KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Jun 15, 2020

2020000564 (P.T.A.B. Jun. 15, 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.
14/368,368 06/24/2014 Rony Calo 2011P01862WOUS 5804
24737 7590 06/15/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/15/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RONY CALO, GIJS GELEIJNSE and
ALEKSANDRA TESANOVIC
____________

Appeal 2020-000564
Application 14/368,368
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 9, 10, and 21–33, which constitute all of the claims
pending in this application. Claims 1–8 and 11–20 have been cancelled.
Final Act. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 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
Koninklijke Philips N.V. Appeal Br. 3.
2 We refer to the Specification filed June 24, 2014 (“Spec.”); Final Office
Action mailed Jan. 17, 2019 (“Final Act.”); Appeal Brief filed May 13, 2019
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We AFFIRM and institute a new ground of rejection under the
provisions of 37 C.F.R. § 41.50(b).
THE INVENTION
The disclosed and claimed invention is directed to “systems and
methods for reducing early readmission” for hospitalized heart failure
patients. See Spec. ¶¶ 1, 3.
Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. A system for facilitating treatment of a patient via
creation of a personalized risk model configured with
psychosocial risk factors derived from unmodifiable risk factors
of the patient, the system comprising:
a memory storing a plurality of validated risk models;
and
a processor configured to:
receive patient data for a patient and a validated
risk model;
apply the validated risk model to the patient data to
determine a plurality of risk factors related to the patient
for a personalized risk model;
classify each of the plurality of risk factors as at
least one of a medical risk factor, an unmodifiable
psychosocial risk factor, and a modifiable psychosocial
risk factor, wherein an unmodifiable psychosocial risk
factor is not directly addressable during hospitalization
and a modifiable psychosocial risk factor is directly
addressable during hospitalization, wherein a given risk
factor of the plurality of risk factors is classified as a
given unmodifiable psychosocial risk factor;

(“Appeal Br.”); Examiner’s Answer mailed Sept. 6, 2019 (“Ans.”); and the
Reply Brief filed Nov. 1, 2019 (“Reply Br.”).
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decompose the given unmodifiable psychosocial
risk factor into a plurality of modifiable psychosocial risk
factors, wherein the plurality of modifiable psychosocial
risk factors are non-physiological factors;
supplement the validated risk model with the
plurality of modifiable psychosocial risk factors to create
the personalized risk model for the patient such that the
personalized risk model is configured with the plurality
of modifiable psychosocial risk factors, the personalized
risk model being the supplemented validated risk model;
receive a result of treatment related to at least one
of the plurality of modifiable psychosocial risk factors of
the personalized risk model;
determine an overall risk level related to the
patient based on (i) the personalized risk model and
(ii) the result of treatment;
determine whether the overall risk level breaches
a threshold level; and
responsive to the overall risk level breaching the
threshold level, provide treatment information indicating
a further treatment for the patient, the treatment
information being provided based on at least a further
one of the plurality of modifiable psychosocial risk
factors of the personalized risk model.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Name Reference Date
Langheier US 2006/0173663 A1 Aug. 3, 2006
Jenkins US 2007/0244375 A1 Oct. 18, 2007
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Name Reference Date
Albert US 2011/0246220 A1 Oct. 6, 2011
Philbin “Prediction of Hospital Readmission for
Heart Failure: Development of a Simple
Risk Score Based on Administrative
Data”
1999

REJECTIONS
Claims 9, 10, and 21–33 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 2.
Claims 9, 10, 21–23, 25–29, and 31–33 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Langheier, Jenkins, and Albert. Final Act. 5.
Claims 30 and 24 stand rejected under 35 U.S.C. § 103 as
unpatentable over Langheier, Jenkins, Albert, and Philbin. Final Act. 9.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellant.

Section 101 Rejection
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
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attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
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internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
rev. 08.2017 Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or

2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56. Furthermore, the
Memorandum “extracts and synthesizes key concepts identified by the
courts as abstract ideas to explain that the abstract idea exception includes
the following groupings of subject matter, when recited as such in a claim
limitation(s) (that is, when recited on their own or per se)”:
(a) Mathematical concepts—mathematical
relationships, mathematical formulas or equations,
mathematical calculations;
(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the
human mind (including an observation, evaluation, judgment,
opinion).
Id. at 52 (footnotes omitted).
USPTO Step 2A, Prong 1
The Examiner determines that the claims can be performed “in the
mind but for the recitation of generic computer components,” and are
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directed to mental processes. Final Act. 3. Specifically, the Examiner finds
that the claim “[b]roadly recite[s] steps such as ‘receiving,’ ‘applying,’
‘classifying,’ ‘decomposing,’ ‘supplementing,’ ‘determining,’ and
‘providing treatment information’ [that] can be performed in the mind.”
Ans. 4.
Appellant argues that “nearly all of the limitations of the independent
claims cannot be practically performed in the human mind or are based on
such limitations.” Appeal Br. 9; see Reply Br. 3–4.
We are not persuaded by Appellant’s arguments that the Examiner
erred. Representative claim 9—with emphasis added—is reproduced below:
9. A system for facilitating treatment of a patient via
creation of a personalized risk model configured with
psychosocial risk factors derived from unmodifiable risk factors
of the patient, the system comprising:
a memory storing a plurality of validated risk models;
and
a processor configured to:
receive patient data for a patient and a validated
risk model;
apply the validated risk model to the patient data
to determine a plurality of risk factors related to the
patient for a personalized risk model;
classify each of the plurality of risk factors as at
least one of a medical risk factor, an unmodifiable
psychosocial risk factor, and a modifiable psychosocial
risk factor, wherein an unmodifiable psychosocial risk
factor is not directly addressable during hospitalization
and a modifiable psychosocial risk factor is directly
addressable during hospitalization, wherein a given risk
factor of the plurality of risk factors is classified as a
given unmodifiable psychosocial risk factor;
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decompose the given unmodifiable psychosocial
risk factor into a plurality of modifiable psychosocial risk
factors, wherein the plurality of modifiable psychosocial
risk factors are non-physiological factors;
supplement the validated risk model with the
plurality of modifiable psychosocial risk factors to create
the personalized risk model for the patient such that the
personalized risk model is configured with the plurality
of modifiable psychosocial risk factors, the personalized
risk model being the supplemented validated risk model;
receive a result of treatment related to at least one
of the plurality of modifiable psychosocial risk factors of
the personalized risk model;
determine an overall risk level related to the
patient based on (i) the personalized risk model and (ii)
the result of treatment;
determine whether the overall risk level breaches a
threshold level; and
responsive to the overall risk level breaching the
threshold level, provide treatment information indicating
a further treatment for the patient, the treatment
information being provided based on at least a further
one of the plurality of modifiable psychosocial risk
factors of the personalized risk model.
Appeal Br. 20–21 (emphasis added). Claim 25 similarly recites the method
steps of claim 9. Id. at 22–23. Claim 33 similarly recites a “system
comprising: a memory . . . and a processor configured to” perform steps
commensurate the steps highlighted in claim 9. Id. at 25–26.
As relevant here, the Guidance explains that “mental processes”
include “concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” 2019 Revised Guidance, 84 Fed. Reg.
at 52.
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The emphasized limitations above can each be practically performed
in the human mind. Specifically, the claim limitations identified above are
directed to (i) applying a risk model to received data to determine a patient’s
risk factors; (ii) classifying the determined patient risk factors;
(iii) decomposing classified patient risk factors into other risk factors;
(iv) supplementing the risk model with the decomposed risk factors to create
a personalized risk model; (v) determining the overall patient risk level
based on the created personalized risk model and received data;
(vi) determining whether the determined overall patient risk level breaches a
threshold level; and (vii) providing further treatment information when the
overall patient risk level breaches a threshold level. Each of these steps,
both individually and as a combination, can be performed by a medical
professional who assesses patient data to determine patient risk and develop
further treatment for the patient (i.e., can be practically performed in the
human mind).
Accordingly, we conclude that claims 9, 25, and 33 recite a method
and related system to assess patient data to determine patient risk and
