Ivo Nelson et al.

Patent Trials and Appeals Board

Dec 16, 2020

2020000631 (P.T.A.B. Dec. 16, 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.
11/126,930 05/11/2005 Ivo Nelson END920050202US1 5384
30449 7590 12/16/2020
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
NETZLOFF, ERIC R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
12/16/2020 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IVO NELSON, DANA SELLERS, and JIM AUSTIN
____________

Appeal 2020-000631
Application 11/126,930
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BRUCE T. WIEDER, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
Ivo Nelson, Dana Sellers, and Jim Austin (collectively, “Appellant”2)
seeks review under 35 U.S.C. § 134 of a final rejection of claims 2, 3, 6, 7,
10, 11, 14, and 15, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed July 22, 2019) and Reply Brief (“Reply Br.,” filed November 4,
2019), and the Examiner’s Answer (“Ans.,” mailed September 5, 2019), and
Final Action (“Final Act.,” mailed January 2, 2019).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation (Appeal Br. 1).

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The Appellant invented a way of delivering consulting services and
information technology solutions in a healthcare environment. Spec. 2:9–
11.
An understanding of the invention can be derived from a reading of
exemplary claim 2, which is reproduced below (bracketed matter and some
paragraphing added).
2. A method for delivering consulting services and information
technology solutions in a healthcare environment, the method
comprising:
[0.1] optimizing a process control software application in said
healthcare environment for implementing processes configured
to optimize implementation of a new technology in said
healthcare environment by taking advantage of efficiencies and
improvements that said new technology offers;
and
[0.2] performing said processes via said process control
software application, wherein the performed processes optimize
implementation of the new technology in the healthcare
environment by taking advantage of efficiencies and
improvements that the new technology offers, said performing
said processes comprising:
[1] at an onset of a new technology project pertaining to the
new technology,
receiving a selection of a governance group,
said governance group making decisions before
implementing any new process in said healthcare
environment,
wherein said receiving said selection of a governance
group is subject to a limitation of
receiving, for said governance group, a selection of
doctors, healthcare administrators, nursing
department representatives, accounting department
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representatives, and high level personnel working
in the healthcare environment;
[2] after said receiving said selection of a governance group had
been completed,
developing a vision for using said information
technology solutions in said healthcare environment,
said vision comprising at least one new process,
wherein said developing said vision is subject to a
limitation of identifying organizational areas where
information technology is capable of delivering a greatest
business result;
[3] after said developing said vision had been completed,
developing an implementation plan,
said implementation plan consisting of a roadmap for
implementing said at least one new process developing
the implementation plan,
wherein said developing said implementation plan is
performed after a strategy selection decision point and
before a final strategy approval decision point;
[4] after said developing said implementation plan had been
completed,
developing a communication strategy,
said communication strategy consisting of a method for
conveying details about said at least one new process to
individuals within said healthcare environment,
wherein said developing said communication strategy is
performed after said final strategy approval decision
point and before a monitor strategy decision point;

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[5] after said developing said communication strategy had been
completed,
storing in a first database
requirements for each department in said
healthcare environment,
said first database further comprising said at least one
new process,
each process of said at least one new process being
provided by a vendor,
said storing requirements for each department in said first
database being performed by a computer of a computing
system;
[6] after said storing requirements for each department in said
first database had been completed,
selecting for each department in said healthcare
environment a new process from said at least one new
process
wherein said new process meets and/or exceeds said
requirements of said department;
[7] after said selecting for each department in said healthcare
environment said new process had been completed,
storing metric data in a second database,
said metric data relating to processes currently being
implemented by each department in said healthcare
environment,
said storing metric data in said second database being
performed by said computer,

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wherein said storing metric data in said second database
is subject to a limitation of storing, in said second
database,
patient wait time, cost for each procedure
implemented in said healthcare environment, the
total number of employees required to staff said
healthcare environment, case studies, benchmarks,
return on investment studies, research articles, and
best practices information;
[8] after said storing said metric data had been completed,
implementing in each department in said healthcare
environment said new process having been previously
selected,
said implementing
in each department in said healthcare environment
said new process being performed by said
computer,
said implementing said new process in each department
in said healthcare environment optimizes implementation
of said new technology in said healthcare environment by
taking advantage of said efficiencies and improvements
that said new technology offers;
and
[9] obtaining operational metrics,
including performance measurements and project related
measurable outcomes,
at different intervals
during and before completion of the new technology
project
to evaluate an effectiveness of the new technology
project.

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The Examiner relies upon the following prior art:
Name Reference Date
Swenson US 5,490,097 Feb. 6, 1996
Myrick US 2004/0143470 A1 July 22, 2004
Chao US 2006/0178915 A1 Aug. 10, 2006

Claims 2, 3, 6, 7, 10, 11, 14, and 15 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 2, 3, 6, 7, 10, 11, 14, and 15 stand rejected under 35 U.S.C.
§ 112(a) as lacking a supporting written description within the original
disclosure.
Claims 2, 3, 6, 7, 10, 11, 14, and 15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Myrick, Chao, and Swenson.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of written description matter turn primarily on whether
arrows in a flow chart connote before and after.
The issues of obviousness turn primarily on whether Myrick
describes optimizing processes and using new technology.

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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Myrick
01. Myrick is directed to modeling integrated business and
information technology frameworks and architecture in
support of a business. Myrick para. 1.
02. Myrick describes it being desirable to provide a
business with a foundation framework or structure that
allows the business architecture to drive the technology
architecture and also allow the technology architecture to
have a direct impact on the construction of the business
architecture through enablement or providing new and
creative ways of conducting business. Myrick para. 2.
03. Myrick determines an overall architecture for the
business that defines how the manageable entities relate to
each other. The overall enterprise architecture is represented
in a tower model with six fundamental components—
strategic plan, business architecture, information
architecture, application architecture, technology
infrastructure architecture, and enterprise information
technology management framework. Each fundamental
component or plane in the tower model may include sub-
planes to further define the architecture of the business
enterprise. A common language is implemented in order to
articulate the overall architecture. Myrick para. 4.
04. Strategic planning provides the context and guidance
that drives the definition of business functions, processes,
systems, and organization. It is the process of defining the
vision, mission, and long term objectives for a business and
the strategies for achieving them. The strategic planning
process determines the actions and the allocation of the
resources to meet those objectives. Strategic Business
Planning is the process of defining the mission and long-
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term objectives for the business and the strategies for
achieving them. Strategic IT Planning is the process of
defining frameworks and architectures in support of the
business, and creating the plan for implementing those
frameworks and architectures. Myrick para. 58.
05. In today’s dynamic business environment, it is critical
to make accurate and timely decisions about what
technology to invest in, when change should occur, and what
value the business will receive by implementing a new
technology paradigm. Myrick para. 59.
06. Myrick describes how a planning continuum flows
from management consulting through IT planning to
delivery. In the management consulting phase, business
planning and transformation is performed in response to
business context industry and common business models and
business strategies such as a business transformation plan,
business plan and architecture, and other business strategies.
Information developed during the management consulting
phase is used to drive enterprise IS/IT development in the IT
planning phase. Enterprise IS/IT strategy development
reacts to inputs from IS architecture industry and common
models in order to drive enterprise IS/IT strategies. From
strategy development and strategies themselves, an
enterprise IS/IT architecture definition is determined based
on IT architecture reference models. Myrick para. 61.
07. Strategic IT planning is the process of modeling and
defining frameworks and architectures in support of the
business and creating the plan(s) for implementing those
frameworks and architectures. Strategic IT planning is
defining, not designing. A strategic IT plan does not design
systems, databases, or networks. The design and
implementation work is initiated after the definition process
has been completed. In order to convert the initiatives from
an enterprise strategic business plan into manageable and
implementable results, three things must occur. First,
complexity is decomposed into manageable units. Second,
architectures and frameworks are built that can be used to
model the business and the enabling IT. Third, a common
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language is decided upon and used to articulate the
frameworks and architectures. Myrick para. 63.
08. Having fulfilled these needs and using the models
developed of the enterprise, understanding and
implementation of the initiatives can begin. In addition to
providing boundaries, enterprise models represent the
common repository of data, information, and knowledge
about the enterprise. The graphical representations precisely
describe the enterprise in clear and understandable terms.
The scope of the models is four dimensional considering
functional activities within a department, cross-functional
activities within the company, customer and supplier
activities, and finally, competitor activities such as “time to
market.” This holistic view and understanding enables IT
alignment with the enterprise and its objectives and goals.
Myrick para. 67.
09. IT architectures and frameworks and a transition plan
to the future state are developed from the current state of the
enterprise models analysis. The models also allow
decomposition of the enterprise to optimize effectiveness,
efficiency, and adaptability in design. It is from this
decomposition that effectiveness, efficiency, and
adaptability are designed and optimized by the enterprise.
Myrick para. 68.
10. In giving definition and structure to the enterprise it is
a basic tenet that no complex “system” can be optimum to
all parties concerned and have all functions optimized.
Consequently, architecting, or the development of an
architecture or framework to control and delimit complexity,
is a matter of fit, balance, and compromise of many factors
and many interests. This is especially true in the
development of a structure, or architecture, within which to
build complex IT systems that will support and enable the
business of the enterprise. A system can be considered to be
a set of different elements connected or related in such a
fashion as to perform a unique function not performed by the
elements alone. The most important and distinguishing
characteristic of a system, therefore, is the relationship
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among the elements. Myrick para. 69.
11. Successful systems are developed following an
architecture that is driven by function instead of form.
Myrick para. 71.
12. The plans provide the context and guidance that drive
the definition of business functions, processes, systems, and
organization. Strategic business planning is the process of
defining the mission and long-term objectives for the
business and the strategies for achieving them. The IT plan
defines and guides the technology enablement of the
business and related plans. In both of these plans are the
executable roadmaps for implementation and deployment of
the plans. Myrick para. 81.
13. An application architecture that enables and supports
business processes (value streams), and ensures that the
business operations within the corporation have been fully
integrated and optimized for efficiency and effectiveness
will be defined. Myrick para. 92.
14. The Business Architecture identifies the drivers for
making IT decisions, captures the primary line and support
functions and business processes for aligning the enterprise
business and IT towards reaching its strategic purpose,
identifies the necessary business process architectures (value
streams), and workflow scenarios from which the
technology requirements and architectures to support them
can be derived, and provides the basis for developing the
enterprise logical location software deployment schemas and
models. The Business Architecture also provides an
overview of the integration required to effectively support
the business processes across the enterprise, provides a high-
level framework and mechanism for consistently displaying
information, application, and infrastructure architecture
information in logical location views, defines the models for
business critical actions such as facilitating change
management and providing a framework for process
integration, and presents a geographical view of the logical
and physical locations and the relative functions needed to
determine the business and logical organizational structure
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to meet corporate goals and objectives. Myrick para. 179.
15. An organization’s business architecture is formulated
in support of the enterprise strategic business plan(s). For IT
planning purposes it is the compilation of essential
information about the business that will be the basis for
defining how information and technology will be used to
support that business. A business environment is impacted
by outside influences that include the type of markets the
business is in or wishes to enter, government legislation and
regulations, and services to provide to its customers. Inside
influences include production of goods, sales, and
administration of the corporation. Myrick para. 181.
16. Capturing the client IT systems expenditure data and
determining where it is focused provides the baseline against
which the appropriateness of current IT expenditures can be
determined and against which transition planning
recommendations and future budgeting calculations can be
made. It also provides a way in which to determine client
standing in regards to an industry norm benchmark for
business, competitive, and industry measures. Myrick para.
187.
17. The workflow model, as shown in Myrick Figure 17,
depicts one of the workflow scenarios based on the process
architecture. There could be several workflow scenarios for
each process architecture and the number of workflow
scenarios is directly linked to the events identified in the
associated value stream event model. The workflow
scenarios actually depict the sequence of activities necessary
to transform the inputs into the required outputs. From these
granular models, most of the requisite inputs and outputs for
the enterprise will be defined as well as the logical
applications (either physical or IT) that support the
accomplishment of the particular workflow. From these
models, the basis for the application portfolios and
information architectures are derived. Therefore these
models will support the construction and provide the
rationale for the IT architectures (e.g., application portfolios)
developed in an enterprise IT Plan.
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Myrick para. 202.
18. A corporation’s enterprise information architecture for
enabling business intelligence is characterized by a
framework that establishes decision making principles,
precepts, and standards for the identification and use of
information as a business resource, identifies the business
intelligence scenarios within business value streams,
identifying the high-level inputs and outputs, occurring in
the enterprise from internal to external sources, to include
those being generated by both legacy and client/server
systems. The framework includes a data warehouse
structure that provides the necessary high-level management
and operations reports. The framework facilitates the
establishment of the underlying infrastructure for managing
the information asset by highlighting the required
information databases and information-application
components, provides a supporting application portfolio and
system integration table for identifying the business
intelligence applications and integration requirements, and
provides a geo-structural view for relating the information
and data architectural components to their corresponding
logical and physical locations. Myrick para. 230.
19. A purpose of the application architecture is to provide
a logical portfolio of applications for supporting the various
business processes of an enterprise. The application
portfolio is designed to illustrate the optimum distribution of
applications and components across multiple business
functions, processes, sites, and platforms for enabling
business workflow scenarios that will insure efficient and
effective business operations. Myrick paras. 242–243.
20. In support of the overall strategic business plan and its
supporting business architecture, an enabling application
portfolio and architecture is required for performing business
operations. The application architecture identifies the
logical applications required for optimizing business
operations and the logical locations of those enabling
applications. An enterprise application architecture consists
of a portfolio of applications that enable the value streams
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and associated workflow scenarios. Myrick para. 261.
21. In support of the information and application
architectures, and IT system management framework, an
underlying technical infrastructure architecture must be
defined. The infrastructure architecture addresses the
systems and networking structures that support the
application portfolios that enable the value streams and
workflow scenarios outlined in the business architecture.
The infrastructure framework allows common and consistent
operating environments to be established. The infrastructure
architecture identifies and graphically depicts the underlying
networking structures and associated platforms, operating
systems, and protocols that enable the information,
application and systems management systems. The technical
infrastructure architecture is characterized by highlighting in
the corporation’s enterprise infrastructure view the required
system components for enabling the value streams and
ensuring effective and efficient performance of these
systems, establishing a common operating environment that
will standardize operating practices throughout the enterprise
and allow for ease-of-use and ease-of-training of end users,
and developing a supporting Technical Infrastructure “Best
Practices” Recommendations table or process that highlights
the “best of breed” products for integrating the firm’s
enterprise information systems that allow for optimizing and
controlling costs. Myrick para. 293.
22. An enterprise IT management framework provides for
the exchange of IT systems management information with
information technology systems and services within a
corporation’s enterprise. Additionally it provides the
structure to define optimum value to the client by defining
demand, products and services, fulfillment of demand, and
the planning and managing of all aspects of IT. Myrick
para. 310.
23. A technical infrastructure logical/physical view
correlates the required system components and infrastructure
requirements of the enterprise for enabling the value streams
and workflow scenarios to the logical location maps and
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templates from the business architecture plane. The logical
location software models and the consolidated technology
infrastructure architectures identify the logical applications
that need to integrate and operate together, portray the
enabling operational elements, processes and technology
components for achieving the desired operating results based
on the organization’s business goals, objectives, critical
success factors, and performance metrics, and highlight the
system integration requirements in support of the
information, application, systems management, and
infrastructure architectures. Myrick para. 304. The element
management 3308 of business model 3300 includes
sales/manufacturing locations, customer service centers,
corporate/regional headquarters, and operations centers.
Each location of element management may include
management information base agents, enterprise servers,
database servers, hubs, ATM switches, routers, office
servers, gateways, mainframe, and desktop computers.
Element management communicates with systems/network
management over a network. Myrick para. 339.
24. The business management component is divided into
customer relations management and supplier/services
relations management. Customer relations management may
include departments such as service definition, financial
accounting, forecasting/reporting, auditing, risk assessment,
and business continuity planning. Supplier/services relations
management may include service planning, technology
planning, and resource planning. Based on the identified
logical systems management applications that are required to
enable the IT systems management processes and workflow
scenarios, an integration table identifies the array of systems
management applications that must be integrated together as
well as with other applications. Myrick paras. 340–341.
25. Myrick Figures 38A–38B depict the IT organizational
model. An executive board provides strategic business
direction and value needs and IT governance, policy, and
approvals in response to IT leadership and innovation,
strategic direction, solutions plan, investment and
opportunities and business value results inputs from the
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enterprise. The enterprise performs a manage/deliver IT
value function that uses an IT supply chain model with
plan/manage information technology, to assess demand,
develop products, services, and processes, and fulfill demand
links. A manage/deliver IT value function generates IT
products and IS services for stakeholders and business
clients in response to collaboration, service needs and
metrics, and business process innovations developed with
them. The manage/deliver IT value function is driven by the
Tower model in conjunction with the people and culture of
the enterprise and its IT partners. The Tower model provides
a business context, IT change initiatives, IT strategic
direction, IT innovation solution sets, and IT industry
knowledge in order to deliver the enterprise’s IT value.
Myrick para. 343.
26. In the workflow scenario for delivering a strategic IT
framework, the first critical step defined in the workflow is
to initiate the engagement or project by defining the
approach, identifying participants including project team
members, decision makers, and information sources,
establishing the duration and key milestones, and
establishing the scope and objectives. Interviews with key
participants are then conducted with typically parallel efforts
to gather existing documentation. This set of work or
activities will lead to the next major steps, which are the
development of the requisite business and technology
models inclusive of current situation analysis and future
direction understanding. Key inputs to the development of
the models are knowledge of emerging technologies,
industry best practices, technology policy, and business
trends. The project management process requires that
project workbooks are created and interim milestones are
met for periodic reviews and continuous feedback. Based on
the drivers, gaps, and transition needs, a strategy to change
the IT environment is defined. The project is then
considered closed and should be viewed objectively to assess
where it was successful and determine a process to maintain
the plan and ensure its implementation. Myrick para. 366.
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27. Myrick describes applying its Tower tool to each of
the Telecommunications industry and the health care
industry. Myrick para. 353.
28. The Enterprise Strategic IT Planning Framework
Tower is the starting point for determining the context and
mandatory, major components and methods needed to
develop a strategic IT plan and consequently build IT
solutions for successfully enabling an enterprise. The Tower
will help IT personnel to effectively analyze and evaluate
business and technology requirements, put them in their
proper context, and ensure that due consideration has been
given to all of the architectural components needed to
support business needs and requirements. In addition the
Tower will help achieve the goals of defining and
embodying a value proposition and intellectual capital based
on experience and success, ensuring consistency of delivery
and integration of results, ensure specificity in definition but
not in a prescriptive “cookbook” approach, and allowing
tailoring to individual and unique client requirements but
building from a foundation of “best practices.” Myrick para.
372.
Chao
29. Chao is directed to an infrastructure to individualize
health plan design for appropriate and affordable access to
medications for quality outcomes by incorporating
demographics, income, drug history, medical history, lab
values, and future genomic information into the plan design.
Chao para. 2.
30. A data warehouse is accessible to various managers
for use by business analysts, medical directors, pharmacy
directors, and case managers for information to improve
business performance and quality of care. Chao para. 47.

ANALYSIS
Initially we look to the amendments to claim 2 since the prior appeal
to determine what construction may be needed. Basically, there are two sets
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of limitation added in those amendments. One set enumerates various types
of data used. These limitations are plain on their face and are not the subject
of Appellant’s arguments. Construction is not required.
The other set appears twice in claim 2 and is exemplified by the
limitations:
optimizing a process control software application in said
healthcare environment for implementing processes configured
to optimize implementation of a new technology in said
healthcare environment by taking advantage of efficiencies and
improvements that said new technology offers; and
performing said processes via said process control
software application, wherein the performed processes optimize
implementation of the new technology in the healthcare
environment by taking advantage of efficiencies and
improvements that the new technology offers . . . .
Claim 2. The issues are the construction of optimizing and optimize, and
taking advantage of efficiencies and improvements that new technology
offers. The Specification offers no insight. It does not define these terms
and does not show by analysis or example how optimization and taking
advantage occurs or is performed.
The Appeal Brief cites Specification page 6, lines 6–18, page 7, lines
13–15, and page 12, lines 11–16 as support. Appeal Br. 2. We find no other
portions of the Specification that would support these limitations.
Specification page 12, lines 11–16 only describes using operational
metrics for evaluation with no discussion of specific examples or
implementation. This is simply conceptual advice for using feedback as a
control tool. Specification page 7, lines 13–15 only describes considering
healthcare process changes to take advantage of technology with no
discussion of specific examples or implementation. This is simply
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conceptual advice for using available resources in planning processes.
Specification page 6, lines 6–18 only parrots the claim limitations with no
discussion of specific examples or implementation. This is simply
conceptual advice for using innovation in planning.
We therefore construe the limitations at issue as using conventional
feedback and new innovation techniques generically in planning processes to
be as good as the planners are able.
Claims 2, 3, 6, 7, 10, 11, 14, and 15 rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more
STEP 13
Claim 2, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question,
. . . 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. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg.
at 54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 2 recites receiving selection data, developing vision data,
implementation plan data, and communication strategy data, storing
requirements data, selecting process data, storing metric data, implementing
process data, and obtaining metric data. Developing data is creating data.
Selecting data is rudimentary analysis. Implementing processes is
conventional data processing. Obtaining data is receiving data. Thus,
claim 2 recites receiving, creating, storing, analyzing, and processing data.
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Claim 2 also recites two prefatory steps of optimizing a process control
software application by taking advantage of efficiencies and improvements
that new technology offers and performing processes via the process control
software application by taking advantage of efficiencies and improvements
that new technology offers. Neither recites any particular action or
operation, but instead recites generic data processing using unspecified
efficiencies and improvements inherent in new technology. As we construe
these limitations supra, they only mean using conventional feedback and
new innovation techniques generically in planning processes to be as good
as the planners are able. This is a conceptual idea. None of the limitations
recites technological implementation details for any of these steps, but
instead recite only results desired by any and all possible means.
From this we see that claim 2 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,4 (2) certain methods of organizing

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
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human activity,5 and (3) mental processes.6 Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 2 recites the concept of
managing commercial consulting services. Specifically, claim 2 recites
operations that would ordinarily take place in advising one to develop,
implement, and measure processes by developing governance, vision,
implementation, and communication strategy for such processes. The advice
to develop, implement, and measure processes by developing governance,
vision, implementation, and communication strategy for such processes
involves providing commercial consulting services, which is an economic
act. For example, claim 2 recites “delivering consulting services,” which is
an activity that would take place whenever one is providing commercial
consulting services.
The Examiner determines the claims to be directed to using
information to make decisions. Ans. 8. See also Final Act. 7.
The preamble to claim 2 recites that it is a method for delivering
consulting services and information technology solutions in a healthcare
environment. The steps in claim 2 result in managing commercial
consulting services by developing, implementing, and measuring processes
by developing governance, vision, implementation, and communication

5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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strategy for such processes absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations 1 and 9 recite receiving data.
Limitations 2–8 recite generic and conventional creating, storing, analyzing,
and processing of conceptual management data, which advise one to apply
generic functions to get to these results. Claim 2 also recites two prefatory
steps of optimizing a process control software application by taking
advantage of efficiencies and improvements that new technology offers and
performing processes via the process control software application by taking
advantage of efficiencies and improvements that new technology offers.
Neither recites any particular action or operation, but instead recites generic
data processing using unspecified efficiencies and improvements inherent in
new technology. The limitations thus recite advice for developing,
implementing, and measuring processes by developing governance, vision,
implementation, and communication strategy for such processes. To
advocate developing, implementing, and measuring processes by developing
governance, vision, implementation, and communication strategy for such
processes is conceptual advice for results desired and not technological
operations.
The Specification describes the invention as relating to delivering
consulting services and information technology solutions in a healthcare
environment. Spec. 2:9–11. Thus, all this intrinsic evidence shows that
claim 2 recites managing commercial consulting services. This is consistent
with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing commercial
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consulting services is a commercial enterprise. The concept of managing
commercial consulting services by developing, implementing, and
measuring processes by developing governance, vision, implementation, and
communication strategy for such processes is one idea for the conceptual
process of such consulting. The steps recited in claim 2 are part of how this
might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. In re Rudy, 956 F.3d 1379, 1384
(Fed. Cir. 2020) (collecting and analyzing information); SAP Am., Inc. v.
Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) (collecting, analyzing,
and reporting information); Smart Sys. Innovations, LLC v. Chi. Transit
Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (collecting, storing, and
recognizing data).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, creating, storing,
analyzing, and processing data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016). Claim 2, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data reception, creation,
storage, analysis, and processing and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims
not abstract because they “focused on a specific asserted improvement in
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computer animation”). As such, claim 2 recites receiving, creating, storing,
analyzing, and processing data, and not a technological implementation or
application of that idea.
From this we conclude that at least to this degree, claim 2 recites
managing commercial consulting services by developing, implementing, and
measuring processes by developing governance, vision, implementation, and
communication strategy for such processes, which is a commercial and legal
interaction, one of certain methods of organizing human activity identified in
the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 2 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 9 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps
5–7 recite basic conventional data operations such as generating, updating,
and storing data. Steps 8 and 9 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. Claim 2 also recites two prefatory
steps of optimizing a process control software application by taking
advantage of efficiencies and improvements that new technology offers and
performing processes via the process control software application by taking
advantage of efficiencies and improvements that new technology offers.
Neither recites any particular action or operation, but instead recites generic
data processing using unspecified efficiencies and improvements inherent in
new technology. As we construe these limitations supra, they only mean
using conventional feedback and new innovation techniques generically in
planning processes to be as good as the planners are able. This is a
conceptual idea. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant’s claim 2 simply recites the concept of
managing commercial consulting services by developing, implementing, and
measuring processes by developing governance, vision, implementation, and
communication strategy for such processes as performed by a generic
computer. This is no more than conceptual advice on the parameters for this
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concept and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
Claim 2 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 13 pages of Specification, excluding the
page 1 title page and the claims, do not bulge with disclosure, but only spell
out different generic equipment8 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of managing commercial consulting services by
developing, implementing, and measuring processes by developing
governance, vision, implementation, and communication strategy for such
processes under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, claim 2 at issue
amounts to nothing significantly more than an instruction to apply managing
commercial consulting services by developing, implementing, and
measuring processes by developing governance, vision, implementation, and
communication strategy for such processes using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular

8 The Specification describes using “various computer systems.”
Spec. 14:6–7.
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machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
We conclude that claim 2 is directed to achieving the result of
managing commercial consulting services by advising one to develop,
implement, and measure processes by developing governance, vision,
implementation, and communication strategy for such processes, as
distinguished from a technological improvement for achieving or applying
that result. This amounts to commercial or legal interactions, which fall
within certain methods of organizing human activity that constitute abstract
ideas. The claim does not integrate the judicial exception into a practical
application.
STEP 2B
The next issue is whether claim 2 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
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amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, creating, storing, analyzing, and processing data
amounts to electronic data query and retrieval—one of the most basic
functions of a computer. Claim 2 also recites two prefatory steps of
optimizing a process control software application by taking advantage of
efficiencies and improvements that new technology offers and performing
processes via the process control software application by taking advantage
of efficiencies and improvements that new technology offers. Neither
recites any particular action or operation, but instead recites generic data
processing using unspecified efficiencies and improvements inherent in new
technology. As we construe these limitation supra, they only mean using
conventional feedback and new innovation techniques generically in
planning processes to be as good as the planners are able. This is a
conceptual idea.
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All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellant’s claim 2 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-creation-storage-
analysis-processing is equally generic and conventional. See Ultramercial,
772 F.3d at 715 (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (sequence of data retrieval, analysis, modification,
generation, display, and transmission), Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of
processing, routing, controlling, and monitoring). The ordering of the steps
is therefore ordinary and conventional.
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We conclude that claim 2 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 2 is representative. The other independent method claim 14 is
substantially similar at least as regards this analysis. The remaining method
claims merely describe process parameters. We conclude that the method
claims at issue are directed to a patent-ineligible concept itself, and not to
the practical application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting
§ 101 “in ways that make patent eligibility ‘depend simply on
the draftsman’s art.’”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing commercial consulting services by advising
one to develop, implement, and measure processes by developing
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governance, vision, implementation, and communication strategy for such
processes, without significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action pages 6–10 and Answer
pages 7–12 and reach similar legal conclusions. We now turn to the Reply
Brief.
We are not persuaded by Appellant’s argument that the claims
integrate the abstract idea into a practical application in a
manner that imposes a meaningful limit on the abstract idea so
as not to monopolize the abstract idea, which is achieved, not
by an end result alone that would include all methods of
delivering information technology solutions in a healthcare
environment, but rather by specific limitations on the method so
as to not allow [the claims] to preempt all methods of delivering
information technology solutions in a healthcare environment.
Reply Br. 5. Appellant argues a practical application on the basis of lack of
preemption. We determine why the claims are not directed to a practical
application supra under Step 2A Prong 2. As to the preemption argument,
“[w]here 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.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant cites Berkheimer for the proposition that evidence of
something being conventional is necessary. Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018). Reply Br. 5–6. Support for this finding is
provided under Step 2B supra.

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Claims 2, 3, 6, 7, 10, 11, 14, and 15 rejected under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure
We are persuaded by Appellant’s argument that the arrows shown
between process blocks in Figures 2–4 support the claim recitations of one
step occurring after another. Appeal Br. 7–9; Reply Br. 2–3.
Claims 2, 3, 6, 7, 10, 11, 14, and 15 rejected under 35 U.S.C. § 103(a) as
unpatentable over Myrick, Chao, and Swenson
As to the Appeal Brief arguments, we adopt the Examiner’s findings
and analysis from Final Action pages 11–35 and Answer pages 12–16. We
now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that “Myrick . . . is
totally silent as to optimizing anything, let alone optimizing a process
control software application.” Reply Br. 8. We determine supra that this
optimizing limitation means no more than using conventional feedback and
new innovation techniques generically in planning processes to be as good
as the planners are able. Myrick describes both the virtue of using feedback
and the need for optimizing processes and technology.
We are not persuaded by Appellant’s argument that it was not
predictable to apply Swenson’s rule that only after a step had been
completed does the next step begin to Myrick. Reply Br. 8. But Myrick
describes a planning process laid out in phases. Planning is conventionally
performed in a series of phases where the results of one are necessary inputs
to the next. Thus such a rule is both predictable and common sense in the
context of Myrick. Myrick even describes examples of relying on the
information from a preceding phase to drive the succeeding phase.
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CONCLUSIONS OF LAW
The rejection of claims 2, 3, 6, 7, 10, 11, 14, and 15 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.
The rejection of claims 2, 3, 6, 7, 10, 11, 14, and 15 under 35 U.S.C.
§ 112(a) as lacking a supporting written description within the original
disclosure is improper.
The rejection of claims 2, 3, 6, 7, 10, 11, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Myrick, Chao, and Swenson is proper.
CONCLUSION
The rejection of claims 2, 3, 6, 7, 10, 11, 14, and 15 is affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2, 3, 6, 7,
10, 11, 14,
15
101 Eligibility 2, 3, 6, 7, 10,
11, 14, 15

2, 3, 6, 7,
10, 11, 14,
15
112(a) Written
Description
2, 3, 6, 7, 10,
11, 14, 15
2, 3, 6, 7,
10, 11, 14,
15
103 Myrick, Chao,
Swenson
2, 3, 6, 7, 10,
11, 14, 15

Overall
Outcome
2, 3, 6, 7, 10,
11, 14, 15

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.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED