MD Insider, Inc.

Patent Trials and Appeals Board

Jul 14, 2020

14482949 - (D) (P.T.A.B. Jul. 14, 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.
14/482,949 09/10/2014 David Lee Norris 082277.0115 8886
161098 7590 07/14/2020
Baker Botts L.L.P.
1001 Page Mill Road
Building One, Suite 200
Palo Alto, CA 94304-1007
EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/14/2020 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):
Cal-PTOMail@bakerbotts.com
hogene.choi@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID LEE NORRIS,
SUSANNE BETH GOLDSTEIN, JAY W. CALVERT,
BRIAN PATRICK CONROY,
and KINGSHUK CHATTERJEE
____________

Appeal 2019-005824
Application 14/482,949
Technology Center 3600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7, 9–17, and 19–21, which are all
of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies MD Insider, Inc. as the real party in
interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to search engines for healthcare
providers. Spec. ¶ 2.
Claims 1, 19, and 20 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal:
1. A method comprising:
receiving, by one or more computing devices of a performance-
engine system, an indication of one or more care-episodes from
a first client device, wherein each care-episode comprises:
an identifier for one or more physicians;
a base-concept corresponding to a medical-condition or
medical-treatment;
one or more sub-concepts associated with the base-
concept; and
a resource-usage factor;
calculating, by one or more computing devices, one or more cost-
factors, each cost-factor being calculated for a particular
physician and based at least in part on:
a particular base-concept;
one or more particular sub-concepts associated with the
base-concept; and
one or more care-episodes associated with the particular
base-concept and particular sub-concepts;
determining, by the one or more computing devices, a specialty
and geographic region of the particular physician;
selecting, by the one or more computing devices, a peer-group of
physicians, the peer-group comprising a plurality of physicians
having a common specialty and geographic region as the
particular physician; and
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calculating, by the one or more computing devices, a
performance-score for the particular physician with respect to the
particular base-concept, wherein the performance-score is based
on a weighted aggregate of individual performance-scores for
one or more sub-concepts associated with the particular base-
concept, wherein the individual performance-scores are
calculated by:
(1) accessing one or more Current Procedural
Terminology (CPT) codes from claims data received from the
particular physician, wherein the CPT codes refer to a medical
service provided by the particular physician in connection with
the one or more sub-concepts;
(2) determining one or more relative value units (RVUs)
corresponding to the one or more CPT codes, wherein the RVUs
corresponding to a CPT code represent a location-independent
measure of overall resources used for the treatment of the one or
more sub-concepts;
(3) calculating a physician-cost-factor for the particular
physician associated with the particular sub-concept, wherein the
physician-cost-factor is calculated based on the RVUs
corresponding to the medical service provided by the particular
physician for the particular sub-concept;
(4) accessing an average cost factor associated with the
particular sub-concept for the plurality of physicians of the peer
group; and
(5) comparing the physician-cost-factor with the average
cost factor, wherein the individual performance-score for the
particular physician for the one or more sub-concepts is
increased if the physician-cost factor is lower than the average
cost factor; and
sending, by the one or more computing devices, the
performance-score to one or more computing systems of a
matching-engine system, wherein the matching-engine system
recommends one or more physicians to a user in response to a
query from a second client device of the user associated with the
base-concept, wherein the recommendation is based on:
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a geographic location of each of the one or more
physicians;
the performance-score associated with the at least one
base-concept for each of the one or more physicians;
an experience-score associated with the at least one base-
concept for each of the one or more physicians; and
a set of physician-selection parameters provided by an
administrator of the matching-engine system.
Appeal Br. 16–17 (Claims App.).
REJECTIONS
The Examiner rejects claims 1–5, 7, 9–17, and 19–21 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 3–6.
The Examiner rejects claim 7 under 35 U.S.C. § 112(a) or pre-AIA
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement. Final Act. 2–3.
OPINION
§ 101 Rejection
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the U.S. Supreme Court
has long interpreted § 101 to “contain[] an important implicit exception:
Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
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566 U.S. 66, 75–77 (2012) “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
step in this analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” e.g., to an abstract idea. Id.
Concepts determined to be abstract ideas include certain methods of
organizing human activity, such as fundamental economic practices (id.
at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978) (“Flook”)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is
determined that the claims are directed to a patent-ineligible concept, the
second step of the analysis requires consideration of the elements of the
claims “individually and ‘as an ordered combination’” to determine whether
there are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 78, 79). “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. at 221 (alterations in original) (quoting
Mayo, 566 U.S. at 77). In other words, the claims must contain an
“inventive concept,” or some element or combination of elements “sufficient
to ensure that the patent in practice amounts to significantly more than a
patent upon the [abstract idea] itself.” Id. at 217–18 (quoting Mayo, 566
U.S. at 72–73). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
at 221.
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In January 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 “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.
Consistent with that guidance,3 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 fundamental economic
practices, or mental processes) (“Step 2A, Prong 1”); 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 2”).4
See Revised Guidance, 84 Fed. Reg. at 52–55.

2 In October 2019, in response to received public comments, the PTO issued
a further memorandum clarifying the Revised Guidance. USPTO
Memorandum, October 2019 Update: Subject Matter Eligibility (Oct. 17,
2019), available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“October 2019 Update”).
3 Our reviewing court has explained that the Revised Guidance “cannot
modify or supplant the Supreme Court’s law regarding patent eligibility, or
[our reviewing court’s] interpretation and application thereof.” In re Rudy,
956 F.3d 1379, 1383 (Fed. Cir. 2020). Our decision is based upon
applicable statutory authority and precedent of the United States Supreme
Court and Court of Appeals for the Federal Circuit and applies the analytical
framework set forth in the Revised Guidance in a manner consistent with
authority and precedent.
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 Revised Guidance, 84 Fed. Reg. at 54–55 (Section
III.A.2).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then (under “Step
2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, and 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.
See Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determines that the claims are directed to an abstract
idea of “instructing how to calculate a performance score[] for a physician to
make a physician recommendation to a user.” Final Act. 4 (emphasis
omitted). The Examiner finds that the claims recite mental processes or,
alternatively, certain methods of organizing human activity identified as an
abstract idea in the Revised Guidance, in the form of “managing
relationships between people.” Ans. 3. The Examiner further determines
that the abstract idea is not integrated into a practical application because the
additionally recited elements do not “offer[] a meaningful limitation beyond
generally linking the abstract idea to a particular technological environment,
in this case, implementation via a computer.” Id. at 3–4; see Final Act. 6.
According to the Examiner, the claims do not reflect an improvement in the
functioning of computers or any other technology. Final Act. 6; Ans. 4.
Finally, the Examiner determines that “[t]he claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements in the claims amount to no more
than mere instructions to apply the exception using generic computer
components.” Ans. 6.
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Appellant argues that “[t]he claims are directed to a practical
application of facilitating a user to search for the most suitable physician by
comprehensively considering different factors” (Reply Br. 4), and that the
Examiner characterizes the claims “at a high level of abstraction” and
“ignores the very specific features of the claims” (Appeal Br. 9 (emphasis
omitted)). According to Appellant, “the claims are limited to a specific rule-
based way of determining a single search to be conducted by a matching-
engine system based on multiple user inputs,” which “remove[s] any risk of
preempting all other approaches of providing a set of healthcare provider
search results to a user.” Appeal Br. 10 (emphasis omitted). Appellant
further argues that the claimed invention “improv[es] the accuracy and
efficiency of internet searches for physicians.” Reply Br. 6. Appellant
additionally argues that the specificity of the claims amounts to significantly
more than an abstract idea and that the ordered combination of the claim
limitations provides an inventive concept. Appeal Br. 12, 14; Reply Br. 7.
According to Appellant, the claimed invention “cannot be routine and well-
understood” where it is “not known in the prior art” (Appeal Br. 13), and
“the fact that the claims are novel and non-obvious is probative as to the fact
that the claims contain inventive concepts significantly more than the
alleged abstract idea itself” (Reply Br. 8).
Step 2A, Prong 1
We agree with the Examiner that the claims recite a judicial
exception, i.e., an abstract idea. See Final Act. 4. In particular, we agree
that the claims recite mental processes. See Ans. 3.
For example, independent claim 1 recites:
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calculating, by one or more computing devices, one or more cost-
factors, each cost-factor being calculated for a particular
physician and based at least in part on:
a particular base-concept;
one or more particular sub-concepts associated with the
base-concept; and
one or more care-episodes associated with the particular
base-concept and particular sub-concepts;
determining, by the one or more computing devices, a specialty
and geographic region of the particular physician; [and]
selecting, by the one or more computing devices, a peer-group of
physicians, the peer-group comprising a plurality of physicians
having a common specialty and geographic region as the
particular physician.
Under their broadest reasonable interpretation, these “calculating,”
“determining,” and “selecting” limitations cover performance of the
limitations in the mind (as do corresponding limitations in independent
claims 19 and 20), but for the recitation of generic components. That is,
other than the “computing devices” recited in claim 1 (and “non-transitory,
computer-readable storage media of a performance-engine system
embodying software” recited in claim 19, and “processors” of a
“performance-engine system” recited in claim 20) as performing the recited
steps, nothing in the claims precludes those steps from being performed in
the human mind. For example, but for the recitation of the “computing
devices,” claim 1 encompasses mentally calculating cost-factors for
physicians based on the recited base-concept, sub-concepts, and care-
episodes; mentally determining a specialty and geographic region of the
particular physician; and mentally selecting a peer-group of physicians
having a common specialty and geographic region as the particular
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physician. The recited “cost-factors” calculation encompasses, e.g.,
arithmetic calculations that may be performed in the human mind, such as
adding the costs incurred by a doctor for an episode of care. See Spec. ¶ 68
(disclosing that “the cost factor may be the monetary cost of the treatments
within the episode of care” and discussing as an example the “costs incurred
by [a doctor] for [an] episode of care”).
Claim 1 further recites:
calculating, by the one or more computing devices, a
performance-score for the particular physician with respect to the
particular base-concept, wherein the performance-score is based
on a weighted aggregate of individual performance-scores for
one or more sub-concepts associated with the particular base-
concept, wherein the individual performance-scores are
calculated by:
(1) accessing one or more Current Procedural
Terminology (CPT) codes from claims data received from the
particular physician, wherein the CPT codes refer to a medical
service provided by the particular physician in connection with
the one or more sub-concepts;
(2) determining one or more relative value units (RVUs)
corresponding to the one or more CPT codes, wherein the RVUs
corresponding to a CPT code represent a location-independent
measure of overall resources used for the treatment of the one or
more sub-concepts;
(3) calculating a physician-cost-factor for the particular
physician associated with the particular sub-concept, wherein the
physician-cost-factor is calculated based on the RVUs
corresponding to the medical service provided by the particular
physician for the particular sub-concept;
(4) accessing an average cost factor associated with the
particular sub-concept for the plurality of physicians of the peer
group; and
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(5) comparing the physician-cost-factor with the average
cost factor, wherein the individual performance-score for the
particular physician for the one or more sub-concepts is
increased if the physician-cost factor is lower than the average
cost factor.
Similarly, under their broadest reasonable interpretation, these “calculating”
limitations cover performance of the limitations in the mind (as do
corresponding limitations in independent claims 19 and 20), but for the
recitation of generic components. That is, other than the “computing
devices” recited in claim 1 (and “non-transitory, computer-readable storage
media of a performance-engine system embodying software” recited in
claim 19, and “processors” of a “performance-engine system” recited in
claim 20) as performing the recited steps, nothing in the claims precludes
those steps from being performed in the human mind. For example, but for
the recitation of the “computing devices,” claim 1 encompasses mentally
calculating a performance-score based on a weighted aggregate of individual
performance-scores as recited; and mentally calculating the individual
performance-scores by (1) accessing the recited CPT codes, (2) mentally
determining the recited RVUs, (3) mentally calculating a physician-cost
factor based on the RVUs as recited, (4) accessing an average cost factor as
recited, and (5) mentally comparing the physician-cost factor with the
average cost factor as recited. The recited “performance-score” calculations
encompass, e.g., arithmetic calculations that may be performed in the human
mind, such as determining an average cost from listed costs incurred by two
physicians and comparing the physician cost factor with that average cost.
See Spec. ¶¶ 74–76 (describing calculating an average cost from the costs of
two “peer group physicians,” determining “performance scores for each sub-
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concept group” corresponding to the difference between a particular
physician’s RVU costs and average RVU costs, and disclosing example
“aggregate performance score” calculations that are arithmetic calculations,
e.g., “((0.5*10)+(2.5*20))/30 = 2.00”). As discussed above, the recited
“physician-cost-factor” calculation also encompasses arithmetic calculations
that may be performed in the human mind.
Claim 1 further recites:
the matching-engine system recommends one or more physicians
to a user in response to a query from a second client device of the
user associated with the base-concept, wherein the
recommendation is based on:
a geographic location of each of the one or more
physicians;
the performance-score associated with the at least one
base-concept for each of the one or more physicians;
an experience-score associated with the at least one base-
concept for each of the one or more physicians; and
a set of physician-selection parameters provided by an
administrator of the matching-engine system.
Similarly, under its broadest reasonable interpretation, this
“recommend[ing]” limitation covers performance of the limitation in the
mind (as do corresponding limitations in independent claims 19 and 20), but
for the recitation of generic components. That is, other than the “matching-
engine system” recited in claim 1 (and claims 19 and 20) as performing the
recited step, nothing in the claims precludes that step from being performed
in the human mind. For example, but for the recitation of the “matching-
engine system,” claim 1 encompasses mentally determining, and then
providing, a physician recommendation to a user in response to a query,
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based on the physicians’ geographic locations, performance-scores, and
experience-scores and a set of physician-selection parameters as recited.
Accordingly, the claims recite mental processes and, thus, an abstract
idea.
Step 2A, Prong 2
Because the claims recite an abstract idea, we next look to whether the
claims recite additional elements that integrate the abstract idea into a
practical application. Revised Guidance, 84 Fed. Reg. at 54. Claim
limitations that indicate integration into a practical application include
additional elements that reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field. Id. at
55. When a claim recites a judicial exception and fails to integrate the
judicial exception into a practical application, the claim is “directed to” the
judicial exception. Id. at 51.
We agree with the Examiner that the additional limitations recited in
the claims do not integrate the recited judicial exception into a practical
application. See Ans. 3. For example, claim 1 additionally recites:
receiving, by one or more computing devices of a performance-
engine system, an indication of one or more care-episodes from
a first client device, wherein each care-episode comprises:
an identifier for one or more physicians;
a base-concept corresponding to a medical-condition or
medical-treatment;
one or more sub-concepts associated with the base-
concept; and
a resource-usage factor.
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This “receiving” step is recited at a high level of generality (i.e., as general
means of collecting information used to determine the physician
recommendation) and amounts to insignificant pre-solution activity.
Claim 1 additionally recites “sending, by the one or more computing
devices, the performance-score to one or more computing systems of a
matching-engine system.” This “sending” step is also recited at a high level
of generality (i.e., as general means of transmitting information used to
determine the physician recommendation) and also amounts to insignificant
pre-solution activity. See Revised Guidance, 84 Fed. Reg. at 55; MPEP
§ 2106.05(g).
We further agree with the Examiner that the claims otherwise merely
recite generic computer components that similarly fail to integrate the
recited abstract idea into a practical application. See Ans. 3–4; Final Act. 6.
For example, claim 1 additionally recites “computing devices” of a
“performance-engine system,” a “first client device,” a “matching-engine
system,” and a “second client device.” These limitations are recited at a
high level of generality, i.e., as generic components performing generic
computer functions of computer processing and communication. As the
Examiner points out, the claims merely apply the abstract idea using generic
computer components and indicate a field of use or technological
environment (i.e., computer software and the Internet) for providing a
physician recommendation. See Ans. 3–4; Final Act. 6; Revised Guidance,
84 Fed. Reg. at 55; MPEP § 2106.05(f), (h). The claim limitations do not
include any particular machine that is integral to the claim. See Revised
Guidance at 55; MPEP § 2106.05(b).
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Appellant argues that the claims reflect a “technical improvement in
the search function” (Appeal Br. 11), specifically “improv[ing] the usage of
computers and the internet as they enable up-to-date recommendation lists of
physicians based on up-to-date evaluations, for which physicians do not
need to manually submit medical related information . . . and a user does not
need to perform multiple turns of searching” (Reply Br. 6; see also id.
at 4–5). According to Appellant, this in turn “reduce[s] the accessing of data
storage and the I/O between computers and the internet, which in turn
improves the bandwidth usage in an overall network.” Id. at 7.
We are unpersuaded by Appellant’s argument and agree with the
Examiner that the claims do not reflect a technological improvement in
addition to the abstract idea. See Final Act. 6; Ans. 4. As discussed above,
the recited “computing devices” of a “performance-engine system,” “first
client device,” “second client device,” and “matching-engine system” are
merely generic computer components performing generic functions of
computer processing and communication. Although Appellant argues that
the claimed invention “provid[es] . . . a particular way of presenting search
query fields to a user to tailor a single search for a healthcare provider”
(Appeal Br. 11; see also id. at 12) and “improv[es] the accuracy and
efficiency of internet searches for physicians” (Reply Br. 6), we find nothing
in the claims indicating a technological improvement in “presenting search
query fields to a user.” The additional elements “do not require an arguably
inventive set of components or methods, such as measurement devices or
techniques, that would generate new data. They do not invoke any
assertedly inventive programming.” Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1355 (Fed. Cir. 2016). We disagree with Appellant that the
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claims “embody a solution, rooted in computer technology, to challenges
particular to the internet” (Reply Br. 5) because the claims as a whole simply
recite an existing practice—recommending a physician to a patient based on
criteria—with the benefit of generic computer technology. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (finding that
automation of an abstract idea and “relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible”). Thus, the claims do not reflect an improvement in computer
functionality or to any other technology or technical field. See Revised
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(a).
Even in combination, the additional limitations do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea. Accordingly, we agree
with the Examiner that the claims are directed to an abstract idea.
Step 2B
Turning to Step 2B of the Revised Guidance, we determine that there
are no specific limitations beyond the judicial exception, i.e., the abstract
idea, that are not “well-understood, routine, and conventional” in the field.
See Alice, 573 U.S. at 225.
For example, the “computing devices” of a “performance-engine
system,” “first client device,” “second client device,” and “matching-engine
system” recited in claim 1 are mere recitations of generic computer
components performing generic computer functions that are
well-understood, routine, and conventional, and thus do not amount to
significantly more than the abstract idea. See Spec. ¶¶ 29–30 (generally
describing a “client system” and “computer system” and listing various
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examples), 31 (describing a “matching-engine system” as a “network-
addressable computing system” that “may include one or more servers” and
listing various types of servers), 36 (“a computer system may encompass a
computing device, and vice versa”), 37–38 (generally describing a
“computer system” and listing various examples), 53 (generally describing a
“client” and listing various examples); Reply Br. 6 (indicating the
“performance-engine system” is a central processing server). As the
Examiner points out, those additional elements amount to no more than mere
instructions to apply the abstract idea using generic computer components
and do not provide an inventive concept to transform the abstract idea into a
patent-eligible invention. See Ans. 6; Alice, 573 U.S. at 223–24.
Reevaluating the extra-solution activity of “receiving . . . an indication
of one or more care-episodes” and “sending . . . the performance-score to
one or more computing systems of a matching-engine system” (see Revised
Guidance, 84 Fed. Reg. at 56 (stating that a conclusion under Step 2A that
an additional element is insignificant extra-solution activity should be
reevaluated in Step 2B)), we find nothing unconventional in these steps of
collecting and transmitting information used to determine the physician
recommendation.
Appellant argues that the Examiner provides “no factual support for
the conclusion that any of the specific features of the claims were well-
known, routine, and conventional,” citing the PTO’s Berkheimer
Memorandum,5 which clarifies that an examiner’s conclusion that an

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (Apr. 19, 2018), https://www.uspto.gov/sites/default/files/documents/
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element represents well-understood, routine, conventional activity must be
based upon a factual determination supported in writing. Appeal Br. 13.
The Examiner finds that “performing repetitive calculations has been
recognized as a well-understood, routine and conventional function.” Final
Act. 8 (citing Flook, 437 U.S. at 594; Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)). The
Examiner otherwise does not make a finding that any specific claim element
is well-understood, routine, and conventional. We, however, make such a
finding with respect to the recited generic computer components, as
discussed above.
Appellant further argues that the claimed invention “cannot be routine
and well-understood” where it is “not known in the prior art” (Appeal
Br. 13), and that “the fact that the claims are novel and non-obvious is
probative as to the fact that the claims contain inventive concepts
significantly more than the alleged abstract idea itself” (Reply Br. 8). As the
Examiner points out, the absence of a prior art rejection does not affect our
determination of § 101 patent subject matter eligibility. See Ans. 7–8. Our
reviewing court “do[es] not agree . . . that the addition of merely novel or
non-routine components to the claimed idea necessarily turns an abstraction
into something concrete.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014).
Although Appellant argues that the ordered combination of “several
specific features” in the claims provides an inventive concept (Reply Br. 7;
see Appeal Br. 12, 14), Appellant has not shown that the claims on appeal

memo-berkheimer-20180419.pdf.
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19
add any specific limitation beyond the judicial exception that is not well-
understood, routine, and conventional in the field. That is, while the
physician recommendation is “based on performance-scores calculated in
consideration of a variety of factors such as location, cost, specialty,
resource usage, etc.” (Appeal Br. 14), those details are features of the recited
mental processes and abstract idea, as discussed above in Step 2A, Prong 1.
Appellant also provides no evidence of how the ordered combination of
limitations is unconventional or amounts to significantly more than the
abstract idea to which the claims are otherwise directed.
Appellant additionally argues that “[t]he specific rules recited by the
claims . . . remove any risk of preempting all other approaches of providing
a set of healthcare provider search results to a user.” Appeal Br. 10. This
argument is unavailing, as the absence of complete preemption is not
dispositive. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”); Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346
(Fed. Cir. 2013) (“[T]he Supreme Court has stated that, even if a claim does
not wholly pre-empt an abstract idea, it still will not be limited meaningfully
if it contains only insignificant or token pre- or post-solution activity—such
as identifying a relevant audience, a category of use, field of use, or
technological environment.”) (citations omitted), vacated and remanded,
WildTangent, Inc. v. Ultramercial, LLC, 573 U.S. 942 (2014) (remanding
for further consideration in light of Alice). Thus, even if the claims do not
preempt the abstract idea, that alone is insufficient to render the claims
patent-eligible.
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20
Accordingly, considering the claim elements individually and as an
ordered combination, we agree with the Examiner that there are no
meaningful claim limitations that represent sufficiently inventive concepts to
transform the nature of the claims into a patent-eligible application of the
abstract idea.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–5, 7, 9–17, and 19–21 under 35 U.S.C. § 101.
§ 112(a) Rejection
Appellant does not provide any arguments with respect to the
Examiner’s rejection of claim 7 under 35 U.S.C. § 112(a) for lack of written
description. Accordingly, we summarily sustain this rejection.
CONCLUSION
The Examiner’s rejection of claims 1–5, 7, 9–17, and 19–21 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claim 7 under 35 U.S.C. § 112(a) is
affirmed.

Appeal 2019-005824
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21
DECISION SUMMARY
In summary:

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)(1)(iv).
AFFIRMED

Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–5, 7, 9–17,
19–21
101 Eligibility 1–5, 7, 9–17,
19–21

7 112(a) Written
Description
7
Overall
Outcome
1–5, 7, 9–17,
19–21