Conor Delaney et al.

Patent Trials and Appeals Board

Aug 8, 2019

13985279 - (D) (P.T.A.B. Aug. 8, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/985,279 08/13/2013 Conor Delaney UHOCP101WOUS 5109
23623 7590 08/08/2019
AMIN, TUROCY & WATSON, LLP
200 Park Avenue
Suite 300
Beachwood, OH 44122
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/08/2019 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):
docket@thepatentattorneys.com
hmckee@thepatentattorneys.com
rveri@thepatentattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CONOR DELANEY and JONAH STULBERG1
____________

Appeal 2018-006541
Application 13/985,279
Technology Center 3600
____________

Before DAVID C. McKONE, CARL L. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 31, 32, 42, 48, 49, 52, 53, 55, 56, 61, 62, 66, 68, 70–72,
and 74–84, which constitute all the claims pending in this application. Final
Act. 2; Br. 4.2 Claims 1–30, 33–41, 43–47, 50, 51, 54, 57–60, 63–65, 67,
69, and 73 are cancelled. Final Act. 2; Br. 4. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is University Hospitals of Cleveland. Br. 2.
2 In this Decision, we refer to the October 10, 2017, Final Rejection, the
March 9, 2018, Appeal Brief, and the April 12, 2018, Examiner’s Answer.
Appellants did not file a Reply.
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THE INVENTION
Appellants’ invention is directed to analysis of data regarding patient
encounters from healthcare information systems. Abstract. In one example,
an importer component arranges received data according to a data model,
such as shown in Figures 2A and 2B, and provides the arranged data to a
database server, which stores the data. Spec. ¶ 17. A user can query the
database server via a user interface to generate a report. Id. ¶ 34. “These
reports may include information relating to time in the operating room; the
length of a hospital stay; cost information, volume information, referral
information, and tracking information.” Id. The system “may utilize
relative weights to generate adjusted cost or adjusted length of stay (LOS)
estimates. For example, patients utilizing a higher than average level of
resources may be assigned an adjusted cost or length of stay that is lower
than the corresponding unadjusted figure.” Id. ¶ 38.
Claim 31, reproduced below, is illustrative of the invention:
31. A method for extraction and analysis of healthcare
information comprising:
receiving, by a system comprising a processor, data from
a plurality of different healthcare information sources based on
the data comprising data objects related to services provided by
a pre-defined group of physicians of a healthcare organization;
determining, by the system, one or more relationships
between one or more data objects of the data objects based on a
data model that defines relationships between a defined set of
data objects;
in response to the determining, arranging, by the system,
the one or more data objects based on the one or more
relationships, thereby generating arranged data;
receiving, by the system, a request for a report regarding
a predicted length of stay of a patient; and
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generating, by the system, the report based on the request
and the arranged data, including:
identifying clinical information in the arranged
data and determining from the clinical information, a severity of
illness score associated with a diagnosis related group of the
patient and a relative severity weight determined for the patient
regarding an amount of resources required for care of the
patient relative to an average patient associated with the same
diagnosis related group of the patient,
wherein the relative severity weight comprises a
value determined using one or more personalized factors
specific to the patient including individual risk factors, the
circumstances of the current admission, the age of the patient,
and comorbidities;
determining the predicted length of stay of the patient
based on the severity of illness score and the relative severity
weight; and
including the predicted length of stay in the report.

THE REJECTION
Claims 31, 32, 42, 48, 49, 52, 53, 55, 56, 61, 62, 66, 68, 70–72, and
74–84 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible
subject matter. Final Act. 3–7.

ANALYSIS
I. 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 Supreme Court has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Alice
and Mayo. See 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.”
Id. 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, 67–68 (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 water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 183 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
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
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products and not as an attempt to patent a mathematical formula.”). 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. “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.
The PTO recently published revised guidance on the application of
§ 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).3 Under that
guidance, 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

3 We note that the Guidance was not available to the Examiner and
Appellants during the prosecution of the instant Application.
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human activities such as a fundamental economic practice, or mental
processes); 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)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that 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.
See Guidance, 84 Fed. Reg. at 56.

II. The Examiner’s Rejection
The Examiner treats independent claims 31, 52, 56, and 74 together
and finds that they recite an abstract idea of
receiving/extracting/accessing data from information sources,
arranging the data according to a data model/pre-defined
associations, receiving a request for a report, generating the
report by identifying clinical information in the data and
determining a predicted length of stay from the identified
clinical information based on a severity weight determined
using patient factors and a severity of illness score, and
including the determined predicted length of stay in a report.
Final Act. 4 (emphasis omitted). The Examiner analogizes the claims to
those recited in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350
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(Fed. Cir. 2016), and Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307 (Fed. Cir. 2016). Id. at 4–5.
The Examiner further finds that, when viewed as a whole or
individually, the claims do not include additional limitations that amount to
significantly more than the abstract idea. Id. at 5. Rather, the Examiner
finds, “the claims recite processes that are routine and well-understood in the
art of healthcare communication systems and simply implement the process
or processes on a computer(s).” Id. As to the computer elements, the
Examiner finds that they are recited at a high level of generality and provide
only conventional computer functions. Id. The Examiner further finds that
“the additional limitations of receiving data merely represent insignificant,
conventional extra-solution activities well-understood in the industry of
healthcare information/communication systems.” Id.
Appellants argue that the claims are directed to a technical
improvement over prior art ways of using and processing vast amounts of
healthcare information stored at disparate sources. Br. 26–27. Appellants
contend that their claims are similar to those found eligible in BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016), and Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2016). Id. at 21–26.
Appellants acknowledge that independent claims 52, 56, and 74 recite
limitations similar to those of claim 31. Br. 32, 34, 41. Appellants point to
additional limitations of claims 34 and 41 that the Examiner allegedly has
not addressed sufficiently; however, Appellants do not affirmatively argue
that the additional limitations render claims 34 and 41 statutory. Id. at 34–
35, 41–42. We treat claim 31 as representative, except as noted below.
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III. Judicial Exception (Step 2A, Prong 14)
Viewing the Examiner’s rejection through the lens of the Guidance,
we first consider whether the claim recites a judicial exception. Guidance,
84 Fed. Reg. at 51. The PTO has synthesized the key concepts identified by
the courts as abstract ideas into three primary subject-matter groupings:
mathematical concepts, certain methods of organizing human activities (e.g.,
a fundamental economic practice), and mental processes. Id. at 52. As
explained below, claim 31 recites a mental process, which is a concept
identified by the Guidance as an abstract idea. Id.
Claim 31 recites the steps of (1) receiving data comprising data
objects from a plurality of healthcare sources; (2) determining one or more
relationships between the data objects based on a data model; (3) in response
to the determining, arranging the data objects based on the relationships;
(4) receiving a request for a report regarding a predicted length of stay of a
patient; and (5) generating the requested report based on the arranged data;
wherein generating the report includes (6) identifying clinical information in
the arranged data; (7) determining from the clinical information a severity of
illness score associated with a diagnosis and a relative severity weight
(including using individual risk factors, admission circumstances, age, and
comorbidities) for the patient; (8) determining the predicted length of stay
based on the severity of illness score and relative severity weight; and

4 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue here, as Appellants’ claims recite systems
(machines), methods (processes), and computer-readable storage media
(articles of manufacture).
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(9) including the predicted length of stay in the report. Determining a
relationship between data objects based on a data model, arranging the data
objects based on the relationship, identifying clinical information such as a
severity of illness score and relative severity weight in the arranged data, and
determining a predicted length of stay based on the severity of illness score
and relative severity weight are steps that can be performed in the human
mind. Specifically, the process includes observation, evaluation, or
judgment and could be performed mentally (or by using pencil and paper).
Evaluating healthcare information by steps people may perform mentally,
without more, is a mental process within the abstract idea category. See
Flook, 437 U.S. at 585–86; CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011).
Appellants argue that the invention of claim 1 “utilize[es] and
process[es] vast amounts of healthcare information stored at disparate
sources.” Br. 23. As the Examiner observes, however, “there is no
recitation in the claimed invention of ‘utilizing and processing vast amounts
of healthcare information,’” and claim 31 “requires, at minimum, two data
objects of unspecified size,” which “could literally be one byte of data each
meaning that the claimed invention utilizes and processes two bytes of data.”
Ans. 5–6.
As noted above, “[t]he abstract idea identified in the claims was
analogized to the court-identified abstract ideas in EPG and Intellectual
Ventures.” Ans. 10. The Federal Circuit, in Electric Power Group,
categorized the claims asserted in that case as “focus[ed] on collecting
information, analyzing it, and displaying certain results of the collection and
analysis” and explained that it has “treated analyzing information by steps
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people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category.”
830 F.3d at 1353–54 (collecting cases). The Federal Circuit further
explained that “merely selecting information, by content or source, for
collection, analysis, and display does nothing significant to differentiate a
process from ordinary mental processes, whose implicit exclusion from
§ 101 undergirds the information-based category of abstract ideas.” Id. at
1355. Similarly, in Intellectual Ventures, the Federal Circuit determined that
“receiving e-mail (and other data file) identifiers, characterizing e-mail
based on the identifiers, and communicating the characterization—in other
words, filtering files/e-mail—is an abstract idea,” and that “it was long-
prevalent practice for people receiving paper mail to look at an envelope and
discard certain letters, without opening them, from sources from which they
did not wish to receive mail based on characteristics of the mail.” 838 F.3d
at 1313–14. The Federal Circuit reasoned that “[t]he list of relevant
characteristics could be kept in a person’s head,” and that “[c]haracterizing
e-mail based on a known list of identifiers is no less abstract.” Id. at 1314.
Like the claims considered in Electric Power Group and Intellectual
Ventures, claim 31 recites collecting information, analyzing it, and reporting
the results of the analysis. We find that this recites a mental process, similar
to that recited in Electric Power Group and Intellectual Ventures.5

5 We address the steps reciting collecting and reporting of information in
more detail below in Step 2A, Prong 2, and Step 2B.
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IV. “Directed to” the Judicial Exception (Step 2A, Prong 2)
Because the claims recite an abstract idea, we now proceed to
determine whether the recited judicial exception is integrated into a practical
application. See Guidance, 84 Fed. Reg. at 51. Specifically, we look to
“whether the claim recites additional elements that integrate the exception
into a practical application of that exception.” Id. at 54. Limitations that are
indicative of integration into a practical application include additional
elements that reflect an improvement in the functioning of a computer, or an
improvement to other technology or technical field. Id. at 55. When a claim
recites a judicial exception and fails to integrate the exception into a
practical application, the claim is “directed to” the judicial exception. Id. at
51.
The Examiner finds that the additional elements of claim 31 and the
combination of elements in the claim amount to no more than generic
computer structure and that “[t]here is no indication that the combination of
elements improves the functioning of a computer or improves any other
technology. Their collective functions merely provide conventional
computer implementation.” Final Act. 6.
Appellants respond that claim 31 is similar to the claims determined
to be eligible in BASCOM, and argue that claim 31 “describes an inventive
concept” that
involves the “extraction, by a centralized computing system,
of specific healthcare data from a plurality of different
healthcare information sources based on the data
comprising data objects related to services provided by a
pre-defined group of physicians of a healthcare
organization, and processing of this data based on a data
model to generate a new data structure (the arranged data)
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that can then be used to automatically determine specific
information regarding a predicted length of stay of a
patient.”
Br. 22–23. Appellants argue that claim 31 is a technical improvement over
prior art ways of using and processing vast amounts of healthcare
information stored at disparate sources. Id. at 23. According to Appellants,
claim 31 is directed to a particular arrangement of elements that
is “a technical improvement over prior art ways of” extracting
and processing healthcare information in a networked
environment and more particularly to generating [a] new and
useful data structure (the arranged data structure) that can be
used to automatically, accurately and efficiently, make clinical
decisions, particularly clinical decisions regarding predicted
length of stay. The claimed limitations provide many benefits
specific to the healthcare industry, including greater efficiency,
better decision-making, improved patient care, and lower costs.
Id. at 24. Appellants (Br. 23) cite to the Specification, which states that
“[h]ealthcare organizations, such as hospitals and clinics, have at their
disposal vast amounts of data through the utilization of a number of
healthcare information systems, e.g., for billing, administration, resource
scheduling and documentation, patient records, etc.,” and that “the challenge
is being able to extract relevant knowledge from such data which can help in
the decision-making process.” Spec. ¶ 3.
Appellants make similar arguments in comparing claim 31 to those at
issue in Amdocs. Br. 24–26. Specifically, Appellants argue that, similar to
the claim at issue in Amdocs,
the claimed method enhances the individual data object by
extracting them, combining them and arranging them into a
new and useful data structure, (the arranged data) that can
further be utilized to make clinical decisions. The claimed
method solves a technical challenge associated with extracting
relevant healthcare knowledge from various disparate data
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sources and processing the extracted data in such a way
that facilitates automated and efficient decision making.
Id. at 25.
In BASCOM, the Federal Circuit addressed the eligibility of claims to
filtering content on the Internet, and found that “the limitations of the
claims, taken individually, recite generic computer, network and Internet
components, none of which is inventive by itself.” 827 F.3d at 1349.
Nevertheless, the Federal Circuit held the claims eligible because of the
“non-conventional and non-generic arrangement” of these known,
conventional components, specifically, “the installation of a filtering tool at
a specific location, remote from the end-users, with customizable filtering
features specific to each end user,” which “gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server.” Id. at 1349–50. In Amdocs, the Federal Circuit addressed the
eligibility of claims directed to correlating two network accounting records
to “enhance” the first record. 841 F.3d at 1299. After construing “enhance”
to mean “to apply a number of field enhancements in a distributed fashion,”
with “distributed” meaning “the network usage records are processed close
to their sources before being transmitted to a centralized manager,” the
Federal Circuit determined that the claim at issue “entails an unconventional
technological solution (enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases).” Id. at 1300. The Federal Circuit noted that the claim
recited generic computer components but reasoned that “the claim’s
enhancing limitation necessarily requires that these generic components
operate in an unconventional manner to achieve an improvement in
computer functionality.” Id. at 1300–01.
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Unlike the claims at issue in BASCOM and Amdocs, claim 31 does not
recite computer components that, due to their arrangement, improve the way
in which those computer components function. We agree with the Examiner
(Ans. 5) that claim 31 does not recite receiving information from disparate
sources or utilizing and processing vast amounts of healthcare information.
Nor does claim 31 recite how data are arranged, how severity of illness
scores or relative severity weights are determined, or how a predicted length
of stay is determined. Rather, it merely recites, at a high level, receiving
data from different sources, arranging those data, determining a severity of
illness score and relative severity weight from clinical information in those
data, determining a predicted length of stay from the score and weight, and
including the predicted length of stay in a report. Moreover, even if
claim 31 did recite receiving information from disparate sources and
processing large amounts of information, Appellants have not persuasively
explained why arranging the received data into a data structure and making
determinations based on the data in the structure improves the way in which
computers work. See Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he use of a
computer in an otherwise patent-ineligible process for no more than its most
basic function—making calculations or computations—fails to circumvent
the prohibition against patenting abstract ideas and mental processes. . . .
[T]he fact that the required calculations could be performed more efficiently
via a computer does not materially alter the patent eligibility of the claimed
subject matter.”); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319,
1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a
meaningful limit on the scope of a claim, it must play a significant part in
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permitting the claimed method to be performed, rather than function solely
as an obvious mechanism for permitting a solution to be achieved more
quickly, i.e., through the utilization of a computer for performing
calculations.”).
As with the claims in Electric Power Group, “the focus of the claims
is not on . . . an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools.” 830 F.3d at 1354;
see also id. at 1356 (“The claims in this case specify what information in the
power-grid field it is desirable to gather, analyze, and display, including in
‘real time’; but they do not include any requirement for performing the
claimed functions of gathering, analyzing, and displaying in real time by use
of anything but entirely conventional, generic technology. The claims
therefore do not state an arguably inventive concept in the realm of
application of the information-based abstract ideas.”). Appellants’
arguments that Electric Power Group and Intellectual Ventures are not
applicable here are reiterations of their arguments for the applicability of
BASCOM and Amdocs (Br. 26–28), which we find unpersuasive for the
reasons above. Here, Appellants’ claims merely recite computers that
function as tools to carry out the abstract idea. Nothing in the claim changes
the way a computer operates, and the claims do not improve the function of
the computer itself.
The Guidance also discusses other ways that the additional elements
can integrate the judicial exception into a practical application—e.g., a
particular machine or manufacture, a particular transformation, and a
particular treatment of a disease. See Guidance, 84 Fed. Reg. at 55.
Claim 31 also lacks such features.
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Accordingly, claim 31 does not integrate the recited abstract idea into
a practical application.

V. Inventive Concept (Step 2B)
To determine whether a claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance, 84 Fed. Reg. at 56. Also, we reevaluate
our conclusions about the additional elements discussed in the previous step.
Id.
As explained above, claim 31 merely recites an abstract idea (mental
process) applied using generic computer components. The Specification
confirms that these computer components are well-understood and
conventional. For example, as to a plurality of different healthcare
information sources, the Specification explains:
Some embodiments include a method and system for the
extraction and analysis of patient encounters recorded in a
healthcare organization’s existing internal and external data
sources, such as practice management systems (PMS), health
information systems (HIS), electronic medical records systems
(EMRs), lab systems, medical reference systems, and existing
decision support systems.
Spec. ¶ 15; see also id. ¶ 23 (“One suitable enterprise system for use as a
data source is GE’s Healthcare Systems Centricity Enterprise (formerly IDX
Carecast) system, which is used to manage all aspects of the professional
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revenue cycle, including scheduling, billing, and claims.”). As to the
processor and remaining components, the Specification explains:
It should be understood that the disclosed embodiments are not
limited to a particular technology, computer platform, particular
processor, particular high-level programming language or Web
service. Additionally, a computer system on which the various
embodiments of the present invention is implemented may be
any multiprocessor computer system and may include multiple
computers connected over a wired and/or wireless computer
network, such as a LAN, WAN, the Internet, and the like.
Id. ¶ 16; see also id. ¶¶ 18 (examples of conventional databases), 35
(conventional report generating tools), 122.
We conclude that claim 31 does not add a limitation or combination of
limitations that are indicative of an inventive concept. Rather, claim 31
simply appends generic, well-understood, and conventional computer
equipment, used in a conventional manner, and specified at a high level of
generality, to a mental process.
Appellants argue that claim 31 is “clearly unconventional as it has
admittedly not been disclosed or even suggested by the prior art in the
field, as evinced by the withdrawal of the rejections under section
35 U.S.C. § 102 and § 103.” Br. 24. This argument is not persuasive.
Rather, “‘[t]he ‘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.’” Intellectual Ventures, 838 F.3d at 1315 (quoting Diehr, 450 U.S.
at 188–89) (emphasis and brackets in Intellectual Ventures).
On this record, the limitations of claim 31, considered individually
and in combination, do not provide an inventive concept.

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VI. Claims 32, 42, 48, 49, 52, 53, 55, 56, 61, 62, 66, 68, 70–72, and
74–84
As explained above, the Examiner treats independent claims 31, 52,
56, and 74 together. Final Act. 3–6. As to the dependent claims, the
Examiner finds that they “merely further define the abstract idea and are,
therefore, directed to an abstract idea for similar reasons as given above,”
and
merely encompass and/or further define the abstract idea(s)
identified above and are also analogous to the court-identified
abstract idea(s) of (1) collecting information, analyzing it, and
displaying certain results of the collection and analysis and/or
(2) receiving information, characterizing the information based
on identifiers, and communicating the characterization and do
not, when either view alone or in an ordered combination, add
anything significantly more than the abstract idea(s).
Id. at 6–7.
For independent claims 56 and 74, Appellants argue that the Examiner
does not address adequately the additional limitations that do not overlap
with claims 31 and 52. Br. 35, 42. Similarly, for each of the dependent
claims, Appellants argue that the Examiner fails to address it separately. Br.
28–31, 32–33, 35–40, 42–49. Appellants do not argue that any of the
additional limitations integrates the abstract idea into a practical application
or introduces an inventive concept through a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field.
We agree with the Examiner. The additional limitations merely refine
the mental process (claims 42, 48, 49, 55, 56, 61, 62, 66, 68, 70–72, 75–77,
83, 84) such as by adding cost determinations or error messages, or adding
generic computer concepts such as a graphical user interface (claims 32, 74)
Appeal 2018-006541
Application 13/985,279

19

and data object refinements (claims 53, 78–82) to the mental process. We
are not persuaded that these additional limitations integrate the abstract idea
into a practical application under Step 2A, Prong 2. Moreover, the
Specification describes these aspects as well-understood and conventional.
Spec. ¶¶ 6, 23–31, 35–36, 123–132. Thus, the limitations of claims 32, 42,
48, 49, 52, 53, 55, 56, 61, 62, 66, 68, 70–72, and 74–84, considered
individually and in combination, do not provide an inventive concept under
Step 2B.

VII. Conclusion
We sustain the rejection of claims 31, 32, 42, 48, 49, 52, 53, 55, 56,
61, 62, 66, 68, 70–72, and 74–84 under 35 U.S.C. § 101.

DECISION
We affirm the Examiner’s decision to reject claims 31, 32, 42, 48, 49,
52, 53, 55, 56, 61, 62, 66, 68, 70–72, and 74–84.
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).

AFFIRMED