International Business Machines Corporation

Patent Trials and Appeals Board

Jul 22, 2021

2020001738 (P.T.A.B. Jul. 22, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/045,539 02/17/2016 Jonathan M. Harmon SVL920150153US1 1053
45725 7590 07/22/2021
Walder Intellectual Property Law PC
445 Crestover Circle
Richardson, TX 75080
EXAMINER
PATEL, JAY M
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
07/22/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN M. HARMON, ATUL KUMAR,
RUSSELL G. OLSEN, and MATT T. WESTFALL1
____________

Appeal 2020-001738
Application 15/045,539
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, JOHN G. NEW, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies International Business Machines
Corporation as the real party-in-interest. App. Br. 2.

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 2, 4–12, and 14–22 as unpatentable
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to methods identifying
potential medical codes applicable to a patient based on a patient registry
record. Abstr.

REPRESENTATIVE CLAIM
Independent claim 1 is representative of the claims on appeal and
recites:
1. A method, in a data processing system comprising at least
one processor and at least one memory, wherein the at least one
memory comprises instructions executed by the at least one
processor to configure that at least one processor to implement a
medical coding engine that identifies potential medical codes
applicable to a patient based on a patient registry record,
comprising:

analyzing, by patient electronic medical record/lifestyle
information analysis engine logic of the medical coding engine
of the data processing system, a patient registry record in a
patient registry to identify current and historical medical
information about a corresponding patient;

evaluating, by the coding rules engine logic of the medical
coding engine of the data processing system, the current and
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historical medical information to identify at least one medical
code for which the patient may qualify but is not currently
associated with the patient and does not represent a same medical
concept as another medical code already associated with the
patient, at least by applying a plurality of medical coding rules
data structures from a medical coding rules database to patient
characteristics extracted from the current and historical medical
information about the corresponding patient to identify one or
more patterns of patient characteristics in the current and
historical medical information indicative of the at least one
medical code being applicable to the corresponding patient;

calculating, by the coding rules engine logic of the medical
coding engine of the data processing system, a probability value
for the at least one medical code based on the application of the
plurality of medical coding rules data structures to the patient
characteristics extracted from the current and historical medical
information about the corresponding patient, wherein the
probability value indicates a probability that the at least one
medical code applies to the patient;

comparing, by the coding rules engine logic of the medical
coding engine of the data processing system, the probability
value to at least one threshold value; and

outputting, by a coding alert/notification engine of the
medical coding engine of the data processing system, an alert
notification indicating the at least one medical code being
applicable to the patient in response to the probability value
having a predetermined relationship with the at least one
threshold value.

App. Br. 35–36.

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ISSUES AND ANALYSIS
We agree with, and adopt, the Examiner’s findings, reasoning, and
conclusion that the claims are directed to nonstatutory subject matter. We
address below the arguments raised by Appellant.

A. Independent claims 1, 11, and 20

Issue
Appellant argues that the Examiner erred by failing to: (1) determine
whether the claim recites a judicial exception by referring to the subject
matter groupings of abstract ideas in Section I of the USPTO’s 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (January 7,
2019) (the “2019 Guidance”), and then (2) evaluate whether the claim
recites additional elements that integrate the exception into a practical
application of that exception. App. Br. 8.

Analysis
The Examiner finds that the claims recite “analyzing … a patient
registry record … evaluating … the current and historical medical
information … calculating ... a probability value for the at least one medical
code … comparing … the probability value to at least one threshold value;
and outputting … an alert notification indicating the at least one medical
code being applicable to the patient.” Final Act. 2. The Examiner finds that
these actions recited in the claim are properly grouped within the “certain
methods of organizing human activity” class of abstract ideas, because, in
this case, the claims involve a series of steps for sending an alert based on
analysis of patient health records. Id. The Examiner finds that the claims
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aim to process patient health records to determine which medical codes
would be most applicable, and send an alert indicating the applicable
medical code. Id. Accordingly, the Examiner reasons, the claims recite an
abstract idea. Id.
The Examiner further finds that the judicial exception recited by the
claims is not integrated into a practical application. Final Act. 3. The
Examiner notes that integration into a practical application requires 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. Id. In this case, the
Examiner finds, the additional elements of the claims include a processor, a
memory, and a computer readable storage medium. Id. As such, the
Examiner finds, the claims simply use computer elements as tools to
perform abstract ideas, and generally link the use of a judicial exception to a
particular technological environment. Id. The Examiner reasons that such a
use of computer elements as tools to implement the abstract idea, and,
generally, to link the use of the abstract idea to a particular technological
environment does not render the claim patent eligible, because it requires no
more than a computer performing functions that correspond to acts required
to carry out the abstract idea. Id.
Specifically, the Examiner finds, Appellant’s Specification explains
the processor functions to perform the listed operations, such as analyzing,
evaluating, calculating, comparing, and outputting data (¶¶ 7, 35, 40); the
memory and computer readable storage medium function to store instruction
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and software to cause the processor to perform the claimed operations. Final
Act. 3 (citing Spec. ¶¶ 7, 35–37, 51).
The Examiner further finds that elements do not show an
improvement to the functioning of a computer or to any other technology,
rather, the computer elements are generally stated as to their structure and
function and are only used to process patient health records to figure out
which medical codes would be most applicable, and send an alert indicating
the applicable medical code. Final Act. 3. Therefore, the Examiner reasons,
the claims elements do not impose any meaningful limits on practicing the
abstract idea and the additional elements are not indicative of materializing
into a practical application. Id.
Furthermore, the Examiner finds, the claims do not include additional
limitations that are sufficient to amount to significantly more than the
judicial exception, because the use of a computer or processor to merely
automate or implement the abstract idea cannot provide significantly more
than the abstract idea itself. Final Act. 5.
Appellant disputes the Examiner’s finding that the claims are directed
to “certain methods of organizing human activity.” App. Br. 6. According
to Appellant, the statements by the Examiner characterizing the claimed
invention are conclusory, and built upon an oversimplification and
generalization of the claimed invention rather than an evaluation of each of
the specific operations in the claim. Id. Appellant argues that the Final
Office Action does not set forth an actual analysis or evaluation of what is
actually being recited in the claims. Id.
Specifically, Appellant contends that the Examiner’s reason for
finding that the claims recite “certain methods of organizing human activity”
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is because the claims allegedly “involve a series of steps for sending an alert
based on analysis of patient health records” and that “the claims aim to
process patient health records to figure out which medical codes would be
most applicable, and send an alert indicating the applicable medical code.”
App. Br. 7 (quoting Final Act. 2). However, Appellant argues, nowhere in
the Final Office Action is there any explanation of how processing patient
health records to determine which medical codes would be most applicable
and then sending an alert indicating an applicable medical code is one of the
“certain methods of organizing human activity” set forth in the 2019
Guidance.
Rather, argues Appellant, the Examiner’s finding is conclusory in that
the rejection copies selected words from the claims, then concludes that the
claims are directed to the judicial exception of “certain methods of
organizing human activity,” followed by what Appellant characterizes as an
“oversimplification and generalization of the claim[s],” and a reiteration of
the conclusion as an abstract idea. App. Br. 7. Appellant asserts that the
Examiner fails to explain how this conclusion is actually reached by
evaluating the specific operations recited in the claim. Id. The
Furthermore, contends Appellant, the Examiner did not identify what
“methods of organizing human activity” are recited in the present claims.
App. Br. 7. Appellant asserts that the Examiner’s findings do not identify
any human activity that is allegedly being organized by the claimed
invention. Id. Specifically, Appellant contends that the Examiner failed to
explain how the “series of steps for sending an alert based on analysis of
patient health records” or processing “patient health records to figure out
which medical codes would be most applicable, and send an alert indicating
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the applicable medical code,” as recited in the claims, is organizing any
human activity. Id.
Appellant further points out that the 2019 Guidance defines one class
of abstract ideas as certain methods of organizing human activity. App. Br.
8. Appellant notes that the 2019 Guidance then clarifies what those certain
methods are, viz.: (1) fundamental economic principles or practices; (2)
commercial or legal interactions; and (3) managing personal behavior or
relationships or interactions between people. Id. (see 2019 Guidance, 84
Fed. Reg. at 52). Appellant contends that the Examiner’s findings fail to
demonstrate how the claimed invention is in any way similar to a
fundamental economic principle or practice, a commercial or legal
interaction, or managing personal behavior or relationships or interactions
between people. App. Br. 8–9.
To the contrary, Appellant argues, the problem addressed by the
claimed invention is the problem of automated computer processing of
patient information with regard to computer-based medical coding of patient
information and computer based reporting of patient information,
specifically with regard to medical coding schemes for compensation of
medical personnel and proper treatment of patients. App. Br. 9 (citing Spec.
¶¶ 2–3, 19–20). Appellant specifies that the claimed invention is
specifically directed to solving issues with the limitations of human beings
using such computing systems, i.e., missing medical codes that should apply
to a patient, by providing an improved computer tool that eliminates, or at
least minimizes, the effects of such human limitations and tendency towards
error. Id. at 10.
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Appellant argues further that the claimed invention is an improved
computer tool that operates to eliminate or reduce the potential for human
error in medical coding of medical conditions and treatments of patients is
evident from the claimed features specifically recited in the independent
claims. App. Br. 10. Appellant points to claim 1, by way of example, which
recites that patient electronic medical record/lifestyle information analysis
engine logic of a medical coding engine analyzing the patient registry record
in a patient registry to identify current and historical medical information
about a corresponding patient and coding rules engine logic of the medical
coding engine. Id. at 10–11. Appellant asserts that the claim further recites
evaluating the current and historical medical information to identify at least
one medical code for which the patient may qualify, but which is not
currently associated with the patient. Id. at 11. Appellant asserts that this is
accomplished by applying a plurality of medical coding rules data structures,
from a medical coding rules database, to patient characteristics extracted
from the current and historical medical information of the patient. Id. This
information is used to identify one or more patterns of patient characteristics
in the current and historical medical information indicative of the medical
code(s) being applicable to the corresponding patient. Id.
Appellant asserts that claim 1 further recites that the coding rules
engine logic of the medical coding engine calculate a probability value for at
least one medical code based on the application of the plurality of medical
coding rules to the patient characteristics extracted from the current and
historical medical information about the corresponding patient. App. Br. 11.
According to Appellant, the probability value indicates a probability that the
medical code(s) applies to the patient, and compares the probability value to
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at least one threshold value and a coding alert/notification engine of the
medical coding engine outputs an alert notification indicating the medical
code(s) being applicable to the patient. Id.
Appellant contends that these operations are performed only by a
specifically-configured data processing system and are operations that only a
computer would need to perform, i.e., a human mind would not go through
this specific ordered combination of operations, in order to determine
whether a medical code applies to a patient based on their current and
historical information. App. Br. 11. Appellant asserts that a human being
would not perform the evaluating, calculating, and comparing operations as
recited in the present independent claims. Id. Appellant contends that the
claimed invention improves the operation of computer-based medical coding
of patient information, and improves the way in which medical practitioners
are compensated and patient medical conditions and treatments are
communicated via medical computing systems. Id.
Appellant emphasizes that the claimed invention is not directed to the
abstract idea of identifying potential medical codes applicable to a patient,
but rather to specific computing mechanisms and a specific ordered
combination of operations that are only performed in a specifically
configured data processing system according to the claimed method, and not
performed in the human mind. App. Br. 11–12. Appellant argues that this
claimed method is not a fundamental economic principle or practice, or a
commercial or legal transaction. Id. at 12. Appellant contends that the
Examiner apparently finds that the claimed invention falls within “certain
methods of organizing human activity” because the claimed invention
involves medical coding “rules” data structures and the parenthetical for
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“managing personal behavior, or relationships, or interactions between
people” includes the phrase “following rules or instructions.” Id. at 13.
However, Appellant argues, this latter phrase refers to a claimed method
actually managing a person’s following of rules or instructions. Id.
Appellant asserts that the claimed invention does not recite a process for
causing a human being to follow rules or instructions, but rather recites a
specific computing tool and specific ordered combination of operations for
improving the way in which a data processing system processes patient
information. Id. Specifically Appellant argues that the invention performs
these actions to identify where human beings have erred by failing to
associate with the patient the correct medical codes for the patient, i.e.,
solving the problems of human error and failing to identify medical coding
opportunities. Id.
Appellant argues that, rather than being directed to an abstract idea,
the claims set forth specific computing mechanisms and a specific ordered
combination of operations that are only performed in a specifically
configured data processing system according to the claimed invention, and
not performed in the human mind and does not attempt to organize any
human activity. App. Br. 14.
Appellant also contends that the claims are not directed to a
mathematical formula, or to a mental activity. App. Br. 15. With respect to
the latter, Appellant argues that the present claims cannot be performed
within the human mind, and that the human mind does not go through the
specific ordered combination of operations set forth in the present claims
when attempting to process patient information. Id. Such an ordered
combination of operations are performed by computing systems, because
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computing systems are only aware of what is explicitly made available to
them through data structures and computer instructions, and do not have
intuition or wisdom that they can rely on to perform decisions and thus, must
follow a defined ordered combination of operations. Id. According to
Appellant, although the results of such an ordered combination may
approximate the result generated by a human being, it is accomplished in a
completely different way specific that is to the data processing system. Id.
Appellant also argue that, even if the claims are directed to an abstract
idea, the claims are patentable because they are integrated into a practical
application of the judicial exception under Step 2A of the 2019 Guidance.
App. Br. 16. Appellant contends that the claims impose a meaningful limit
on the alleged judicial exception, because the claims recite that processing of
the patient information by the data processing system specifically identifies
medical codes that apply to a patient but which are not already applied to the
patient, and do not represent a same medical concept as another medical
code already associated with the patient. Id. Appellant asserts that this
improves the understanding of the patient’s medical condition by
compensating for potential human errors in failing to identify medical codes
that apply to the patient, as well as improves the representation of the
patient’s medical condition to downstream computing systems that may
operate based on this representation. Id.
Appellant also argues that the Specification discloses how the claimed
invention improves the functionality of computing systems and sets forth a
practical application of the claimed invention. App. Br. 16–17. According
to Appellant, the claimed invention provides a specific computer tool,
performing a specific ordered combination of computer operations, that
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solves the deficiencies of human beings and other computing devices in
determining the medical codes applicable to patients, thereby minimizing the
effects of such human limitations and tendencies towards error. Id. at 17.
Appellant therefore asserts that the tool provides an improvement to
computer functionality by providing a mechanism that is specifically
configured to perform new functionality for identifying missing medical
codes in patient information. Id. at 18–19. In this respect, Appellant
specifically points to the medical coding rules data structures that are
specific to identifying patterns of patient characteristics in the current and
historical medical information that are indicative of at least one medical
code applicable to the patient. Id. at 19. Appellant notes that the claims also
recite that the data processing system performs additional evaluation to
ensure that the medical code does not represent a medical concept already
covered by a medical code already associated with the patient. Id.
Finally, Appellant argues that the ordered combination of operations
recited by the claims is not an attempt to monopolize the judicial exception.
App. Br. 20. Appellant argues that the claims do not merely generically link
the alleged exception to a particular technological environment but instead
recite the technological environment as an integral part of the improved
computing tool. Id.
Turning to Step 2B of the 2019 Guidance, Appellant contends that the
claims are directed to an ordered combination of elements that sets forth a
technology-based solution to a computer-based problem, namely computer-
based processing of patient information and the failure to have all applicable
medical codes present in the patient information. App. Br. 22. Appellant
asserts that the claimed invention solves this problem by providing a data
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processing system that is configured to implement patient electronic medical
record/lifestyle information analysis engine logic of a medical coding
engine, a coding rules engine logic of the medical coding engine, and a
coding alert/notification engine of the medical coding engine, which are
specifically configured to perform the ordered combination of operations set
forth in the claims. Id.
Finally, Appellant contends that, with respect to the claim elements
that are additional to the alleged abstract idea, the Examiner has not
established that the additional elements are well-understood, routine, or
conventional, as required by our reviewing court in Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018). App. Br. 22. Appellant asserts that the
Examiner alleges only that a processor, a memory, and a computer readable
storage medium are well-understood, routine, or conventional, and does not
address the specific additional elements, or the ordered combination of these
elements as recited in the claims as discussed above. Id.
We do not find Appellant’s arguments persuasive. In performing an
analysis of patentability under Section 101, we follow the framework set
forth by the Supreme Court in the Mayo/Alice cases. We are also mindful
of, and guided by, the 2019 Guidance.
Appellant’s claim 1 recites: “A method, in a data processing system
comprising….” Following the first step of the Mayo analysis, we find that
the claims are directed to a process, or method, and therefore fall into one of
the broad statutory categories of patent-eligible subject matter under
35 U.S.C. § 101.
In the next step of the Mayo analysis, we determine whether the
claims at issue are directed to a nonstatutory, patent-ineligible concept, i.e., a
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law of nature, a phenomenon of nature, or an abstract idea. Mayo, 566 U.S.
at 70–71. If the claims are so directed, we next consider the elements of
each claim both individually and “as an ordered combination” to determine
whether additional elements “transform the nature of the claim” into a
patent-eligible application. Id. at 78–79; see also Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). Specifically, the
Supreme Court considered this second step as determining whether the
claims recite 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.” Mayo, 566 U.S. at 72–73.
More specifically, in this second step of the Mayo analysis, we look to
whether the claim recites one of the judicially-created exceptions to Section
101, i.e., an abstract idea, a law of nature, or a natural phenomenon. See
2019 Guidance, 84 Fed. Reg. at 54 (Step 2A, Prong 1). If we determine that
the claim recites a judicial exception, we then inquire as to whether the
limitations of the claim reciting the judicial exception are integrated into a
practical application. Id. (Step 2A, Prong 2).
Finally, if we determine that the claim is directed to a judicially-
created exception to Section 101, we evaluate the claim under the next step
of the Mayo analysis, considering the elements of each claim both
individually and “as an ordered combination” to determine whether
additional elements “transform the nature of the claim” into a patent-eligible
application. Mayo, 566 U.S. at 78–79; 2019 Guidance, 84 Fed. Reg. at 56
(Step 2B).
Claim 1 is directed to: “A method, in a data processing system…
wherein the at least one memory comprises instructions executed by the at
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least one processor to configure that at least one processor to implement a
medical coding engine that identifies potential medical codes applicable to a
patient based on a patient registry record” and recites the following steps:
(1) analyzing (by the analysis engine logic) a patient registry record in a
patient registry to identify current and historical medical information; (2)
evaluating, by applying a plurality of coding rules from a database, the
current and historical medical information to identify at least one medical
code for which the patient may qualify but is not currently associated; (3)
calculating a probability value for at least one medical code based on the
application of coding rules data structures to the patient characteristics,
wherein the probability value indicates a probability that the at least one
medical code applies to the patient; (4) comparing the probability value to at
least one threshold value; and (5) outputting an alert notification indicating
that at least one medical code is applicable to the patient based upon the
probability value having a predetermined relationship with at least one
threshold value.
Put more succinctly, the claims are directed to a computer- and
database-based method of assigning missing medical codes to a patient’s file
that are relevant to the patient’s medical history, but may not have been
preciously assigned, and updating the patient’s medical registry accordingly.
See, e.g., Spec. ¶ 1.
All of the steps (1)–(5) recite procedures that are essentially
computational in nature, in that they involve obtaining and analyzing
medical codes in patient records and applying a set of coding rules to
calculate a probability value to determine if additional coding is needed, and
appropriately updating the records. See Spec. ¶ 5. Furthermore, all of the
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steps recited in the claims may be performed on a general-purpose computer;
no specialized computer apparatus is disclosed. See Spec. ¶ 40:
These computer readable program instructions may be
provided to a processor of a general purpose computer, special
purpose computer, or other programmable data processing
apparatus to produce a machine, such that the instructions, which
execute via the processor of the computer or other programmable
data processing apparatus, create means for implementing the
functions/acts specified in the flowchart and/or block diagram
block or blocks. These computer readable program instructions
may also be stored in a computer readable storage medium that
can direct a computer, a programmable data processing
apparatus, and/or other devices to function in a particular
manner, such that the computer readable storage medium having
instructions stored therein comprises an article of manufacture
including instructions which implement aspects of the
function/act specified in the flowchart and/or block diagram
block or blocks.

We disagree with the Examiner’s finding that the claims recite a
method of organizing human activity. Rather, we find that, because the
steps recited in the claim require nothing more than the obtaining,
classifying, and manipulation of data (i.e., medical codes; determining the
probability of the appropriateness of entering a hitherto unentered code, etc.)
in a general purpose computer, which are steps that could be performed
mentally, that the claims is more properly directed to, or classified as, mental
processes or activity. Nevertheless, we agree with the Examiner that the
claims are directed to an abstract idea. That is, a person, armed with paper
and pencil, after having looked at a patient’s current and historical medical
recorded history, and evaluating that history, could determine a medical
code not yet recorded in the patient history may be applicable, and determine
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the probability of its applicability, could determine whether to enter that new
medical code into the patient’s medical history. Appellant argues that no
human mind could work in the manner set forth by the steps recited in the
claims, to which we reply “why not”? Appellant sets forth no evidence,
beyond mere attorney argument, as to why a person, armed with pencil and
paper, would be incapable of executing the ordered steps in the manner set
forth by the claims.
Admittedly, such a task might be laborious, inefficient, and, as
Appellant argues, subject to user error. But that is a singular reason why
computers have been invented; the performance of rapid, complex, and
errorless (absent input error) calculations. Nevertheless, any such abstract
idea, when coupled to a generic computer performing functions that are
within the regular repertoire of computer functions, is not patent eligible.
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed.
Cir. 2011) (citing Parker v. Flook, 437 U.S. 584, 586 (1978)); see also
CyberSource, 654 F.3d at 1372–73; see also Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (holding that “mere
automation of manual processes using generic computers does not constitute
a patentable improvement.”).
Appellant further argues that the claims are not directed to an abstract
idea, because the claims are directed to an improvement to computer
technology. See App. Br. 16–17, 18–19. We disagree. We can contrast the
facts of this appeal to those in, for instance, McRO, Inc. v. Bandai Namco
Games America. Inc., 837 F.3d 1299 (Fed. Cir. 2016). Our reviewing court,
in McRO, expressly looked to “whether the claims in these patents focus on
a specific means or method that improves the relevant technology [in that
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case, vocal synchronization of animated characters] or are instead directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” McRO, 837 F.3d at 1314. In the appeal before
us, the abstract idea of analyzing and entering new medical codes in a
patient’s medical history is “directed to a result or effect that itself is the
abstract idea and merely invoke[s] generic processes and machinery.” Id.
Furthermore, “[i]n cases involving software innovations, th[e] inquiry
often turns on whether the claims focus on the specific asserted
improvement in computer capabilities … or, instead, on a process that
qualifies as an abstract idea for which computers are invoked merely as a
tool.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir.
2018) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36
(Fed. Cir. 2016) (internal quotation marks omitted)). Appellant’s claims are
not directed to the improvement of a computer-based technology per se, as
in McRO or Enfish, but rather use a general-purpose computer as a tool for
analyzing medical codes and determining whether a new code could should
be entered appropriately in a patient’s history. As such, we conclude that the
claims are directed to a judicial exception to Section 101, i.e., an abstract
idea. (Step 2A, Prong 1). See also NetSoc, LLC v. Match Grp., LLC, 838
Fed. App’x 544, 549 (Fed. Cir. 2020) (holding that a program that measured
individual performance in a social network, and altered that individual’s
rating accordingly did not “represent[ ] a technological improvement that
would render the claims non-abstract”).
Having determined that the claims are directed to an abstract idea, we
next look to see whether the claims are integrated into a practical
application. 2019 Guidance, 84 Fed. Reg. at 54 (Step 2A, Prong 2). The
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Guidance provides additional context for this analysis, stating that: “A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Id. at 53.
In the present case, we find that the claims recite no additional steps
integrating the abstract idea into a practical application, but recite only the
abstract idea itself, as implemented on a general-purpose computer. The
claims recite no application, practical or otherwise, in which the abstract
idea is employed to some end. We therefore conclude that the claims recite
no element or elements that would constitute integration of the abstract idea
into a practical application. In other words, the entirety of the claim is the
computer-based execution of the abstract idea (i.e., the analysis of a patient’s
medical history and entry of appropriate new medical codes into that
medical history). As such, we find that the claims do not impose meaningful
limits upon the abstract idea recited in the claims.
For the same reason, we find that, considering the elements of each
claim both individually and “as an ordered combination” the claims recite no
additional elements or steps that would suffice to “transform the nature of
the claim” into a patent-eligible application. Mayo, 566 U.S. at 78–79; 2019
Guidance, 84 Fed. Reg. at 56 (Step 2B).
We agree with Appellant that the claims on appeal do not completely
preempt the abstract idea of determining whether to enter new appropriate
medical codes. However, whether such preemption occurs has never been
the determining step in the patent-eligibility analysis. “While preemption
may signal patent ineligible subject matter, the absence of complete
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preemption does not demonstrate patent eligibility.” Ariosa, 788 F.3d at
1379. What is determinative in this prong of the analysis, rather, is whether
the claims recite elements signaling that the claims recite more than the
abstract idea, and, as such, are integrated into a practical application. For the
reasons explained, we conclude that the claims on appeal do not meet this
criterion.
We therefore conclude that independent claims 1, 11, and 20 are
directed to nonstatutory subject matter, and we affirm the Examiner’s
rejection of the claims.

B. Claims 2 and 12
Claims 2 and 12 depend from claims 1 and 11, respectively. Claim 2
is representative and recites:
2. The method of claim 1, further comprising:

obtaining, by the medical coding engine, from a
scheduling computing system associated with the data
processing system, patient scheduling records indicating
scheduled appointments of patients with medical practitioners;
and

analyzing, by the medical coding engine of the data
processing system, the patient scheduling records to determine
whether the corresponding patient has a scheduled appointment
with a medical practitioner, wherein the operations of analyzing
the patient registry record, evaluating the current and historical
medical information, calculating the probability value,
comparing the probability value, and outputting the alert
notification are performed in response to a determination that the
corresponding patient has a scheduled appointment with the
medical practitioner, and wherein the outputting of the alert
notification comprises outputting, by an alert/notification
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module of the scheduling computing system, the alert
notification as part of a notification of the scheduled appointment
to communication system associated with at least one of the
medical practitioner or the patient.

App. Br. 36.
Appellant essentially repeats the arguments made with respect to the
claims in part A, supra. App. Br. 24–26. Furthermore, Appellant contends
that the steps recited in the claims are very specific computer operations that
are non-generic and non-well known and are not merely some generic
alleged abstract idea of “evaluating a patient registry and performing actions
based on results of the evaluation,” as found by the Examiner. Id. at 25.
Appellant acknowledges that there may be many different ways to determine
medical codes for patients that do not involve the specific ordered
combination of operations recited in the present claims and do not result in
the particular sending of a scheduled appointment notification that includes
the notification of the applicable medical code. Id. Therefore, argues
Appellant, the claims are not attempting to pre-empt or monopolize an
abstract idea, but are rather directed to a specific ordered combination of
computer operations that identifies applicable medical codes for a patient
and sends alert notifications of the applicable medical codes in a specific
way. Id.
We are not persuaded by Appellant’s argument. Incorporating our
reasoning from Section A supra, we find that the limitations of claims 2 and
12 similarly recite steps that could be performed as a mental process by a
person using a pencil and paper. As before, we conclude that these
limitations are consequently directed to an abstract idea, and that the claimed
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process qualifies as an abstract idea for which computers are invoked merely
as a tool. Finjan, 879 F.3d at 1303. We consequently affirm the Examiner’s
rejection of dependent claims 2 and 12.

C. Claims 4 and 14
Claims 4 and 14 depend from claims 1 and 11, respectively. Claim 4
is representative and recites:
4. The method of claim 1, wherein the method is performed
in response to an addition of a medical code to the patient registry
record, and wherein evaluating the current and historical medical
information comprises evaluating the historical medical
information with regard to relationships between the historical
medical information to the added medical code to identify other
potentially applicable medical codes which do not represent a
same concept as other medical codes already associated with the
patient.

App. Br. 37.
Appellant repeats the arguments presented in part A, supra,
contending that this is a process that only a computing tool of the claimed
invention would perform and this is not in any way organizing human
activity or a mental process. App. Br. 26. Rather, Appellant argues, the
limitations recited in the claims further define the trigger for performing the
method, which is a trigger that only occurs within a computing system in
which there are patient registry records stored in a patient registry to which a
medical code may be added. Id.
We disagree, for the reasons we explained in part A. In these claims,
the trigger for performing the method is “in response to an addition of a
medical code to the patient registry record.” As we have explained supra,
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we see no reason why this could not be a part of a process performed by a
person with paper and pencil, and Appellant adduces no evidence to support
the argument that a person could not perform the limitations recited in the
claims other than the unsupported assertion that this is so. We do not accord
such unsupported attorney argument any probative value. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997).
We incorporate our reasoning and analysis from part A supra in
concluding that limitations recited in the claims are directed to an abstract
idea, viz., a mental process, that is implemented on a generic computer. We
consequently affirm the Examiner’s rejection of claims 4 and 14.

D. Claims 5, 7, 15, and 17
These claims ultimately depend from claims 1 and 11, respectively.
Claim 5 is representative and recites:
5. The method of claim 1, wherein the alert notification
comprises one or more graphical user interface elements for
operation by a user to confirm or reject addition of the at least
one medical code to the patient registry record.

App. Br. 37. Claims 7 and 17 additionally recite a: “graphical user element
that is selectable by a user to roll-back the automatic addition of the at least
one medical code to the patient registry record, and wherein, in response to a
user selecting the graphical user element, the at least one medical code is
removed from the patient registry record.” App. Br. 37–38, 41.
Appellant repeats the arguments presented supra with respect to part
A. App. Br. 27. Furthermore, Appellant argues that the claims further recite
that the alert notification comprises one or more graphical user interface
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elements for operation by a user to confirm or reject addition of the at least
one medical code to the patient registry record. Id. Appellant contends that
this step cannot be performed in the abstract and is not a mental process or
certain method of organizing human activity. Id. To the contrary, this is
further defining the alert notification and thus, the outputting of the alert
notification, in such a manner as it can only be performed by a computer
process. Id.
In our analysis under part A, we inquire whether, considering the
elements of each claim both individually and “as an ordered combination”
the claims recite no additional elements or steps that would suffice to
“transform the nature of the claim” into a patent-eligible application. Mayo,
566 U.S. at 78–79; 2019 Guidance, 84 Fed. Reg. at 56 (Step 2B). Claims 5
and 15 recite the addition of “graphical user interface elements for operation
by a user to confirm or reject addition of the at least one medical code.” We
find that the addition of a graphical user interface that allows a user to
interact with the system is insufficient to transform the nature of the claim
into a patent-eligible application for the simple reason that graphic user
interfaces in generic computers are an undeniably commonplace element of
such computer processes and, as such, are well-understood, routine, and
conventional. Berkheimer, 881 F.3d at 1369. Appellant makes no argument
that such graphic user interfaces are not well-understood, routine, or
conventional.
Furthermore, claims 7 and 17 recite an element of the graphical user
interface that allow a user to “undo” the program’s entry of a new code.
Again, we find that such elements that permit a user to confirm or delete the
addition of a new element are also well-understood, routine, and
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conventional steps common to computer programs, and are insufficient to
transform the claimed abstract idea, executed on a generic computer, into a
patent-eligible application.
We therefore conclude that the elements of claims 5, 7, 15, and 17,
taken both individually and “as an ordered combination” recite no additional
elements or steps that would suffice to “transform the nature of the claim”
into a patent-eligible application. Mayo, 566 U.S. at 78–79; 2019 Guidance,
84 Fed. Reg. at 56 (Step 2B). We consequently affirm the Examiner’s
rejection of dependent claims 5, 7, 15, and 17.

E. Claims 6 and 16
Claims 6 and 16 depend from claims 1 and 11, respectively. Claim 6
is representative and recites:
6. The method of claim 1, further comprising:

determining, by the data processing system, whether or not
the predetermined relationship with the at least one threshold
value indicates a relatively high probability that the at least one
medical code is applicable to the corresponding patient; and

in response to determining that the predetermined
relationship with the at least one threshold value indicates a
relatively high probability that the at least one medical code is
applicable to the corresponding patient, automatically adding the
at least one medical code to the patient registry record.

App. Br. 37.
Appellant again argues that these claims recite an automated process
for modifying the patient registry record specifically in response to the
relationship between the probability value and the threshold indicating a
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high probability that the at least one medical code is applicable to the
corresponding patient. App. Br. 28. Appellant contends that this automated
process cannot be performed in the abstract outside the data processing
system and are specifically modifying the patient registry record upon which
further operations are performed based on the medical code(s) added to the
patient registry record. Id. Furthermore, argues Appellant, these claims are
directed to a specific computer process for automatically updating the
patient registry record with a medical code, not a generic process that can be
performed abstractly. Id. Furthermore, these claims are not claiming any
process of organizing human activity but rather a specific computer tool
process for improving the patient registry record and addressing problems
associated with missing medical codes in patient information of the patient
registry record. Id.
We are not persuaded by Appellant’s arguments. As we have
explained, we find that the process of reviewing, analyzing, and assigning
medical codes is a mental process that could be done by a person of ordinary
skill in the art with pencil and paper, performed upon a generic processor.
The same reason applies with respect to claims 6 and 16. We see no reason
why a skilled artisan could not “determin[e], … whether or not the
predetermined relationship with the at least one threshold value indicates a
relatively high probability that the at least one medical code is applicable to
the corresponding patient” and then add that code to the patient’s registry.
Appellant’s contention that this task could be performed only by a computer
is not persuasive; rather, and as we have explained, the claims merely recite
an abstract idea (a mental process) for which computers are invoked merely
as a tool. Finjan, 879 F.3d at 1303.
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Appellant adduces no evidence to support the contention that the
abstract idea could not be performed by a person armed with paper and
pencil. But only by a computer. For these reasons, and those we have
explained, we affirm the Examiner’s rejection of claims 6 and 16.

F. Claims 8–10, 18, and 19
Claims 8–10, 18, and 19 depend, directly or indirectly, from
independent claims 1 and 11. Claim 8 is representative and recites:
8. The method of claim 1, wherein calculating the probability
value for the at least one medical code based on the application
of the plurality of medical coding rules data structures to the
patient characteristics extracted from the current and historical
medical information about the corresponding patient comprises:

applying the plurality of medical coding rules data
structures to key characteristics in the patient registry record; and

evaluating whether pre-requisites, conditions, or criteria
specified in the plurality of medical coding rules data structures
are satisfied by the key characteristics in the patient registry
record.

App. Br. 38.
Appellant argues that these claims recite the application of the
medical coding rules data structures to the key characteristics in the patient
registry record and that the calculation of the probability value involves an
evaluation of whether pre-requisites, conditions, or criteria specified in these
medical coding rules data structures are satisfied by those key characteristics
in the patient registry record. App. Br. 30. Appellant repeats that a human
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mind does not go through this process when determining what medical codes
apply to a patient. Id.
Appellant also repeats the argument that the Examiner fails to explain
how anything in claims 8 and 18 is an abstract idea, let alone a method of
organizing human activity. App. Br. 31. Appellant argues that a specific
computer process for calculating a probability value is not abstract and is not
monopolizing an abstract idea and is not a method of organizing human
activity. Id. According to Appellant, the specific process for calculating the
probability value in claims 8 and 18 involves the operations of applying the
plurality of medical coding rules data structures to key characteristics in the
patient registry record, and evaluating whether pre-requisites, conditions, or
criteria specified in the plurality of medical coding rules data structures are
satisfied by the key characteristics in the patient registry record. Id.
Appellant asserts that this is more than merely further describing
“calculating the probability value” but is specifically reciting a process that
only a specific computing tool of the claimed invention would perform, not a
human being, and not to organize any human activity, contrary to the
allegations in the Final Office Action. Id.
We disagree. We have previously explained how the claims on appeal
are directed to an abstract idea, i.e., a mental process. See Section A, supra.
In claims 8–10, 18, and 19, the limitations recite calculating probabilities,
applying a predetermined set of rules, and “evaluating whether pre-
requisites, conditions, or criteria specified in the plurality of medical coding
rules data structures are satisfied by the key characteristics in the patient
registry record.” We find, once again, that the limitations of the claims are
directed to a mental process that could be performed by a person with pencil
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and paper, and that the claims only invoke the use of a computer as a tool for
performing the calculations. Finjan, 879 F.3d at 1303. We consequently
affirm the Examiner’s rejection of the claims.
G. Claim 21
Claim 21 depends indirectly from independent claim 1 and recites:
21. The method of claim 2, wherein outputting the alert
notification comprises adding, to a patient schedule record,
corresponding to the scheduled appointment, stored in the
scheduling computing system, an indicator of the at least one
medical code for output to the medical practitioner when
encountering the patient during the scheduled appointment.

App. Br. 44.
Appellant argues, again, that the claim recites an interaction between
the data processing system and the scheduling computing system by
specifically using the operations performed by the data processing system as
a basis for adding a medical code to a patient schedule record corresponding
to the scheduled appointment. App. Br. 31. Appellant argues that the claim
is directed to a specific computer operation for adding a medical code to a
patient schedule record for a scheduled appointment so that the medical
practitioner is made aware of the medical code when he/she encounters the
patient during the scheduled appointment. Id.
We are not persuaded. The adding of a medical code to a rescheduled
appointment record is a mental task that could be performed by a person
with pencil and paper. Contrary, this dependent claim cites no additional
elements to the abstract idea to which the independent claim from which it
depends is directed. We consequently affirm the Examiner’s rejection of
claim 21.
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H. Claim 22
Claim 22 depends from independent claim 1 and recites:
22. The method of claim 1, wherein calculating the probability
value comprises, for each medical coding rule data structure in
the plurality of medical coding rules data structures, applying
weighting values to patient characteristics in combinations of
patient characteristics specified in the medical condign rule data
structure, wherein the weight values are learned by the coding
rules engine logic through a machine learning operation.

App. Br. 44.
Appellant argues that the steps recited in claim 22 cannot be a mental
process, because it requires machine learning, and, specifically, machine
learning of weighted values to be applied to patient characteristics specified
in medical coding rule data structures. App. Br. 33. Furthermore, Appellant
contends, the recited steps are not organizing any human activity, rather they
represent a specific computing process for generating a probability value for
determining the probability that a medical code applies to a particular
patient. Id. Appellant contends that nothing in claim 22 is recited as being
performed abstractly, in the mind of a human being, or in any way used to
organize any human activity. Id.
We disagree. Appellant appears to misapprehend the Examiner’s
analysis of whether the limitations recite an abstract idea. The question is
not whether the claims themselves require a mental process by a human
being. Rather, the question is whether the claimed process is capable of
being performed by a person, perhaps equipped with pencil and paper. See
CyberSource, 654 F.3d at 1371:
Thus, in finding that the process in Benson was not patent-
eligible, the Supreme Court appeared to endorse the view that
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methods which can be performed mentally, or which are the
equivalent of human mental work, are unpatentable abstract
ideas—the “basic tools of scientific and technological work” that
are open to all.

(Citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972)) (emphasis added); see
also Flook, 437 U.S. at 586.
Because we find that the steps recited in claim 22 are capable of being
performed as a series of mental steps in the mind of a person, we find that
claim 22, like the remaining claims, is directed to an abstract idea without
being integrated into a practical application or reciting additional elements
sufficient to transform the abstract idea into a patentable invention. We
consequently affirm the Examiner’s rejection of the claims.

CONCLUSION
The rejection of claims 1, 2, 4–12, and 14–22 as unpatentable 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.

AFFIRMED

Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 2, 4–12, 14–
22
101 Eligibility 1, 2, 4–12,
14–22