develop further treatment for the patient, which is an example of an
observation, evaluation, judgment, or opinion performed in the human mind,
as identified in the 2019 Revised Guidance, and thus an abstract idea.
USPTO Step 2A, Prong 2
In determining whether claim 9 is “directed to” the identified abstract
ideas, we next consider whether claim 9 recites additional elements that
integrate the judicial exception into a practical application. For the reasons
set forth below, we discern no additional element (or combination of
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elements) recited in claim 9 that integrates the judicial exception into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55.
Claim 9 also recites the following data-collecting limitations: “receive
patient data for a patient and a validated risk model” and “receive a result of
treatment related to at least one of the plurality of modifiable psychosocial
risk factors of the personalized risk model.” Appeal Br. 20–21. Claims 25
and 33 recite similar limitations. Id. at 22–23, 25–26.
We determine that the claimed data-collecting limitations constitute
insignificant extra-solution activity. As an example of insignificant extra-
solution activity, the Federal Circuit has held that mere data-gathering steps
“cannot make an otherwise nonstatutory claim statutory.” CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)
(quoting In re Grams, 888 F.2d 835, 839–40 (Fed. Cir. 1989)). Consistent
with Court decisions, the MPEP identifies “gathering data” as an example of
insignificant pre-solution activity. MPEP § 2106.05(g).
Appellant argues that the claims are integrated into a practical
application because the
claimed invention not only accounts for patient data for its
computation of the risk factors, but also accounts for accuracy of
prior risk factors related to the personalized risk model for the
final determination of the overall risk level, thereby increasing
the accuracy of determinations of the risk of readmissions by a
care level transition recommendation system.
Appeal Br. 10; see Appeal Br. 11–12 (citing McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Specifically, Appellant
argues that “the claimed inventions provide an improvement over the
foregoing prior computer systems by enabling a more dynamic and
improved treatment determination.” Reply Br. 5; see also Reply Br. 6, 7.
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According to Appellant, the “claimed invention involves the non-
conventional step of ‘decompos[ing] the given umodifiable psychosocial
risk factor.” Appeal Br. 14.
We are not persuaded. The Examiner properly concludes that
“reducing the risk of readmission rate of hospitalized heart failure patients is
not a technical solution” and that “there is no improvement in computer-
related technology.” Ans. 4. Contrary to Appellant’s argument, each of the
independent claims merely adapts the abstract idea of collecting data (i.e.,
“receiving patient data,” “receive a result of treatment”) and analyzing data
to assess risk and develop a treatment plan (i.e., “apply the validated risk
model to the patient data,” “classify each of the plurality of risk factors,”
“decompose the given unmodifiable psychosocial risk factor into a plurality
of modifiable psychosocial risk factors,” “supplement the validated risk
model with the plurality of modifiable psychosocial risk factors to create the
personalized risk model for the patient,” “determine an overall risk level
related to the patient,” “determine whether the overall risk level breaches a
threshold level,” and “provide treatment information indicating a further
treatment for the patient”), which can be practically performed in the human
mind, to an execution of steps practically performed by computers (i.e., a
“system comprising: a memory storing a plurality of validated risk models;
and a processor”). See Spec. ¶ 26. Appellant highlights that the claimed
invention “allows specific treatment to be recommended . . . such that the
risk of hospital readmission is reduced.” Appeal Br. 14. However, allowing
recommendations to reduce hospital readmission risk does not improve
technology. Rather, the claimed invention merely improves the abstract idea
of assessing the patient’s risk level and providing treatment information for
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the patient. No improvements are made to the technology used to assess risk
level or provide treatment information.
Relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible. See Alice, 573
U.S. at 224 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not an inventive
concept); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (a computer “employed only for its most
basic function . . . does not impose meaningful limits on the scope of those
claims”); MPEP § 2106.05(f)(2) (“Use of a computer or other machinery in
its ordinary capacity for economic or other tasks (e.g., to receive, store, or
transmit data) or simply adding a general purpose computer or computer
components after the fact to an abstract idea (e.g., a fundamental economic
practice or mathematical equation) does not provide significantly more.”).
Moreover, the “mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017).
Accordingly, we are not persuaded of error in the Examiner’s
determination that claims 9, 25, and 33 are directed to an abstract idea, and
we find the claimed additional elements do not integrate the abstract idea
into a practical application.
USPTO Step 2B
Turning to step 2 of the Alice/Mayo framework, we look to whether
claim 9 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
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appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 2019 Revised Guidance, 84 Fed. Reg. at 56.
According to the Examiner, the claimed
processor and memory are recited at a high-level of generality
(i.e., as a generic processor performing generic computer
functions of receiving, analyzing, and providing information and
a generic memory that stores information) such that it amounts
to no more than mere instructions to apply the exception using
generic computer components.
Final Act. 3.
Appellant argues that there is no “factual evidence” that
“demonstrate[s] whether the inventive concept is well-understood, routine,
and conventional.” Appeal Br. 15 (citing Berkheimer v. HP Inc., 881 F.3d
1360, 1369–70 (Fed. Cir. 2018)); see Appeal Br. 16; Reply Br. 6–7.
We are persuaded of Examiner error. The Examiner provides no
evidence supporting the conclusion that the claimed “memory” and
“processor” are generic computer components that perform generic and
conventional computer functions. Instead, the Examiner merely concludes
that “it is unclear what is non-conventional and non-generic about the
arrangement of the memory and processor.” Ans. 5. The Examiner’s
conclusory statement is not consistent with PTO guidance about Berkheimer
v. HP. See USPTO Memorandum, Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (Apr. 19, 2018) (hereinafter “Berkheimer
Memorandum”).
That guidance states that “the well-understood, routine, conventional
nature of the additional element(s)” may be demonstrated by citations to the
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specification, citations to court decisions, citations to publications, or a
statement of official notice. Berkheimer Memorandum 3–4. The Examiner
fails to provide the factual evidence required by the PTO guidance.
However, on our independent review, we agree with the Examiner’s
conclusion that the claimed steps using the claimed computer system
components (i.e., “processor” and “memory”) amount to no more than mere
instructions to apply the exception using generic computer components.
For example, the Specification describes using generic hardware
elements. See, e.g., Spec. ¶ 25 (“user interface 410 is operable to receive
various types of user input”; “user interface 210 is also used as an output
device”); ¶ 26 (“user interface 410 provides data to a processor 420 that may
execute a program embodying the exemplary method 300”; “memory 430
may be a hard drive, a solid state drive, distributed storage, etc., and may
store data in any format appropriate for use”). In other words, the claimed
invention, implemented on a “system comprising: a memory storing a
plurality of validated risk models; and a processor,” utilizes merely generic
computer elements. Accordingly, the claims at issue do not require any
nonconventional computer components, or even a “non-conventional and
non-generic arrangement of known, conventional pieces,” but merely call for
performance of the claimed information receiving and processing “on a set
of generic computer components.” BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016).
Appellant does not direct our attention to anything in the Specification
that indicates the claimed computer components (i.e., “memory” and
“processor”) perform anything other than well-understood, routine, and
conventional functions, such as receiving and processing data. See
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buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2015) (“That
a computer receives and sends information over a network–with no further
specification–is not even arguably inventive”); In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data,
extracts classification information from the received data, and stores the
digital images insufficient to add an inventive concept); Alice, 573 U.S. at
2359–2360 (receiving, storing, sending information over networks
insufficient to add an inventive concept); Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (the claims
“recite no more than routine steps of data collection and organization using
generic computer components and conventional computer data processing
activities,” which is insufficient to provide an inventive concept).
Accordingly, the claims at issue are performed such that they are well-
understood, routine, conventional functions of a generic computer.
With regard to dependent claims 10, 21–24, and 26–32, those claims
either recite further aspects of the abstract idea and/or further recite the
additional limitation of claim 9 which we find to be well-understood,
routine, and conventional. For example, dependent claim 10 further defines
a “processor”—which is well-understood, routine, and conventional—which
is “configured to select the at least one modifiable psychosocial risk factor
based on the at least one modifiable psychosocial factor being a most
influencing one of the plurality of risk factors”—which is an aspect of the
abstract idea. See also claims 28, 29 (reciting a mental step that is
performed by a processor). Similarly, claim 21 simply recites further details
of the abstract idea, specifically risk factors that should be considered. See
also claims 22–24, 26, 27, and 30–32.
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Accordingly, we sustain the Examiner’s rejection of claim 9 as being
directed to patent-ineligible subject matter, as well as commensurate
independent claims 25 and 33, and dependent claims 10, 21–24, and 26–32,
not separately argued.
Because the Examiner did not provide evidence that the claimed
computer components perform well-understood, routine, conventional
activities, we designate the affirmance as a new ground of rejection under
37 C.F.R. § 41.50(b).

Section 103 Rejections
Claim 9 recites “decompos[ing] the given unmodifiable psychosocial
risk factor [of the personalized risk model] into a plurality of modifiable
psychosocial risk factors . . . [that] are non-physiological factors.”
The Examiner finds that Jenkins’s classification of data teaches the
risk factors and the decomposing limitation. Final Act. 6–7 (citing Jenkins
Figs. 1, 8, ¶¶ 18, 131–135). The Examiner finds that Jenkins’s “age” teaches
the claimed “unmodifiable psychosocial risk factor” and Jenkins’s “BMI”
and “Mental Health” teach the claimed “modifiable psychosocial risk
factors.” Ans. 5. The Examiner relies on Albert to teach “the ‘wherein the
plurality of modifiable psychosocial risk factors are non-physiological
factors’ limitation.” Id. at 6 (citing Albert ¶¶ 127, 129).
Appellant argues that Jenkins teaches factors that “cannot be
interpreted to teach modifiable non-physiological psychosocial risk factors
(derived from an unmodifiable psychosocial risk factor), much less the . . .
claimed decomposing limitation.” Appeal Br. 17 (emphasis omitted); see
Reply Br. 8–9. Specifically, Appellant argues that “Jenkins fails to describe
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decomposing such unmodifiable factor (e.g., age) into a plurality of
modifiable non-physiological factors (e.g., lack of instructions, advice, and
counseling).” Reply Br. 9 (emphasis omitted).
We are persuaded by Appellant’s argument as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
the combination of Langheier, Jenkins, and Albert teaches decomposing one
risk factor into multiple different risk factors.
The cited sections of Jenkins teach dividing predictors into categories
of related variables, “and then the regressors for the descriptive logistic
model are drawn from a list of the . . . variables having the highest
importance score within each category.” Jenkins ¶ 131. For example, the
“predictor categories include age, gender, baseline obesity measurements,”
and “physical function, physical role limitations, vitality, bodily pain,
generation health perception, emotional well being, emotional role
limitations, [and] social function.” Id. ¶ 132. In Jenkins, the “basic strategy
to move from this list to a descriptive logistic specification was to enter each
listed variable, or a transformation of the variable, into the regression model
in descending order of their CART relative importance scores.” Id. ¶ 133.
In other words, Jenkins teaches factors, both modifiable and non-modifiable,
and both physiological and non-physiological, used in predictive modeling.
However, the sections of Jenkins cited by the Examiner and on the
record before us do not teach decomposing one risk factor (i.e., “the given
unmodifiable psychosocial risk factor”) into a plurality of other risk factors
(i.e., “modifiable psychosocial risk factors . . . [that] are non-physiological
factors”), as recited in claim 9. We agree with Appellant that the proposed
combination of references would not arrive at the claimed limitations and
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that “nothing in the Albert reference addresses any actual deficiencies of
Jenkins.” Reply Br. 9.
Therefore, we agree with Appellant that the Examiner’s finding that
the combination of Langheier, Jenkins, and Albert teaches the disputed
limitations is in error because it is not supported by a preponderance of the
evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (The
Examiner’s burden of proving unpatentability is by a preponderance of the
evidence.); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).
Accordingly, we are constrained on the record before us to reverse the
Examiner’s § 103 rejection of independent claim 9, along with the § 103
rejection of independent claims 25 and 33, which recite limitations
commensurate in scope to the disputed limitations discussed above, and
dependent claims 10, 21–24, and 26–29, 31, and 32.
Moreover, because the Examiner has not shown that the additionally
cited reference to Philbin cures the foregoing deficiencies regarding the
rejection of the independent claims 9, 25, and 33, we will not sustain the
obviousness rejection of dependent claims 24 and 30.

CONCLUSION
We affirm the Examiner’s § 101 rejection of claims 9, 10, and 21–33,
and designate our affirmance as a new ground of rejection.
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We reverse the Examiner’s § 103 rejections of claims 9, 10, and 21–
33.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed New
Ground
of
Rejection
9, 10, 21–
33
101 Eligibility 9, 10,
21–33
9, 10, 21–
33
9, 10, 21–
23, 25–
29, 31–33
103 Langheier,
Jenkins, Albert
9, 10, 21–
23, 25–
29, 31–33

24, 30 103 Langheier,
Jenkins, Albert,
Philbin
24, 30
Overall
Outcome
9, 10,
21–33
9, 10, 21–
33

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.
§ 1.136(a)(1)(iv).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
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two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED; 37 C.F.R. § 41.50(b)