Albert, Benjamin

Patent Trials and Appeals Board

Feb 24, 2020

13075399 - (D) (P.T.A.B. Feb. 24, 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.
13/075,399 03/30/2011 Benjamin Albert 00106-0012-01000 1623
108449 7590 02/24/2020
Bookoff McAndrews, PLLC
2020 K Street NW
Suite 400
Washington, DC 20006
EXAMINER
KOPPIKAR, VIVEK D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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):
KRoss@bomcip.com
eofficeaction@appcoll.com
usptomail@bomcip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN ALBERT
____________

Appeal 2019-000295
Application 13/075,399
Technology Center 3600
____________

Before DEBRA K. STEPHENS, CARL W. WHITEHEAD JR.,
and MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant0F1 appeals under 35 U.S.C. § 134(a) from a Final Office
Action rejecting all of the pending claims, i.e., claims 1–6, 8, 9, 11–13, 15–
18, 20, and 22–26. See Final Act. 2–5 and Appeal Br. 51–63 (Claims
App’x).1F2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies The Advisory Board Company as the real party in
interest. Appeal Br. 2.
2 We refer herein to the Specification (“Spec.”) and Figures (“Figs.”) filed
Mar. 30, 2011, the Final Office Action (“Final Act.”) mailed Mar. 23, 2017,
the Appeal Brief (“Appeal Br.”) filed Apr. 19, 2018, the Answer (“Ans.”)
mailed Aug. 8, 2018, and the Reply Brief (“Reply Br.”) filed Oct. 9, 2018.
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Introduction
Appellant states that “[i]mplementations of the present disclosure
include methods for managing the care of a patient.” Spec. ¶ 3. Claim 1 is
representative:
1. A computer-implemented method for using
machine learning to determine whether a patient requires post-
discharge care, comprising:
receiving, over a network, an admission and discharge
data feed comprising electronic data records associated with
admission and discharge events of a plurality of patients,
wherein each of the electronic data records include a plurality
of patient risk factors comprising a mental health condition of
the patient, an age of the patient, an identification or list of
medications the patient is taking, a number or list of past
hospitalizations of the patient, an ability of the patient to
provide self-care, and a number and type of concurrent medical
conditions;
storing the electronic data records in a data store;
receiving, over the network and from the admission and
discharge data feed, an indication of a discharge event
associated with the patient;
receiving electronic data records associated with the
patient, wherein the electronic data records each include a
plurality of patient risk factors comprising a mental health
condition of the patient, an age of the patient, an identification
or list of medications the patient is taking, a number or list of
past hospitalizations of the patient, an ability of the patient to
provide self-care, and a number and type of concurrent medical
conditions;
receiving a risk of readmittance time period;
retrieving, from the data store, electronic data records
associated with prior patients, the electronic data records
including admission and discharge events and a plurality of
patient risk factors, the plurality of patient risk factors
comprising, for each patient of the prior patients, a mental
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health condition of the patient, an age of the patient, an
identification or list of medications the patient is taking, a
number or list of past hospitalizations of the patient, an ability
of the patient to provide self-care, and a number and type of
concurrent medical conditions;
assigning a weight to each of the plurality of patient risk
factors, based upon a relationship between each patient risk
factor and the admission and discharge events retrieved from
the data store in relation to the prior patients, and based upon
the indicated risk of readmittance time period, to generate a
plurality of weighted risk factors;
determining, based on the plurality of weighted risk
factors and the admission and discharge events, a risk of
readmittance for the patient during the indicated risk of
readmittance time period, the risk of readmittance comprising a
categorization of low risk or a categorization of high risk;
determining, based on the plurality of weighted risk
factors and whether a risk of readmittance exceeds a
predetermined threshold, a level of post-discharge care for the
patient;
selecting a care plan template from a plurality of care
plan templates, the care plan templates being stored in a data
store and comprising a series of tasks for completion by one or
more care providers caring for the patient, the selecting being
based on the plurality of weighted risk factors and the
determined level of post-discharge care for the patient, the
selecting further comprising:
selecting a low risk care plan template as the care
plan template if the plurality of weighted risk factors do
not meet the predetermined threshold; and
selecting a high risk care plan template as the care
plan template if the plurality of weighted risk factors
exceed the predetermined threshold;
based on a determination that at least one of the series of
tasks has not been completed, generating an alert message, for
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transmission via the network, identifying the one or more tasks
which has not been completed;
modifying the determined risk of readmittance based on
the determination that at least one of the series of tasks has not
been completed; and
determining, based on the plurality of weighted risk
factors, whether the risk of readmittance exceeds the
predetermined threshold.
Appeal Br. 51–53 (Claims App’x).
The Rejection
The Examiner rejected all of the pending claims under 35 U.S.C.
§ 101 as directed to an abstract idea, without reciting significantly more.
Final Act. 2–5.
ANALYSIS
Appellant argues the independent claims together as a group, from
which we select claim 1 as representative.2F3 Appeal Br. 40–50; 37 C.F.R.
§ 41.37(c)(1)(iv).
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept,” id. at 218, and, in this case, the inquiry centers on

3 Appellant presents a single argument of error for the dependent claims—
that the Examiner errs by “reject[ing] all dependent claims as a group using
conclusory statements constituting a mere two sentences.” Appeal Br. 46.
We address this argument after our analysis of the independent claims.

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whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court
describes the second step as a search for “an ‘“inventive concept”’—i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73).
In 2019, the USPTO published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50–57 (Jan. 7, 2019) (“Guidance”) see also October 2019 Update:
Subject Matter Eligibility, 84 Fed. Reg. 55942–53 (Oct. 17, 2019)
(providing “examples as well as a discussion of various issues raised by the
public comments” to the Guidance). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (referred to as Step 2A, prong 1
in the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to as Step 2A, prong 2 in the Guidance).
See Guidance, 84 Fed. Reg. at 52–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to Step
2B of the Guidance, in which 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.
See Guidance, 84 Fed. Reg. at 56.
Alice/Mayo Step One, Guidance Step 2A, Prong One
(Does Claim 1 Recite a Patent-Ineligible Concept?)
For our prong one analysis, we set aside the following quoted
elements recited in claim 1: (1) “computer-implemented” and “using
machine learning” from the preamble; (2) that data records associated with
admission and discharge data are “electronic” (and stored and retrieved from
a “data store”); and (3) that the data records are received “over a network”
and that an alert message is generated “for transmission via the network.”
We consider those elements as “additional elements” (individually and in
combination) in our prong two and Alice/Mayo step two (Guidance step 2B)
analyses below. Setting aside those limitations, claim 1 recites a method “to
determine whether a patient requires post-discharge care” as follows:
[1] receiving . . . admission and discharge . . . records
associated with admission and discharge events of a plurality of
patients, wherein each of the . . . records include a plurality of
patient risk factors comprising a mental health condition of the
patient, an age of the patient, an identification or list of
medications the patient is taking, a number or list of past
hospitalizations of the patient, an ability of the patient to
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provide self-care, and a number and type of concurrent medical
conditions;
[2] storing the . . . records . . .;
[3] receiving, . . . from the admission and discharge
data[], an indication of a discharge event associated with the
patient;
[4] receiving . . . records associated with the patient,
wherein the . . . records each include a plurality of patient risk
factors comprising a mental health condition of the patient, an
age of the patient, an identification or list of medications the
patient is taking, a number or list of past hospitalizations of the
patient, an ability of the patient to provide self-care, and a
number and type of concurrent medical conditions;
[5] receiving a risk of readmittance time period;
[6] retrieving . . . records associated with prior patients,
the . . . records including admission and discharge events and a
plurality of patient risk factors, the plurality of patient risk
factors comprising, for each patient of the prior patients, a
mental health condition of the patient, an age of the patient, an
identification or list of medications the patient is taking, a
number or list of past hospitalizations of the patient, an ability
of the patient to provide self-care, and a number and type of
concurrent medical conditions;
[7] assigning a weight to each of the plurality of patient
risk factors, based upon a relationship between each patient risk
factor and the admission and discharge events . . . in relation to
the prior patients, and based upon the indicated risk of
readmittance time period, to generate a plurality of weighted
risk factors;
[8] determining, based on the plurality of weighted risk
factors and the admission and discharge events, a risk of
readmittance for the patient during the indicated risk of
readmittance time period, the risk of readmittance comprising a
categorization of low risk or a categorization of high risk;
[9] determining, based on the plurality of weighted risk
factors and whether a risk of readmittance exceeds a
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predetermined threshold, a level of post-discharge care for the
patient;
[10] selecting a care plan template from a plurality of
care plan templates, the care plan templates . . . and comprising
a series of tasks for completion by one or more care providers
caring for the patient, the selecting being based on the plurality
of weighted risk factors and the determined level of post-
discharge care for the patient, the selecting further comprising:
[a] selecting a low risk care plan template as the
care plan template if the plurality of weighted risk factors
do not meet the predetermined threshold; and
[b] selecting a high risk care plan template as the
care plan template if the plurality of weighted risk factors
exceed the predetermined threshold;
[11] based on a determination that at least one of the
series of tasks has not been completed, generating an alert
message . . . identifying the one or more tasks which has not
been completed;
[12] modifying the determined risk of readmittance based
on the determination that at least one of the series of tasks has
not been completed; and
[13] determining, based on the plurality of weighted risk
factors, whether the risk of readmittance exceeds the
predetermined threshold.
The first step describes receiving admission and discharge records for
multiple patients that include various information for each patient, and the
second step stores the records. Steps three and four describe receiving “an
indication of a discharge event” related to one patient and also, for that
discharged patient, records that include the same type of patient-related data
described in the first step. The fifth step recites “receiving a risk of
readmittance time period.” The sixth step describes retrieving “records
associated with prior patients” that include the same type of patient-related
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information described in the first step (e.g., retrieving that information from
the records stored in the second step). These limitations recited in claim 1’s
first six steps encompass the human activity of receiving, storing, and
retrieving paper records that include the recited patient-related information.
The Guidance explains that such limitations, which describe business
activities or interactions by and between people (e.g., following rules or
instructions) are abstract under the umbrella category of certain methods of
organizing human activity. See Guidance, 84 Fed. Reg. at 52.
Steps seven through nine describe an algorithm for performing a
weighted risk analysis using the data described in the previous steps to
determine, for the discharged patient, the “risk of readmittance” and “a level
of post-discharge care for the patient.” Step ten and its two sub-steps a–b
describe “selecting a care plan template from a plurality of templates,” with
the templates including tasks for patient care providers to complete and with
the selection including, depending on the related result from the algorithm
described in steps 7–9, either a “low risk” or “high risk” care plan template.
The Guidance explains that limitations such as those in steps 7–10 are
abstract because they encompass mental processes, which humans can
perform using pen and paper. Id.
The remaining steps (11–13) are also abstract, because they describe
activities that are either mental processes or one of certain methods of
organizing human activities. Step eleven describes “generating an alert” to
identify an uncompleted task based on determining that a task from the care
plan template selected in step ten has not yet been completed. Generating
such an alert to identify uncompleted tasks encompasses the routine human
activity of doing so and is, therefore, abstract under the umbrella category of
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certain methods of organizing human activity. See Guidance, 84 Fed. Reg.
at 52. Step twelve modifies the risk of readmittance based on determining
there is an uncompleted task, and step 13 determines whether the
readmittance risk exceeds a threshold. As with the algorithm described in
steps 7–9, these are abstract as mental processes, because people can
perform the limitations using only pen and paper. Id.
Thus, each of claim 1’s steps for “determin[ing] whether a patient
requires post-discharge care” recites an abstract idea. “Adding one abstract
idea . . . to another abstract idea . . . does not render the claim non-abstract.”
RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322, 1327 (Fed. Cir.
2017); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093–94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a
combination of abstract ideas). Accordingly, claim 1 recites a judicial
exception in the form of an abstract idea, and our analysis proceeds to prong
two under the Guidance.
Alice/Mayo Step One, Guidance Step 2A, Prong Two
(Does Claim 1 Integrate the Abstract Idea into a Practical Application?)
We next consider whether the claim integrates the judicial exception
into a practical application. Guidance, 84 Fed. Reg. at 54. To determine
whether the judicial exception is integrated into a practical application, we
identify whether there 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 practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also MPEP § 2106.05(a)–(c),
(e)–(h).
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Here, as discussed above, claim 1 recites the following elements in
addition to the abstract idea: (1) “computer-implemented” and “using
machine learning” (in the preamble); (2) that data records are “electronic”
(and stored and retrieved from a “data store”); and (3) that the data records
are received “over a network” and that an alert message is generated “for
transmission via the network.” As an initial matter, we note the recitations
of “computer-implemented” and for using “electronic” records with a “data
store” are plainly generic technological claim elements. See, e.g., Spec.
¶ 106, 229.
With respect to “machine learning” in the claim preamble, the
Specification (including the original claims) provides no discussion to
elucidate this claim element. Appellant contends the body of claim 1
describes what constitutes “machine learning” in the claim. Reply Br. 8–9;3F4
see also id. at 10–11 (further contending the same limitations in the body of
claim 1 recite “significantly more”). Consistent with Appellant’s arguments,
we find “machine learning” adds nothing technological to claim 1 beyond
the limitations recited in the body of the claim.
The “network” limitations are also generic—Appellant’s Specification
discloses only generic use of computer network technology. See Spec.
¶¶ 93–111, 149, 153, 162, 227–28, 240–41 (“The components of the system
can be interconnected by any form or medium of digital data communication
(e.g., a communication network). Examples of communication networks
include a local area network (‘LAN’), a wide area network (‘WAN’), and
the Internet.”); see also Fig. 1.

4 The pages of the Reply Brief are unnumbered. We refer to its eleven
pages as if they were numbered 1–11.
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Although the additionally recited elements add a certain level of
specificity to claim 1, they do not, alone or in combination, constitute an
improvement to a technology or technical field. Instead, they constitute
generic recitations of those technologies for automating performance of the
abstract idea. Thus, they do not constitute an improvement to “the
functioning of the computer itself” or “any other technology or technical
field.” See MPEP § 2106.05(a) (quoting Alice, 573 U.S. at 225). Neither do
these computer limitations qualify as applying the judicial exception with “a
particular machine,” because these components provide their conventional
functions and require no more than general purpose computer equipment.
See MPEP § 2106.05(b); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709,716-17 (Fed. Cir. 2014); TLI Communications LLC v. AV Automotive
LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (explaining that mere recitation of
concrete or tangible components is not an inventive concept).
Appellant’s arguments similarly do not persuade us that claim 1
effects a transformation of any recited articles, which are simply used for
their ordinary purposes, or that claim 1 includes any other meaningful
(technological) limitations, i.e., limitations beyond simply “linking the use”
of the abstract idea to generic technology. See MPEP § 2106.05 (c), (e)–(f);
see also id. at (g)–(h) (use of well-known limitations beyond the judicially
excepted matter constitutes “insignificant extra-solution activity” (g) and
claim limitations “merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more” (h)).
Accordingly, we determine the recited judicial exception is not
integrated into a practical application, and that the Examiner did not err in
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determining claim 1 is directed to an abstract idea. Accordingly, we proceed
to step two of the Alice/Mayo analysis (Guidance Step 2B)
Alice/Mayo Step Two; Guidance Step 2B
(Does Claim 1 Recite Significantly More than the Abstract Idea?)
In step two of the Alice/Mayo analysis, we consider whether 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 Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72–73, 77–79 (2012)). As stated in the 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. Guidance, 84 Fed. Reg. at 56. Thus, at this point of
our analysis, we determine if claim 1 adds a specific limitation, or
combination of limitations, that is not well-understood, routine, conventional
activity in the field; or whether it simply recites well-understood, routine,
conventional activities at a high level of generality. Id.
Here, as the Examiner finds, and we agree, claim 1 does not recite
limitations (or a combination of limitations) additional to those for the
abstract idea that are beyond what were known to those of ordinary skill in
the art to be well-understood, routine, and conventional prior to the
invention. Final Act. 4–5; Ans. 5–6. The high-level, generic disclosure of
computer automation features in Appellants’ Specification related to claim 1
confirm this. As discussed above for our analysis under prong two of Step
2A, the Specification has no discussion of any special functionality or
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considerations for “machine learning,” for a “data feed comprising
electronic records,” or for use of a “network.”
Appellant’s Arguments
Appellant’s arguments of error in the § 101 rejection are unpersuasive
in view our above determination under the Guidance that claim 1 is directed
to an abstract idea, without reciting significantly more. For clarification, we
provide the following discussion of some of Appellant’s arguments.
Appellant contends that the “claims, as evidenced by their length and
specificity, clearly limit the inventive means of achieving the result, and
cannot be said to merely recite steps for basic display of data as with the
Electric Power Group[4F5] claims.” Appeal Br. 41. This argument is
unpersuasive. The length and specificity of claim 1 are due to the length and
specificity of the recited abstract idea. A claim directed to a narrow abstract
idea, without reciting significantly more, is not patent eligible. Claim 1 is
directed to patent ineligible subject matter because it recites (and is directed
to, without significantly more) an abstract idea for “determin[ing] whether a
patient requires post-discharge care” (quoting claim 1’s preamble), not
because it “recite[s] steps for basic display of data” (Appeal Br. 41).
Appellant contends claim 1 improves a technical field and “allow[s]
systemic analysis of prior patient data.” Appeal Br. 42–44 (quoting p. 44)
(also contending the claim “exhibits machine learning”). This argument is
unpersuasive, because the claim limitations that provide for “analysis of
prior patient data” are part of the abstract idea and, as discussed in our
analysis under prong two of Step 2B of the Guidance, do not improve a

5 Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016).
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technical field. We discern no improvement in claim 1 to the technical field
of machine learning.
Appellant contends claim 1 does not preempt any basic tools of
science or technology because it is “‘limited to a specific process for’
ensuring adequate treatment of a patient and do[es] ‘not preempt approaches
that use rules of a different structure or different techniques.’” Appeal Br.
44–45 (quoting McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299, 1316 (Fed. Cir. 2016)). This argument is unpersuasive because the
claims at issue in McRO, which “focused on a specific asserted improvement
in computer animation,” are not analogous to Appellant’s claim 1. McRO,
837 F.3d at 1314; see also id. at 1307–08 (setting forth a representative
claim), 1315–16 (explaining the representative claim was directed to a
technological improvement that includes requirements related to “sub-
sequences of phonemes, timing, and the weight to which each phoneme is
expressed visually at a particular timing (as represented by [a] morph weight
set)”). Further, “[w]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717
F.3d 1269, 1281 (Fed. Cir. 2013) (explaining that “broad claims do not
necessarily raise § 101 preemption concerns, and seemingly narrower claims
are not necessarily exempt”). “Where a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, []
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, 788 F.3d at 1379.
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Appellant contends that claim 1’s similarity to the patent eligible
process claims at issue in Diamond v. Diehr, 450 U.S. 175 (1981), compels a
determination that claim 1 recites significantly more than an abstract idea.
Appeal Br. 46–48. This argument is unpersuasive. In Diehr, the Court held
the claims patent eligible because they were “drawn to an industrial process
for the molding of rubber products.” 450 U.S. at 192–93 (determining there
was no attempt to patent a judicial exception (i.e., mathematical formula)
also recited in the claim). Thus, in other words, unlike Appellant’s claim 1,
the claims in Diehr were directed (drawn) to a technological (industrial
rubber-making) process, while also reciting a judicial exception. Claim 1 is
patent ineligible because it is directed to a non-technological judicial
exception (i.e., an abstract idea), while also including only high-level,
generic technology that does not add significantly more. See Alice, 208 U.S.
at 223.
Appellant contends that, similar to Research Corp. Technologies, Inc.
v. Microsoft Corp., 627 F.3d 859 (2010), “[t]he processing operations of
[claim 1] are [] tied to the practical application of the data processing.”
Appeal Br. 48–49 (quoting p. 48). This argument is unpersuasive because
claim 1 is not analogous to the claims at issue in that case, in which the court
“perceive[d] nothing abstract in the subject matter of the process claimed.”
Research Corp. v. Microsoft, 627 F.3d at 868 (finding the claims at issue
“address[ed] ‘a need in the art for a method . . . for the halftone rendering of
gray scale images [by a digital processor]’” and that those claims were
“functional and palpable applications in the field of computer technology”).
Unlike the claims at issue in that case, Appellant’s claim 1 focuses on (is
directed to) non-technological.
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Appellant also contends that, under Berkheimer v. HP, Inc., 881 F.3d
1360 (Fed. Cir. 2018), the Examiner’s rejection has failed to establish that
the technological elements in claim 1 were well-understood, routine, or
conventional. Reply Br. 2–4. This argument is unpersuasive. The
exemplary claim limitation at issue in Berkheimer was “storing a reconciled
object structure in the archive without substantial redundancy,” which the
court found was “directed to [an] arguably unconventional inventive concept
described in the specification.” 881 F.3d at 1370. There was no evidence in
the record that this limitation described well-understood, routine, and
conventional technology. Id. at 1368. The court held there was a “genuine
issue of material fact” and that “fact questions created by the specification’s
disclosure” precluded summary judgment of invalidity under step two of the
Alice/Mayo framework. Id. Here, on the other hand, as the Examiner finds,
and we agree, Appellant’s Specification demonstrates that the technological
elements recited in claim 1 were, at the time of filing, well-understood,
routine, and conventional. Ans. 3 (citing Spec. ¶ 229); see Berkheimer
Memorandum Section III (A)(1).5F6
As discussed above, the only limitations in the body of claim 1 not
reciting a part of the abstract idea are (1) “computer-implemented” and
“using machine learning” (in the preamble); (2) that data records are
“electronic” (and stored and retrieved from a “data store”); and (3) that the
data records are received “over a network” and that an alert message is
generated “for transmission via the network.” The record before us supports

6 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.).” April 19, 2018.

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the determination that these claim limitations do not add significantly more,
consistent with Berkheimer and as discussed in our analysis above under
prong two of Step 2A and under Step 2B of the Guidance.
Thus, we are unpersuaded us of error in the § 101 rejection of claim 1.
The Dependent Claims
Appellant contends the Examiner errs by failing to make out a prima
facie case in “reject[ing] all dependent claims as a group using conclusory
statements constituting a mere two sentences.” Appeal Br. 46. The
Examiner responds that this argument fails to rebut the rejection’s
determination that, beyond the recited abstract idea(s), “the dependent
claims recite computer functions which were well-known, routine and
conventional at the time of the invention and field of use limitations.” Ans.
5 (referring to Final Act. 5). Appellant replies by reiterating that the
Examiner has failed to satisfy the burden of making out a prima facie case
for the rejection of the dependent claims. Reply Br. 2.
Appellant does not persuade us of error with respect to the rejection of
the dependent claims. The Federal Circuit has repeatedly noted that “the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992)). The Federal Circuit also has held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
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(quoting 35 U.S.C. § 132). Accordingly, the prima facie requirement for the
Office is to set forth the statutory basis of the rejection and other information
relied on, in a sufficiently articulate and informative manner as to meet the
notice requirement of § 132. Id.; see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (explaining that § 132 “is violated when a rejection is
so uninformative that it prevents the applicant from recognizing and seeking
to counter the grounds for rejection”).
Here, the rejection provides sufficient information to allow Appellant
to recognize the basis for and respond to the § 101 rejection of the dependent
claims. It is readily apparent that the Examiner considered the dependent
claims and determined that, beyond the recited abstract limitations, these
claims recite only computer-related limitations were well-understood,
routine, and conventional. For clarification, we briefly review the first three
of the dependent claims, reproduced here:
2. The method of claim 1, further comprising:
receiving an updated risk of readmittance time period; and
determining an updated risk of readmittance based on the
updated risk of readmittance time period.
3. The method of claim 1, wherein the patient risk factors
further comprises patient data received from a plurality of terminals.
4. The method of claim 3, further comprising receiving the
electronic data records from one of an admissions, discharges, and
transfers (ADT) interface, a medications interface and a discharge
summary interface.
Claim 2 adds abstract limitations to claim 1 that are similar to the
abstract limitations discussed above for claim 1. In particular, its two recited
steps are abstract because they describe activities humans may perform,
which constitute either a mental process or one of certain methods of
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organizing human activity, as discussed above for claim 1. See Guidance,
84 Fed. Reg. at 52.
Claim 3 adds a limitation that certain data (that is part of the abstract
idea recited in claim 1) is “received from a plurality of terminals.” We agree
with the Examiner’s finding that this recites only well-understood, routine,
and conventional computer-related technology that does not add
significantly more to the recited abstract idea.
Similarly, claim 4 adds to claim 3 a limitation that the electronic data
records of claim 1 are received from one of variously recited “interfaces.”
We again agree with the Examiner’s finding that this recites only well-
understood, routine, and conventional technology that does not add
significantly more to the recited abstract idea.6F7
We also note for emphasis that the § 101 precedent is replete with
instances where the court designated and focused only independent claims as
representative of the entire claim set in conducting the § 101 analysis. See,
e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712 (Fed. Cir. 2014)
(“As the other claims of the patent are drawn to a similar process, they suffer
from the same infirmity as claim 1 and need not be considered further.”).
This is especially the case where, as here, Appellant does not make separate
and particular arguments beyond the independent claims. See, e.g.,
CyberFone Sys., LLC v. Cellco P’ship, 885 F. Supp. 2d 710, 716 n.6 (D.
Del. 2012), aff’d sub nom. Cyberfone, 558 F. App’x 988 (Fed Cir. 2014)
(“In its brief, plaintiff focuses solely on how claim 1 is patent-eligible under

7 We also note that on the record before us, which includes no specific
arguments by Appellant for claim 4, that the descriptors of the recited
interfaces in this claim, such as a “medications” interface, a “discharge
summary” interface, etc., constitute non-technological, abstract limitations.
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§ 101. . . . No argument is made with respect to claims 13 or 18 despite
defendants raising the ineligibility of those claims. Given plaintiffs focus,
the court deals only with claim 1.”).
Thus, we are unpersuaded us of error in the § 101 rejection of the
dependent claims.
Conclusion
Accordingly, we sustain the § 101 rejection of claims 1, 2, 5–9, 13–
15, and 18–23. In doing so, as consistent with the foregoing, we adopt the
findings and reasoning of the Examiner.
DECISION
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed
1, 2, 5–9, 13–15, 18–23 101 Nonstatutory Subject Matter 1, 2, 5–9, 13–15, 18–23

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).
AFFIRMED