International Business Machines Corporation

Patent Trials and Appeals Board

Jul 2, 2020

2020001922 (P.T.A.B. Jul. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/524,536 10/27/2014 Corville O. Allen AUS920140356US1 6877
65362 7590 07/02/2020
TERRILE, CANNATTI & CHAMBERS, LLP
IBM Austin
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
WINSTON III, EDWARD B
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
USPTO@dockettrak.com
tmunoz@tcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CORVILLE O. ALLEN, JOHANNA M. COOK, and
ANDREW R. FREED
____________________

Appeal 2020-001922
Application 14/524,536
Technology Center 3600
____________________

Before ROBERT E. NAPPI, CATHERINE SHIANG, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 9–20. Appellant has canceled claims 1–8. See Appeal Br. 9. We
have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
International Business Machines Corporation as the real party in interest.
Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
“conditionally overriding strict criteria for a prospective medical treatment.”
Spec. ¶¶ 1, 6. According to the Specification, a strict criterion relates to an
explicit treatment rule or principle. Spec. ¶ 39. In a disclosed embodiment,
“a determination is made during evaluation of a patient’s medical condition
whether their condition should be treated as a strict evaluation or as a
conditional evaluation.” Spec. ¶ 40. A strict evaluation evaluates the
patient’s medical condition according to strict criteria, whereas a conditional
evaluation evaluates the patient’s medical condition by overriding certain
strict criteria with conditional criteria. Spec. ¶ 40. As an example, the
Specification describes a strict criterion may be a patient’s age (e.g., less
than 60 years old). Spec. ¶¶ 39, 45. However, if it is determined that the
patient meets other criteria (e.g., is active and can perform some light
exercise), the strict criterion of being less than 60 years old may be
overridden and a treatment regimen that would otherwise have been
restricted to the patient is conditionally available. Spec. ¶¶ 45–47.
Claim 9 is representative of the subject matter on appeal and is
reproduced below:
9. A system comprising:
a processor;
a data bus coupled to the processor; and
a computer-usable medium embodying computer program
code, the computer-usable medium being coupled to the data bus,
the computer program code used for answering questions based
upon conditional criteria via a question/answer (QA) system
executing on a hardware processor, the QA system having an
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associated criteria conditional override system and comprising
instructions executable by the processor and configured for:
performing an evaluation of a medical condition of
a person, the evaluation comprising accessing patient
medical record data, the patient medical record data being
stored within a patient medical record data repository;
receiving an input corpus to the QA system via a
network, the input corpus comprising a question having an
associated first condition, the input corpus being stored
within a medical corpus data repository, the QA system
comprising a knowledge manager and a knowledge base,
the QA system using natural language processing to
analyze the input corpus and extract question topic
information contained in the question, the question being
related to the medical condition associated with the
person;
determining whether the medical condition should
be evaluated using one of a strict evaluation and a
conditional evaluation, the strict evaluation and the
conditional evaluation being obtained from associated
strict and conditional treatment data, the strict and
conditional treatment data being stored within a strict and
conditional treatment data repository, the strict treatment
data being used to retrieve associated strict criteria, the
strict evaluation evaluating the medical condition of the
person according to the strict criteria, the conditional
evaluation evaluating the medical condition of the person
according to associated conditions that result in the strict
criteria being overridden by conditional criteria
corresponding to the associated conditions, the strict
criteria being overridden based upon supporting evidence
not found within the strict criteria;
receiving criteria for answering the question, the
criteria being associated with the associated first condition
and received by the QA system configured to answer
questions;
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identifying a second condition affecting the first
condition via the criteria conditional override system; and
answering the question with a modification of the
first condition via the criteria conditional override system,
the answering performed in response to determining that
the second condition exceeds a threshold.

The Examiner’s Rejection2
Claims 9–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.

ANALYSIS3
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office has published revised guidance
for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically
with respect to applying the Alice framework. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office
Guidance”). If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially

2 The Examiner had also rejected claims 9–20 under 35 U.S.C. § 103. Final
Act. 5–13. The Examiner subsequently withdrew this rejection. See Ans. 3.
3 Throughout this Decision, we have considered the (corrected) Appeal
Brief, filed August 8, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed
November 7, 2019 (“Ans.”); and the Final Office Action, mailed April 4,
2019 (“Final Act.”), from which this Appeal is taken. Appellant did not file
a Reply Brief. To the extent Appellant has not advanced separate,
substantive arguments for particular claims or issues, such arguments are
considered waived. See 37 C.F.R. § 41.37(c)(1)(iv).
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recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look
at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed.
Cir. 2016). Per the Office Guidance, this first inquiry has two prongs of
analysis: (i) does the claim recite a judicial exception (e.g., an abstract idea),
and (ii) if so, is the judicial exception integrated into a practical application.
Office Guidance, 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim passes muster under § 101. Office Guidance, 84 Fed. Reg. at 54–55.
If the claim is directed to a judicial exception (i.e., recites a judicial
exception and does not integrate the exception into a practical application),
the next step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
573 U.S. at 217; Office Guidance, 84 Fed. Reg. at 56.
As an initial matter, we note that the Examiner has applied and
followed the Office Guidance in formulating the rejection of claims 9–20
under 35 U.S.C. § 101. See Final Act. 2–4; Ans. 4–7. The Examiner
determines the claims are directed to “receiving questions/answers
associated with a medical condition in order to produce results for a
prospective treatment.” Ans. 4. In particular, the Examiner determines the
claims recite, inter alia, accessing patient data, receiving data, and
evaluating/identifying data. Final Act. 3; see also Ans. 4–5. The Examiner
determines these steps could be performed in the mind or with pen and
paper, but for the additional recitation of generic computer components.
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Final Act. 3. As such, consistent with the Office Guidance, the Examiner
concludes the claims fall within the category of mental processes. Final
Act. 3; Ans. 5. The Examiner further determines the additional limitations
fail to integrate the judicial exception into a practical application, but rather
amount to instructions to apply the judicial exception using a generic
computing component. Final Act. 4; Ans. 5–6. The Examiner explains the
claims do not improve the functioning of a computer or any other
technology, but link the judicial exception to a particular technological
environment of field of use. Ans. 6. As such, the Examiner concludes the
claims are directed to an abstract idea. Final Act. 4. Further, the Examiner
determines the claims to not recite additional limitations, individually, or
when considered as an ordered combination, that amount to significantly
more than the judicial exception. Final Act. 4. Instead, the Examiner finds
the claims merely recite generic computer components performing generic
computing functions to apply the judicial exception. Final Act. 4; Ans. 5–6.
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 4. In particular,
Appellant asserts “the claims do not per se recite mathematical concepts,
methods of organizing human activity or mental processes.” Appeal Br. 4.
In addition, Appellant argues the claims are directed to “the practical
application of answering questions based upon conditional criteria via a
question/answer system executing on a hardware processor.” Appeal Br. 4.
Appellant’s conclusory statements do not apprise us of Examiner
error. Rather, we adopt the Examiner’s findings and legal conclusions.
As a point of emphasis, if a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
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generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (holding that the incidental use of a “computer” or “computer
readable medium” does not make a claim otherwise directed to a process
that “can be performed in the human mind, or by a human using a pen and
paper” patent eligible); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71 (2012) (explaining mental processes are not
patentable); Office Guidance, 84 Fed. Reg. at 52–53 nn.14–15.
Contrary to Appellant’s conclusory assertion, we agree with the
Examiner that the claims covers performance in the mind (e.g., evaluating
the medical condition of a person) but for the recitation of generic computer
components—i.e., a mental process (i.e., an observation, evaluation,
judgment, or opinion). See Final Act. 3; Ans. 4–5; see also Office
Guidance, 84 Fed. Reg. at 52. As set forth in Appellant’s Specification, the
evaluation of strict criteria to determine whether it can be overridden is
“akin to how medical practitioners and technicians evaluate criteria.” Spec.
¶ 53.
In addition, we note that the instant claims are similar to those at issue
in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950
(Fed. Cir. 2014) (unpublished). In SmartGene, the court determined the
claims define a “method for guiding the selection of a therapeutic treatment
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regimen for a patient with a known disease or medical condition.”
SmartGene, 555 F. App’x at 954 (internal quotation omitted). The court
further explained that, but for the use of a computing device, comparing
stored and input data and rules are what doctors do routinely. SmartGene,
555 F. App’x at 954. The court concluded the mental steps of comparing
new and stored information and using rules to identify medical options fell
within the category of mental processes excluded by § 101. SmartGene, 555
F. App’x at 955.
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. Office Guidance, 84 Fed. Reg. at 54. To determine whether the
judicial exception is integrated into a practical application, we identify
whether there are “any additional elements recited in the claim beyond the
judicial exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
Office Guidance, 84 Fed. Reg. at 54–55 (emphasis added); see also MPEP
§ 2106.05(a)–(c), (e)–(h).
Again, contrary to Appellant’s conclusory statement (see Appeal
Br. 4), we agree with the Examiner’s determination (see, e.g., Final Act. 3–
4; Ans. 6) that the additional elements fail to integrate the judicial exception
into a practical application. More particularly, the claims do not recite (i) an
improvement to the functionality of a computer or other technology or
technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply
or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular
transformation of an article to a different thing or state (see MPEP
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§ 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See Office Guidance, 84 Fed. Reg. at 55.
Answering questions based upon conditional criteria via a
question/answer system executing on a hardware processor (as asserted by
Appellant, see Appeal Br. 4) is merely applying the judicial exception using
a generic computing component. See Mayo, 566 U.S. at 72 (explaining that
“to transform an unpatentable [judicial exception] into a patent-eligible
application of [the judicial exception], one must do more than simply state
the [judicial exception] while adding the words ‘apply it’”); see also Alice,
573 U.S. at 221.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 77–
79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. Office Guidance, 84 Fed. Reg. at 56. Thus, at this point of our
analysis, we determine if the claims add a specific limitation, or combination
of limitations, that is not well-understood, routine, conventional activity in
the field, or simply append well-understood, routine, conventional activities
at a high level of generality. Office Guidance, 84 Fed. Reg. at 56.
Here, Appellant’s claims do not recite specific limitations (alone or
when considered as an ordered combination) that are not well-understood,
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routine, and conventional. Rather, the Specification describes the computer
(i.e., information processing) system at a high level of generality. See Spec.
¶¶ 33–38. In addition, the Specification describes that devices that use the
QA (question/answer) system may be such well-known devices as personal
digital assistants, personal entertainment devices, tablets, and laptop
computers. Spec. ¶ 32. See also Mortg. Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer
components, such as an “interface,” “network,” and “database,” fail to
satisfy the inventive concept requirement); Alice, 573 U.S. at 226 (“Nearly
every computer will include a ‘communications controller’ and [a] ‘data
storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 9–20
under 35 U.S.C. § 101. See also 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 9–20 under
35 U.S.C. § 101.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9–20 101 Eligibility 9–20

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. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED