McLaren, Jeffrey Lee. et al.

Patent Trials and Appeals Board

Feb 27, 2020

12789858 - (D) (P.T.A.B. Feb. 27, 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.
12/789,858 05/28/2010 Jeffrey Lee McLaren 080415.0103 9410
5073 7590 02/27/2020
BAKER BOTTS L.L.P.
2001 Ross Avenue, Suite 900
Dallas, TX 75201
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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):
PTOmail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY LEE MCLAREN, WILLIAM DYER RODES II, and
JOHN MALCOLM TOUPS
____________

Appeal 2018-007899
Application 12/789,8581
Technology Center 3600
____________

Before MICHAEL W. KIM, MURRIEL E. CRAWFORD, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1−5 and 7−24. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Medaxion, LLC as the real party in interest.
App. Br. 2.
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THE INVENTION
Appellant states “[t]he present invention relates generally to managing
medical data, and more specifically to managing medical case and
chronology information for one or more medical practices.” Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A handheld apparatus comprising: a user interface
comprising a display and capable of receiving user input;
a wireless network interface capable of coupling to a
central medical information management system, the central
medical information management system maintaining a
plurality of case chronology templates, each of the case
chronology templates corresponding to a particular one of a
plurality of medical treatment facilities and defining a series of
anesthesiology-related medical events customized for the
particular facility, and a plurality of
patient treatment records for patients receiving care at the
medical treatment facilities, each of the patient treatment
records linked to one of the medical treatment facilities and
corresponding to a patient treatment record having a time
record associated with each of the anesthesiology-related
medical events defined by the case chronology template
corresponding to the facility;
a memory maintaining a medical information
management application; and
a processor operable, when executing the medical
information management application, to:
query the central medical information management
system, using a selected one of the medical treatment
facilities, to retrieve a case chronology template
corresponding to the selected medical treatment facility;
retrieve a list of patient treatment records that
correspond to the selected facility;
query the central medical information management
system for a selected one of the patient treatment records
based on user input;
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retrieve a patient treatment record corresponding to
the selected patient treatment record from the medical
information management system;
display the anesthesiology-related medical events
defined by the case chronology template corresponding
to the selected facility and, for each of the
anesthesiology-related medical events, a current value of
the time record associated with the medical event as
indicated by the received patient treatment record;
determine a need for a time update indicating a
time for a selected one of the anesthesiology-related
medical events for the received patient treatment record;
determine a current time as the indicated time for
the selected anesthesiology-related medical event;
update the medical information management
system to indicate the current time as the time update for
the selected anesthesiology-related medical event;
retrieve updated information for the received
patient treatment record from the medical information
management system, the updated information
incorporating the time update; and
update the display of the anesthesiology-related
medical events to reflect the updated information.

THE REJECTION
The following rejection is before us for review:
Claims 1−5 and 7−24 are rejected under 35 U.S.C. § 101.
FINDINGS OF FACT
We adopt the Examiner’s findings, as set forth on pages 3–6 in the
Final Office Action2 and on pages 2–3 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

2 All references to the Final Office Action refer to the Final Office Action
mailed on March 8, 2017.
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ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–5, and 7–27 under 35 U.S.C.
§ 101.
The Appellant argues claims 1–5, and 7–27 as a group. (Appeal Br.
8). We select claim 1 as the representative claim for this group, and so the
remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)
(2015).
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 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).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. 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 id. 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
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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 water-proof 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
Supreme 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 attempt to patent a mathematical formula.”). Having
said that, the Supreme 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. (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
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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.
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)
(“Guidance”).3 “All USPTO personnel are, as a matter of 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

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
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 This evaluation is performed by (a) identifying whether there are any
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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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56.The U.S. Court of Appeals for the
Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-
one filter to claims, considered in light of the [S]pecification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
“abstract idea” for which computers are invoked merely as a tool. See
Enfish, 822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a

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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meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance at
53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states:
Practice data represents practice wide settings and preferences
corresponding to a medical practice and, potentially, for one or
more specific practice locations. This may include rules and
policies for managing medical data instituted by a particular
medical practice. Practice data may also include a core set or
subset of medical procedure terminology for a medical practice
or procedure. Such medical procedure terminology may
conform to Current Procedural Terminology (CPT) or
International Classification of Diseases (ICD) codes. Such
codes may be used in conjunction with recording billing-related
events for a particular practice. Practice data may also include
information related to historic utilization and appropriate future
allocation of medical professional resources available to the
practice. Other information included in practice data may
include billing report preferences, billing export preferences,
and any translation or transmission settings necessary to
communicate various reports to the defined medical practice at
a particular location. This information facilitates the generation
of billing reports and invoices in the desired format for a
practice.
Spec. ¶ 61.
Location data includes information corresponding to a defined
practice location, either tied to a particular medical practice at
that location or based on rules of information about multiple
medical practices that may provide care at that location.
Location data may include case chronology templates, checklist
templates, quality control templates (such as a physician quality
reporting incentives (PQRI) template), and other templates for
capturing information in a form customized to a particular
practice location or practice location / medical practice
specified manner. These templates facilitate the recording of
medical events occurring in the field, in addition to facilitating
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the real-time tracking of quality control measures. For
example, a case chronology template may define a set of rules
regarding entry of medical events associated with a procedure
and include time events or other entries. Case chronology
templates may be manually and/or dynamically adjusted based
on operations at one or more practice locations, such as based
on feedback showing a particular event that consistently must
be manually entered at a particular practice location.
Spec. ¶ 62.
Rules data defines permitted or prohibited activities
corresponding generally to users, medical professional roles,
specific medical practices, locations, medical procedures, or
other activities. For example, these rules may implement
practice-specific or location-specific policies affecting medical
professionals or relevant medical events. For example, a rule
for an anesthesia practice may prohibit an anesthesiologist from
managing more than four CRNAs. Thus these rules provide
guidelines for active case management in terms of a workflow
that can be specific to a medical specialty or a medical facility.
Spec. ¶ 63.
Claim 1 recites, in pertinent part:
. . . maintaining a plurality of case chronology templates, each
of the case chronology templates corresponding to a particular
one of a plurality of medical treatment facilities and defining a
series of anesthesiology-related medical events customized for
the particular facility, and a plurality of patient treatment
records for patients receiving care at the medical treatment
facilities, each of the patient treatment records linked to one of
the medical treatment facilities and corresponding to a patient
treatment record having a time record associated with each of
the anesthesiology related medical events defined by the case
chronology template corresponding to the facility; . . .; and . . .
executing . . . to:
query the central medical information management
system, using a selected one of the medical treatment facilities,
to retrieve a case chronology template corresponding to the
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selected medical treatment facility; retrieve a list of patient
treatment records that correspond to the selected facility; query
for a selected one of the patient treatment records based on user
input; retrieve a patient treatment record corresponding to the
selected patient treatment record; display the anesthesiology-
related medical events defined by the case chronology template
corresponding to the selected facility and, for each of the
anesthesiology-related medical events, a current value of the
time record associated with the medical event as indicated by
the received patient treatment record; determine a need for a
time update indicating a time for a selected one of the
anesthesiology-related medical events for the received patient
treatment record; determine a current time as the indicated time
for the selected anesthesiology related medical event;
update . . . to indicate the current time as the time update
for the selected anesthesiology-related medical event;
retrieve updated information for the received patient
treatment record from the medical information management
system, the updated information incorporating the time update;
and
update the display of the anesthesiology-related medical
events to reflect the updated information.
The Examiner found claim 1 recites elements “similar to the abstract
idea of using categories to organize, store and transmit information because
the claims define organizing templates based on the medical facility and then
transmitting the appropriate selected patient record based on both the
appropriate template in conjunction with the medical facility.” (Final Act.
3).
Based on this intrinsic evidence and findings, we find that the claims
recite a mental process because claim 1 recites steps that can be performed
practically in the human mind, and that, relatedly, are perceptible only in the
human mind, such as, “retriev[ing] a list of patient treatment records that
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correspond to the selected facility;” “query[ing] . . . for a selected one of the
patient treatment records based on user input;” “retriev[ing] a patient
treatment record corresponding to the selected patient treatment record . . . ;”
“determin[ing] a need for a time update indicating a time for a selected one
of the anesthesiology-related medical events for the received patient
treatment record;” “determin[ing] a current time as the indicated time for the
selected anesthesiology related medical event;” updating . . . to indicate the
current time as the time update for the selected anesthesiology-related
medical event;” “retriev[ing] updated information for the received patient
treatment record . . . , the updated information incorporating the time
update.”
The Federal Circuit has held similar concepts to be mental processes.
For example, the Federal Circuit has held that mental processes can include
the concepts of collecting data, analyzing the data, and reporting the results
of the collection and analysis, including when limited to particular content.
See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017) (identifying claims for collecting, displaying,
and manipulating data as patent ineligible); Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting
information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as mental processes
within the realm of abstract ideas); see also SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1168 (Fed. Cir. 2018)

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Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a wireless network interface,” “a memory,” and “a
processor.” These components are described in the specification at a high
level of generality. See Spec. ¶¶ 24–36, Figs. 1–4. We fail to see how the
generic recitations of these most basic computer components and/or of a
system so integrates the judicial exception as to “impose[] a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” Guidance 84 Fed.
Reg. at 53.
As to the claim limitations reciting displaying of data, e.g., “display
the anesthesiology-related medical events,” and “update the display of the
anesthesiology-related medical events to reflect the updated information,”
these limitations are extra/post solution activities. Limitations of displaying
the results of an analysis is simply outputting the results of the analyses, a
post-solution activity. See id.; Bilski, 561 U.S. at 610–11 (“Flook stands for
the proposition that the prohibition against patenting abstract ideas ‘cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant post solution activity.”’)
(quoting Diehr, 450 U.S. at 191–92); Electric Power, 830 F.3d at 1354.
Thus, we find that the claims recite the judicial exception of a mental
process that is not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to anesthesiology-related medical events, does not make them any
less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015) (“And that the claims do not preempt all price
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optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to a judicial exception, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements sufficient to ensure that the claim in
practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step the Examiner found the following:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements amount to no more than generic
computer components that serve to merely link the abstract idea
to a particular technological environment (i.e., a user interface,
a wireless network interface, a memory, a processor)
performing routine and conventional activities that are well-
understood in the healthcare industry. Accordingly these
elements are insufficient to amount to significantly more than
the abstract ideas themselves.
Final Act. 3. We agree with the Examiner. “[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 to query, retrieve, display, determine, update and apply decision
criteria to data, and modify the same, amounts to electronic data query and
retrieval—one of the most basic functions of a computer. All of these
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computer functions are well-understood, routine, conventional activities
previously known to the industry. See Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d at 1354; 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”). In short, each step does no more than require a
generic computer to perform generic computer functions. The claims do not,
for example, purport to improve the functioning of the computer itself. In
addition, as we stated above, the claims do not affect an improvement in any
other technology or technical field. The Specification spells out different
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of information access under different scenarios (see, e.g., ¶¶ 24–
36, Figs. 1–4). Thus, the claims at issue amount to nothing significantly
more than instructions to apply the abstract idea 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–
226.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (query,
retrieve, query, retrieve, display, determine, update, retrieve and update data)
and storing is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
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allowing access, and receiving payment, as claimed, recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (holding that recited sequence of data retrieval, analysis,
modification, generation, display, and transmission was abstract), Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (holding recited sequence of processing, routing, controlling, and
monitoring was abstract). The ordering of the steps is, therefore, ordinary
and conventional.
We have reviewed all the arguments that the Appellant have
submitted concerning the patent eligibility of the claims before us that stand
rejected under 35 U.S.C. § 101. (App. Br. 8–15, Reply Br. 2–6). We find
that our analysis above substantially covers the substance of all the
arguments, which have been made. But, for purposes of completeness, we
will address various arguments in order to make individual rebuttals of
same.
Citing to See Trading Techs. Int'l, Inc. v. CQG, INC., 675 Fed. App’x
1001, 1004 (Fed. Cir. 2017), Appellant argues:
Specifically, the pending claims are directed to specific and
unconventional systems and methods of managing medical case
and chronology data. The unconventional systems and methods
described in the specification, to which the pending claims are
directed, are improvements to conventional systems and
methods of managing medical case and chronology data.
(Appeal Br. 9).
As explained in the specification, updating a patient treatment
record in this manner may reduce transcription errors and/or
cause facilitate streamlined access to medical case information
and real-time tracking of specific cases. See id. at ¶¶ 0094,
0104, 0108. Thus, pending Claim 1 is directed to an
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improvement in the field of managing medical case and
chronology data.
(Id. at 10).
We are unpersuaded because improvements to methods of managing
medical case and chronology data are improvements to the mental processes
of collecting data, analyzing the data, and reporting the results of the
collection and analysis, including when limited to particular content, that is,
the alleged improvement lies in the abstract idea itself, not to any
technological improvement. See BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1287–88 (Fed. Cir. 2018). Although the claims purport to
efficiently facilitate the necessary redacting of data, our reviewing court has
held that speed and accuracy increases stemming from the ordinary
capabilities of a general purpose computer “do[] not materially alter the
patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012).
Also, the Appellant’s argument that the process involves “real-time
tracking of specific cases” (Appeal Br. 10) fails from the outset because the
recitation, “real-time tracking of specific cases,” does not appear in the
claims.
Similarly, Appellant also argues,
Claim 1 describes a medical information management
application having a particular interface structure, wherein each
interface is associated with prescribed functionality (e.g., the
interface comprising time records for each anesthesiology-
related medical event is configured to update a current time as
the indicated time for a selected anesthesiology-related medical
event).
(Appeal Br. 10).
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We disagree with the Appellant. First, a review of the language of
claim 1 reveals that the “wireless network interface” is recited only
functionally, i.e., being “capable of receiving user input.” After that, there is
no mention in claim 1 of the wireless network interface again and/or of its
functioning within the remaining aspects of the claim. Assuming that
Appellant means it is the generically recited “processor” whose functions
effect the recited, “retrieve updated information” and “update the display”
(Claim 1), we fail to see how using a processor, to perform these most basic
control functions, is anything other than “an idea that has long existed.”
(Appeal Br. 10, citing Trading Technologies Int'l, Inc., 675 Fed.Appx. at
1004.).
The Trading Technologies court was clear to distinguish the
advancement in technology made by the claimed GUI from an abstraction,
stating:
the challenged patents do not simply claim displaying
information on a graphical user interface. The claims require a
specific, structured graphical user interface paired with a
prescribed functionality directly related to the graphical user
interface’s structure that is addressed to and resolves a
specifically identified problem in the prior state of the art.
Trading Technologies Int'l, Inc., 675 Fed. App’x 1001. By contrast, claim 1
before us here recites no such computer related specific features. At best,
claim 1 only generically recites, “a wireless network interface,” “a memory,”
and “a processor.” The processor at best performs the well known function
of refreshing a display with updated data. We find no indication in the
Specification, nor does Appellant direct us to any indication, that this
operation recited in independent claim 1 invokes any inventive
programming, require any specialized computer hardware or other inventive
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computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”). The claim simply
recites functional results to be achieved by any means. See, e.g., Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776
F.3d 1343, 1347 (Fed. Cir. 2014).
Appellant lists various limitations of claim 9 (Appeal Br. 12–13) as
examples of items that are significantly more than “using categories to
organize, store, and transmit information” without providing evidence or
persuasive argument that they are improvements in the computer. First,
Appellant’s mere restatement of the claim limitations on these pages does
not constitute substantive argument. Notwithstanding, we note that although
machine based entities are by definition in some sense technological, their
use has become so notoriously settled that merely invoking them is no more
than abstract conceptual advice to use well known technology for its
intended purpose. See In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607,
612–13 (Fed. Cir. 2016) (Using a generic telephone for its intended purpose
was a well–established “basic concept” sufficient to fall under Alice step 1).
The claim simply recites functional results to be achieved by any means.
See, e.g., Content Extraction and Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d at 1347.
We also note that the claim features that Appellant identifies as
unconventional limitations on pages 12–13 of the Appeal Brief still make up
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the abstract idea itself, i.e., “querying the medical information management
system for a selected one of the patient treatment records based on user
input;” “retrieving a patient treatment record corresponding to the selected
patient treatment record from the medical information management system;”
“determining a need for input of a time update indicating a time for a
selected one of the anesthesiology-related medical events for the received
patient treatment record;” and “determining a current time as the indicated
time for the selected anesthesiology-related medical event.” These are
features of the mental process and thus cannot constitute the “inventive
concept,” absent recitation of element which account for significantly more
that the abstract idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed.
Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive
concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s]
untouched the numerous cases from this court which have held claims
ineligible because the only alleged ‘inventive concept’ is the abstract idea.”);
see also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”).
Appellant next argues, “the pending claims amount to significantly
more than an abstract idea because the claims recite an inventive concept.”
(Appeal Br. 13).
Although the second step in the Mayo/Alice framework is termed a
search for an “inventive concept,” the analysis is not an evaluation of
novelty or non-obviousness, but rather, a search for “an element or
combination of elements that is ‘sufficient to ensure that the patent in
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself.”’ Alice, 573 U.S. at 217–218. Appellant provides no
evidence or persuasive argument to the contrary.
Appellant argues that “the Examiner has failed to meet his initial
burden of showing that the claims are patent ineligible,” asserting that the
Examiner has determined claim limitations or concepts to be abstract that
have not been held by the courts as such. (Appeal Br. 14–15). Those
arguments are unpersuasive for the reasons set forth above.
With respect to any “initial burden,” all that is required, as the statute
itself instructs, is that the Examiner must “notify the applicant,” “stating the
reasons for such rejection,” “together with such information and references
as may be useful in judging the propriety of continuing the prosecution of
his application.” 35 U.S.C. § 132; see also In re Jung, 637 F.3d 1356, 1363
(Fed. Cir. 2011) (declining “to impose a heightened burden on examiners
beyond the notice requirement of § 132”). Here, as we found above, the
Examiner has made these findings as required by the statute. See Final Act.
3.
Specifically, in rejecting the pending claims under § 101, the
Examiner notified the Appellant that the claims are similar to those claims
directed to” using categories to organize, store and transmit information”
that were determined to be mental processes (Final Act. 3), and that “[t]he
claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception.” (Id.) Thus, we find that a
prima facie case was established by the Examiner.
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered, but are not persuasive
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of error. (See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-
related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”))).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1−5 and
7−24 under 35 U.S.C. § 101.
DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1−5, 7−24 101 Eligibility 1−5, 7−24

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).
AFFIRMED