the claims (in particular claim 21) are abstract.
We construe claim 21 as reciting exchanging data and identifying a
patient and caregiver to access a patient’s healthcare information. Claims
that recite performing information analysis (e.g., user identification and
controlling accessing to healthcare related information), as well as the
collection and exchange of information related to such analysis, have been
determined by our reviewing court to be an abstract concept that is not
patent eligible. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093 (Fed. Cir. 2016) (Claims reciting “analyzing data . . . including user
identifier data” to determine improper access to patient health information
were “drawn to the concept of analyzing records of human activity to detect
suspicious behavior,” which is an abstract mental process.); Prism Techs.
LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1017 (Fed. Cir. 2017)
(“providing restricted access to resources”); see also Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)
(identifying the abstract idea of collecting, displaying, and manipulating
data); Elec. Power Grp., 830 F.3d at 1354 (characterizing collecting
information, analyzing information by steps people go through in their
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minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014)
(finding the “claims generally recite . . . extracting data . . . [and]
recognizing specific information from the extracted data” and that the
“claims are drawn to the basic concept of data recognition”); Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 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.”). Indeed, even if the
analysis requires one to access and gather data from a database or memory,
or utilize a pen and paper in the analysis, such analysis may still be an
abstract mental process. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011) (“[E]ven if some physical steps are
required to obtain information from the database . . . such data-gathering
steps cannot alone confer patentability.” A claim focused on verifying credit
card transaction information is directed to “unpatentable mental processes”
because the claim’s steps “can be performed in the human mind, or by a
human using a pen and paper.”).
In summary, we conclude Appellant’s claim 21 recites a judicial
exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance).
Specifically, claim 21 recites a process for managing access to healthcare
information—the healthcare data management process—by exchanging data
to identify a patient and caregiver in order to access a patient’s healthcare
information and provide the patient’s healthcare information to a caregiver
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as discussed supra. The healthcare data management process consists of
methods of organizing human activity and mental processes that can be
practically performed in the human mind (or utilizing pen and paper)
including observation, evaluation, or judgment. See 2019 Revised
Guidance, 84 Fed. Reg. at 52, 53 (listing “[m]ental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)” as one of the “enumerated groupings of abstract ideas”
(footnote omitted)).
Practical Application
We next consider whether claim 21 integrates the abstract idea into a
practical application (USPTO’s Step 2A, Prong 2). See 2019 Revised
Guidance, 84 Fed. Reg. at 51. In doing so, we evaluate the claim as a whole
to determine whether the claim “integrate[s] the [abstract idea] into a
practical application, using one or more of the considerations laid out by the
Supreme Court and the Federal Circuit.” 2019 Revised Guidance, 84 Fed.
Reg. at 55; see also October 2019 Update: Subject Matter Eligibility 12
(discussing the practical application analysis), available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (hereinafter “October SME Update”). That is, we
consider any additional elements recited in the claim along with the
limitations that recite an abstract idea to determine whether the claim
integrates the abstract idea into a practical application. See October SME
Update 12.
Claim 21 recites additional elements beyond the abstract healthcare
data management process (the judicial exception). The additional elements
in claim 21 include the processor device coupled to the biometric reader, the
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communication interface, the output device, and the computer storage
medium that stores data instructions executable by the processor device. See
Appeal Br. 4, 6; Spec.
Appellant’s Specification describes “an exemplary health care data
management system” including a “server” and “hospital computing system,”
as well as “[b]iometric readers.” Spec. ¶ 35; see Fig. 1. The Specification
describes the system operation, wherein a “biometric reader [] is used to read
a biometric identifier of the patient (such as the patient’s fingerprint)” and
the “health records associated with the patient’s fingerprint are then obtained
from server 102.” Spec. ¶ 36. Appellant’s Specification describes the
biometric reader at a high level of generality as a fingerprint scanner, a
digital imager, or any of a variety of devices. See Spec. ¶ 44. Similarly,
Appellant’s Specification describes the server at a high level of generality as
including a “processing device,” “a storage device,” “a communication
device,” “an input device,” and “an output device.” Spec. ¶ 49; see Fig. 2.
In particular, the Specification describes the processing device—recited as
the “processor device” in claim 21—as “a microprocessor” or alternatively
“various other processing devices . . . including central processing units”
(i.e, CPUs), “microcontrollers, . . . and the like.” Spec. ¶ 51. The
Specification similarly describes the other enumerated additional elements at
a high level of generality, e.g., the “communication interface” (a
communication device—see Spec. ¶ 56), the “output device” (e.g., a
display— see Spec. ¶ 57), and the “computer storage medium” (computer
storage media—see Spec. ¶ 54).
In summary, Appellant’s written description does not portray the
processor device, biometric reader, or other enumerated additional elements
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as anything but standard computer components. Nor does Appellant’s
written description portray these components as operating in a new way.
Instead the written description depicts these components as generic
components operating in their accustomed manner.
Accordingly, Appellant’s written description shows that additional
elements are generic. See Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A] patent need not teach, and
preferably omits, what is well known in the art.”); Intellectual Ventures I
LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The
claimed mobile interface is so lacking in implementation details that it
amounts to merely a generic component (software, hardware, or firmware)
that permits the performance of the abstract idea, i.e., to retrieve the user-
specific resources.”).
Appellant contends claim 21 (and the other pending claims) provides
a technical improvement similar to the claims in DDR Holdings. See Appeal
Br. 7; Reply Br. 2–3. In other words, Appellant contends the claims recite a
technological improvement that amounts to more than simply utilizing a
computer as a tool to accomplish the healthcare data management process.
Appellant’s contentions correspond to the reasoning in MPEP
§ 2106.05(a)–(c), where additional elements integrate the judicial exception
into a practical application. We, however, disagree with Appellant’s
contentions. Appellant’s additional elements do not apply or use the
healthcare data management process (the judicial exception) in a manner
that imposes a meaningful limit on the judicial exception, such that it is
more than a drafting effort designed to monopolize the exception. See Alice,
573 U.S. at 221–24 (citing Mayo, 566 U.S. at 78–85). Rather, Appellant’s
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claim recites generic computer elements (e.g., the processor device) that are
utilized as tools to carry out the exchange of data and information analysis to
identify the identify the patient and the caregiver in order to access the
patient’s healthcare information and provide the caregiver with the patient’s
healthcare information as discussed supra. Utilizing computers as tools to
perform common data information analysis and data exchange functions that
can be mental processes (an abstract idea) does not impose a meaningful
limit on the abstract idea. See MPEP § 2106.05(f); see also Alice, 573 U.S.
at 223 (finding “if [the] recitation of a computer amounts to a mere
instruction to implement an abstract idea on a computer that addition cannot
impart patent eligibility” (quotations and internal citations omitted)).
Appellant’s claim 21 (and the other pending claims) can be
distinguished from patent-eligible claims such as those in McRO, Enfish,
BASCOM, and DDR Holdings that are directed to “a specific means or
method that improves the relevant technology” (McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)), or “a
specific improvement to the way computers operate” (Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)), solving a
technology-based problem (BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016)), or a method
“rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer [technology]” (DDR Holdings, 773 F.3d at
1257). Contrary to Appellant’s arguments, claim 21 is not a technological
improvement or an improvement in a technology. Appellant’s claim 21 does
not “improve the functioning of the computer itself” or “any other
technology or technical field.” Alice, 573 U.S. at 225. Nor does it provide a
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technological solution to a technological problem. See DDR Holdings, 773
F.3d at 1257; MPEP § 2106.05(a). Appellant fails to explain sufficiently
and persuasively how the instant claim(s) are directed to an improvement in
the way computers operate, nor has Appellant identified any technical
advance or improvement or specialized computer components. See Appeal
Br. 7; Reply Br. 3–4.
As discussed supra, nothing in claim 21 precludes a human from
performing the healthcare data management process. Performing such
information processing functionality is the reason computers exist. The
mere automation of a process that can be performed by a human is not
sufficient to show an improvement in computer functionality, and the fact
that a computer may increase efficiency—be more efficient by reducing the
difficulty of complying with regulations concerning or overcoming problems
“associated with otherwise normal telecommunication information transfer
where additional legal protections exist that provide[] medical data and
information privacy, security and protection.” Reply Br. 2–3; see Spec.
¶ 36—does not change the abstract-idea analysis. See Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(holding that “merely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise
abstract idea”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible”);
see also FairWarning, 839 F.3d at 1095.
In summary, “the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
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computers as tools.” Elec. Power Grp., 830 F.3d at 1354; see also MPEP
§ 2106.05(f) (emphasis omitted) (instructing Examiners to consider
“[w]hether the claim invokes computers or other machinery merely as a tool
to perform an existing process” in determining whether the claim recites
mere instructions to apply the exception), cited in 2019 Revised Guidance,
84 Fed. Reg. at 55, n.30. Thus, we conclude the claims are directed to an
abstract idea that is not integrated into a practical application.
Inventive Concept
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance (Step 2A analysis), we consider whether
claim 21 has an inventive concept, that is, whether the claim has additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). As
discussed above, this requires us to evaluate whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” 2019 Revised
Guidance, 84 Fed. Reg. at 56.
The Examiner determined that Appellant’s claim 21 (and the other
pending claims) “do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because the
additional elements or combination of elements” “amount to no more than a
generic computer structure that [performs] generic computer functions . . . as
shown in Fig. 1 of Applicant’s drawings” and the “claimed functions are
well understood, routine, and conventional activities previously known to
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the pertinent industry (i.e. receiving, comparing, communication, and
modifying data).” Final Act. 4–5; see Ans. 3–4.
Appellant, does explicitly address the second step of the Alice
analysis, but contends claim 21 (and the other pending claims) recites
additional elements (see Appeal Br. 4) and “claim 21 recites significantly
more than identifying a provider and a patient, then accessing a health
information database” (Appeal Br. 6). Appellant also contends claim 21 is
similar to the claims in DDR Holdings. See Appeal Br. 7. Appellant fails to
persuade us of error in the Examiner’s rejection with respect to the second
Alice step (USPTO’s Step 2B). We agree with the Examiner that
Appellant’s claim 21 (and the other pending claims) does not evince an
“inventive concept” that is significantly more than the abstract idea itself. In
particular, Appellant fails to explain how the additional elements (above)
add specific limitations beyond the judicial exception that are not well-
understood, routine, and conventional in the field.
As previously discussed, claim 21 (and the other pending claims)
merely recites additional non-abstract elements (above) that perform the
healthcare data management process. We conclude that these additional
elements, individually and as an ordered combination, are generic computer
components that carry out common information exchange and analysis
functions recited in the healthcare data management process (the abstract
idea). See, e.g., Spec. ¶¶ 35, 44, 49, 51, 54, 56, 57. Such conventional
computer processes operating on conventional computer hardware “do not
alone transform an otherwise abstract idea into patent-eligible subject
matter.” FairWarning, 839 F.3d at 1096 (citing DDR Holdings, 773 F.3d at
1256).
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For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 21 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under § 101 of independent claim 21, independent
claims 38 and 41, and dependent claims 22–28, 30–37, and 47–53, which
depend from claims 21 and 38, respectively, and which were not separately
argued with specificity.
Obviousness Rejections of Claims 21, 26–28, 38, 41, 47, 49, 51, and 53
Appellant argues independent claim 21, independent claims 38 and
41, and dependent claims 26–28, 47, 49, 51, and 53, together as a group with
respect to the 35 U.S.C. § 103 rejection. See Appeal Br. 8–10. We select
independent claim 21 as representative of Appellant’s arguments with
respect to claims 21, 26–28, 38, 41, 47, 49, 51, and 53. 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant contends “Yellin fails to disclose identifying a caregiver
based on a biometric identifier of the caregiver received via [the] biometric
reader, and providing accessed health care information to the caregiver via
the output device upon identifying both the caregiver and a patient” (Appeal
Br. 8 (emphasis omitted)) and “Otworth fails to teach providing health care
information to a caregiver” (Appeal Br. 9 (emphasis omitted)) and,
therefore, “does not teach providing accessed health care information to a
caregiver via an output device upon identifying both the caregiver and the
patient” (Appeal Br. 10 (emphasis omitted)). See Appeal Br. 8–10.
The Examiner rejects claims 21, 26–28, 38, 41, 47, 49, 51, and 53
over Yellin and Otworth. See Final Act. 5–10. Specifically, with respect to
claim 21 (see Final Act. 5–8), the Examiner explains that Yellin teaches the
features of claim 21, except “‘identify[ing] a caregiver based on a biometric
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identifier of the caregiver received via the at least one biometric reader’ and
‘provid[ing] the accessed health care information to the caregiver via the
output device upon identifying both the caregiver and the patient’” (Final
Act 6–7), but Otworth teaches these features in combination with Yellin.
See Final Act. 6–8; Ans. 4–6 (citing Otworth ¶¶ 92, 95, 133, 168).
We agree with the Examiner that the combination of Yellin and
Otworth would have taught or at least suggested the disputed limitations of
“identify[ing] a caregiver based on a biometric identifier [from] the . . .
biometric reader” and “provid[ing] the . . . health care information to the
caregiver via the output device upon identifying both the caregiver and the
patient.” Supp. Appeal Br. 5 (Claims App.).
It is not disputed that Yellin teaches identifying a patient based on
biometric identification or accessing patient healthcare information based
upon such an identification. See Yellin ¶¶ 9, 21, 27–30. Otworth, in turn
describes a healthcare provider (i.e., caregiver) providing a unique identifier
(Otworth ¶ 92), biometric identification of a healthcare provider (Otworth
¶¶ 95, 133), and a healthcare provider querying (accessing) patient records
(Otworth ¶ 168). Otworth and Yellin both describe accessing patient
healthcare information based on authentication/ identification (supra).
Accordingly, Yellin in combination with Otworth would have at least
suggested to one having ordinary skill in the art identifying a caregiver
based on a biometric identifier from a biometric reader and providing health
care information to a caregiver from an output device based on
authenticating/identifying both a caregiver and a patient.
Here, Appellant argues the references individually and does not
address the specific arguments set out by the Examiner. The references cited
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by the Examiner must be read, not in isolation, but for what each fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references). Further, Appellant does not address the
Examiner’s responsive findings and conclusions (see Ans. 4–6) in
Appellant’s Reply Brief.
Accordingly, Appellant’s contentions do not persuade us of error in
the Examiner’s obviousness rejection of representative independent claim
21. Therefore, we affirm the Examiner’s rejection of representative claim
21, independent claims 38 and 41, and dependent claims 26–28, 47, 49, 51,
and 53, not separately argued with particularity (supra).
Obviousness Rejection of Claims 25, 30–37, 48, 50, and 52
The Examiner rejects claims 22–24 over Yellin, Otworth, and
Lancelot. See Final Act. 10–11. The Examiner also rejects claims 25, 48,
50, and 52 over Yellin, Otworth, and Hekmatpour. See Final Act. 10–14.
The Examiner further rejects claims 30–37 over Yellin, Otworth, and
Winkler. See Final Act. 15. Appellant contends Lancelot does not cure the
deficiencies of Yellin and Otworth. See Appeal Br. 11. Appellant makes
similar argument with respect to Hekmatpour (see Appeal Br. 11) and
Winkler (see Appeal Br. 12). Thus, we conclude Appellant does not
provide substantive specific arguments with respect to these claims or the
additional references (Lancelot, Hekmatpour, and Winkler). See Appeal
Br. 10–12.
For the same reasons as claim 21 (supra), we agree with the Examiner
that Appellant does not persuade us of error in the Examiner’s obviousness
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rejection of claims 22–24 over Yellin, Otworth, and Lancelot; the
Examiner’s obviousness rejection of claims 25, 48, 50, and 52 over Yellin,
Otworth, and Hekmatpour; and the Examiner’s obviousness rejection of
claims 30–37 over Yellin, Otworth, and Winkler. See Final Act. 10–15.
Therefore, we affirm the Examiner’s obviousness rejections of claims 25,
30–37, 48, 50, and 52.
CONCLUSION
For the reasons discussed above, we determine that claims 21–28, 30–
38, 41, and 47–53 are directed to an abstract idea and do not demonstrate an
inventive concept. We also determine that claims 21–28, 30–38, 41, and
47–53 are obvious in view of the cited prior art.
Appellant has not shown that the Examiner erred in rejecting claims
21–28, 30–38, 41, and 47–53 under 35 U.S.C. § 101. Appellant has also not
shown that the Examiner erred in rejecting claims 21–28, 30–38, 41, and 47–
53 under 35 U.S.C. § 103(a). Further, Appellant has not shown that the
Examiner erred in rejecting claims 25, 48, and 52 under 35 U.S.C. § 112,
first paragraph. We therefore sustain the Examiner’s rejection of claims 21–
28, 30–38, 41, and 47–53.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis 
Affirmed Reversed
25, 48, 52 112, first
paragraph
Written
Description
25, 48, 52
21–28, 30–38,
41, 47–53
101 Patent-
Eligible
Subject
Matter
21–28, 30–38,
41, 47–53

21, 26–28, 38,
41, 47, 49, 51,
53
103(a) Yellin,
Otworth
21, 26–28, 38,
41, 47, 49, 51,
53

22–24 103(a) Yellin,
Otworth,
Lancelot
22–24
25, 48, 50, 52 103(a) Yellin,
Otworth,
Hekmatpour
25, 48, 50, 52
30–37 103(a) Yellin,
Otworth,
Winkler
30–37
Overall
Outcome

21–28, 30–38,
41, 47–53

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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED