Anca I.D. Bucur et al.

Patent Trials and Appeals Board

Oct 31, 2019

13700743 - (D) (P.T.A.B. Oct. 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.
13/700,743 11/29/2012 Anca I.D. Bucur 2010P00460WOUS 6659
24737 7590 10/31/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANCA I.D. BUCUR, RICHARD VDOVJAK,
and JASPER J.A. VAN LEEUWEN
____________

Appeal 2018-004276
Application 13/700,743
Technology Center 3600
____________

Before MAHSHID D. SAADAT, KEVIN F. TURNER, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of Claims 16–35. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant states the real party in interest is Koninklijke
Philips Electronics N. V. Appeal Br. 2.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed November 8, 2017, “Appeal Br.”), the Reply
Brief (filed March 15, 2018, “Reply Br.”), the Examiner’s Answer (mailed
January 22, 2018, “Ans.”), the Final Action (mailed June 14, 2017, “Final
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STATEMENT OF THE CASE
The claims relate to a system to match patient records. See Abstract.

Invention
Claims 16, 25, and 34 are independent.3 An understanding of the
invention can be derived from a reading of illustrative Claim 16 which is
reproduced below with some formatting added:
16. A method of determining whether a first patient record
and a second patient record stored in a computer-readable form
relate to the same patient, comprising:
extracting a first plurality of clinical properties from
clinical information in the first patient record;
extracting a second plurality of clinical properties from
clinical information in the second patient record;
distinguishing persistent clinical properties of the first
plurality of clinical properties from non-persistent
clinical properties of the first plurality of clinical
properties;
for each persistent property of the first plurality of
clinical properties:
determine if the persistent property is incompatible
with at least one clinical property of the second
plurality of clinical properties, wherein an attribute
type of the at least one clinical property of the

Act.”), and the Specification (filed November 29, 2012, “Spec.”) for their
respective details.
3 Claim 29 recites, inter alia, “[t]he medium of claim 27 . . . .” Claims 30
and 31 depend from Claim 29 and recite, inter alia, “[t]he method of claim
29 . . . .” Claims 30 and 31 are each indefinite for reciting a different
statutory class than does the claim from which it depends. Should
prosecution continue, the Examiner might consider requiring corrective
verbiage.
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second plurality of clinical properties is different
from an attribute type of the persistent property;
if the persistent property is incompatible with the
clinical property of the second plurality of clinical
properties, determine that the first and second
patient records do not correspond to the same
patient;
else, determine and store a matching score for the
persistent property and the second plurality of
clinical properties, and repeat for the next
persistent property;
for each non-persistent property of the first plurality of
clinical properties: determine and store a matching score
for the non-persistent property and the second plurality of
clinical properties, and repeat for the next non-persistent
property;
extracting a first plurality of demographic properties
from demographic information in the first patient record;
extracting a second plurality of demographic properties
from demographic information in the second patient
record;
for each demographic property of the first plurality of
demographic properties:
determine and store a matching score for the
demographic property and
the second plurality of demographic properties,
and repeat for the next demographic property;
determining whether the first patient record and the second
patient record relate to the same patient based on the matching
scores of the first plurality of persistent properties, the first
plurality of non-persistent properties, and the first plurality of
demographic properties; and
if the first patient record and the second patient record relate to
the same patient, recording this relationship in a non-transitory
computer-readable medium so that a subsequent access to
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records of this same patient includes access to the first patient
record and the second patient record.
References and Rejections4
Claims 16–35 stand rejected under 35 U.S.C. § 101 as directed to an
abstract idea without significantly more. Final Act. 2–4.

ANALYSIS
We have reviewed the rejections of Claims 16–35 in light of
Appellant’s arguments that the Examiner erred. We provide the following
explanation to highlight and address specific arguments and findings
primarily for emphasis. We consider Appellant’s arguments presented in the
Appeal Brief, pages 9–21, and the Reply Brief, pages 2–9.

CLAIMS 16–35: INELIGIBLE SUBJECT MATTER
Appellant argues all claims as a group. See Appeal Br. 9–13.
Therefore, we decide the appeal of the § 101 rejection on the basis of
illustrative Claim 16, and refer to the rejected claims collectively herein as
“the claims.” See 37 C.F.R. § 41.37(c)(1)(iv)(2012); In re King, 801 F.2d
1324, 1325 (Fed. Cir. 1986). See MPEP, 9th ed., Rev. 08.2017 (January
2018).
Based upon our de novo review of the record in light of recent
Director Policy Guidance5 with respect to the rejection under 35 U.S.C.

4 The Examiner has withdrawn the rejection of Claims 16–35 under
35 U.S.C. § 112 (pre-AIA), second paragraph. Ans. 5. The Examiner has
withdrawn the rejection of Claims 16–35 under 35 U.S.C. § 103. Ans. 6.
See Reply Br. 1.
5 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50–57 (January 7, 2019) (“Revised Guidance,” “Rev. Guid.”).
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§ 101, we reverse the rejections of Claims 16–35 for the specific reasons
discussed below. “Whether a claim is drawn to patent-eligible subject
matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l
Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). The patent eligibility
inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In
particular, “[t]he question of whether a claim element or combination of
elements is well-understood, routine and conventional to a skilled artisan in
the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d
1360, 1368 (Fed. Cir. 2018).

PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; see also Bilski, 561 U.S. at
611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” (Diehr, 450 U.S. at
191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15
How.) 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at
69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “a claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187, 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Supreme
Court also indicated that a claim “seeking patent protection for that formula
in the abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); id. at 187 (“It is now commonplace that an application of a law of
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nature or mathematical formula to a known structure or process may well be
deserving of patent protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance we must, therefore, ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Id. at 221 (citation omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.

B. USPTO Revised Guidance
The PTO recently published Revised Guidance in the Federal Register
concerning the application of § 101.
Under the Revised Guidance, we first look to whether the claim
recites:
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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); and
2. additional elements that integrate the judicial exception into a
practical application (see Manual for Patent Examining Procedure
(“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
3. adds a specific limitation beyond the judicial exception that are 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 Rev. Guid.
Step 2A(i) — Abstract Idea.
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
a) Mathematical concepts—mathematical relationships, mathematical
formulas or equations, mathematical calculations;
b) Certain methods of organizing human activity — fundamental
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economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions); and
c) Mental processes—concepts performed in the human mind (including
an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in rare situations identified in the Revised Guidance.
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) — Practical Application.
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
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practical application.
The seven identified “practical application” sections of the MPEP,
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B — “Inventive Concept” or “Significantly More”
Under our precedent, it is possible that a claim that does not
“integrate” a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. The Federal Circuit has held claims eligible at the
second step of the Alice/Mayo test (USPTO Step 2B) because the additional
elements recited in the claims provided “significantly more” than the recited
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judicial exception (e.g., because the additional elements were
unconventional in combination). Therefore, if a claim has been determined
to be directed to a judicial exception under Revised Step 2A, we must
evaluate the additional elements individually and in combination under Step
2B to determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Rev. Guid., III.B.
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
Examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the Specification or to a
statement made by an applicant during prosecution that demonstrates the
well-understood, routine, conventional nature of the additional
element(s);
2. A citation to one or more of the court decisions discussed in MPEP
§ 2106.05(d)(II) as noting the well-understood, routine, conventional
nature of the additional element(s);
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3. A citation to a publication that demonstrates the well-understood,
routine, conventional nature of the additional element(s);
4. A statement that the Examiner is taking official notice of the well-
understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo.6
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present; or
(b) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality,
to the judicial exception, which is indicative that an inventive concept
may not be present.
Rev. Guid.; see also Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,

6 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.), USPTO 1–5 (2018), https://www.uspto.gov/sites/default/files
/documents/memo-berkheimer-20180419.PDF (“Berkheimer Memo”).
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the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.

C. THE CLAIMS AT ISSUE.
Step 1
Claim 16 is a method claim and recites one of the categories of
eligible subject matter enumerated in 35 U.S.C. § 101. Therefore, the issue
before us is whether the claims are directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner finds the claims are directed towards the abstract idea
of determining whether clinical properties, extracted from a pair of records,
are compatible. Final Act. 2. The Examiner further finds the use of rules to
determine whether records match is similar to the abstract idea identified by
the courts as comparing new and stored information and using rules to
identify options. Id.
Appellant contends the SmartGene7 Court identified the abstract idea
of “comparing new and stored information,” based on the specific facts of
that case. Appeal Br. 10. Appellant argues Examiners are cautioned not to
generalize from such cases unless “the facts of the application under
examination uniquely match the facts at issue in the non-precedential

7 SmartGene, Inc. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed.
Cir. 2014).
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decision.” Id. (citing USPTO Memorandum, September 2, 2016, “Recent
Subject Matter Eligibility Decisions”) (emphasis omitted).
Appellant contends their claims recite eligible subject matter because
the “claimed invention provides a particular improvement to a database
system by decreasing the misidentification of records in the database system,
and by improving the speed of compiling records in the database system
associated with each patient.” Appeal Br. 11.
The preamble of Claim 16 recites: “[a] method of determining
whether a first patient record and a second patient record stored in a
computer-readable form relate to the same patient, comprising.” Claim 16
further recites the following limitations as set forth in the left column of
Table I below. Table I applies the further limitations of Claim 16 to the
categories of abstract ideas as set forth in the Revised Guidance.

Table I
Claim 16 Revised Guidance
[a]8 extracting a first plurality of
clinical properties from clinical
information in the first patient
record;
A data gathering step which adds
insignificant extra-solution activity
to the judicial exception. Rev.
Guid., 55, n. 31.
[b] extracting a second plurality of
clinical properties from clinical
information in the second patient
record;
A data gathering step which adds
insignificant extra-solution activity
to the judicial exception. Rev.
Guid., 55, n. 31.
[c] distinguishing persistent clinical
properties of the first plurality of
Mental processes: concepts
performed in the human mind, e.g.,

8 Indicia, e.g., “[a],” added to facilitate discussion of individual limitations.
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clinical properties from non-
persistent clinical properties of the
first plurality of clinical properties;
observation, evaluation, judgment,
opinion. Rev. Guid., 52, n. 14.9
[d] for each persistent property of
the first plurality of clinical
properties: determine if the
persistent property is incompatible
with at least one clinical property of
the second plurality of clinical
properties, wherein an attribute type
of the at least one clinical property
of the second plurality of clinical
properties is different from an
attribute type of the persistent
property;
Mental processes: concepts
performed in the human mind, e.g.,
observation, evaluation, judgment,
opinion. Rev. Guid., 52.
[e] if the persistent property is
incompatible with the clinical
property of the second plurality of
clinical properties, determine that
the first and second patient records
do not correspond to the same
patient; else, determine and store a
matching score for the persistent
property and the second plurality of
clinical properties, and repeat for
the next persistent property;
Mental processes: concepts
performed in the human mind, e.g.,
observation, evaluation, judgment,
opinion. Rev. Guid., 52.

[f] for each non-persistent property
of the first plurality of clinical
Mental processes: concepts
performed in the human mind, e.g.,

9 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.”).
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properties: determine and store a
matching score for the non-
persistent property and the second
plurality of clinical properties, and
repeat for the next non-persistent
property;
observation, evaluation, judgment,
opinion. Rev. Guid., 52.
[g] extracting a first plurality of
demographic properties from
demographic information in the first
patient record;
Mental processes: concepts
performed in the human mind, e.g.,
observation, evaluation, judgment,
opinion. Rev. Guid., 52.
[h] extracting a second plurality of
demographic properties from
demographic information in the
second patient record;
Mental processes: concepts
performed in the human mind, e.g.,
observation, evaluation, judgment,
opinion. Rev. Guid., 52.
[i] for each demographic property of
the first plurality of demographic
properties: determine and store a
matching score for the demographic
property and the second plurality of
demographic properties, and repeat
for the next demographic property;
Mental processes: concepts
performed in the human mind, e.g.,
observation, evaluation, judgment,
opinion. Rev. Guid., 52.
[j] determining whether the first
patient record and the second
patient record relate to the same
patient based on the matching
scores of the first plurality of
persistent properties, the first
plurality of non-persistent
properties, and the first plurality of
demographic properties; and
Mental processes: concepts
performed in the human mind, e.g.,
observation, evaluation, judgment,
opinion. Rev. Guid., 52.
[k] if the first patient record and the
second patient record relate to the
same patient, recording this
relationship in a non-transitory
computer-readable medium so that a
The storing step does not fall within
a Guidance category.
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subsequent access to records of this
same patient includes access to the
first patient record and the second
patient record.

Under Step 2A(i) and based on the analysis in Table I, we determine
that limitations [c] – [i] recite judicial exceptions.

Step 2A(ii) – Practical Application
Where, as here, we determine at Step 2A(i) the claims recite a judicial
exception, we look to determine the presence of additional elements that
integrate the judicial exception into a practical application. The Revised
Guidance is “designed to more accurately and consistently identify claims
that recite a practical application of a judicial exception []and thus are not
‘directed to’ a judicial exception.” Rev. Guid., 84 Fed. Reg. at 53. The
claims recite a practical application where an additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field.10 Id. at 55.
For the reasons which follow, we conclude that Appellant’s claims in
fact, do integrate the judicial exception into a practical application. See
MPEP §§ 2106.05(a)–(c), (e)–(h). We address these “practical application”
MPEP sections seriatim:
MPEP § 2106.05(a) “Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field.”

10 The Revised Guidance also finds integration into a practical application
where the judicial exception is used in medical treatment or to transform an
article to a different state. Rev. Guid., 84 Fed. Reg. at 55. Such
considerations are not before us.
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“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“‘any other technology or technical field.’” MPEP § 2106.05(a).
The Examiner finds the claims are directed to the abstract idea of
using rules to determine whether patient records match and thus is similar to
the abstract idea identified by the courts as comparing new and stored
information and using rules to identify options. Final Act. 2.
Appellant contends “the abstract idea of ‘comparing new and stored
information and using rules to identify options’ was identified by the courts
in SmartGene based on the specific facts in that case.” Appeal Br. 10.
Appellant argues SmartGene used a routine method to compare a patient’s
known medical condition to a database of known therapies associated with
known medical conditions. Id. Appellant argues the claims, taken as a
whole, are not directed to comparing known information. Id.
Appellant contends the claims provide a particular improvement to a
database system by decreasing the misidentification of records in the
database system, and by improving the speed of compiling records in the
database system associated with each patient. Appeal Br. 11 (quoting
BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016)) (“We have found software-related patents eligible
under both steps of the test Alice sets out. We found a patent to a particular
improvement to a database system patent-eligible under step one in Enfish
LLC v. Microsoft Corp., 822 F.3d 1327, 1339–40, 2016 WL 2756255, at *8
(Fed. Cir. May 12, 2016). There, we found claim language reciting the
invention’s specific improvements to help our determination in step one of
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the Alice framework that the invention was directed to those specific
improvements in computer technology.”).
Appellant argues the misidentification of records relating to the same
patient, but derived from different sources, is a problem arising in the realm
of internet-distributed, computer-readable patient records. Id. Appellant
argues that prior to the Internet, only where a patient so informed a
practitioner would she/he be aware of other records. Id. The direct
communication prevented misidentification of the patient’s records. Id.
Post-internet, the patient generally signs a release to permit the practitioner
to access the patient’s records from sources, but this carries risk of mis-
identification of records, a risk exacerbated by the lack of a unified and
unambiguous identifier of each patient across the various records. Id. at 12.
Appellant discloses prior-art problems occasioned by distributed records.
See Spec. 2–3 (citing Grannis11).
Appellant contends the present claims improve database technology.
Appellant argues the Court determined that a specific technological solution
to a problem arising in that technology is patent-eligible. DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (“[T]he
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
networks.”). Appeal Br. 11.
In agreement with Appellant (id.) we find the claims require the use of
a computer to find “close but not exact” records based on comparisons of a

11 S.J. Grannis et al., Analysis of a probabilistic Record Linkage Technique
without Human Review, AMIA 2003 Symposium Proceedings, 259–63
(2003).
Appeal 2018-004276
Application 13/700,743

20
large feature set (demographic and clinical information) of a patient’s record
with a large number of potential matching records in a plurality of medical
databases. Thus, we find the claims are similar to those the Board has
previously deemed to be directed to a technological invention:
the correlation process of the claims can involve searching large
feature sets in an attempt to locate a close but not necessarily
exact match. The requirement of “preprocessing” presumes a
large number of entries for comparison, which would require
the use of a computer in the relevant time period. . . . As such,
we concur with Patent Owner that the instant claims are
necessarily rooted in computer technology and not merely the
implementation of a known abstract idea.
Google Inc. v. Network-1 Technologies Inc., CBM2015-00113, Paper No. 7
at 13–14 (PTAB Oct. 19, 2015).
We agree that “the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR Holdings, 773 F.3d at 1257. We find the
claims are directed to an invention that “[could not, as a practical matter,] be
performed entirely in the human mind.” SiRF Tech., 601 F.3d at 1333. We
find the claims are “directed to” a technological invention and therefore, are
patent eligible.
In view of the foregoing, we reverse the rejection of claims 16–35
under 35 U.S.C. § 101.

Appeal 2018-004276
Application 13/700,743

21
DECISION
The rejection of Claims 16–35 under 35 U.S.C. § 101 is REVERSED.

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
16–35 101 16–35

REVERSED