Andrew S. Robinson et al.

Patent Trials and Appeals Board

Oct 30, 2019

14185976 - (D) (P.T.A.B. Oct. 30, 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.
14/185,976 02/21/2014 Andrew S. Robinson 7175-227181 5117
69781 7590 10/30/2019
Barnes & Thornburg LLP (Hill-Rom)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/30/2019 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):
indocket@btlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW S. ROBINSON, DINO R. BOSTIC, WILLIAM B.
BISHOP, MATTHEW D. MORGAN, DAVID M. GIRARDEAU, JOSHUA
P. LINGENFELSER, and BRADLEY T. SMITH
____________

Appeal 2018-006298
Application 14/185,976
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, MARC HOFF, and
JOHNNY A. KUMAR, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–4 and 6–25, which are all the claims pending in this application.
Claim 5 is canceled. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “Applicants” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as “Hill-Rom
Services, Inc.” App. Br. 2.

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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed invention relate “to a healthcare
information technology (IT) system and particularly, to a healthcare IT
system that displays information regarding patients. More particularly, the
present disclosure relates to an electronic room sign for a healthcare IT
system.” Spec. ¶ 2.
Rejection
Claims 1–4 and 6–25 are rejected under 35 U.S.C. § 101, as being
directed to a judicial exception, without significantly more. Final Act. 2.
ANALYSIS
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. To the
extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Rejection of Claims 1–4 and 6–25 under 35 U.S.C. § 101
Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting
claims 1–4 and 6–25, as being directed to a judicial exception, without
significantly more?

2 We herein refer to the Final Office Action, mailed June 21, 2017 (“Final
Act.”); Appeal Brief, filed Dec. 18, 2017 (“App. Br.”); Examiner’s Answer,
mailed Apr. 4, 2018 (“Ans.”), and the Reply Brief, filed May 31, 2018
(“Reply Br.”).
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Principles of Law — 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) (quoting 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. Pty. Ltd. 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 intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.” (emphasis omitted)); 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; 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
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(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1854))); 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 that “[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; see also id. at 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); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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.” Alice, 573 U.S. 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. (alterations in original) (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. Under the 2019 Revised 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);3 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).4, 5
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

3 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, prong 1”).
4 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, prong 2”).
5 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
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, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.6
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions

6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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(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).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
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In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).

2019 Revised Guidance, Step 2A, Prong One7
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
We note the Examiner concludes all claims 1–4 and 6–25 recite an
abstract idea, i.e., “an idea of itself, specifically, collecting, analyzing and
displaying data.” Final Act. 2. The Examiner analogizes Appellant’s
claimed concept to collecting information, analyzing it, and displaying
certain results of the collection and analysis which has been identified by the
courts as abstract. Id. In support, the Examiner cites to Electric Power

7 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Group, LLC v. Alstom S.A. (830 F.3d 1350 (Fed. Cir. 2016)). See Final Act.
2.
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional (non-abstract) claim limitations that are generic computer
components:
TABLE ONE
Independent Claim 1 Revised 2019 Guidance
[a] An electronic room sign
system for use in a healthcare
information technology
system that includes an
electronic medical records
(EMR) system and a real
time locating system
(RTLS) that tracks locations
of caregivers throughout a
healthcare facility, the RTLS
including a plurality of
tracking tags to be attached
to people and equipment, a
plurality of receivers to
receive wireless signals from
the plurality of tracking
tags, and at least one RTLS
server in communication
with the plurality of
receivers, the EMR system
having an EMR server, the
electronic room sign system
comprising

We construe “An electronic room
sign system” as a statutory subject
matter class — a machine. See 35
U.S.C. § 101 (“Whoever invents or
discovers any new and useful
process, machine, manufacture, or
composition of matter, or any new
and useful improvement thereof,
may obtain a patent therefor, subject
to the conditions and requirements of
this title.”).

Abstract idea: tracking locations of
caregivers throughout a healthcare
facility could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.
Also, such tracking of locations of
caregivers recites a method of
organizing human activity, including
the subcategories of managing
personal behavior or relationships or
interactions between people,
including following rules or
instructions. See 2019 Revised
Guidance, 84 Fed. Reg. at 52.
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Independent Claim 1 Revised 2019 Guidance
[b] a display mounted
adjacent a doorway of a
room of a patient, the
display being situated outside
of the room, and

The “display” “doorway” and
“room” are additional non-abstract
limitations.

[c] a server signaling the display to
display textual and graphical
information relating to patient
isolation based on information
received by the server from both
the EMR server of the EMR
system and the RTLS server of the
RTLS,

Signaling and displaying are
insignificant extra-solution activities.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The additional non-abstract
limitations are identified in bold
type.

[d] wherein the server
controls the display to
display one or more messages
and one or more icons that
are tailored to particular
caregivers who are
determined by the RTLS to
be in the proximity
of the display,

Displaying is an insignificant extra-
solution activity. 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).

The additional non-abstract
limitations are identified in bold
type.

Abstract idea: determining the
particular caregivers who are in the
proximity of the display could be
performed alternatively as a mental
process. See 2019 Rev. Guid. 52.
Also, such determining the
particular caregivers who are in the
proximity of the display recites a
method of organizing human
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Independent Claim 1 Revised 2019 Guidance
activity, including the subcategories
of managing personal behavior or
relationships or interactions between
people, including following rules or
instructions. See 2019 Revised
Guidance, 84 Fed. Reg. at 52.

[e] wherein the information
displayed on the display includes at
least one isolation control message,
Displaying is an insignificant extra-
solution activity. 2019 Revised
Guidance, 55 n.31; see also MPEP §
2106.05(g).

The “display” is an additional non-
abstract limitation.

[f] wherein the isolation control
message includes instructions to
staff to do at least one of the
following: don gown and gloves
before entering the room,
don a respirator before entering
the room, or don a mask before
entering the room.
Abstract idea: instructing the staff to
don gown and gloves, or a
respirator, or a mask before entering
a room could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.
Also such instructing the staff to don
gown and gloves, or a respirator, or
a mask before entering a room
recites a method of organizing
human activity, including the
subcategories of managing personal
behavior or relationships or
interactions between people,
including following rules or
instructions. See 2019 Revised
Guidance, 84 Fed. Reg. at 52.

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Independent Claim 1 Revised 2019 Guidance
The additional non-abstract
limitations are identified in bold
type.

Abstract Ideas — Mental Processes
and Methods of Organizing Human Activities.

We conclude that the italicized abstract idea steps identified above in
Table One could be performed alternatively as mental processes under the
Revised Guidance. See Claim 1. See 2019 Revised Guidance, 84 Fed. Reg.
at 52. 8 See also “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

8 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).

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them from being performed by a human, mentally or with pen and paper.’).”
84 Fed. Reg. at 52 n.14.
Moreover, the “performance of a claim limitation using generic
computer components does not necessarily preclude the claim limitation
from being in the mathematical concepts grouping, Benson, 409 U.S. at 67,
or the certain methods of organizing human activity grouping, Alice, 573
U.S. at 219–20.” 84 Fed. Reg. at 52 n.14 (emphasis added).
Applying this reasoning here, and considering representative claim 1
as a whole, we conclude the recited italicized functions shown in Table One
also implement a method of organizing human activity, including the
subcategories of managing personal behavior or relationships or
interactions between people, including following rules or instructions. See
2019 Revised Guidance, 84 Fed. Reg. at 52.
To the extent that claim 1 tailors isolation and/or infection control
information on a display (located outside a patient’s room) according to the
patient’s medical records and the location of particular health care workers,
cf. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015) (Finding that “tailoring content based on the viewer’s
location or address” or navigation data was abstract and further noting that
“[t]here is no dispute that newspaper inserts had often been tailored based on
information known about the customer — for example, a newspaper might
advertise based on the customer’s location. Providing this minimal tailoring
— e.g., providing different newspaper inserts based upon the location of the
individual — is an abstract idea.”);
Our reviewing court provides further guidance: “An abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
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Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Moreover, merely
combining several abstract ideas does not render the combination any less
abstract. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed.
Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . .
does not render the claim non-abstract.”); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas).
For at least these reasons, we conclude claim 1 recites the specific
types of abstract ideas identified above in Table One.

Additional Limitations
As emphasized in bold supra, we note the additional non-abstract
limitations of, inter alia, a generic server, display, and a plurality of
receivers. See 2019 Revised Guidance, 84 Fed. Reg. at 52. We further note
the supporting exemplary descriptions of generic computer and network
components in the Specification, for example:
While EMR server 36 is shown diagrammatically in Fig. 1, it
may be considered to represent all of the computer devices that
send data over network 32 which is, in turn, monitored by
electronic signage server 28 for data or messages of interest.
Spec. ¶ 47.
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., (837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
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We note independent claim 1 is the sole independent claim on appeal.
See supra Table One. Because we conclude all claims 1–4 and 6–25 on
appeal recite an abstract idea, as identified above, under Step 2A, Prong
One, we proceed to Step 2A, Prong Two.

2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Appellant argues the claims of the present invention provide an
improvement to the functioning of an existing field of technology:
[C]laims that “effect an improvement in any other technology or
technical field” are patent eligible and should not be rejected
under 35 U.S.C. § 101. Alice, 134 S. Ct. at 2359 (citing Diamond
v. Diehr, 450 U.S. 175, 177-78 (1981)). Claim 1 is not directed
to a judicial exception because it provides an improvement in an
existing field of technology. In particular, the present claims are
directed to an improvement in the field of infection control in a
healthcare facility. The claimed subject matter improves the
compliance by caregivers in healthcare facilities with infection
control protocols.
App. Br. 7–8 (emphasis added).

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However, as set forth in MPEP § 2106.05(a):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a
computer to the performance of the method. Merely adding
generic computer components to perform the method is
not sufficient. Thus, the claim must include more than mere
instructions to perform the method on a generic component or
machinery to qualify as an improvement to an existing
technology.
(emphasis added).
Here, Appellant has not provided sufficient details regarding how a
computer aids the method, the extent to which the computer aids the method,
or the significance of a computer to the performance of the method. See Id.

Appellant further argues that claim 1 specifies a novel and nonobvious
solution:
The Background section of the present application explains the
shortcomings of the prior art approach for attempting to convey
information to caregivers regarding the contamination risk level
of patients in a healthcare facility. The claims of the present
application are directed toward a non-abstract system that is
more reliable, more consistent, and more complete in the
conveyance of isolation control messages to caregivers than was
known in the prior art. Claim 1 specifies a novel and nonobvious
solution to some of the challenges arising in this technical field.
App. Br. 8 (emphasis added).
However, any analysis based upon anticipation (or obviousness) is not
relevant to our analysis for patent eligibility under 35 U.S.C. § 101.
Although the second step in the Alice/Mayo test is a search for an “inventive
concept,” the analysis is not directed to novelty or nonobviousness, but
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rather searches for elements sufficient to ensure that the claimed invention is
directed to more than a patent-ineligible concept, such as an abstract idea.
See Alice, 573 U.S. at 217–18. “Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013);
see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.”); Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016)
(noting that an eligibility finding does not turn on the novelty of using a
user-downloadable application for the particular purpose recited in the
claims).
Moreover, we conclude that Appellant’s generic computer
implementation performs functions that can be performed alternatively as
mental processes, or performs the equivalent steps of a method of organizing
human activities, as discussed above.
Accordingly, on this record, we conclude that independent claim 1
does not recite an improvement to the functionality of a computer or other
technology or technical field. See MPEP § 2106.05(a).

MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test (“MoT”)
as applied to method claims

At the outset, we note the Supreme Court cautions that the MoT test is
not the sole test, but may provide a useful clue:
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This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”

Bilski, 561 U.S. at 604 (emphasis added).
However, because there are no method (process) claims before us on
appeal, the Bilski MoT test is inapplicable here. See MPEP § 2106.05(c).

MPEP § 2106.05(e) — Meaningful Claim Limitations 9
The Examiner finds: “The claim(s) do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the additional computer elements, which are recited at a high level
of generality, provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea.” Final Act. 3 (emphasis
added).
Appellant disagrees with the Examiner, and contends:
The [E]xaminer oversimplifies what is actually recited in claim
1 and ignores meaningful limitations that render claim 1
narrowly tailored, not abstract.
App. Br. 5 (emphasis added).

9 MPEP § 2106.05(e): “Applying or using the judicial exception in some
other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim as a
whole is more than a drafting effort designed to monopolize the exception.”
(emphasis added).

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However, as discussed above, we conclude the italicized abstract
ideas identified above in Table One could be performed alternatively as
mental processes under the Revised Guidance. We also conclude the recited
italicized functions shown in Table One implement the equivalent steps of a
method of organizing human activity, including the subcategories of
managing personal behavior or relationships or interactions between people,
including following rules or instructions. See 2019 Revised Guidance, 84
Fed. Reg. at 52. We note an improved abstract idea it is still an abstract
idea. See Mayo, 566 U.S. at 90 (holding that a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless patent ineligible).
We see nothing in Appellant’s claims that specifically improves the
efficiency of the computer, or another technology or technical field, as
addressed above under MPEP § 2106.05(a). Appellant does not advance
further substantive, persuasive arguments as to any particular “meaningful”
claim limitations, such as those of the types addressed under MPEP §
2106.05(e), that impose meaningful limits on the judicial exception.
Accordingly, on this record, we conclude representative claim 1 has
no other argued meaningful limitations, as considered under section
2106.05(e) of the MPEP, pursuant to the 2019 Revised Guidance.

MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea

As noted above, the Examiner finds: “The claim(s) do not include
additional elements that are sufficient to amount to significantly more than
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the judicial exception because the additional computer elements, which are
recited at a high level of generality, provide conventional computer
functions that do not add meaningful limits to practicing the abstract idea.”
Final Act. 3.
Without more, we agree with the Examiner that Appellant’s claimed
invention merely implements the abstract idea using instructions executed
on generic computer components, as depicted in bold type in Table One, and
as supported in our reproduction of the Specification, paragraph 47, supra.
Thus, we conclude Appellant’s claims merely use a computer as a tool to
perform an abstract idea.

MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception

As mapped in the right column of Table One, supra, we conclude that
representative independent claim 1 recites extra or post-solution activities
that courts have determined to be insufficient to transform judicially
excepted subject matter into a patent-eligible application. See MPEP
§ 2106.05(g); 84 Fed. Reg. at 55 n.31.

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant post solution activity.’” Bilski, 561 U.S. at 611–12, (quoting
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Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). We have identified the
specific claim limitations that recite insignificant extra or post-solution
activity above in Table One of claim 1.
Preemption
Appellant argues:
The present claims stand no risk of preempting the broad field of
“receiving wireless signals from the plurality of .....in
communication ..... signaling the display .... display one or more
message .... tailored to particular caregivers” because the
claims are specifically directed to a system for displaying a
narrow type of message, namely, “an isolation control message”
that is further limited to “instructions to staff to do at least one of
the following: don gown and gloves before entering the room,
don a respirator before entering the room, or don a mask before
entering the room.”
App. Br. 7.
In response, we note that preemption is not the sole test for patent
eligibility. As our reviewing court has explained, “questions on preemption
are inherent in and resolved by the § 101 analysis,” and, although
“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);
cf. OIP Techs, 788 F.3d at 1362–63 (“[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
Nor do claims 1–4 and 6–25 on appeal present any other issues as set
forth in the 2019 Revised Guidance regarding a determination of whether the
additional generic elements integrate the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 55.
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Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–4 and 6–25 do not integrate the judicial
exception into a practical application. Therefore, we proceed to Step 2B,
The Inventive Concept.

The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
We note that Berkheimer was decided by the Federal Circuit on
February 8, 2018. On April 19, 2018, the PTO issued the Memorandum
titled: “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (hereinafter “Berkheimer Memorandum”).10
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements (or a
combination of elements) are well-understood, routine, or conventional.

10 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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Here, the Examiner finds claim 1:
recites [the] additional limitation[s] “receivers”, “display”,
“server”, “electronic medical records system” and “real time
locating system” [which] are generic components that are
configured to perform activities that are well-understood,
routine, and conventional activities previously known to the
industry (e.g., data analysis, and loading and executing modules).
The originally filed specification supports this interpretation at
least at paragraph 40, where “display screen” and in paragraph
24 and Fig 1 discloses “signage server 28 is coupled to the
computer network of the healthcare facility” and in paragraph 27
of applicant's specification recites "receivers 40 receive wireless
signals from badges or tags 44 worn by caregivers or attached to
equipment to be tracked as indicated by diagrammatic dotted
arrows 45 in FIG. 1. Receivers 40 also receive wireless signals
from wristbands 46 worn by patients as indicated by an
associated diagrammatic arrow 45. Each tag 44 and wristband
46 has identification (ID) data. Each receiver 40 forwards the ID
data from tags 44 and wristbands 46 along with its own ID to
server 38 which updates a database indicating the location of
caregivers and other hospital staff, patients, and equipment
within the healthcare facility”.
Final Act. 4 (emphasis added).
In the Reply Brief (filed May 31, 2018), Appellant cites to
Berkheimer as an intervening case authority, and urges:
The [E]xaminer has failed to provide any of the above types of
support in the present application that the additional elements,
in combination, are well-understood, routine, and/or
conventional, thereby rendering improper the finding by the
Examiner that the combination of elements of claim 1 of the
present application are patent ineligible under step 2B of the
Alice framework. The Examiner's rejection under 35 U.S.C.
§ 101 should be reversed on at least this basis.
Reply Br. 6 (emphasis added).
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In support, Appellant reproduces in the Reply Brief (6) the four
acceptable types of fact finding set forth in the USPTO Berkheimer
Memorandum:
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).”
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).”
Berkheimer Memorandum 3–4.

Appellant contends: “the [E]xaminer has not met the requirements set
forth in the Berkheimer Memo with regard to demonstrating that the
combination of elements set forth in claim 1 is ‘widely prevalent or in
common use in the relevant field.’ In fact, not a single piece of prior art has
been found showing the recited a combination of elements as particularly set
forth claim 1 of the present application.” Reply Br. 8.
However, we find Appellant fails to substantively and persuasively
traverse the Examiner’s specific factual findings that rely upon paragraphs
24, 27, and 40, and the identified elements, i.e., Electronic Signage Server
28, RTLS server 38, RTLS receivers 40, tags 44, diagrammatic dotted
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arrows 45, and wristbands 46, as depicted in Figure 1 of the Specification, as
evidence. See Final Act. 4.
BASCOM 11
Appellant additionally cites to Bascom in support, and urges: “‘As is
the case here, an inventive concept can be found in the non-conventional and
non-generic arrangement of known, conventional pieces.’ BASCOM, slip
op. at 15. Such is the case here.” Reply Br. 5.
However, without more substantive explanation or evidence in
support, we find Appellant’s analogy to BASCOM is unavailing. See Id.
The Federal Circuit held in BASCOM that the claimed Internet content
filtering, which featured an implementation “versatile enough that it could
be adapted to many different users’ preferences while also installed remotely
in a single location,” expressed an inventive concept in “the non-
conventional and non-generic arrangement of known, conventional pieces.”
BASCOM, 827 F.3d at 1350.
Here, Appellant has not substantively and persuasively shown a non-
conventional, non-generic arrangement regarding the non-abstract
limitations of, inter alia, a generic server, display, and receiver. See
independent claim 1. See 2019 Revised Guidance, 84 Fed. Reg. at 54 n.22.
Therefore, it is our view that Appellant’s claims do not involve any
improvements to another technology, technical field, or improvements to the
functioning of the computer or network, as was seen by the court in
BASCOM. Instead, we conclude Appellant’s claims 1–4 and 6–25 merely

11 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).

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invoke generic computer components as a tool in which the instructions
executing on the computer apply the judicial exception.
Further, regarding the use of the recited generic computer components
identified above in Table One, the Supreme Court has held “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing
court provides additional guidance: See FairWarning, 839 F.3d at 1096
(“[T]he use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter
alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite “‘well-
understood, routine conventional activit[ies],’ either by requiring
conventional computer activities or routine data-gathering steps” (alteration
in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellant has not shown that the claims on appeal add a specific limitation
beyond the judicial exception that is not “well-understood, routine, and
conventional” in the field (see MPEP § 2106.05(d)).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 1–4 and 6–25, considered as a
whole, is directed to a patent-ineligible abstract idea that is not integrated
into a practical application, and does not include an inventive concept.

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Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of claims 1–4 and 6–25.12

CONCLUSION
Under our 2019 Revised Guidance, as governed by relevant case law,
we conclude all claims rejected under 35 U.S.C. § 101 are directed to patent-
ineligible subject matter.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1–4 and 6–25 § 101 1–4 and 6–25

FINALITY AND 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

12 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 41.37(c)(1)(iv).