CERNER INNOVATION, INC.

Patent Trials and Appeals Board

Sep 28, 2020

2020002430 (P.T.A.B. Sep. 28, 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.
14/984,921 12/30/2015 Bruce Howard Kusens 27098.247655 8071
46169 7590 09/28/2020
SHOOK, HARDY & BACON L.L.P.
(CERNER CORPORATION)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
BPARKERSON@SHB.COM
shbdocketing@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte BRUCE HOWARD KUSENS
________________

Appeal 2020-002430
Application 14/984,921
Technology Center 3600
________________

Before CATHERINE SHIANG, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Non-Final
Rejection of claims 1–12 and 14–20.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
INVENTION
The invention relates to healthcare assurance. Abstract. Claim 1 is
illustrative of the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Cerner Innovation, Inc. is the real
party in interest. Appeal Br. 3.
2 Claim 13 is cancelled. Appeal Br. 28.
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1. A computerized method for generating healthcare
recommendations, the method comprising:
identifying, by a central healthcare server, that a first set
of confidential medical information located on a first healthcare
information server has information relevant to an identified
patient, the first healthcare information server remote from the
central healthcare server;
retrieving the first set of confidential medical information
for the identified patient by crawling one or more data stores at
the first healthcare information server;
updating, by the central healthcare server, a consolidated
set of confidential medical information with the first set of
confidential medical information;
storing the consolidated set of confidential medical
information on the central healthcare server, wherein the
consolidated set of confidential medical information is
accessible by each of the first healthcare information server and
a second healthcare information server;
identifying, by the central healthcare server, that a second
set of confidential medical information located on the second
healthcare information server has information relevant to the
identified patient, the second healthcare information server being
remote from each of the first healthcare information server and
the central healthcare server;
receiving, at the central healthcare server, an indication
from the second healthcare information server that the second set
of confidential medical information has been updated;
in response to the indication, retrieving, by the central
healthcare server a crawling one or more data stores of the
second healthcare information server, a second set of
confidential medical information for the identified patient;
updating the consolidated set of confidential medical
information with the second set of confidential medical
information to form an updated consolidated set of confidential
medical information;
determining, by the central healthcare server, whether one
or more information gaps or discrepancies exist in the updated
consolidated set of confidential medical information;
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generating a prompt on a user interface for a user to enter
additional information to resolve the one or more information
gaps or discrepancies in the updated consolidated set of
confidential medical information;
generating a message comprising one or more care
recommendations for the identified patient based on the updated
consolidated set of confidential medical information and the
additional information, wherein the one or more care
recommendations for the identified patient require medical
judgment or additional information and are weighted based on a
reliability of one or more pieces of information underlying a
particular care recommendation; and
transmitting the message from the central healthcare
server to at least one of the first healthcare information server
and the second healthcare information server.
Appeal Br. 24–253 (Claims Appendix) (emphases added).

REJECTION
The Examiner rejects claims 1–12 and 14–20 under 35 U.S.C. § 101
as being directed to patent ineligible subject matter. Non-Final Act. 2–6.

ANALYSIS
A. Principles of Law
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 U.S. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).

3 Appellant does not provide page numbers in the Appeal Brief. We,
therefore, provide our own numbering.
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). 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.”); 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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
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
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attempt to patent a mathematical formula.”). Having said that, the 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. (citation omitted)
(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 (quotation marks 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). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “Update”)
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internal agency management, expected to follow the guidance.” Id. at 51;
see also Update at 1.
Under the 2019 Revised Guidance and the Update, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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

(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance — Section III(A)(2), 84
Fed. Reg. 54–55.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes that the present claims recite certain methods
of organizing human activity and mental processes. Ans. 4; Non-Final Act.
4. The Examiner concludes that the present claims are not integrated into a
practical application. Ans. 4–5; Non-Final Act. 2–3, 5. The Examiner
determines that the present claims recite an abstract idea using additional
elements that are well-understood, routine, and conventional. Non-Final
Act. 5–6 (citing Spec. ¶ 656; MPEP § 2106.05); Ans. 7 (citing Spec. ¶ 65;
MPEP § 2106.05).
Appellant argues that the present claims do not recite mental
processes because the present claims are similar to patent eligible claims 1
and 2 of Example 37 in the 2019 Revised Guidance. Appeal Br. 14–17
(citing Example 37 in the 2019 Revised Guidance). Appellant argues the
present claims are an improvement over prior art systems because they are
similar to patent eligible claim 1 of Example 42 in the 2019 Revised
Guidance. Appeal Br. 17–21 (citing Example 42 in the 2019 Revised
Guidance). Appellant argues the present claims are novel and non-obvious
and are, therefore, an unconventional claimed solution. Appeal Br. 21.

6 The Examiner cites to paragraph 65 of US 2016/0110506 A1; published
Apr. 21, 2016, which is the published application of the present case.
Paragraph 65 of the published application corresponds to paragraph 65 of the
Specification. We refer to citations of the Specification in this Decision.
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Appellant argues that the Examiner fails to provide sufficient evidence to
support the finding that the additional elements implementing the abstract
idea are well-understood, routine, and conventional. Id. (citing Berkheimer
v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)). We disagree with Appellant.
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question that we resolve
pursuant to the 2019 Revised Guidance. The emphasized portions of claim
1,7 reproduced above (see supra at 2–3), recite managing personal behavior
or relationships or interactions between people (including following rules or
instructions) because these portions recite updating confidential medical
information from two sets of confidential medical information to form a
consolidated set of confidential medical information and generating a
message comprising one or more care recommendations for an identified
patient based on the consolidated set of confidential medical information.
See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. Managing personal
behavior or relationships or interactions between people (including
following rules or instructions) fall into the category of certain methods of
organizing human activity, which are a type of abstract idea. Id.
We also agree with the Examiner’s conclusion that the present claims
recite mental processes. Ans. 4; Non-Final Act. 4. In particular, the
limitations “identifying,” “updating,” “storing,” “identifying,” “updating,”
and “determining” recite concepts performed in the human mind because
these limitations can be performed in the human mind (including an

7 Appellant does not argue claims 1–12 and 14–20 separately with
particularity. Appeal Br. 13–22. We, therefore, group these claims together
and refer to them as the present claims.
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observation, evaluation, judgment, opinion) while using pencil and paper.
See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. Concepts performed
in the human mind (including an observation, evaluation, judgment, opinion)
fall into the category of mental processes, which are a type of abstract idea.
Id.
We, therefore, disagree with Appellant’s argument that the present
claims do not recite mental processes. Appeal Br. 14–17 (citing Example 37
in the 2019 Revised Guidance). In addition, the present claims recite
updating confidential medical information from two sets of confidential
medical information to form a consolidated set of confidential medical
information and generating a message comprising one or more care
recommendations for an identified patient based on the consolidated set of
confidential medical information; whereas the claims in Example 37 are
unlike the present claims because the claims in Example 37 pertain to a
relocation of icons on a graphical user interface.
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at
54–55. We therefore (1) identify whether there are any additional recited
elements beyond the abstract idea, and (2) evaluate those elements both
individually and collectively to determine whether they integrate the
exception into a practical application. See id.
Accordingly, we proceed to Prong 2.
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E. Step 2A, Prong 2
Here, the additional elements in the claims beyond the abstract idea
are “central healthcare server,”8 “first healthcare information server,”9 “data
stores,” “second healthcare information server,”10 “user interface,” “health
information handling system,”11 “one or more processors,”12 “network,”13
“at least two healthcare information servers,”14 “consolidation engine,”15
“memory,”16 “data integrity engine,”17 “recommendation engine,”18 and
“processor.”19 See 2019 Revised Guidance, 84 Fed. Reg. at 52. The
additional elements of the present claims do not integrate the abstract idea

