BROWN, Theresa M. et al.

Patent Trials and Appeals Board

Jul 14, 2020

12354739 - (D) (P.T.A.B. Jul. 14, 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.
12/354,739 01/15/2009 Theresa M. BROWN TUC920080210US1 (0119) 5375
73908 7590 07/14/2020
GRIFFITHS & SEATON PLLC (IBM)
3813 E. Kenwood St.
MESA, AZ 85215
EXAMINER
LONG, FONYA M
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/14/2020 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):
docketing@gs-iplaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THERESA M. BROWN, NEDLAYA YAZZIE FRANCISCO,
SUGUANG LI, and BETH ANN PETERSON
____________

Appeal 2019–001361
Application 12/354,739
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Theresa M. Brown, Nedlaya Yazzie Francisco, Suguang Li, and Beth
Ann Peterson (Appellant2) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1–25, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of providing user access controls for a
universal personal medical database. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for configuring a medical database by a processor
in communication with at least one storage device in a
computing environment, comprising:
[1] assigning medical data to a patient;
[2] organizing a plurality of data types for the medical data;
[3] designating a first portion of each of the plurality of data
types as public data;
[4] designating a second portion of each of the plurality of data
types as private data;
[5] organizing a plurality of access levels for the medical data,

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 13, 2018) and Reply Brief (“Reply Br.,” filed December 4,
2018), and the Examiner’s Answer (“Ans.,” mailed October 4, 2018), and
Final Action (“Final Act.,” mailed January 30, 2018).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation (Appeal Br. 2).

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wherein each of the plurality of data types includes the
plurality of access levels, a first access level of the
plurality of access levels corresponding to the patient;
[6] classifying the medical data:
according to the plurality of data types,
for each of the plurality of data types,
according to the plurality of access levels, and
according to one of the public and the private data;
[7] encrypting the medical data in a hierarchical structure
corresponding to each of the plurality of access levels,
wherein at least one private encryption key is assigned to
each of the plurality of access levels;
and
[8] storing the medical data on the at least one storage device;
[9] wherein the medical data including the plurality of data
types is
amalgamated into a single accessible database in lieu of
storing respective portions of the medical data within a
plurality of individual databases,
and
encrypted in the hierarchical structure to implement
access restrictions to each one of a plurality of users
associated with the at least one private encryption key
assigned to each of the plurality of access levels, thereby
enforcing privacy protections upon querying the medical
data of the patient by one of the plurality of users while
maintaining the medical data in the single accessible
database.
Claims 1–25 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

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ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
ANALYSIS
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . 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. [The Court] described step two of this
analysis 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.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use 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.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites assigning data, organizing data, designating data, organizing,
classifying, encrypting, and storing data. Assigning, encrypting, and
designating data are rudimentary data processing. Organizing and
classifying data are rudimentary data analysis. Thus, claim 1 recites
processing, analyzing, and storing data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
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extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are managing
personal behavior or relationships or interactions between people. Like
those concepts, claim 1 recites the concept of managing medical
information. Specifically, claim 1 recites operations that would ordinarily
take place in advising one to organize, classify, and encrypt private and
public medical data in differing access levels. The advice to organize,
classify, and encrypt private and public medical data in differing access
levels involves assigning medical data to a patient, which is a medical
information management act, and storing the medical data, which is an act
ordinarily performed in the stream of medical information management. For
example, claim 1 recites “assigning medical data to a patient,” which is an
activity that would take place whenever one is managing medical
information. Similarly, claim 1 recites “storing the medical data,” which is
also characteristic of managing medical information.

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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The Examiner determines the claims to be directed to using categories
to organize, store and communicate data. Final Act. 3. The preamble to
claim 1 recites that it is a method for configuring a medical database. The
steps in claim 1 result in organizing, classifying, and encrypting private and
public medical data in differing access levels absent any technological
mechanism other than a conventional computer for doing so.
As to the specific limitations, limitation 1 recites receiving data.
Limitations 2–8 recite generic and conventional processing, analyzing, and
storing of medical data, which advise one to apply generic functions to get to
these results. Limitation 9 is not a step or operation, but a description of the
resultant data attributes, and so is little more than the implications of
limitations 1–8. The limitations thus recite advice for organizing,
classifying, and encrypting private and public medical data in differing
access levels. To advocate organizing, classifying, and encrypting private
and public medical data in differing access levels is conceptual advice for
results desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
user access controls for a universal personal medical database. Thus, all this
intrinsic evidence shows that claim 1 recites managing medical information.
This is consistent with the Examiner’s determination.
This in turn is an example of managing personal behavior or
relationships or interactions between people as a certain method of
organizing human activity because managing medical information is a way
of managing behavior among medical personnel and patient. The concept of
managing medical information by organizing, classifying, and encrypting
private and public medical data in differing access levels is one idea for
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organizing such information. The steps recited in claim 1 are part of how
this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (display to help users process
information more quickly); Affinity Labs of Texas, LLC v. Amazon.com Inc.,
838 F.3d 1266, 1271 (2016) (customizing user interface and tailoring
content).
From this we conclude that at least to this degree, claim 1 recites
managing medical information by organizing, classifying, and encrypting
private and public medical data in differing access levels, which is managing
personal behavior or relationships or interactions between people, one of
certain methods of organizing human activity identified in the Revised
Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Step 1 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Step 8 recites
basic conventional data operations such as generating, updating, and storing
data. Steps 2–7 recite generic computer processing expressed in terms of
results desired by any and all possible means and so present no more than
conceptual advice. Limitation 9 is not a step or operation, but a description
of the resultant data attributes, and so is little more than the implications of
limitations 1–8. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing medical information by organizing, classifying, and encrypting
private and public medical data in differing access levels as performed by a
generic computer. This is no more than conceptual advice on the parameters
for this concept and the generic computer processes necessary to process
those parameters, and do not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The 18+ pages of specification do not bulge
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with disclosure, but only spell out different generic equipment8 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
managing medical information by organizing, classifying, and encrypting
private and public medical data in differing access levels under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, claim 1 at issue amounts to nothing
significantly more than an instruction to apply managing medical
information by organizing, classifying, and encrypting private and public
medical data in differing access levels using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses 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.

8 The Specification describes a host, terminal, client, personal computer,
personal desktop assistant (PDA). Spec. para. 23.
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We conclude that claim 1 is directed to achieving the result of
managing medical information by advising one to organize, classify, and
encrypt private and public medical data in differing access levels, as
distinguished from a technological improvement for achieving or applying
that result. This amounts to managing personal behavior or relationships or
interactions between people, which fall within certain methods of organizing
human activity that constitute abstract ideas. The claim does not integrate
the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
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Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for processing, analyzing, and storing data amounts to electronic
data query and retrieval—one of the most basic functions of a computer.
Limitation 9 is not a step or operation, but a description of the resultant data
attributes, and so is little more than the implications of limitations 1–8. All
of these computer functions are generic, routine, conventional computer
activities that are performed only for their conventional uses. See Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
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Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data processing-analysis-storage
is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting,
offering for exchange, display, allowing access, and receiving payment
recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
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Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the managing
personal behavior or relationships or interactions between people of
managing medical information by advising one to organize, classify, and
encrypt private and public medical data in differing access levels, without
significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–6 and Answer 3–6 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that the claims are
eligible because they recite encrypting data. Reply Br. 2–4. The claims
recite no more than the conceptual idea of encrypting data. For example,
claim 1 recites “encrypting the medical data in a hierarchical structure” and
“encrypted in the hierarchical structure to implement access restrictions
to each one of a plurality of users associated with the at least one private
encryption key assigned to each of the plurality of access levels.” No
technological implementation details for such encryption are recited, nor for
how the resultant encryption is used. Instead the claims recite using existing
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encryption technology according to its known use of protecting data by
requiring a key to decrypt the data. “At that level of generality, the claims
do no more than describe a desired function or outcome, without providing
any limiting detail that confines the claim to a particular solution to an
identified problem. The purely functional nature of the claim confirms
that it is directed to an abstract idea, not to a concrete embodiment of that
idea.” Affinity Labs v. Amazon, 838 F.3d at 1269.
We are not persuaded by Appellant’s argument that
instant claims 1–25, contrarily, are not generic to merely
combining storing data and encryption, but rather improve the
technological process and "reflect an inventive solution" to the
storage and access of medical data so as to "ensure that privacy
of the patient is maintained" while conveniently hosting the
medical data thereof in "a universal database" accessible by a
hierarchy of providers
Reply Br. 5. What Appellant refers to as an inventive solution is no more
than conventional data storage, analysis, and processing including equally
conventional encryption. Such high level of generality is insufficient to
confer eligibility.
As the Supreme Court stated in Alice, “generic computer
implementation” is insufficient to transform a patent-ineligible
abstract idea into a patent eligible invention. More generally,
“simply appending conventional steps specified at a high level
of generality” to an abstract idea does not make that idea
patentable. The ’379 patent does not provide an inventive
solution to a problem in implementing the idea of remote
delivery of regional broadcasting; it simply recites that the
abstract idea of remote delivery will be implemented using
the conventional components and functions generic to cellular
telephones.
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262–1263
(Fed. Cir. 2016) (citations omitted).
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Appellant’s contention that “claims 1–25 currently at issue ‘change
the content or its classification’ rather than merely ‘mak[ing] the originally-
gathered information accessible,’” Reply Brief 5, is similarly no more than
describing the conventional result of data processing.
We are not persuaded by Appellant’s argument that
while the act of encryption may be well-known, the specific
and step-by-step techniques employed by the processor to
perform the encryption functionality of the present invention
is what constitutes the improvement, and these mechanisms are
not "well-known, routine, nor conventional" in current art.
Reply Br. 6. The claims do not recite techniques to perform encryption
functionality. The Specification also fails to describe techniques to perform
encryption functionality. At best, the Specification describes using different
such functionalities, none of which are themselves described, in different
hierarchy levels. This is no more than a conceptual idea for using differing
encryption techniques generically in a conventional hierarchical data
arrangement.
We are not persuaded by Appellant’s argument that “the classification
and encryption of the medical data of the instant claims is patent-eligible
because the ‘object of the invention is to transform data from one form into
another that will be recognizable by the intended recipient but secure against
decryption by unintended recipients.’” Reply Br. 7. Such transformation
itself is no more than a conceptual idea, a result to be obtained by any and all
possible means. Again, no particular technological implementation details
are recited in the claims or even described in the Specification.
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CONCLUSIONS OF LAW
The rejection of claims 1–25 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
CONCLUSION
The rejection of claims 1–25 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–25 101 Eligibility 1–25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED