Ex Parte Wilson et al

Patent Trials and Appeals Board

Apr 30, 2019

14049297 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/049,297
23990 7590
DOCKET CLERK
FILING DATE
10/09/2013
05/02/2019
P.O. DRAWER 800889
DALLAS, TX 75380
FIRST NAMED INVENTOR
Louis J. Wilson
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.
WMDJO 1-00002 1051
EXAMINER
LIN,JERRY
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
patents@munckwilson.com
munckwilson@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS J. WILSON, DALE B. MCDONALD,
and JAMES N. JOHNSTON 1
Appeal 2018-002995
Application 14/049 ,297
Technology Center 1600
Before JOHN G. NEW, RYAN H. FLAX, and RACHEL H. TOWNSEND,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a method for, apparatus configured for, and programming for a
processor for outputting a sedative dosage based on a model and a
calculation. Claims 1-20 are on appeal as rejected under 35 U.S.C. § 101.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. 2
1 Appellants identify themselves as the real party in interest. Appeal Br. 2.
2 Herein we refer to the Specification of Oct. 9, 2013 ("Spec."); the Final
Office Action of Apr. 19, 2017 ("Final Action"); the Appeal Brief of Aug.
18, 2017 ("Appeal Br."); the Examiner's Answer ofNov. 29, 2017
("Answer"); and the Reply Brief of Jan. 29, 2018 ("Reply Br.").
Appeal 2018-002995
Application 14/049 ,297
STATEMENT OF THE CASE
The Specification states, "[t]his disclosure relates generally to the
modeling and prediction of patient reactions. More specifically, this
disclosure relates to an apparatus and method for modeling and predicting
the sedative effects of drugs, such as propofol, on patients." Spec. ,-J 1. The
Specification also states:
many medical professionals may have little or no experience in
administering propofol for sedation purposes during medical
procedures. Moreover, even medical professionals who have
experience administering propofol may have difficulty
identifying the proper dosages of propofol for specific patients.
Id. ,-i 31. The Specification summarizes an embodiment of the invention,
much like that claimed, as follows:
selecting one of multiple models based on (i) at least one of the
characteristics and (ii) a sedation technique to be used. The
method further includes calculating an index to the selected
model using one or more of the characteristics. In addition, the
method includes identifying a specified dosage of the sedative
using (i) the selected model and (ii) the calculated index.
Id. ,-i 4, 58-61, Figure 17. The Specification further states, "the specific
dosage(s) of propofol for a particular patient can vary based on the particular
patient's characteristics ( such as height, weight, age, and race) and can be
estimated using one or more models." Id. ,-i 26. The Specification further
states, "[i]t is possible to combine these various factors [i.e., height, weight,
age, race, and co-administered doses of fentanyl and/or midazolam] to
generate mathematical models representing propofol dosages. For example,
in some embodiments, multiple models can be created for different
2
Appeal 2018-002995
Application 14/049,297
combinations of these factors." Id. ,i 3 7. The Specification describes using
such models as follows:
the models can be used in any suitable manner. For example, a
medical professional could select one of the models based on a
particular patient's race and a specific sedation technique to be
used. The medical professional could then plug the patient's data
(such as height, weight, and age) into the selected model in order
to obtain a predicted propofol dosage to be used during a medical
procedure. At this point, the medical professional can use the
predicted propofol dosage as a starting point and make any
adjustments deemed necessary or desirable to the predicted
dosage.
Id. ,i 38, 58-61, Figure 17. The Specification also describes how a patient's
height, weight, and age are related in predicting sedative effects using the
following mathematical formula:
Height*Weight
K=~~~~~~~-
Age
where the mathematical result, "K," is called a "patient factor." Id. ,i 39, 58-
61, Figure 17. The Specification describes that the models and patient factor
calculation, and the data used therein, can be processed using any suitable
computing devices such as a desktop computer, a laptop computer, a
smartphone, servers, and databases, generally. Id. ,i 48-50, Figure 15.
Claims 1, 10, and 18 are independent claims; claim 1 is illustrative
and is reproduced below:
1. A method comprising:
receiving characteristics of a patient to be administered a
sedative for a medical procedure, the characteristics of the patient
including a height, a weight, and an age of the patient;
3
Appeal 2018-002995
Application 14/049 ,297
selecting one of multiple models based on a sedation
technique to be used;
calculating an index to the selected model using a formula
of Height*Weight/ Age, wherein Height is the patient's height,
Weight is the patient's weight and Age is the patient's age;
identifying a specified dosage of the sedative using (i) the
selected model and (ii) the calculated index; and
outputting the specified dosage of the sedative.
Appeal Br. 38 (Claims Appendix). Independent claims 10 and 18 recite the
same steps, however, claim 10 includes these steps as programming for a
processing device, which is part of an apparatus, and claim 18 includes the
steps as stored program code to be executed by a processor.
The following rejection is appealed:
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to an
abstract idea without significantly more so as to provide an inventive
concept. Answer 2; see also Answer 3-17.
DISCUSSION
"[T]he examiner bears the initial burden ... of presenting a prima
facie case ofunpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant." In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). We have considered those arguments
made by Appellants in the Appeal Brief and properly presented in the Reply
Brief; arguments not so presented in the Briefs are deemed to have been
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015); see also Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("Any bases for
4
Appeal 2018-002995
Application 14/049 ,297
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.").
"Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work." Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). Claims directed to nothing more than
abstract ideas (such as mathematical algorithms), natural phenomena, and
laws of nature are not eligible for patent protection. Diamond v. Diehr, 450
U.S. 175, 185 (1981); accord MPEP § 2106 (II) (discussing Diehr).
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, the Supreme Court instructs us to "first determine
whether the claims at issue are directed to a patent-ineligible concept." Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,218 (2014). If the claims
are determined to be directed to an ineligible concept we then move to a
second step and "consider the elements of each claim both individually and
'as an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Id. at
217 (quoting Mayo, 566 U.S. at 97).
In addition to this direction by the Supreme Court, the United States
Patent and Trademark Office ("USPTO") published revised guidance on the
application of§ 101. USPTO's January 7, 2019 Memorandum, 2019
Revised Patent Subject Matter Eligibility Guidance ("2019 Guidance
Memorandum"). Under this guidance, in step one of the Mayo/Alice
5
Appeal 2018-002995
Application 14/049 ,297
framework, in analyzing the issue of abstract ideas we first look to whether
the claim recites:
(Step 1, Prong 1) any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human interactions such as a fundamental
economic practice, or mental processes); and
(Step 1, Prong 2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.0S(a)-
(c), (e)-(h)).
Furthermore, under the guidance, regarding step two of the Mayo/Alice
framework, only if a claim is determined to (1) recite a judicial exception
and (2) not integrate that exception into a practical application, do we then
proceed to (the Mayo/Alice) Step 2 and look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(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.
I. INDEPENDENT CLAIMS 1, 10, AND 18
As identified above, claims 1, 10, and 18 are substantially similar and,
further, Appellants' arguments there-over are also the same. Therefore, we
address these claims as a group. Regarding Mayo/Alice's step one, the
Examiner determined that:
Claims 1-20 are directed to a method, apparatus, and non-
transitory computer readable medium for identifying the
specified dosage of a sedative. The claimed invention includes
the steps receiving data of the patient, selecting a model,
calculating an index using a mathematical formula, and
identifying a specified dosage, and outputting the specified
6
Appeal 2018-002995
Application 14/049 ,297
dosage. Selecting a model required use of a mathematical
algorithm as on page 18 in the specification. Calculating an
index using a mathematical formula is a mathematical algorithm.
Furthermore, identifying a specified dosage of the sedative using
the model and calculated index is also a mathematical algorithm
as stated on pages 19 and 20 of the specification. Mathematical
algorithms are an abstract idea. Thus, the claimed invention is
drawn to a judicial exception of an abstract idea. Dependent
claims 2-9, 11-17, 19 and 20 are drawn to additional
mathematical steps which are also abstract ideas.
Final Action 2; Answer 9-10, 14. The Examiner determined that the claims
are also directed to a mental process because the limitations relating to
choosing or selecting a mathematical model, and identifying the product of a
selected model or calculated index, are mental steps (e.g., "[t]he mental step
of choosing a particular mathematical model," "the step of identifying ...
may [] also be seen as a mental step," and "selecting a model is a mental
step"). Answer 4-6, 10-11, 14-16.
We discern no error in the Examiner's determinations. We analyze
the record pursuant to the 2019 Guidance Memorandum and address
Appellants' arguments below.
STEP 1, PRONG ]
The 2019 Guidance Memorandum identifies three key concepts
identified as abstract ideas:
(a) mathematical concepts including "mathematical
relationships, mathematical formulas or equations, mathematical
calculations"; (b) certain methods of organizing human activity,
such as "fundamental economic principles or practices,"
"commercial or legal interactions," and "managing personal
behavior or relationships or interactions between people"; and
( c) mental processes including "observation, evaluation,
judgment, [ and] opinion."
7
Appeal 2018-002995
Application 14/049 ,297
Here, the independent claims recite, inter alia, ( 1) "selecting one of
multiple models based on a sedation technique to be used"; (2) "calculating
an index to the selected model using a formula of Height*W eight/ Age,
wherein Height is the patient's height, Weight is the patient's weight and
Age is the patient's age"; and (3) "identifying a specified dosage of the
sedative using (i) the selected model and (ii) the calculated index." Under
the broadest reasonable interpretation, limitations (1) and (3) recite mental
steps of selecting and identifying, which are judgments and opinions that can
be performed in the mind. Likewise, under the broadest reasonable
interpretation, limitation (2) recites a mathematical formula. Accordingly,
we conclude the claims recite a mental process and a mathematical formula
and, thus, an abstract idea.
The Federal Circuit has "recognize[ d] that defining the precise
abstract idea of patent claims in many cases is far from a 'straightforward'
exercise." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150
(Fed. Cir. 2016) (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014)). However, "we continue to 'treat[] analyzing
information by steps people [ could] go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category."' Id. at 1146-47 (quoting Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (citations
omitted)). The Federal Circuit has recognized that "a claim for a new
abstract idea is still an abstract idea." Id. at 1151. It is well-established that
mental processes are abstract ideas. CyberSource instructs that "a method
that can be performed by human thought alone is merely an abstract idea and
8
Appeal 2018-002995
Application 14/049 ,297
is not patent-eligible under§ 101." CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373, 1375 (Fed. Cir. 2011) ("That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalkv. Benson."). And,
"[i]f a claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific purpose, the
claimed method is nonstatutory." Parker v. Flook, 437 U.S. 584, 595
(1978).
Here, the claims recite steps for analyzing information, which people
could go through in their minds, or by mathematical algorithms, which is
essentially a mental processes within the abstract-idea category. Moreover,
the claims recite calculating using a mathematical formula. These are
abstract ideas.
STEP 1, PRONG 2
We next consider whether the claimed sedative dosing
recommendation method/system includes additional elements that integrate
the abstract idea into a practical application. Determining that the claimed
abstract idea is integrated into a practical application requires identifying an
additional element or a combination of additional elements in the claim to
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 exception.
Here, there is no practical integration of the abstract idea, rather, there
is simply an additional step of receiving data and a step of outputting data,
and potentially the usage of a generic computer to perform the abstract idea.
9
Appeal 2018-002995
Application 14/049 ,297
Other than the limitations directed to the abstract idea, discussed above, the
invention is claimed at a very high level of generality and is only limited in
the type of data used in forming models and in mathematical calculations.
And, again, the end result of the claimed method ( or the product of the
claimed apparatus and computer program) is advice, amounting to data.
Here, it cannot be reasonably argued that the claims do not recite
mental steps and a mathematical formula, as determined by the Examiner
and as discussed above. Furthermore, it is this series of mental steps and
math to which Appellants' invention, as claimed, is directed. There are no
limitations requiring that the information derived from choosing a model and
doing math result in actual actions being taken or anything other than data be
produced. For example, there is no treatment ( or sedation) required to be
performed based on the mental steps and math. Cf Vanda Pharm. Inc. v.
West-Ward Pharm. Int'! Ltd., 887 F.3d 1117 (Fed. Cir. 2018) (claims
required using a natural relationship to perform a new treatment and were
directed to the treatment and, so, were patent- elibible ). Thus, there is no
implementation of the abstract idea into a practical application.
Appellants argue the claims are not directed to an abstract idea, but
rather, recite specific processes using particular information and techniques,
specifically designed to achieve an improved technological result, and do not
preempt other approaches using different information or techniques. Appeal
Br. 8. Appellants also argue their claims are analogous to those found
patent-eligible in Enfish and McRO. Id. at 8-9 ( citing Enfish, LLC v.
Microsoft Corp., 822 F. 3d 1327 (Fed. Cir. 2016); McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellants
10
Appeal 2018-002995
Application 14/049 ,297
essentially reiterate these arguments in the Reply Brief, focusing on the
contention that not all claim limitations require math and the just-mentioned
Federal Circuit precedent. See Reply Br. 2-10. These arguments are not
persuasive.
Unlike Enfzsh, where the Federal Circuit found the claims to be
patent-eligible as directed to an improvement in how computers function,
here, although the claims are directed, essentially, to software or
programming (if the method is not wholly performed in the mind), they are
not "directed to a specific implementation of a solution to a problem in the
software arts," as were the claims in Enfzsh. See Enfzsh, 822 F.3d at 1339.
Appellants' invention does not improve how software functions on a
computer, nor is it directed to a new type of software, but relates to software
running a different algorithm for manipulating data, that data being medical
information.
In McRO the Federal Circuit held claims that "set out meaningful
requirement for [a] first set of rules" by which a computer could synchronize
animated lip movements to spoken sounds, as a whole, were directed to "a
process specifically designed to achieve an improved technological result,"
that result being a computer-generated animation having automatically
synchronized mouth movements, and were not directed to an abstract idea.
McRO, 837 F.3d at 1316. Here, we have none of the claimed specificity of
technological improvement the Federal Circuit found present in the
invention of McRO. Also, contrary to McRO, where the ultimate product
produced was a synchronized computer animation, here the result of the
11
Appeal 2018-002995
Application 14/049 ,297
claimed method or the output of the claimed product is the "output" of an
identified specified dosage of sedative, which we deem to be mere advice.
As discussed above, the claimed invention (if not actually performed
in the human mind) is software programming; it does not improve the
functioning of a computer; it is not effecting a treatment for a medical
condition, but only recommending some treatment; it is not transforming a
machine or matter in any way. See, e.g., MPEP § 2106.05(a)-(c). The only
"implementations" of the abstract idea, as claimed, are directed to generic
data processing (programming) and generic devices and the claims'
limitations to such amount to mere instruction to apply the abstract idea.
Moreover, tying the invention's software to sedative dosing
recommendations or a computer environment, i.e., a technical field, without
more, is not a practical implementation of the abstract idea. See, e.g., MPEP
§ 2106.05(h); see also Parker v. Flook, 437 U.S. 584, 588-90 (1978)
(limiting an abstract idea to one field of use or adding token post-solution
components did not make the concept patentable). Tying a claimed mental
process or mathematical formula to specific data cannot tum an abstract idea
into patent-eligible subject matter because "mere ' [ data-gathering] step[ s]
cannot make an otherwise nonstatutory claim statutory.' In re Grams, 888
F.2d 835, 840 (Fed.Cir.1989) (quoting In re Meyer, 688 F.2d 789, 794
(CCPA 1982))." CyberSource, 654 F.3d at 1370.
Appellants also argue there is an absence of preemption in view of the
claimed invention (see, e.g., Appeal Br. 9); however, it is well-established
that, "[ w ]hile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
12
Appeal 2018-002995
Application 14/049 ,297
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). "Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo[/Alice] framework, as they are in
this case, preemption concerns are fully addressed and made moot." Id.
Thus, this argument is also not persuasive.
STEP 2 - INVENTIVE CONCEPT
Regarding Mayo/Alice's step two, the Examiner determined:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception. The instant claims include additional elements of
receiving characteristics outputting the specified dosage, an
apparatus, a memory, a processing device, a non-transitory
computer readable medium, and a computer readable computer
code. Receiving characteristics and outputting the results of a
mathematical algorithm is a well-known, conventional, and
routine function of a general purpose computer. Similarly an
apparatus, a memory, a processing device, a non-transitory
computer readable medium, and a computer readable computer
code are well-known, conventional, and routine components of a
general purpose computer. Recitation of well-known, con-
ventional, and routine functions and components are not
sufficient to transform a judicial exception into patent eligible
subject matter.
Final Action 2-3; Answer 10-11, 15-16. We discern no error in the
Examiner's determinations.
We are not persuaded that the Examiner erred in determining that the
elements of claim 1, considering all elements both individually and as an
ordered combination, do not amount to significantly more than the abstract
ideas of "a mental process" and "mathematical calculations." Looking at
claim 1, for example, we ask what more is claimed once we exclude the
13
Appeal 2018-002995
Application 14/049 ,297
limitations directed to the abstract idea and, what we find is, essentially,
nothing. The "select[ing]," "calculat[ing]," and "identify[ing]" limitations
of claim 1, discussed above, are each and all directed to the abstract idea.
Once removed from consideration, we are left with the collection of generic
patient data and the outputting of advice.
The Federal Circuit has established that collecting, classifying,
storing, and organizing data, regardless of whether such data manipulations
are limited to a particular technological environment, is an abstract idea and,
without more (which cannot be provided by generic components or steps
used in their routine and customary ways), is not patent eligible. See, e.g.,
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018) (claims
directed to manipulating data for selective display using routine and
conventional instructions/programming not patent-eligible); SAP America,
Inc. v. Investpic, LLC, 890 F.3d 1016, 1018 (Fed. Cir. 2018) (claims directed
to "nothing but a series of mathematical calculations based on selected
information and the presentation of the results of those calculations" is
merely an advancement in an abstract idea and patent-ineligible, even
though physical things like databases and processors are claimed); In re TL!
Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016)
( collecting and organizing data in the form of digital images is abstract and
patent ineligible, and using computer systems in their generic ways do not
add an inventive concept); Content Extraction and Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014) (extracting
data from documents, recognizing information therefrom, and storing the
information is abstract).
14
Appeal 2018-002995
Application 14/049 ,297
Appellants argue that "virtually everything in Claim 1 extends
significantly beyond 'receiving characteristics' and 'outputting the results of
a mathematical algorithm."' Appeal Br. 12. Appellants argue the specific
process, specific data, and specific operations "never done before," as
recited in claim 1 (and 10 and 18), amount to significantly more than the
abstract idea. Id.; see also id. at 22-23, 32-33. Appellants' argument is not
persuasive.
Once we strip away the limitations directed to the abstract idea, we
are left with: "receiving characteristics of a patient to be administered a
sedative for a medical procedure, the characteristics of the patient including
a height, a weight, and an age of the patient;" and "outputting the specified
dosage of the sedative." Receiving patient data relating to height, weight,
and age is absolutely routine, conventional, and well-known; it is data
universally collected prior to any medical treatment or doctor visit, and
especially used in determining dosing. Likewise, outputting a dosage
(suggestion) as a result of considering data adds no inventive concept to the
claimed invention when considered individually and with the other steps as
an ordered combination.
For the above reasons, we are unpersuaded that the Examiner erred in
determining claims 1, 10, and 18 to be patent-ineligible.
IL DEPENDENT CLAIM 19, AND DEPENDENT CLAIMS 2, 3, 11, AND 12
Appellants separately argued each of claims 2, 3, 11, 12, and 19.
Claims 2 and 3 depend from claim 1, claims 11 and 12 depend from claim
10, and claim 19 depends from claim 18. Claim 19, the most comprehensive
claim of the group, recites:
15
Appeal 2018-002995
Application 14/049 ,297
[ as in claims 2 and 11] the characteristics of the patient further
include a race of the patient;
the computer readable program code that when executed causes
the at least one processor to select one of multiple models
comprises computer readable program code that when executed
causes the at least one processor to [ as in claims 2 and 11] select
one of the multiple models based on the patient's race and the
sedation technique to be used; and
[as in claims 3 and 12] the multiple models comprise different
models associated with different sedation techniques.
Appeal Br. 3 8, 41, 44 ( emphasis and text added to highlight overlapping
limitations). The limitations of claim 19 subsume those of these other
dependent claims and Appellants' arguments for these claims also
substantially overlap; therefore, we address these claims together. See
Appeal Br. 13-14, 24-25, 34-35.
Regarding claims 2, 11, and 19, the Examiner determined the
"selecting a model [step] is a mental step or a component of the
mathematical algorithm," which are mere extensions of the abstract idea to
which the independent claims are directed, as discussed above. Answer 6,
11-12, 16. Regarding claims 3, 12, and 19, the Examiner determined the
claimed identification of the multiple models and identifying race as a
variable was "specifying data (i.e. models associated with different sedation
techniques)[, which] does not change [the] abstract idea into a non-abstract
idea (See buySAFE, Inc. v Google, Inc. 765 F.3d 1350, 112 U.S.P.Q.2d 1093
(Fed. Cir. 2014)." Answer 7, 12, 16. For each of claims 2, 3, 11, 12, and 19,
the Examiner determined that "as an ordered combination with the parent
claim[ s ], the instant claim[ s] [are] still well-known, conventional and
routine, because gathering data, performing an algorithm, and outputting the
16
Appeal 2018-002995
Application 14/049 ,297
results of an algorithm is well-known, conventional, and routine. Thus, the
instant claim[ s] [are] not patent eligible." Answer 6-7, 11-12, 16. We
discern no error in the Examiner's determinations.
Under the Mayo/Alice Step 1, USPTO Prong 1 analysis, none of
dependent claims 2, 3, 11, 12, and 19 add any further limitation to the
subject matter of independent claims 1, 10, and 20 that is not also directed to
the abstract idea, as discussed above. These dependent claims variously
recite: (1) including "race" as another characteristic upon which models are
based; (2) selecting a model based on race and sedation technique; and (3)
the models are associated with different sedation techniques. Limitation (2)
relating to selecting, under the broadest reasonable interpretation, amounts to
mere judgment and opinion that can be performed in the mind; the other
limitation identify data. Accordingly, we conclude the claims recite a
mental process and, thus, an abstract idea.
Under the Mayo/Alice Step 1, USPTO Prong 2 analysis, these claims
do not integrate the abstract idea into a practical application. Looking to
what else the claims require other than the limitations directed to an abstract
idea what we find are limitations (1) and/or (3), noted above, which require
designating "race" and "sedation techniques" as data in establishing models.
Mere data gathering, such as selecting or obtaining certain information or
basing a calculation on certain information, is insignificant extra-solution
activity, not a practical application. See, e.g., MPEP 2106.05(g);
CyberSource, 654 F.3d at 1375; Mayo, 566 U.S. at 79. "If a claim is
directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
17
Appeal 2018-002995
Application 14/049 ,297
nonstatutory." Parker, 437 U.S. 584 (1978). Therefore, tying a claimed
abstract idea to a specific technical field or certain data gathering, without
more, as we see in Appellants' claims here, is not a practical implementation
of the abstract idea. See, e.g., Parker, 437 U.S. at 588-90; CyberSource,
654 F.3d at 1370 (citing In re Grams, 888 F.2d at 840; In re Meyer, 688
F.2d at 794); see also MPEP § 2106.05(h).
Under the Mayo/Alice Step 2, we analyze these claims to identify
whether an additional element or combination of elements are recited that
are more than well-understood, routine, and conventional activity in the
field, and indicative of an inventive concept. In agreement with the
Examiner's determination, we conclude there are no such additional
elements or combinations of elements recited. Considering the limitations
directed to designating "race" and "sedation techniques" as data in
establishing models, this is "gathering data, performing an algorithm, and
outputting the results of an algorithm [ and] is well-known, conventional, and
routine," as determined by the Examiner. See, e.g., Answer 6, 7, 11, 12, 16.
Appellants argue claims 2, 3, 11, 12, and 19 are "clearly not reciting
merely a mathematical process" because "[ s ]electing one of multiple models
based on a patient's race and a sedation technique do not constitute a
mathematical algorithm or generic function," and, regarding claim 19,
"selecting from among different models associated with different sedation
techniques does not constitute a mathematical algorithm or generic
function." Appeal Br. 13, 14, 24, 25, 34; see also generally Reply Br.
( dependent claims were not argued). This is not persuasive. As determined
by the Examiner, these claim elements are mental steps integrated with a
18
Appeal 2018-002995
Application 14/049 ,297
mathematical algorithm. They recite an abstract idea. Appellants also
argue, generally, for each claim that the claim elements "combine with its
parent claim to create an ordered combination that is not well-understood,
routine, or conventional and that is not previously known to the industry."
This is also not persuasive. Selecting race or a sedation technique amounts
to mere selection of data, which is extra-solution activity and does not
provide either a practical application or an inventive concept.
For the above reasons, we are unpersuaded that the Examiner erred in
determining claims 2, 3, 11, 12, and 19 to be patent-ineligible.
Ill. DEPENDENT CLAIMS 4 AND 13
Appellants separately argued claims 4 and 13, which respectively
depend from claims 3 (and 1) and 12 (and 10). Claims 4 and 13 each recite:
. . . wherein the models associated with the different
sedation techniques comprise:
models associated with administration of propofol only;
models associated with administration of fentanyl and
propofol;
models associated with administration of fentanyl,
midazolam at a lower dosage, and propofol; and
models associated with administration of fentanyl,
midazolam at a higher dosage, and propofol.
Appeal Br. 39, 42. Appellants' arguments for these claims also substantially
overlap; therefore, we address these claims together. See Appeal Br. 15, 25-
26.
Regarding claims 4 and 13, the Examiner determined that the claimed
identifying the administered sedatives with which the claimed models were
19
Appeal 2018-002995
Application 14/049 ,297
associated was "specifying data (i.e. models associated with different
sedation techniques) [ and] does not change an abstract idea into a non-
abstract idea (See buySAFE, Inc. v Google, Inc. 765 F.3d 1350, 112
U.S.P.Q.2d 1093 (Fed. Cir. 2014). Thus, the instant claim[s] [are] drawn to
a judicial exception." Answer 7, 12. The Examiner also determined,
"[f]urthermore, as an ordered combination with the parent claim, the instant
claim is still well-known, conventional and routine, because gathering data,
performing an algorithm, and outputting the results of an algorithm is well-
known, conventional, and routine. Thus, the instant claim is not patent
eligible." We discern no error in the Examiner's determinations.
Under the Mayo/Alice Step 1, USPTO Prong 1 analysis, neither of
dependent claims 4 and 13 adds any further limitation to the subject matter
of independent claims 1 and 10 that is not also directed to the abstract idea,
discussed above. These dependent claims further require that the claimed
models can be based on (the potential) administration of propofol only, or
administration of propofol and fentanyl, or administration of propofol and
fentanyl and a lower dose of midazolam, or administration of propofol and
fentanyl and a higher dose of midazolam. Under the broadest reasonable
interpretation, these limitations recite data selection for models. Such a
recitation of data does not alter the fact that the claims recite a mental
process and mathematical formula.
Under the Mayo/Alice Step 1, USPTO Prong 2 analysis, these claims
do not integrate the abstract idea into a practical application. Looking to
what else the claims require other than the limitations directed to the abstract
idea what we find are limitations that require designating the above-
20
Appeal 2018-002995
Application 14/049 ,297
discussed (potentially) administered or (potentially) co-administered
sedatives as data in establishing models. Mere data gathering, such as
obtaining certain information or basing a calculation on certain information,
is insignificant extra-solution activity, not a practical application. See, e.g.,
MPEP 2106.05(g); CyberSource, 654 F.3d at 1375; Mayo, 566 U.S. at 79.
Tying a claimed abstract idea to a specific technical field or certain data
gathering, without more, as we see in Appellants' claims here, is not a
practical implementation of the abstract idea. See, e.g., Parker, 437 U.S. at
588-90; CyberSource, 654 F.3d at 1370 (citing In re Grams, 888 F.2d at
840; In re Meyer, 688 F.2d at 794); see also MPEP § 2106.05(h).
Under the Mayo/Alice Step 2, we analyze these claims to identify
whether an additional element or combination of elements are recited that
are more than well-understood, routine, and conventional activity in the
field, and indicative of an inventive concept. In agreement with the
Examiner's determinations, we conclude there are no such additional
elements or combinations of elements recited. Considering the limitations
directed to designating administered or co-administered sedatives as data in
establishing models, this amounts to "gathering data, performing an
algorithm, and outputting the results of an algorithm [ and] is well-known,
conventional, and routine," as determined by the Examiner. See, e.g.,
Answer 7, 12.
Appellants present identical arguments for claims 4 and 13 as
presented for claims 2, 3, 11, 12, and 19, as discussed above. See Appeal
Br. 15, 26. These arguments are also unpersuasive regarding the rejection of
21
Appeal 2018-002995
Application 14/049 ,297
claims 4 and 13. For the above reasons, we are unpersuaded that the
Examiner erred in determining claims 4 and 13 to be patent-ineligible.
IV. DEPENDENT CLAIMS 5 AND 14
Appellants separately argued claims 5 and 14, which respectively
depend from claims 1 and 10. The limitations of claims 5 and 14 are
substantially identical; claim 5 recites:
different models are associated with different stages of the
medical procedure, the different stages including at least an
initial stage and a final stage; and
the method comprises identifying and outputting different
specified dosages of the sedative for the different stages of the
medical procedure.
Appeal Br. 39, 42 (claim 14 differs only in reciting the processing device of
independent claim 10). Appellants' arguments for these claims also
substantially overlap; therefore, we address these claims together. See
Appeal Br. 16, 26-27.
Regarding claims 5 and 14, the Examiner determined that the claimed
identification of the models' association with medical procedure stages,
including an initial and final stage, and outputting related suggested dosages
was, once more, merely "specifying data (i.e. models associated with
different staged of medical procedure)[, which] does not change an abstract
idea into a non-abstract idea (See buySAFE, Inc. v Google, Inc. 765 F.3d
1350, 112 U.S.P.Q.2d 1093 (Fed. Cir. 2014)." Answer 7, 12-13. The
Examiner also determined:
In addition, as explained above, identifying dosages is a
mathematical algorithm, and outputting dosages is well-known,
conventional and routine. Thus, the instant claim[ s] [are] drawn
to a judicial exception. Furthermore, as an ordered combination
22
Appeal 2018-002995
Application 14/049 ,297
with the parent claim[ s ], the instant claim[ s] [are] still well-
known, conventional and routine, because gathering data,
performing an algorithm, and outputting the results of an
algorithm is well-known, conventional, and routine. Thus, the
instant claim[ s] [are] not patent eligible.
Id. We discern no error in these determinations.
Under the Mayo/Alice Step 1, USPTO Prong 1 analysis, neither of
dependent claims 5 and 14 adds any further limitation to the subject matter
of independent claims 1 and 10 that is not also directed to the abstract idea,
discussed above. These dependent claims require that the claimed models
can be based on an initial and/or final stage of a medical procedure and
outputting related sedation advice. Under the broadest reasonable
interpretation, these limitations recite data selection for models and
outputting data. Such a recitation of data does not alter the fact that the
claims recite a mental process and mathematical formula.
Under the Mayo/Alice Step 1, USPTO Prong 2 analysis, these claims
do not integrate the abstract idea into a practical application. Looking to
what else the claims require other than the limitations directed to an abstract
idea what we find are limitations that identify the otherwise-claimed models
to be associated with certain data (procedure stages) and that the otherwise-
claimed outputting relates to this data ( advised dosages per procedure
stages). Mere data gathering, such as obtaining certain information or
basing a calculation on certain information, is insignificant extra-solution
activity, not a practical application. See, e.g., MPEP 2106.05(g);
CyberSource, 654 F.3d at 1375; Mayo, 566 U.S. at 79. Tying a claimed
abstract idea to a specific technical field or certain data gathering, without
more, as we see in Appellants' claims here, is not a practical implementation
23
Appeal 2018-002995
Application 14/049 ,297
of the abstract idea. See, e.g., Parker, 437 U.S. at 588-90; CyberSource,
654 F.3d at 1370 (citing In re Grams, 888 F.2d at 840; In re Meyer, 688
F.2d at 794); see also MPEP § 2106.05(h).
Under the Mayo/Alice Step 2, we analyze these claims to identify
whether an additional element or combination of elements are recited that
are more than well-understood, routine, and conventional activity in the
field, and indicative of an inventive concept. In agreement with the
Examiner's determinations, we conclude there are no such additional
elements or combinations of elements recited. Considering the limitations
directed to identifying the otherwise-claimed models to be associated with
certain data (procedure stages) and that the otherwise-claimed outputting
relates to this data ( advised dosages per procedure stages), this amounts to
"gathering data, performing an algorithm, and outputting the results of an
algorithm [ and] is well-known, conventional, and routine," as determined by
the Examiner. See, e.g., Answer 7, 12.
Appellants present identical arguments for claims 5 and 14 as
presented for the other dependent claims, as discussed above. See Appeal
Br. 16, 27. These arguments are also unpersuasive regarding the rejection of
claims 5 and 14. For the above reasons, we are unpersuaded that the
Examiner erred in determining claims 5 and 14 to be patent-ineligible.
V. DEPENDENT CLAIMS 6, 15, AND 20
Appellants separately argued claims 6, 15, and 20, which respectively
depend from claims 1, 10, and 18. The limitations of claims 6, 15, and 20
are substantially identical; claim 6 recites:
generating the models by:
24
Appeal 2018-002995
Application 14/049 ,297
obtaining information comprising sedation dosages and
index values associated with multiple patients;
excluding a portion of the information; and
analyzing a remaining portion of the information to
identify the models.
Appeal Br. 39, 42, 45. Appellants' arguments for these claims also
substantially overlap; therefore, we address these claims together. See
Appeal Br. 16-17, 27-28, 35.
Regarding these dependent claims' recited "obtaining," "excluding,"
and "analyzing" steps for generating models, the Examiner determined "the
process of generating a model is a mathematical algorithm. The steps of
excluding a portion of the information and analyzing the remaining portion
of the information are mathematical steps." Answer 8, 13, 17. We also
note, as discussed above, that the Examiner determined regarding the
independent claims that such steps "may also be seen as a mental step." See,
e.g., id. at 4-5. The Examiner further determined:
Obtaining information is a well-known, conventional, and
routine data gathering step. In addition, specifying the data (i.e.,
sedation dosages and index values) does not change an abstract
idea into a non-abstract idea (See buySAFE, Inc. v Google, Inc.
765 F.3d 1350, 112 U.S.P.Q.2d 1093 (Fed. Cir. 2014).
Furthermore, as an ordered combination with the parent claim,
the instant claim[s] [are] still well-known, conventional and
routine, because gathering data, performing an algorithm, and
outputting the results of an algorithm is well-known,
conventional, and routine. Thus, the instant claim[ s] [are] not
patent eligible.
Id. at 8, 13, 17. We discern no error in these determinations.
25
Appeal 2018-002995
Application 14/049 ,297
Under the Mayo/Alice Step 1, USPTO Prong 1 analysis, none of
dependent claims 6, 15, and 20 adds any further limitation to the subject
matter of independent claims 1, 10, and 18 that is not also directed to the
abstract idea, discussed above. These dependent claims require that data is
"obtained," that data is "excluded," and that data is "analyzed." Under the
broadest reasonable interpretation, these limitations recite data selection for
models. Such a recitation of data does not alter the fact that the claims recite
a mental process and mathematical formula.
Under the Mayo/Alice Step 1, USPTO Prong 2 analysis, these claims
do not integrate the abstract idea into a practical application. Looking to
what else the claims require other than the limitations directed to an abstract
idea what we find are limitations requiring data be "obtained," that data be
"excluded," and that data be "analyzed." Mere data gathering, such as
obtaining certain information or basing a calculation on certain information,
is insignificant extra-solution activity, not a practical application. See, e.g.,
MPEP 2106.05(g); CyberSource, 654 F.3d at 1375; Mayo, 566 U.S. at 79.
Tying a claimed abstract idea to a specific technical field or certain data
gathering, without more, as we see in Appellants' claims here, is not a
practical implementation of the abstract idea. See, e.g., Parker, 437 U.S. at
588-90; CyberSource, 654 F.3d at 1370 (citing In re Grams, 888 F.2d at
840; In re Meyer, 688 F.2d at 794); see also MPEP § 2106.05(h).
Under the Mayo/Alice Step 2, we analyze these claims to identify
whether an additional element or combination of elements are recited that
are more than well-understood, routine, and conventional activity in the
field, and indicative of an inventive concept. In agreement with the
26
Appeal 2018-002995
Application 14/049 ,297
Examiner's determinations, we conclude there are no such additional
elements or combinations of elements recited. Considering the limitations
directed to obtaining, excluding, and analyzing data, this amounts to
"gathering data, performing an algorithm, and outputting the results of an
algorithm [ and] is well-known, conventional, and routine," as determined by
the Examiner. See, e.g., Answer 8, 13, 17.
Appellants present identical arguments for claims 6, 15, and 20 as
presented for the other dependent claims, as discussed above. See Appeal
Br. 17, 28, 35. These arguments are also unpersuasive regarding the
rejection of claims 6, 15, and 20. For the above reasons, we are unpersuaded
that the Examiner erred in determining claims 6, 15, and 20 to be patent-
ineligible.
VI. DEPENDENT CLAIMS 7 AND 16
Appellants separately argued claims 7 and 16, which respectively
depend from claims 6 ( and 1) and 15 ( and 10). The limitations of claims 7
and 16 are substantially identical; claim 7 recites:
. . . wherein excluding the portion of the information
compnses:
identifying an average or median total time to discharge
for the multiple patients; and
excluding the sedation dosages and index values
associated with patients having total times to discharge greater
than the average or median total time to discharge.
Appeal Br. 40, 44. Appellants' arguments for these claims also substantially
overlap; therefore, we address these claims together. See Appeal Br. 17-18,
28-29.
27
Appeal 2018-002995
Application 14/049 ,297
Regarding claims 7 and 16, the Examiner determined "the steps of
identifying an average or median total time and excluding sedation dosages
and index values are mathematical steps. Thus, the instant claim[ s] [are]
drawn to a judicial exception." Answer 8, 13. We also note, as discussed
above, that the Examiner determined regarding the independent claims that
such steps "may also be seen as a mental step." See, e.g., id. at 4-5. The
Examiner also determined, "[ f]urthermore, as an ordered combination with
the parent claim[s], the instant claim[s] [are] still well-known, conventional
and routine, because gathering data, performing an algorithm, and outputting
the results of an algorithm is well-known, conventional, and routine. Thus,
the instant claim[s] [are] not patent eligible." Id. at 8, 13. We discern no
error in the Examiner's determinations.
Under the Mayo/Alice Step 1, USPTO Prong 1 analysis, neither of
dependent claims 7 and 16 adds any further limitation to the subject matter
of independent claims 1, 10, and 18 ( or dependent claims 6 and 15) that is
not also directed to the abstract idea, discussed above. These dependent
claims identify what data is excluded from consideration for models based
on identifying ( or calculating) average or median time to discharge. Under
the broadest reasonable interpretation, these limitations recite data selection
for models (and, potentially, more math). Such a recitation of data does not
alter the fact that the claims recite a mental process and mathematical
formula.
Under the Mayo/Alice Step 1, USPTO Prong 2 analysis, these claims
do not integrate the abstract idea into a practical application. Looking to
what else the claims require other than the limitations directed to an abstract
28
Appeal 2018-002995
Application 14/049 ,297
idea what we find are limitations relating to identifying what data is
excluded from consideration for models based on identifying ( or calculating)
average or median time to discharge. Mere data gathering, such as obtaining
certain information or basing a calculation on certain information, is
insignificant extra-solution activity, not a practical application. See, e.g.,
MPEP 2106.05(g); CyberSource, 654 F.3d at 1375; Mayo, 566 U.S. at 79.
Tying a claimed abstract idea to a specific technical field or certain data
gathering, without more, as we see in Appellants' claims here, is not a
practical implementation of the abstract idea. See, e.g., Parker, 437 U.S. at
588-90; CyberSource, 654 F.3d at 1370 (citing In re Grams, 888 F.2d at
840; In re Meyer, 688 F.2d at 794); see also MPEP § 2106.05(h).
Under the Mayo/Alice Step 2, we analyze these claims to identify
whether an additional element or combination of elements are recited that
are more than well-understood, routine, and conventional activity in the
field, and indicative of an inventive concept. In agreement with the
Examiner's determinations, we conclude there are no such additional
elements or combinations of elements recited. Considering the limitations
directed to identifying the result of math and conditionally excluding data
from consideration, this amounts to "gathering data, performing an
algorithm, and outputting the results of an algorithm [ and] is well-known,
conventional, and routine," as determined by the Examiner. See, e.g.,
Answer 8, 13.
Appellants present identical arguments for claims 7 and 16 as
presented for the other dependent claims, as discussed above. See Appeal
Br. 18, 28-29. These arguments are also unpersuasive regarding the
29
Appeal 2018-002995
Application 14/049 ,297
rejection of claims 7 and 16. For the above reasons, we are unpersuaded that
the Examiner erred in determining claims 7 and 16 to be patent-ineligible.
VIL DEPENDENT CLAIMS 8 AND 17
Appellants separately argued claims 8 and 17, which respectively
depend from claims 6 ( and 1) and 15 ( and 10). The limitations of claims 8
and 17 are substantially identical; claim 8 recites:
. . . wherein analyzing the remaining portion of the
information comprises:
identifying an average index value in the remaining
portion of the information;
dividing the sedation dosages in the remaining portion of
the information into multiple groups based on the average index
value and a standard deviation of the average index value;
for each group, calculating an average sedation dosage;
plotting the average sedation dosages of the groups against
the index values; and
fitting a curve to the plotted average sedation dosages.
Appeal Br. 40, 43. Appellants' arguments for these claims also substantially
overlap; therefore, we address these claims together. See Appeal Br. 18-19,
29-30.
Regarding claims 8 and 17, the Examiner determined "the steps of
identifying an average, deriving a sedation dosage, calculating an average,
plotting the averages against an index value, and fitting a curve are
mathematical steps. Thus, the instant claim[ s] [are] drawn to a judicial
exception." Answer 8, 13-14. We also note, as discussed above, that the
Examiner determined regarding the independent claims that such steps "may
also be seen as a mental step." See, e.g., id. at 4-5. The Examiner also
30
Appeal 2018-002995
Application 14/049 ,297
determined, "[f]urthermore, as an ordered combination with the parent
claim[ s ], the instant claim[ s] [are] still well-known, conventional and
routine, because gathering data, performing an algorithm, and outputting the
results of an algorithm is well-known, conventional, and routine. Thus, the
instant claim[s] [are] not patent eligible." Id. at 9, 13-14. We discern no
error in the Examiner's determinations.
Under the Mayo/Alice Step 1, USPTO Prong 1 analysis, neither of
dependent claims 8 and 17 adds any further limitation to the subject matter
of independent claims 1, 10, and 18 ( or dependent claims 6 and 15) that is
not also directed to the abstract idea, discussed above. These dependent
claims recite analysis steps of identifying an average index value ( a mental
step and also, possibly, math), dividing data into groups, calculating
averages for these groups of data (math), plotting data, and fitting a curve to
the plotted data. Under the broadest reasonable interpretation, these
limitations recite data selection for models (and, potentially, more math).
Such a recitation of data does not alter the fact that the claims recite a mental
process and mathematical formula.
Under the Mayo/Alice Step 1, USPTO Prong 2 analysis, these claims
do not integrate the abstract idea into a practical application. Looking to
what else the claims require other than the limitations directed to an abstract
idea what we find are limitations relating to analysis steps of identifying an
average index value (a mental step and also, possibly, math), dividing data
into groups, calculating averages for these groups of data, plotting data, and
fitting a curve to the plotted data. Mere data gathering, such as obtaining
certain information or basing a calculation on certain information, is
31
Appeal 2018-002995
Application 14/049 ,297
insignificant extra-solution activity, not a practical application. See, e.g.,
MPEP 2106.05(g); CyberSource, 654 F.3d at 1375; Mayo, 566 U.S. at 79.
Tying a claimed abstract idea to a specific technical field or certain data
gathering, without more, as we see in Appellants' claims here, is not a
practical implementation of the abstract idea. See, e.g., Parker, 437 U.S. at
588-90; CyberSource, 654 F.3d at 1370 (citing In re Grams, 888 F.2d at
840; In re Meyer, 688 F.2d at 794); see also MPEP § 2106.05(h).
Under the Mayo/Alice Step 2, we analyze these claims to identify
whether an additional element or combination of elements are recited that
are more than well-understood, routine, and conventional activity in the
field, and indicative of an inventive concept. In agreement with the
Examiner's determinations, we conclude there are no such additional
elements or combinations of elements recited. Considering the limitations
directed to identifying the result of math and conditionally excluding data
from consideration, this amounts to "gathering data, performing an
algorithm, and outputting the results of an algorithm [ and] is well-known,
conventional, and routine," as determined by the Examiner. See, e.g.,
Answer 8, 13.
Appellants present identical arguments for claims 8 and 17 as
presented for the other dependent claims, as discussed above. See Appeal
Br. 18-19, 29-30. These arguments are also unpersuasive regarding the
rejection of claims 8 and 1 7. For the above reasons, we are unpersuaded that
the Examiner erred in determining claims 8 and 17 to be patent-ineligible.
32
Appeal 2018-002995
Application 14/049 ,297
VIII. DEPENDENT CLAIM 9
Appellants separately argue dependent claim 9, which depends from
claim 6 (and 1). Claim 9 recites:
The method of claim 6, further comprising:
receiving additional information comprising additional
sedation dosages and index values; and
at least one of: refining at least one of the models and
generating at least one new model using the additional
information.
Appeal Br. 40.
Regarding claim 9, the Examiner determined "the steps of refining a
model by generating a new model is a mathematical step." Answer 9. We
also note, as discussed above, that the Examiner determined regarding the
independent claims that such steps "may also be seen as a mental step." See,
e.g., id. at 4-5. The Examiner also determined:
receiving information is a well-known, conventional, and routine
data gathering step. Thus, the instant claim is drawn to a judicial
exception without significantly more. Furthermore, as an
ordered combination with the parent claim, the instant claim is
still well-known, conventional and routine, because gathering
data, performing an algorithm, and outputting the results of an
algorithm is well-known, conventional, and routine. Thus, the
instant claim is not patent eligible.
Id. at 9. We discern no error in the Examiner's determinations.
Under the Mayo/Alice Step 1, USPTO Prong 1 analysis, dependent
claim 9 does not add any further limitation to the subject matter of
independent claims 1 that is not also directed to the abstract idea, discussed
above. This dependent claim recites receiving more, similar data and
performing the method of independent claim 1 again or refining the result.
33
Appeal 2018-002995
Application 14/049 ,297
Under the broadest reasonable interpretation, these limitations recite data
selection for models (and, potentially, more math). Such a recitation of data
does not alter the fact that the claims recite a mental process and
mathematical formula.
Under the Mayo/Alice Step 1, USPTO Prong 2 analysis, these claims
do not integrate the abstract idea into a practical application. Looking to
what else the claims require other than the limitations directed to an abstract
idea what we find are limitations relating to analysis steps of receiving data
and refining or re-doing the data analysis. Mere data gathering, such as
obtaining certain information or basing a calculation on certain information,
is insignificant extra-solution activity, not a practical application. See, e.g.,
MPEP 2106.05(g); CyberSource, 654 F.3d at 1375; Mayo, 566 U.S. at 79.
Tying a claimed abstract idea to a specific technical field or certain data
gathering, without more, as we see in Appellants' claims here, is not a
practical implementation of the abstract idea. See, e.g., Parker, 437 U.S. at
588-90; CyberSource, 654 F.3d at 1370 (citing In re Grams, 888 F.2d at
840; In re Meyer, 688 F.2d at 794); see also MPEP § 2106.05(h).
Under the Mayo/Alice Step 2, we analyze these claims to identify
whether an additional element or combination of elements are recited that
are more than well-understood, routine, and conventional activity in the
field, and indicative of an inventive concept. In agreement with the
Examiner's determinations, we conclude there are no such additional
elements or combinations of elements recited. Considering the limitations
directed to receiving more data and refining or generating models, this
amounts to "gathering data, performing an algorithm, and outputting the
34
Appeal 2018-002995
Application 14/049 ,297
results of an algorithm [and] is well-known, conventional, and routine," as
determined by the Examiner. See, e.g., Answer 9.
Appellants present identical arguments for claim 9 as presented for the
other dependent claims, as discussed above. See Appeal Br. 19-20. These
arguments are also unpersuasive regarding the rejection of claims 9. For the
above reasons, we are unpersuaded that the Examiner erred in determining
claim 9 to be patent-ineligible.
SUMMARY
The rejection of the claims as directed to patent-ineligible subject
matter is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
35