8 This limitation is recited only in claims 1 and 18 and their respective
dependent claims.
9 This limitation is recited only in claims 1 and 18 and their respective
dependent claims.
10 This limitation is recited only in claims 1 and 18 and their respective
dependent claims.
11 This limitation is recited only in claim 11 and its respective dependent
claims.
12 This limitation is recited only in claim 11 and its respective dependent
claims.
13 This limitation is recited only in claim 11 and its respective dependent
claims.
14 This limitation is recited only in claim 11 and its respective dependent
claims.
15 This limitation is recited only in claim 11 and its respective dependent
claims.
16 This limitation is recited only in claim 11 and its respective dependent
claims.
17 This limitation is recited only in claim 11 and its respective dependent
claims.
18 This limitation is recited only in claim 11 and its respective dependent
claims.
19 This limitation is recited only in claim 18 and its respective dependent
claims.
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into a practical application because they do not impose any meaningful
limits on practicing the abstract idea for the following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The Update addresses how we
consider evidence of improvement that is presented to us. The Update
states:
the evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
change treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will 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.”
Update, 11 (emphases added). The Update further states:
[d]uring examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
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art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Id. at 13 (emphasis added).
Here, the Examiner concludes the present claims are not integrated
into a practical application. Ans. 4–5; Non-Final Act. 2–3, 5. Appellant
does not present evidence in the form of a declaration or citation to the
Specification. Therefore, the argument in the Appeal Brief citing to
Example 42 of the 2019 Revised Guidance is merely attorney argument
unsupported by evidence. Appeal Br. 17–21 (citing Example 42 in the 2019
Revised Guidance).
Moreover, unlike the present claims, claim 1 in Example 42 does not
recite updating confidential medical information from two sets of
confidential medical information to form a consolidated set of confidential
medical information and generating a message comprising one or more care
recommendations for an identified patient based on the consolidated set of
confidential medical information. And unlike the present claims, one of the
limitations in claim 1 of Example 42 recites format conversion that
improved the prior art by allowing remote users to share information in real
time in a standardized format regardless of the format in which the
information was input by the user (i.e., “converting . . . the non-standardized
updated information into the standardized format”).
Further, the additional elements in the present claims, namely “central
healthcare server,” “first healthcare information server,” “data stores,”
“second healthcare information server,” “user interface,” “health information
handling system,” “one or more processors,” “network,” “at least two
healthcare information servers,” “consolidation engine,” “memory,” “data
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integrity engine,” “recommendation engine,” and “processor” do not, either
individually or in combination, integrate the abstract idea into a practical
application. Appellant’s Specification discloses that these elements
encompass generic computer components. Spec. ¶¶ 61–65, 83, 93–98, 197.
Merely adding generic computer components to perform abstract ideas does
not integrate those ideas into a practical application. See 2019 Revised
Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to
implement an abstract idea on a computer” as an example of when an
abstract idea has not been integrated into a practical application).
In addition, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). We disagree with Appellant’s argument that the present claims are
novel and non-obvious and are, therefore, an unconventional claimed
solution. Appeal Br. 21. Appellant improperly conflates the requirements
for patent-eligible subject matter (§ 101) with the independent requirements
of novelty (§ 102) and non-obviousness (§ 103). “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.” Diehr, 450 U.S. at 188–
89; see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016) (stating that, “under the Mayo/Alice framework, a claim directed
to a newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility”).
Appellant does not make any other arguments pertaining to Step 2A,
Prong 2. Because the present claims recite an abstract idea that is not
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integrated into a practical application, we proceed to Step 2B.
F. Step 2B
The additional elements, either individually or in combination, do not
amount to an inventive concept. An inventive concept “cannot be furnished
by the unpatentable law of nature (or natural phenomenon or abstract idea)
itself.” Genetic, 818 F.3d at 1376; see also 2019 Revised Guidance; Alice,
573 U.S. at 217 (explaining that, after determining a claim is directed to a
judicial exception, “we then ask, ‘[w]hat else is there in the claims before
us?”’ (alteration in original) (quoting Mayo, 566 U.S. at 78)). Instead, an
“inventive concept” is furnished by an element or combination of elements
that is recited in the claim in addition to the judicial exception and sufficient
to ensure the claim as a whole amounts to significantly more than the
judicial exception itself. Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at
72–73); see BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018) (explaining that the Supreme Court in Alice “only assessed
whether the claim limitations other than the invention’s use of the ineligible
concept to which it was directed were well-understood, routine and
conventional” (emphasis added)).
We agree with the Examiner’s determination that the present claims
recite an abstract idea using additional elements that are well-understood,
routine, and conventional. Non-Final Act. 5–6 (citing Spec. ¶ 65; MPEP
§ 2106.05); Ans. 7 (citing Spec. ¶ 65; MPEP § 2106.05). The Specification
supports the Examiner’s determination in this regard, because it explains that
“central healthcare server,” “first healthcare information server,” “data
stores,” “second healthcare information server,” “user interface,” “health
information handling system,” “one or more processors,” “network,” “at
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least two healthcare information servers,” “consolidation engine,”
“memory,” “data integrity engine,” “recommendation engine,” and
“processor” are generic computer components. Spec. ¶¶ 61–65, 83, 93–98,
197. Appellant’s Specification indicates these additional elements were
well-understood, routine, and conventional components because it describes
them at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id.
We, therefore, disagree with Appellant’s argument that the Examiner
fails to provide sufficient evidence to support the finding that the additional
elements implementing the abstract idea are well-understood, routine, and
conventional. Appeal Br. 21 (citing Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018)).
Appellant does not argue claims 1–12 and 14–20 separately with
particularity. Appeal Br. 13–22. For at least the above reasons, we
conclude, under the 2019 Revised Guidance, that each of the present claims,
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. We therefore sustain the Examiner’s rejection of: (1) independent
claims 1, 11, and 18; and (2) dependent claims 2–10, 12, 14–17, 19, and 20
under 35 U.S.C. § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION

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. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12, 14–
20
101 Eligibility 1–12, 14–
20