Ex Parte Henderson et al

Patent Trials and Appeals Board

Feb 6, 2019

13246060 - (D) (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/246,060 09/27/2011
23460 7590 02/08/2019
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Christopher Henderson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
283191 4238
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER HENDERSON, STEPHEN BAINES,
and ROBERT GRAYBILL
Appeal2017-002725
Application 13/246,060
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-3, 6-13, and 15-20. The Appellants'
representative appeared telephonically for Oral Argument on January 31,
2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Aug. 22, 2016), Reply Brief ("Reply Br.," filed Dec. 12,
2016), and Specification ("Spec.," filed Sept. 27, 2011), and to the
Examiner's Answer ("Ans.," mailed Oct. 11, 2016) and Final Office Action
("Final Act.," mailed May 22, 2015).
2 According to the Appellants, the real party in interest is MDX Medical,
Inc. Appeal Br. 1.
Appeal2017-002725
Application 13/246,060
STATEMENT OF THE CASE
The Appellants' invention "relates to cost comparison tools, and more
particularly, to a cost comparison tool configured to help users understand
the cost variation by procedure that exists within a healthcare system."
Spec. ,r 2.
Claims 1, 15, and 18 are the independent claims on appeal. Claim 1
(Claims App. 2-3)) is illustrative of the subject matter on appeal, and is
reproduced below (with added bracketing for reference):
1. A method, carried out by a networked computer based
health care provider ranking system including a database having
user information stored therein relating to a health care service
consumer, for providing an incentive for the health care service
consumer for using a particular health care service provider,
selected from a ranked listing of health care service providers, to
perform a medical procedure, the method comprising:
[(a)] receiving, by the networked computer based health
care provider ranking system, a user identification for the health
care service consumer;
[ (b)] acquiring, by the networked computer based health
care provider ranking system, a user demographic information
data set corresponding to the health care service consumer;
[(c)] receiving, by the networked computer based health
care provider ranking system, a medical procedure selected for
the health care service consumer;
[ ( d)] generating, by the networked computer based health
care provider ranking system based upon the user demographic
information data set and the medical procedure selected for the
health care service consumer, a ranking of health care service
providers for performing the medical procedure, wherein the
ranking includes the particular health care service provider for
which the incentive is provided;
[ ( e)] storing as an entry in the database, by the networked
computer based health care provider ranking system after the
2
Appeal2017-002725
Application 13/246,060
generating, the ranking of health care service providers for
performing the medical procedure;
[ ( f)] confirming, by the networked computer based health
care provider ranking system, completion of the medical
procedure, on the health care service consumer, by the particular
health care service provider, wherein the confirming includes
comparing data generated as a result of completing the medical
procedure to information relating to the ranking; and
[ (g)] issuing in response to the confirming, by the
networked computer based health care provider ranking system,
the incentive to a designated recipient,
[(h)] wherein the particular health care service provider is
a medical facility,
[(i)] wherein the medical procedure is associated with at
least two distinct codes based upon procedure complexity, and
[(j)] wherein the ranking of health care service providers
for performing the medical procedure is determined, at least in
part, by a weighted average reimbursement to ones of the health
care service providers for the medical procedure associated with
at least two distinct codes, the weighted average reimbursement
for one of the health care service providers being a function of:
a quantity of a provider-type sub-component of the
medical procedure performed and a contractual allowed
reimbursement amount for the provider-type sub-
component for each of the at least two distinct codes based
upon procedure complexity.
THE REJECTION
Claims 1-3, 6-13, and 15-20 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.
3
Appeal2017-002725
Application 13/246,060
ANALYSIS
The Appellants argue claims 1-3, 6-13, 15, 17, 18, and 20 as a group.
See, e.g., Appeal Br. 8, 12. We select claim 1 from the group, with
claims 2, 3, 6-13, 15, 17, 18, and 20 standing or falling therewith. See
37 C.F.R. § 4I.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. 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 Supreme Court's two-step 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. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
4
Appeal2017-002725
Application 13/246,060
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 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))).
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 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum 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
5
Appeal2017-002725
Application 13/246,060
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (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.
Alice/Mayo Step One
Under the first step of the Alice/ Mayo framework, the Examiner
determines that claim 1 is "directed to an abstract idea of providing
healthcare using fundamental economic practices ( e.g., determining
reimbursement amounts, providing incentives for consumers) and categories
to organize, store, and transmit information" (Final Act. 2), "through
mathematical correlations" (Ans. 2). The Appellants disagree (see Appeal
Br. 8-10) and contend that the claim "defines a particular output ranking of
service providers for a particular medical procedure that is associated with
at least two codes based upon complexity" (id. at 9) and "addresses a
particular problem of being unable to know, at the time of approval of a
particular provider, whether the medical procedure will be classified by the
medical service provider at a higher/lower complexity" (id.). We are not
persuaded by the Appellants' argument that the Examiner erred in
determining that claim 1 is directed to an abstract idea.
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). The question is whether the claims as a whole
6
Appeal2017-002725
Application 13/246,060
"focus on a specific means or method that improves the relevant technology"
or are "directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery." McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
The Specification, including the claims, provides evidence as to what
the claimed invention is directed. The Title of the Specification provides for
a "METHOD AND APPARATUS FOR THE COMPARISON OF
HEALTH CARE PROCEDURE COSTS BETWEEN PROVIDERS," and
the Specification similarly provides that the invention "relates to cost
comparison tools, and more particularly, to a cost comparison tool
configured to help users understand the cost variation by procedure that
exists within a healthcare system" (Spec. ,r 2). In the Background of the
Invention section, the Specification discusses that prior art "medical cost
comparison information is based upon a simplistic build up of the various
costs associated with the procedure" (id. ,r 4) and that prior art systems "fail
to capture all of the specific cost elements delivered during the procedure
and present[] the consumer with an 'apples' to 'apples' cost comparison
across various facilities for the particular procedure requested" (id.). The
invention addressed this problem with "techniques for providing consumers
(patients) with supporting data in order to compare cost for like procedures
within a geographical area." Id. ,r 5.
Claim 1 provides for a method for providing an incentive for a health
care service consumer for using a particular health care service provider
comprising limitations of: (a) receiving a user identification for the
consumer; (b) acquiring a user demographic information data set
corresponding to the consumer; ( c) receiving a selected medical procedure
7
Appeal2017-002725
Application 13/246,060
for the consumer; ( d) generating a ranking of health care service providers
for performing the medical procedure based upon the information data set
and procedure selected; ( e) storing the ranking of providers including the
particular provider for which the incentive is provided; (f) confirming
completion of the medical procedure by comparing data generated to
information relating to the ranking; and (g) issuing in response to the
confirming the incentive to a designated recipient, (h) wherein the particular
provider is a medical facility, (i) wherein the medical procedure is associated
with at least two distinct codes based upon procedure complexity, and
(j) wherein the ranking is determined, at least in part, by a weighted average
reimbursement that is a function of: a quantity of a provider-type sub-
component of the medical procedure performed and a contractual allowed
reimbursement amount for the provider-type sub-component for each of the
at least two distinct codes based upon procedure complexity. See Claims
App. 2-3. The method is "carried out by a networked computer based health
care provider ranking system including a database having user information
stored therein relating to a health care service consumer." Id. at 2. The
system is "an automated system" that "may be a computer server system"
and can receive input and access a "worldwide distributed computer network
(such as the internet)." Spec. ,r 27. No further details on the system are
provided.
In light of the Specification's description of the problem and solution,
the purported advance over the prior art by the claimed invention is a way,
using a generic computer, to provide an incentive/reward for using a
particular service provider. Here, claim 1 involves nothing more than
receiving data, generating data using a mathematical process/calculating,
8
Appeal2017-002725
Application 13/246,060
storing the resulting data, comparing data, and providing an incentive based
on the generated and compared data. In that context, we find supported the
Examiner's characterization of the claim as a method of organizing human
activity, i.e., a fundamental economic practice, of marketing/sales behaviors
involving a mathematical concept, an abstract idea. See, e.g., Kray IP
Holdings, LLC v. Safeway, Inc., 107 F.Supp.3d 677, 690 (E.D. Tex. 2015),
ajfd, 639 F. App'x 637 (Fed. Cir. 2016) ("Incentive award programs
designed to encourage sales of products and services have been familiar
aspects of marketing for many years, as the [7,054,830] patent itself
acknowledges."), OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362
(Fed. Cir. 2015) (optimizing a product price for sale is a fundamental
economic concept).
We find unpersuasive the Appellants' arguments that the claim is not
directed to an unpatentable abstract idea because it "addresses a particular
problem of being unable to know, at the time of approval of a particular
provider, whether the medical procedure will be classified by the medical
service provider at a higher/lower complexity" (Appeal Br. 10) and
"address[es] a particular problem arising from attempting to implement the
general idea of ranking medical service providers for the specified medical
procedure based, at least in part, upon the reimbursement cost of the
procedure (i.e. the amount paid to the medical service provider by the
insurance carrier" (id. at 10-11). Rather, we determine that the claim does
not "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," i.e., the claim
does not "integrate the judicial exception into a practical application."
9
Appeal2017-002725
Application 13/246,060
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed.
Reg. 50, 55 (Jan. 7, 2019) ("2019 Revised Guidance"). The claim recites a
generic computer system that performs the functions of the abstract idea, i.e.,
receiving data, generating data using a mathematical calculation, storing the
resulting data, comparing data, and providing an incentive, without
particularity. 3 As our reviewing courts have made clear, the addition of a
generic computer or other conventional technology does not improve the
computer so as to transform an abstract idea into a patent-eligible
application. See Alice, 573 U.S. at 225-26 ("the claims at issue amount to
'nothing significantly more' than an instructions to apply the abstract idea of
intermediated settlement using some unspecified, generic computer.").
Further, the problems of "being unable to know, at the time of approval of a
particular provider, whether the medical procedure will be classified by the
medical service provider at a higher/lower complexity" and "ranking
medical service providers for the specified medical procedure based, at least
in part, upon the reimbursement cost of the procedure" (Appeal Br. 10-11)
are not problems "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257(Fed.
Cir. 2015). And, the purported solution requires a generic computer system
operating in its ordinary capacity.
3 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See 2019 Revised
Guidance, 84 Fed. Reg. at 55.
10
Appeal2017-002725
Application 13/246,060
Here, it is clear from the Specification that the claims focus on an
abstract idea, and not on any improvement to computer technology and/or
functionality. The purported improvement of generating the ranking "using
a weighted average reimbursement" and "for a particular medical procedure
that is associated with at least two codes based upon complexity" (Appeal
Br. 1 O; see also Reply Br. 7) is simply an elaboration of the abstract idea
using conventional technology operating in a conventional manner to make
calculations. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 715-16 (Fed.
Cir. 2014) (An elaboration of an abstract idea does not transform the abstract
idea into patent-eligible subject matter.); cf Reply Br. 10 (arguing that
"Appellants' claimed invention is more detailed and more narrowly focused
through the specific elements recited in the 'wherein' clauses appended to
Appellants' claim 1."). The Specification provides no discussion of any
technological benefits or improvements contemplated at the time of the
invention.
Finally, we disagree with the Appellants' contention that the
Examiner "does not provide a proper showing that the claimed invention is
indeed directed to an 'abstract idea"' because the "Answer does not
specifically link any of the listed general operations to any of the
paraphrased elements of Appellants' claim 1." Reply Br. 5---6. The
Examiner considers the claim limitations in making the determination that
the claim is directed to an abstract idea, and specifically references the claim
limitations. See Ans. 2-3.
Thus, we are not persuaded of error in the Examiner's determination
that claim 1 is directed to an abstract idea.
11
Appeal2017-002725
Application 13/246,060
Alice/Mayo Step Two
The second step is to "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, 573 U.S. at 221 (alteration in original)
(quoting Mayo, 566 U.S. at 72-73).
Under the second step of the Alice/ Mayo framework, we agree with
and find supported the Examiner's determination that the elements of
claim 1, individually or as an ordered combination, do not amount to
significantly more than the abstract idea. See Final Act. 2-3; Ans. 4--5. We
are not persuaded by the Appellants' arguments to the contrary. See Appeal
Br. 10-12; Reply Br. 6-7.
For the reasons discussed above, claim 1 is not significantly more than
the abstract idea because it purportedly recites a particular solution to the
''particular problem arising from attempting to implement the general idea
of ranking medical service providers for the specified medical procedure
based, at least in part, upon the reimbursement cost of the procedure (i.e. the
amount paid to the medical service provider by the insurance carrier.)"
Appeal Br. 10-11; see also Reply Br. 8 ( arguing that the "specific sequence
of operations ... that facilitate rendering a ranking (in a way that addresses a
particularized problem arising from multiple complexity levels being
assigned to a same medical procedure) that guides the determination/
issuance of incentives to healthcare service consumers").
To the extent the Appellants argue that the claim contains an inventive
concept because it is novel over the prior art (see Appeal Br. 11-12; Reply
Br. 6), we note that an abstract idea does not transform into an inventive
12
Appeal2017-002725
Application 13/246,060
concept just because the prior art does not disclose or suggest it. See Mayo,
566 US at 78. "Groundbreaking, innovative, or even brilliant discovery does
not by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). Indeed, "[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." Diehr,
450 U.S. 188-89; see also Mayo, 566 US at 78 (rejecting "the Government's
invitation to substitute§§ 102, 103, and 112 inquiries for the better
established inquiry under § 101 "). "It has been clear since Alice that a
claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept." BSG Tech. LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018).
The Appellants further argue that
Given the particularized nature of Appellants' claims that
are directed to addressing a very specific problem arising from
ranking medical service providers based upon the cost of
performing a medical procedure, there is no danger of
Appellants' [sic] obtaining a monopoly over the general idea of
ranking medical service providers for a particular medical
procedure.
Appeal Br. 11; see also Reply Br, 6-7. Although the Supreme Court has
described "the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of
preemption" (see Alice, 573 U.S. at 216), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. "The Supreme Court has
13
Appeal2017-002725
Application 13/246,060
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability" and "[ fJor this reason, questions on preemption
are inherent in and resolved by the § 101 analysis." Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice,
134 S. Ct. at 2354). Although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Id.; see also Two-Way Media Ltd. v. Comcast Cable
Commc 'ns., LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) ("where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Alice framework, as they are in this case, preemption concerns are fully
addressed and made moot.").
We are not persuaded of error by the Appellants' argument that the
"wherein clauses," limitations (h), (i), and (j), of claim 1 "are NOT well-
understood, routine and conventional activities previously known in the
pertinent industry."' Reply Br. 6. Limitation (h) simply narrows the data of
the type of service provider, limitation (i) narrows the data of the medical
procedure, and limitation (j) provides that the ranking is determined by a
weighted average reimbursement being a function of quantity data and
amount data. See Claims App, 2-3. Calculating a weighted average based
on data and comparing that weighted average to other averages constitutes
basic math that one of ordinary skill or a generically programmed computer
can accomplish. See SkillSurvey, Inc. v. Checkster LLC, 178 F. Supp. 3d
247,259 (E.D. Pa. 2016), ajfd, 683 F. App'x 930 (Fed. Cir. 2017); see also
Alice, 573 U.S. at 226 (nearly every computer is capable of performing basic
calculations). And ranking data, such as the providers here, constitutes
sorting data based on the results of the analysis. Receiving, storing,
14
Appeal2017-002725
Application 13/246,060
comparing, analyzing data (such as by calculations), and sorting the results
of the analysis (such as by ranking) are well-understood, routine, and
conventional functions of the generic computing system claimed. See, e.g.,
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354--55
(Fed. Cir. 2016) (gathering, sending, monitoring, analyzing, selecting, and
presenting information does not transform the abstract process into a patent-
eligible invention); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1334 (Fed. Cir. 2015) (arranging a hierarchy, storing, retrieving, sorting,
eliminating, and determining data are well-understood, routine, conventional
activities).
Unlike the claims found non-abstract in McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), the claim here uses generic
computer technology to perform data retrieval, storage, comparison, and
analysis/calculation and does not recite an improvement to a particular
computer technology. See id. at 1314--15 (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation"); cf Reply Br. 8. The Appellants provide no further arguments
how the claim is similar such as why the claim's particular arrangement
and/or integration of elements is a technical improvement or is a "non-
conventional and non-generic arrangement of known, conventional pieces."
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016); cf Reply Br. 9.
To the extent the Appellants argue that the Examiner does not provide
sufficient evidence that the claim fails to add significantly more than the
15
Appeal2017-002725
Application 13/246,060
abstract idea (Reply Br. 10), we disagree. 4 The Examiner cites to the
Specification, including the claim, as support that the claim is implemented
by a generic computer operating in its ordinary capacity to perform well-
understood, routine, and conventional operations. See Ans. 4.
Thus, we are not persuaded of error in the Examiner's determination
that claim 1 fails to recite significantly more than the abstract idea.
Based on the foregoing, we sustain the Examiner rejection under
35 U.S.C. § 101 of claim 1 and of claims 2, 3, 6-13, 15, 17, 18, and 20,
which fall with claim 1.
We find unpersuasive the Appellants' argument that the Examiner's
rejection of dependent claims 16 and 19 is in error because "claims 16
and 19 provide yet greater focus on how a cost value is rendered and
provide[] yet additional space for others to provide alternative ways to
generate a cost-based ranking of medical service providers for a particular
medical procedure." Appeal Br. 12; Reply Br. 11. As discussed above, an
elaboration of the abstract idea, i.e., using specific data, using conventional
technology operating in a conventional manner to make calculations does
not make a claim patent-eligible under § 101.
Thus, we sustain the Examiner rejection under 35 U.S.C. § 101 of
claims 16 and 19.
4 The Appellants' reliance on the Board opinion, In re Barous, is
unpersuasive. In any event, we would not be bound by a non-precedential
decision of the Board.
16
Appeal2017-002725
Application 13/246,060
DECISION
The Examiner's rejection of claims 1-3, 6-13, and 15-20 under
35 U.S.C. § 101 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
17