Cerner Innovation, Inc.

Patent Trials and Appeals Board

Jan 26, 2021

2020003406 (P.T.A.B. Jan. 26, 2021)

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.
14/209,568 03/13/2014 Douglas S. McNair 27098.179918 9722
46169 7590 01/26/2021
Shook, Hardy & Bacon LLP
(Cerner Corporation)
Intellectual Property Department
2555 GRAND BOULEVARD
Kansas City, MO 64108
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/26/2021 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):
IPShookdocketing@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 DOUGLAS S. MCNAIR
____________

Appeal 2020-003406
Application 14/209,568
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, TAWEN CHANG, and
JAMIE T. WISZ, Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of claims 1–
20. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM and set forth a NEW
GROUND OF REJECTION.

CLAIMED SUBJECT MATTER
The Specification describes “[s]ystems, methods, and computer-
readable media . . . for case complexity and care complexity
characterization, and for detecting matches of an individual patient’s record
with collections of other patients’ records, based on serial, longitudinal
patterns, referred to herein as time series ‘trajectories.’” Spec. ¶ 9. The
Specification describes the invention as “facilitat[ing] more efficient health
services utilization, implementing programs to reduce case complexity and
care complexity, preventive medicine, and risk management in health care.”
Id.
Claims 1, 4, and 13 are independent claims. Claim 1 is illustrative
and is set forth below (annotated with bracketed numbers for reference to the
limitations in the claim):
1. A computer-implemented method for providing a
preventative intervention recommendation for treating a
human patient based on identifying temporal trajectory
clusters in a longitudinal time series database comprised of a
plurality of records, the method comprising:

1 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 Cerner
Innovation, Inc. Appeal Br. 3.
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[1] binding a plurality of records in the database utilizing
one or more identification factors, the records being a
longitudinal sequence of conditional states wherein each
longitudinal sequence comprises a periodic case complexity
based partially on a composite complexity score, the
composite complexity score generated from at least a
calculated medication complexity and a calculated care
complexity;
[2] creating a data frame based on the longitudinal
sequences of conditional states, wherein the data frame
includes a plurality of timeseries;
[3] generating a trajectory mining table of entities based on
the data frame created from the longitudinal sequence of
conditional states, wherein the generating is based on at least
one blocking variable, the blocking variable being an
independent metric corresponding to one or more patients;
[4] retrieving date-time coordinates associated with each
entity, wherein each conditional state is associated with at
least a condition episode timestamp and a condition
recovery duration timestamp;
[5] generating, based on the trajectory mining table and the
date-time coordinates, a plurality of time-series trajectory
clusters, the clusters characterizing one or more condition
episode patterns;
[6] calculating entropy indexes for each of the time-series
clusters, the entropy indexes associated with a level of
disruption corresponding to each time-series cluster;
[7] calculating a plurality of cluster distances for each of the
time-series clusters, the distances defining the boundaries of
each time-series cluster, wherein the cluster distances are
determined via machine learning over the plurality of
time-series trajectory clusters;
[8] determining one or more trajectory distances between a
candidate record and a centroid of each of the time-series
clusters;
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[9] linking the candidate record to one or more time-series
clusters based on a determined trajectory distance threshold;
and
[10] automatically generating a preventative intervention for
a patient associated with the candidate record based on the
linked one or more time-series clusters and the calculated
entropy indexes for the linked one or more time-series
clusters.
Appeal Br. 22–23 (Claims Appendix). Independent claim 4 recites a
“computer-readable media” with instructions for performing these steps and
independent claim 13 recites a system for implementing the steps. Id. at 24–
28.
REJECTIONS
The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
I. PRINCIPLES OF LAW
A. Section 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 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).
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 whether the claim recites an abstract idea. See Alice, 573 U.S. at
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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
that recite abstract ideas, but are nonetheless 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 (1854))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second part
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.
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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”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 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”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

2 The Office issued further guidance on October 17, 2019. USPTO, October
2019 Update: Subject Matter Eligibility (the “October 2019 Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 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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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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception (“Step 2B”).
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
II. ANALYSIS
Applying the 2019 Revised Guidance to the facts on this record, we
find that claims 1–20 are directed to patent-ineligible subject matter.
Claim 1 is directed to a method for providing a preventative
intervention recommendation for treating a human patient. Following the
first step of the Mayo/Alice analysis, we find that the claim is directed to a
“process,” and therefore falls into one of the broad statutory categories of
patent-eligible subject matter under 35 U.S.C. § 101. We thus proceed to
Step 2A, Prong One, of the Eligibility Guidance.
A. Guidance Step 2A, Prong 1
The 2019 Revised Guidance instructs us first to determine whether
any judicial exception to patent eligibility is recited in the claim. The 2019
Revised Guidance identifies three judicially-excepted groupings identified
by the courts as abstract ideas: (1) mathematical concepts, (2) certain
methods of organizing human activity such as fundamental economic
practices, and (3) mental processes.
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We find that the claims recite mathematical concepts. More
specifically, claim 1, reproduced above, recites the following steps:
[3] “generating a trajectory mining table of entities,” [5] “generating…a
plurality of time-series trajectory clusters,” [6] “calculating entropy indexes
for each of the time-series clusters…,” [7] “calculating a plurality of cluster
distances for each of the time-series clusters . . ., ” [8] “determining one or
more trajectory distances between a candidate record and a centroid of each
of the time-series clusters,” and [9] “linking the candidate record to one or
more time series clusters…” Appeal Br. 22–23. Although a mathematical
formula is not recited, per se, in claim 1, under the broadest reasonable
interpretation, limitations [3] and [5] through [9] involve calculations and/or
statistical analysis and are, therefore, mathematical concepts.
Appellant argues that, because the claims do not recite a mathematical
formula, they do not recite a mathematical concept. Appeal Br. 15.
Appellant relies on Example 41 of the 2019 Subject Matter Eligibility
Examples (“2019 Eligibility Examples”) and contends that the claims in that
example did recite a mathematical formula, “which was cited by the Office
as the only reason why the claim in Example 41 of the 2019 Examples . . .
recited a mathematical concept.” Id.
We are not persuaded by this argument. While Example 41 of the
2019 Eligibility Examples was found to recite a mathematical concept
because it recites a mathematical formula in the claim, this is not the only
means by which a claim may be found to recite a mathematical concept. For
example, the October 2019 Update provides example of claims that recite
mathematical concepts without explicitly reciting a numerical formula or
equation. See October 2019 Update at 3–4. The October 2019 Update cites
to SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163–65 (Fed. Cir. 2018)
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in which claims to “a method of providing a statistical analysis of
investment data” were found to be patent ineligible. October 2019 Update at
4. Similarly, claim 1 recites “generating a trajectory mining table” and
“trajectory clusters,” “calculating,” “determining one or more trajectory
distance,” and “linking” steps that recite the “act of calculating using
mathematical methods to determine a variable or number” and/or performing
a mathematical operation. See id.
Accordingly, we conclude that the above-identified limitations of
claim 1 recite the judicial exception of mathematical concepts. Because our
rationale for finding that the claims recite an abstract idea differs somewhat
from the reasoning of the Examiner, we designate this as a new ground of
rejection so that the Appellant has the opportunity to respond.
B. Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, we next
consider whether the claims integrate the judicial exception into a practical
application. “[I]ntegration into a practical application” requires that the
claim recite an additional element or a combination of elements, that when
considered individually or in combination, “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.” 2019 Revises Guidance 54.
Here, there is no practical integration of the abstract idea. Other than
the limitations directed to the abstract idea, discussed above, the remaining
steps [1], [2], and [4] are directed to “binding a plurality of records,”
“creating a data frame,” and “retrieving date-time coordinates.” Appeal Br.
22. These are data collection steps that do not amount to significantly more
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than the abstract idea because they are insignificant pre-solution activities.
See Mayo, 566 U.S. at 79 (quoting Flook, 437 U.S. at 590) (“Purely
‘conventional or obvious’ ‘[pre]-solution activity’ is normally not sufficient
to transform an unpatentable law of nature into a patent-eligible application
of such a law”); see also 2109 Revised Guidance, 55, n.31.
Appellant argues that claim 1 integrates any judicial exception into a
practical application because it recites a particular improvement over prior
art systems. Appeal Br. 18. Specifically, Appellant cites to paragraph 30 of
the Specification, which states that “[v]arious algorithms considered for
mining sequential pattern information are unable to scale well with
increasing sequence length and database size [...] With hundreds to many
thousands (or millions, depending on the context) of objects in a database,
the problem of I/O minimization becomes paramount.” Id. Appellant
contends that “[t]his shortcoming of prior art systems . . . is overcome by the
solution that is the subject of the as-filed specification and encompassed by
the claims.” Id. According to Appellant:
the current claims solve the specification-identified problem by
reciting an arrangement of elements that provide improved
trajectory cluster discovery and clinical decision support
through machine learning by creating target data frames,
generating timeseries incorporating composite complexity
scores, generating a trajectory mining table, generating
timeseries trajectory clusters, calculating entropy indexes,
calculating cluster distances, and automatically generating
preventative interventions.
Id.
We are not persuaded by Appellant’s arguments. Appellant has not
provided adequate evidence of a technical solution to a technical problem or
technology. Rather, the improvement is to the mathematical concept itself
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(e.g., better algorithms for mining sequential pattern information as
discussed in paragraph 30 of the Specification). In SAP, the court held the
claims at issue to be patent ineligible, because “the focus of the claims is not
any improved computer or network, but the improved mathematical
analysis; and indeed, the specification makes clear that off-the-shelf
computer technology is usable to carry out the analysis.” 890 F.3d at 1022.
The court explained:
We readily conclude that there is nothing in the claims
sufficient to remove them from the class of subject matter
ineligible for patenting and transform them into an eligible
application. What is needed is an inventive concept in the non-
abstract application realm.
SAP, 890 F.3d at 1022.
Here, the improvement is to the method for providing a preventative
intervention recommendation by using improved mathematical analysis and
algorithms. The improvement is integral to the abstract idea of
mathematical concepts and therefore is not to “non-abstract application
realm.” SAP, 890 F.3d at 1022.
We are also not persuaded that Appellant’s claims are similar to claim
1 of Example 42 in the 2019 Examples. We find that Appellant’s claims are
more similar to the analysis provided for claim 2 of Example 42, wherein
“[t]he claimed computer components are recited at a high level of generality
and are merely invoked as tools to perform an existing medical records
update process” than to the analysis provided for claim 1 of Example 42,
wherein “the additional elements recite a specific improvement over prior art
systems 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.” See 2019 Examples at 18–20. Although claim 1 calls for
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generating a preventative intervention for a patient, the Specification fails to
identify how such intervention is determined or what specific factors are
used to generate the different potential intervention recommendations. Step
[10] of the claim, for example, recites that a preventative intervention is
generated “based on the linked one or more time-series clusters and the
calculated entropy indexes for the linked one or more time-series clusters.”
However, there is no specific guidance or rule recited in the claim explaining
how the preventative interaction is generated. The claimed step recites the
desired result, but not with sufficient specificity to confer eligibility on the
claim, let alone deter preemption of the abstract idea recited in claim 1. We
find that the claim does not have the specificity required to transform it
“from one claiming only a result to one claiming a way of achieving it.”
SAP, 898 F.3d at 1167.
This is in contrast to McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1315 (Fed. Cir. 2016), in which the court held that the
“limitations in claim 1 prevent preemption of all processes for achieving
automated lip-synchronization of 3-D characters.” The court explained that
“[t]he specific structure of the claimed rules would prevent broad
preemption of all rules-based means of automating lip synchronization.” Id.
As explained in Dropbox, Inc. et al. v. Synchronism Technologies, Inc., 815
Fed. Appx. 529, 533 (Fed. Cir. 2020) (nonprecedential), it has been
“consistently held that an ‘inventive concept’ exists when a claim ‘recite[s] a
specific, discrete implementation of the abstract idea’ where the ‘particular
arrangement of elements is a technical improvement over [the] prior art.’
[BASCOM Glob. Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016) (“Bascom”)].” Accordingly:
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The patent has to describe how to solve the problem in a
manner that encompasses something more than the “principle in
the abstract.” See [ChargePoint, Inc. v. SemaConnect, Inc., 920
F.3d 759, 769 (Fed. Circ. 2019)] (explaining that an invention
may not be patent eligible if the “claims ‘were drafted in such a
result-oriented way that they amounted to encompassing the
‘principle in the abstract’ no matter how implemented’”
(quoting Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1343 (Fed. Cir. 2018))).
Dropbox, 815 Fed. Appx. at 533.
Unlike McRO, Step [10] of the claim does not recite how the
preventative interaction is achieved or how it is implemented in a specific
manner. Therefore, on this record, we conclude that the mathematical
concepts in Appellant’s claim 1 are not integrated into a practical
application.
C. Guidance Step 2B
Having determined that the judicial exception is not integrated into a
practical application, we next evaluate the additional elements individually
and in combination to determine whether they provide an inventive concept,
such as a specific limitation beyond the judicial exception that is not well-
understood, routine, conventional in the field, or whether such elements
simply append well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See 84 Fed. Reg. 51.
Appellant asserts that “the Office has erred in concluding that the
combination of currently-claimed elements (including the details, not just
the computer implementation of the details) is conventional, well-known, or
routine, based on concessions that the claims are novel and/or nonobvious
under 35 U.S.C. 102 and/or 103.” Appeal Br. 20.
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We are not persuaded by Appellant’s arguments. First, novelty and
non-obviousness are not the test of eligibility under Section 101. A claim
can be new and unobvious and still be ineligible for a patent because it is
directed to an abstract idea without significantly more. See Data Engine
Techs. LLC v. Google LLC, 906 F.3d 999, 1011 (Fed. Cir. 2018) (“The
eligibility question is not whether anyone has ever used tabs to organize
information. That question is reserved for §§ 102 and 103”).
Second, Appellant did not direct us to anything in the Specification
indicating that any steps or components recited in the claims are not generic
or conventional. For example, the Specification describes conventional
computer-readable media, electronic health record (EHR) systems, public
and/or private networks, servers, cloud-based platforms, patient monitors,
and computing devices for use in the claimed method. Spec. ¶¶ 22, 31, 32,
34, 35, 42. Appellant points to no additional steps that could not be
performed without using a generic computer. The use of a generic computer
to perform generic computer functions that are “well-understood, routine,
conventional activit[ies]” previously known in the industry is not enough to
transform the abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225–26.
Accordingly, the preponderance of evidence of record supports the
Examiner’s finding that Appellant’s claimed invention is directed to patent-
ineligible subject matter. The rejection of claim 1 under 35 U.S.C. § 101 is
affirmed. Claims 2–20 are not separately argued and fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
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CONCLUSION
For the reasons described herein and those already of record, we
affirm the Examiner’s rejection of claims 1–20.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–20 101 Eligibility 1–20 1–20
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED; 37 C.F.R. 41.50(b)