Mariana Nikolova-Simons et al.

Patent Trials and Appeals Board

Aug 14, 2019

14458899 - (D) (P.T.A.B. Aug. 14, 2019)

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.
14/458,899 08/13/2014 Mariana Nikolova-Simons 2012P01853US01 5856
24737 7590 08/14/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/14/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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 MARIANA NIKOLOVA-SIMONS and
DIETER MARIA ALFONS VAN DE CRAEN
____________

Appeal 2018-003873
Application 14/458,899
Technology Center 3600
____________

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

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–22, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as Koninklijke Philips
Electronics N.V. App. Br. 2.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to a “healthcare
system for creating a personalized care plan for a user, in particular a
patient.” Spec. 1:2–4.2 The Specification explains that a “patient’s
compliance to a care plan is a prerequisite for better clinical outcomes.” Id.
at 1:19–20. Hence, the invention endeavors to provide “a personalized care
plan for a user, by which a better motivation and compliance of the user to
the care plan can be achieved,” and thus obtain “better clinical outcomes.”
Spec. 1:19–20, 2:5–8.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A system for facilitating computer-assisted creation of
and compliance with a personalized care plan for a user, the
system comprising a processor and a non-transitory computer-
readable storage medium, wherein the non-transitory computer-
readable storage medium contains instructions for execution by
the processor, wherein the instructions cause the processor to
perform the steps of:
receiving life goal information defined by a user, the life
goal information indicating the user’s life goals,
mapping the life goal information into care plan goals
categories including two or more categories,

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed August 13, 2014; “Final Act.” for the Final Office
Action, mailed June 5, 2017; “App. Br.” for the Appeal Brief, filed
September 7, 2017; “Ans.” for the Examiner’s Answer, mailed January 16,
2018; and “Reply Br.” for the Reply Brief, filed February 28, 2018.
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a [sic] defining a care plan including a care plan schedule
for the care plan goals categories onto which the life goal
information has been mapped, the schedule includes, per care
plan goals category, one or more care plan content elements
representing elements of the care plan,
for each of the care plan goals categories,
determining the user’s compliance with the care
plan goals category,
determining a mapping coefficient between at least
one of the user’s life goals and the care plan goals
category,
graphically representing the care plan goals
category by a segment,
determining a first characteristic of a first type for
the segment based on the mapping coefficient determined
for the care plan goals category, the first characteristic
being one of a dimensional characteristic or a color
characteristic,
determining a second characteristic of a second
type for the segment based on the user’s compliance with
the care plan goals category, the second characteristic
being the other one of the dimensional characteristic or
the color characteristic, and
for each of the segments, causing the segment to be
overlaid over at least a portion of a user-selected image,
wherein a configuration of the overlay is based on the
determined first characteristic and the determined second
characteristic.
App. Br. 25–26 (Claims App.).
The Rejection on Appeal
Claims 1–22 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2–4.
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ANALYSIS
We have reviewed the rejection in light of Appellants’ arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusion concerning ineligibility under § 101. We adopt the
Examiner’s findings and reasoning in the Final Office Action and Answer.
See Final Act. 2–6; Ans. 3–8. We provide the following to address and
emphasize specific findings and arguments.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
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In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO). Neither the Examiner nor
Appellants had the benefit of the 2019 Guidance when presenting their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
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221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One: PTO Step 2A Prong One
For Mayo/Alice step one, the Federal Circuit has noted that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner determines that the claims are directed to “collecting
information,” “analyzing the information,” and “displaying certain results,”
i.e., “steps [that] can be performed mentally or by using a pen and paper.”
Final Act. 2–3 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016)); see Ans. 3–4, 7.
Appellants dispute that independent claims 1, 17, and 19 are directed
to an abstract idea. See App. Br. 14–15. Specifically, Appellants assert that
the Examiner overgeneralized the claims. Id. at 7, 14. Appellants also assert
that the Examiner’s overgeneralization of the claims “does not include”
either (1) “the separate and specific determinations of a dimensional
characteristic and a color characteristic” or (2) “the configuration of the
overlay based on the dimensional characteristic and the color characteristic”
as claimed. Id. at 15.
We disagree. In determining that the claims are directed to an abstract
idea, the Examiner accurately assesses the “focus” of the claims and their
“character as a whole.” See Final Act. 2–4; Ans. 3–4; see also SAP Am.,
898 F.3d at 1167.
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In addition, we determine that the claims recite abstract ideas falling
within one of the three groupings of abstract ideas specified in the 2019
Guidance, i.e., mental processes. See 84 Fed. Reg. at 51–52. The Guidance
identifies the following as mental processes: “concepts performed in the
human mind,” such as “an observation, evaluation, judgment, [or] opinion.”
Id. at 52 (footnote omitted). As explained in the following paragraphs, each
independent claim recites mental processes in various limitations.
For instance, claim 1 recites the following limitations:
● “receiving life goal information defined by a user, the life
goal information indicating the user’s life goals”;
● “mapping the life goal information into care plan goals
categories including two or more categories”;
● “defining a care plan including a care plan schedule for
the care plan goals categories onto which the life goal
information has been mapped, the schedule includes, per
care plan goals category, one or more care plan content
elements representing elements of the care plan”;
● “determining the user’s compliance with the care plan
goals category”
● “determining a mapping coefficient between at least one
of the user’s life goals and the care plan goals category,”
● “determining a first characteristic of a first type for the
segment based on the mapping coefficient determined for
the care plan goals category, the first characteristic being
one of a dimensional characteristic or a color
characteristic”;
● “determining a second characteristic of a second type for
the segment based on the user’s compliance with the care
plan goals category, the second characteristic being the
other one of the dimensional characteristic or the color
characteristic.”
App. Br. 25–26. Claims 17 and 19 recite similar limitations. Id. at 29–31.
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The above-identified limitations encompass evaluations practically
performed by a human mentally or with pen and paper. For example, the
Specification explains that the “mapping coefficients between the patient’s
life goals and care plan goals . . . are provided . . . manually by the patient’s
physician, caregiver or a clinician based” on his or her expertise. Spec.
8:7–9; see id. at 8, Tables 2 and 3.
Hence, a physician could receive life goal information from a patient,
e.g., by speaking with the patient. After receiving that information, the
physician could map that information into, for instance, two care plan goals
categories, e.g., exercise goals and nutritional goals. After mapping that
information into two goals categories, the physician could define a care plan
schedule for each category. For example, the physician could specify
“exercise 30 minutes every day” for the exercise-goals category and “reduce
salt intake” for the nutritional-goals category. Subsequently, the physician
could determine the patient’s compliance with the goals in the two goals
categories, e.g., by speaking with the patient. In addition, the physician
could mentally determine mapping coefficients between the life goals and
the two goals categories, e.g., totaling 60% for the exercise-goals category
and totaling 40% for the nutritional-goals category. Moreover, for two
display segments associated with the two goals categories, the physician
could mentally determine a size for each segment based on the mapping
coefficient and mentally determine a color for each segment based on the
patient’s compliance.
For these reasons, the above-identified limitations encompass
evaluations practically performed by a human mentally or with pen and
paper. The 2019 Guidance identifies an evaluation practically performed by
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a human mentally or with pen and paper as a mental process, and thus an
abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see also Intellectual Ventures
I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”) (“Symantec”).
Mayo/Alice Step One: PTO Step 2A Prong Two
Because we determine that each independent claim recites an abstract
idea, we consider whether each claim as a whole integrates the recited
abstract idea into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, system claim 1 recites computer components,
i.e., a “processor” and a “non-transitory computer-readable storage
medium.” App. Br. 25–26. Method claim 17 does not recite any computer
components. Id. at 29–30. System claim 19 recites an “authorizer,”
a “mapper,” a “compiler,” and a “visualizer” for performing various
functions. Id. at 30–31. Broadly but reasonably interpreted in light of the
Specification, those elements in claim 19 encompass software modules, not
hardware components. See, e.g., Spec. 5:21–11:32, 13:3–34, Figs. 3–4. For
example, the Specification explains that mapper 32, compiler 33, mapper 35,
and visualizer 36 “may be implemented as a common software tool or as
separate software modules which are coupled together.” Id. at 6:11–12.
Thus, claim 19 does not recite any computer components.
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The independent claims also recite data-collecting and data-presenting
limitations. Id. at 25–26, 29–31. For instance, claim 1 recites the following
data-collecting and data-presenting limitations:
● “receiving life goal information defined by a user, the
life goal information indicating the user’s life goals”;
● “for each of the care plan goals categories, . . .
graphically representing the care plan goals
category by a segment”;
● “for each of the segments, causing the segment to
be overlaid over at least a portion of a user-selected
image, wherein a configuration of the overlay is
based on the determined first characteristic and
the determined second characteristic.”
App. Br. 25–26. Claims 17 and 19 recite similar data-collecting and data-
presenting limitations. Id. at 29–31.
We determine that each independent claim as a whole does not
integrate the recited abstract idea into a practical application because the
additional elements do not impose meaningful limits on the abstract idea.
See 84 Fed. Reg. at 53–54; see also Final Act. 3–4. The claimed computer
components constitute generic computer components that perform generic
computer functions. See Final Act. 3, 5–6; Ans. 8; see also Spec. 6:1–13,
12:26–13:34. Further, the data-collecting and data-presenting limitations
constitute insignificant extra-solution activity. See, e.g., Mayo, 566 U.S.
at 79; Bilski v. Kappos, 561 U.S. 593, 611–12 (2010); Apple, 842 F.3d
at 1241–42; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64
(Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011); In re Grams, 888 F.2d 835, 839–40 (Fed. Cir.
1989).
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As an example of insignificant extra-solution activity, in Mayo the
Supreme Court decided that measuring metabolite levels for later analysis
constituted purely “conventional or obvious” pre-solution activity. Mayo,
566 U.S. at 79. Similarly, the Federal Circuit has held that mere data-
gathering steps “cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The
Federal Circuit has also held that (1) presenting offers to potential customers
and (2) gathering statistics concerning customer responses were
“conventional data-gathering activities that d[id] not make the claims patent
eligible.” OIP Techs., 788 F.3d at 1363–64. Consistent with those
decisions, the Manual of Patent Examining Procedure (“MPEP”) identifies
“gathering data” as an example of insignificant pre-solution activity. MPEP
§ 2106.05(g) (9th ed. rev. 08.2017 Jan. 2018).
Here, the data-collecting limitations amount to mere data-gathering
steps and require nothing unconventional or significant. See Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir.
2011) (analogizing “data gathering” to “insignificant extra-solution
activity”). For example, the Specification explains that the system
“preferably requests an input from the patient, e.g. through the patient’s
input/feedback device 40, in order to identify his personal importance for at
least some (preferably all) care plan goals categories.” Spec. 6:29–32.
Hence, the data-collecting limitations do not help integrate the recited
abstract ideas into a practical application.
Further, in Flook the Supreme Court decided that adjusting an alarm
limit according to a mathematical formula was “post-solution activity” and
insufficient to confer eligibility. Parker v. Flook, 437 U.S. 584, 590, 596–98
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(1978). Similarly, the Federal Circuit has held that printing menu
information constituted insignificant post-solution activity. Apple, 842 F.3d
at 1241–42. Consistent with those decisions, the MPEP identifies printing
“to output a report” as an example of insignificant post-solution activity.
MPEP § 2106.05(g).
Here, the data-presenting limitations require graphically representing
each “care plan goals category by a segment” and causing “the segment[s] to
be overlaid over at least a portion of a user-selected image.” App.
Br. 25–26, 30–31. The data-presenting limitations require no particular
presentation tool and nothing unconventional or significant. Just as printing
menu information in Apple constituted insignificant post-solution activity,
segmenting overlay information here constitutes insignificant post-solution
activity. Consistent with this, the Specification describes displaying either a
dashboard “divided into segments” representing “different care plan goals
categories” or “conventional charts like pie charts, bar charts, or simply . . .
numbers.” Spec. 11:21–32. Hence, the data-presenting limitations do not
help integrate the recited abstract ideas into a practical application.
Appellants argue that the claims “recite a particular ordered
combination of operations to provide a particular useful application that
improves another technology or technical field (e.g., telehealth care interface
systems, etc.).” App. Br. 20; Reply Br. 3; see App. Br. 19–21; Reply Br.
6–8, 10–11, 13–15. Specifically, Appellants assert that the claims “provide
at least an improvement to prior telehealth systems by addressing problems
arising from an inability to arrange information in a single view of a
telehealth interface to promote user compliance with a telehealth care plan,”
and “address the problems of the prior art computer systems.” App. Br. 21;
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see Reply Br. 8. In addition, Appellants contend that the claims are
“directed to an improved user interface for computing devices (e.g., by
configuring the overlay of each of the segments over at least its respective
portion of a user-selected image based on the respective dimensional
characteristic and color characteristic parameters).” Reply Br. 6 (emphasis
omitted); see App. Br. 19–20; Reply Br. 10. According to Appellants, “the
claimed solution solves the foregoing technical information presentation
problem.” App. Br. 20.
Appellants’ arguments do not persuade us of Examiner error because
the Examiner correctly determines that the claims fail to “improve[] the
functioning of a computer” or “any other technology.” Final Act. 4; see
Ans. 4–5, 7–8. As the Examiner properly reasons, presenting “information
on a single page is . . . not a technological improvement” because “[i]t is old
and well known in the technology that information can be customized and
displayed on a single page such as an excel spread sheet.” Ans. 8.
“[M]erely providing a” user “with new or different information in an
existing” user interface “is not a technical solution to a technical problem.”
See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1383 (Fed. Cir.
2019) (“Trading Techs. II”).
Further, “[a]s a general rule, ‘the collection, organization, and display
of two sets of information on a generic display device is abstract.’” Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (quoting
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018))
(“Trading Techs. I”). Here, a generic display device suffices for
implementing the claimed invention. App. Br. 25–26, 29–31; see Spec.
6:9–11, 13:3–4, 13:21–30.
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In addition, the Specification explains that the invention endeavors to
provide “a personalized care plan for a user, by which a better motivation
and compliance of the user to the care plan can be achieved,” and thus obtain
“better clinical outcomes.” Spec. 1:19–20, 2:5–8. Hence, the invention
focuses on improving a user (or patient) care plan, not the functioning of a
computer or another device. See Trading Techs. I, 921 F.3d at 1090–91;
Trading Techs. II, 921 F.3d at 1383–84. As the Examiner properly reasons,
“the focus of the present claims ‘is not such an improvement in computers as
tools, but on certain independently abstract ideas that use computers as
tools.’” Ans. 8 (quoting Elec. Power, 830 F.3d at 1354).
Appellants analogize the claims here to the claims in the following
cases: Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2018); Thales Visionix Inc. v. United States, 850 F.3d 1343
(Fed. Cir. 2017); McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). See, e.g., App. Br. 8–9,
11–12, 17–21; Reply Br. 2–3, 6, 10–12. But the claims here do not resemble
the claims in any of those cases.
In Core Wireless, the “claims recite[d] a specific improvement over
prior systems,” i.e., a “particular manner of summarizing and presenting
information in electronic devices.” Core Wireless, 880 F.3d at 1362–63.
The Federal Circuit decided that the claims satisfied § 101 under Mayo/Alice
step one because the “invention improve[d] the efficiency of using the
electronic device.” Id. at 1363.
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Unlike the claims in Core Wireless, the claims here do not improve
the efficiency of using a computer or another device. As discussed above,
the invention focuses on improving a user (or patient) care plan, not the
functioning of a computer or another device. See Trading Techs. I, 921 F.3d
at 1090–91; Trading Techs. II, 921 F.3d at 1383–84. Here, “the purported
advance ‘is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions.’” Trading Techs. II,
921 F.3d at 1385 (quoting Elec. Power, 830 F.3d at 1354).
In Thales, the patent at issue disclosed “an inertial tracking system for
tracking the motion of an object relative to a moving reference frame.”
Thales, 850 F.3d at 1344. Each independent claim required two inertial
sensors, i.e., one sensor mounted on the object and another sensor mounted
on the moving reference frame. Id. at 1345–46, 1348. The claimed inertial
sensors supplied signals for determining the object’s orientation relative to
the moving reference frame. Id. at 1345–46, 1348. The Federal Circuit
decided that the claims satisfied § 101 under Mayo/Alice step one because
they were directed to using “inertial sensors in a non-conventional manner to
reduce errors in measuring the relative position and orientation of a moving
object on a moving reference frame.” Id. at 1348–49.
Unlike the claims in Thales, the claims here do not specify a
non-conventional manner for arranging conventional components. App.
Br. 25–26, 29–31; see Ans. 8. Moreover, they do not require any sensors.
In McRO, the claims recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
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synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. In McRO, “the incorporation of the claimed
rules” improved an existing technological process. Id. at 1314.
Unlike the claims in McRO, the claims here do not improve an
existing technological process. See Alice, 573 U.S. at 223 (explaining that
“the claims in Diehr were patent eligible because they improved an existing
technological process”); see also Final Act. 4; Ans. 4–5, 7–8. As the
Examiner correctly determines, the claims do not recite “rules that enable
the automation of specific tasks that previously could not be automated or
limitations necessarily rooted in computer technology.” Ans. 5. Instead, the
claims encompass manual or mental “steps that are linked to a computer in
order to automate an existing manual process of creating a personalized care
plan for a user.” Id.
In Enfish, the claims recited a “specific improvement to the way
computers operate,” i.e., an improved database configuration that permitted
faster and more efficient searching. Enfish, 822 F.3d at 1330–33, 1336.
Further, the Federal Circuit has explained that the claims in Enfish “did more
than allow computers to perform familiar tasks with greater speed and
efficiency” and “actually permitted users to launch and construct databases
in a new way.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305
(Fed. Cir. 2018).
Unlike the claims in Enfish, the claims here do not improve computer
functionality itself. See Final Act. 3–4; Ans. 4–5, 7–8; see also Secured
Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017)
(explaining that the claims in Enfish “focused on an improvement to
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computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity”). As the Examiner properly
reasons, “the focus of the present claims ‘is not such an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools.’” Ans. 8 (quoting Elec. Power, 830 F.3d at 1354). For
instance, the claims do not recite an advance in hardware or software that
causes a computer itself to operate faster or more efficiently. Further, the
claims employ a “processor” and a “non-transitory computer-readable
storage medium” in their ordinary capacities to manipulate and store data.
See App. Br. 25–26, 29–31; Spec. 13:3–27; see also Alice, 573 U.S. at 226.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied § 101 under Mayo/Alice step two because “the claimed solution
amount[ed] to an inventive concept for resolving [a] particular Internet-
centric problem,” i.e., a challenge unique to the Internet. DDR Holdings,
773 F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR Holdings, we held that
claims ‘directed to systems and methods of generating a composite web page
that combines certain visual elements of a “host” website with content of a
third-party merchant’ contained the requisite inventive concept”). The
Federal Circuit explained that the patent-eligible claims specified “how
interactions with the Internet are manipulated to yield a desired result . . .
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258.
The court reasoned that those claims recited a technological solution
“necessarily rooted in computer technology” that addressed a “problem
specifically arising in the realm of computer networks.” Id. at 1257.
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According to the Federal Circuit, “DDR Holdings does not apply
when . . . the asserted claims do not ‘attempt to solve a challenge particular
to the Internet.’” Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). Unlike the patent-eligible
claims in DDR Holdings, the claims here do not attempt to solve a challenge
particular to the Internet. See App. Br. 25–26, 29–31. Among other things,
the claims do not recite a network or even require a connection between two
different devices.
In BASCOM, the claims recited a “specific method of filtering Internet
content” requiring “the installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user.” BASCOM, 827 F.3d at 1345–46, 1350. The Federal Circuit
reasoned that the claims covered “a technology-based solution . . . to filter
content on the Internet that overcomes existing problems with other Internet
filtering systems” and “improve[s] an existing technological process.” Id.
at 1351 (citing Alice, 573 U.S. at 223); see Alice, 573 U.S. at 223
(explaining that “the claims in Diehr were patent eligible because they
improved an existing technological process”).
Unlike the claims in BASCOM, the claims here do not cover a
technology-based solution that improves an existing technological process.
See Final Act. 3–4; Ans. 4–5, 7–8. As the Examiner correctly determines,
the claims fail to “improve[] the functioning of a computer” or “any other
technology.” Final Act. 4; see Trading Techs. II, 921 F.3d at 1383.
Appellants argue that the Examiner provides “absolutely no analysis
explaining why the ordered combination as a whole does not amount to
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patent-eligible subject matter.” App. Br. 18. We disagree. The Examiner
explains that “[l]ooking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements taken
individually.” Final Act. 4; see Ans. 5–6.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellants’ arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract idea into a practical application. Thus, each claim is directed
to a judicial exception and does not satisfy § 101 under Mayo/Alice step one.
Mayo/Alice Step Two: PTO Step 2B
Because we determine that each independent claim is directed to a
judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power, 830 F.3d at 1353). An “inventive
concept” requires more than “well-understood, routine, conventional activity
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already engaged in” by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79–80). But a “non-conventional and non-generic arrangement
of known, conventional pieces” may provide an “inventive concept”
satisfying step two. BASCOM, 827 F.3d at 1350.
As discussed above, the independent claims recite computer
components, i.e., a “processor” and a “non-transitory computer-readable
storage medium.” App. Br. 25–26, 29–31. The Examiner correctly finds
that the claimed computer components are “recited at a high level of
generality” and “recited as performing generic computer functions routinely
used in computer applications.” Final Act. 3; see id. at 5–6; Ans. 8.
Consistent with the Examiner’s findings, the Specification describes
the claimed computer components generically and evidences their
conventional nature. See, e.g., Spec. 6:1–13, 12:26–13:34. As an example,
the Specification explains that the software “may be implemented on a
common processor or on two or more separate processors.” Id. at 6:7–11.
As another example, the Specification explains that a “data processing
system or device suitable for storing and/or executing computer readable or
computer usable program code will include one or more processors coupled
directly or indirectly to memory elements.” Id. at 13:21–23. In addition, the
Specification states that the “computer-readable storage medium can be, for
example, without limitation, an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system, or a propagation
medium,” including “a semiconductor or solid state memory, magnetic tape,
a removable computer diskette, a random access memory (RAM), a read-
only memory (ROM), a rigid magnetic disk, and an optical disk,” e.g.,
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“compact disk – read only memory (CD-ROM), compact disk-read/write
(CD-R/W), and DVD.” Id. at 13:8–14.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972)).
In addition, the claimed computer components operate to collect,
manipulate, and communicate data. App. Br. 25–26, 29–31. Court
decisions have recognized that generic computer components operating to
collect, manipulate, and communicate data are well understood, routine, and
conventional to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP
Am., 898 F.3d at 1164–65 & n.1, 1170; Symantec, 838 F.3d at 1316–20;
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir.
2015); Ultramercial, 772 F.3d at 715–16; buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014).
For example, the system claims in Alice recited a “data processing
system” (e.g., a “processor”) with a “communications controller” and a “data
storage unit” (e.g., a “non-transitory computer-readable storage medium”).
Alice, 573 U.S. at 226. The Supreme Court decided that the system claims
failed to satisfy § 101 because “[n]early every computer” includes those
generic components for performing “basic calculation, storage, and
transmission functions” and the system claims simply implemented the same
abstract idea as the method claims. Id. at 226–27. The Court reasoned that
(1) “the system claims are no different from the method claims in
substance”; (2) “[t]he method claims recite the abstract idea implemented on
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a generic computer”; and (3) “the system claims recite a handful of generic
computer components configured to implement the same idea.” Id. at 226.
Here, the claimed computer components perform “basic calculation,
storage, and transmission functions” that nearly every computer performs.
App. Br. 25–26, 29–31; see Final Act. 3, 5–6; Ans. 8. For instance, nearly
every computer includes a “processor” for manipulating data and a “non-
transitory computer-readable storage medium” for storing data. Hence,
those generic computer components do not satisfy the “inventive concept”
requirement. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding that “generic computer
components such as an ‘interface,’ ‘network,’ and ‘database’” did not satisfy
the “inventive concept” requirement); FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1095–96 (Fed. Cir. 2016) (describing the claimed
“microprocessor” and “user interface” as “generic computer elements”);
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17
(Fed. Cir. 2017) (describing the claimed “authentication server,” “access
server,” “Internet Protocol network,” “client computer device,” and
“database” as “indisputably generic computer components”).
We reach a similar conclusion concerning the data-collecting and
data-presenting limitations, e.g., the “receiving,” “graphically representing,”
and “causing” limitations in claims 1 and 17. As discussed above, the data-
collecting limitations amount to mere data-gathering steps and require
nothing unconventional or significant. As also discussed above, the data-
presenting limitations require no particular presentation tool and nothing
unconventional or significant. Consequently, the claimed insignificant
extra-solution activity does not satisfy the “inventive concept” requirement.
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See, e.g., Mayo, 566 U.S. at 79–80; Flook, 437 U.S. at 590; OIP Techs.,
788 F.3d at 1363–64; CyberSource, 654 F.3d at 1370.
Insofar as Appellants rely on the recited abstract ideas to satisfy the
“inventive concept” requirement, they wrongly do so. A “claimed
invention’s use of the ineligible concept,” e.g., an abstract idea, “cannot
supply the inventive concept that renders the invention ‘significantly more’
than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered” abstract idea “cannot rely on the novelty of
that discovery for the inventive concept necessary for patent eligibility.”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Appellants urge that there is no evidence that the claim elements
“requir[e] no more than a generic computer to perform generic functions.”
App. Br. 18; see Reply Br. 9, 11. As discussed above, court decisions have
recognized that generic computer components operating to collect,
manipulate, and communicate data are well understood, routine, and
conventional to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP
Am., 898 F.3d at 1164–65 & n.1, 1170; Symantec, 838 F.3d at 1316–20;
Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d at 715–16; buySAFE,
765 F.3d at 1355.
Appellants assert that the Examiner cites “no evidence to show that
the claims in the instant application simply automate a well-understood,
routine, conventional activity.” App. Br. 22; see Reply Br. 7–8, 11.
Similarly, Appellants assert that the Examiner’s “complete lack of evidence”
that “a non-computer-implemented version of the claimed invention was a
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well-understood, routine, conventional activity disclosed in a prior reference
or system” renders the rejection improper. Reply Br. 7; see App. Br. 15.
Appellants’ assertions rest on a misunderstanding of the analysis
under Mayo/Alice step two. Appellants’ supposed test, i.e., “simply
automate a well-understood, routine, conventional activity,” does not
correspond to the boundary between eligible and ineligible subject matter
under step two. Claims may lack an “inventive concept” for reasons other
than they “simply automate a well-understood, routine, conventional
activity.” For example, the claims in Flook did not “simply automate a well-
understood, routine, conventional activity.” See Flook, 437 U.S. at 585–86,
596–98. The Supreme Court described the claimed mathematical formula as
“novel.” Id. at 585. But the Court still decided that the claims failed to
satisfy § 101. Id. at 594–96. Further, the Federal Circuit has said, “We may
assume that the techniques claimed are ‘[g]roundbreaking, innovative, or
even brilliant,’ but that is not enough for eligibility.” SAP Am., 898 F.3d
at 1163 (alteration in original) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)).
To the extent Appellants allege differences between the claims and
“a prior reference or system,” these differences do not suffice for eligibility.
“[A] claim for a new abstract idea is still an abstract idea.” Synopsys,
839 F.3d at 1151 (emphasis in original). The “search for a § 101 inventive
concept” differs “from demonstrating § 102 novelty.” Id. Thus, the absence
of anticipation and obviousness “does not resolve the question of whether
the claims embody an inventive concept” under Mayo/Alice step two.
Symantec, 838 F.3d at 1315; see SAP Am., 898 F.3d at 1163.
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“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Given the claimed generic computer components that perform generic
computer functions and the claimed insignificant extra-solution activity, we
conclude that the combination of limitations in each independent claim does
not supply an “inventive concept” that renders the claim “significantly
more” than an abstract idea. Thus, each claim does not satisfy § 101 under
Mayo/Alice step two.
Summary for the Independent Claims
For the reasons discussed above, each independent claim fails to
satisfy § 101 under Mayo/Alice step one and step two. Hence, we sustain the
§ 101 rejection of the independent claims.
Dependent Claims 2–6, 8, 10, 11, 13–16, 18, and 20
We also sustain the § 101 rejection of dependent claims 2–6, 8, 10,
11, 13–16, 18, and 20 because Appellants do not argue eligibility separately
for them. See App. Br. 7–22; Reply Br. 2–15; 37 C.F.R. § 41.37(c)(1)(iv).
Dependent Claims 7, 9, 12, 21, and 22
Claims 7, 9, and 12 depend directly or indirectly from claim 1,
claim 21 depends directly from claim 17, and claim 22 depends directly
from claim 19. Appellants argue eligibility separately for these dependent
claims. See App. Br. 17, 21–22. For instance, Appellants assert that the
Examiner “failed to identify” the features in these dependent claims when
determining what the claims are directed to. Id. at 17.
Appellants’ arguments do not persuade us of Examiner error because
the dependent claims merely narrow the abstract ideas recited in the
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independent claims. Ans. 6–7; see Final Act. 4. Dependent claims that
merely narrow an abstract idea “add nothing outside the abstract realm.”
SAP Am., 898 F.3d at 1169. For example, dependent claims 12, 21, and 22
specify details about the “first characteristic” and the “second
characteristic,” e.g., that the “first characteristic” corresponds to “a size” and
the “second characteristic” corresponds to “a brightness.” App. Br. 28, 32.
But adding “a degree of particularity” does not save a claim from
abstraction. See Ultramercial, 772 F.3d at 715; see also BSG Tech, 899 F.3d
at 1287 (explaining that “a claim is not patent eligible merely because it
applies an abstract idea in a narrow way”).
Further, claim 7 recites “receiving measurement data,” i.e., additional
insignificant pre-solution activity. App. Br. 27. Similarly, claim 9 recites
“visualizing” information, i.e., additional insignificant post-solution activity.
Id. at 28.
In addition, the dependent claims employ the same generic computer
components as the independent claims to perform generic computer
functions, e.g., collecting, manipulating, and communicating data. App.
Br. 25–26, 28–32; see Final Act. 3–6; Ans. 6–8. Given the claimed generic
computer components that perform generic computer functions and the
claimed insignificant extra-solution activity, we conclude that the
combination of limitations in each dependent claim does not supply an
“inventive concept” that renders the claim “significantly more” than an
abstract idea.
For the reasons discussed above, dependent claims 7, 9, 12, 21, and 22
fail to satisfy § 101 under Mayo/Alice step one and step two. Hence, we
sustain the § 101 rejection of these dependent claims.
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DECISION
We affirm the Examiner’s decision to reject claims 1–22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED