MEDecision, Inc.

Patent Trials and Appeals Board

Aug 3, 2020

14709349 - (D) (P.T.A.B. Aug. 3, 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.
14/709,349 05/11/2015 Srikanth Srinivas 138737.00052 1085
33649 7590 08/03/2020
Mr. Christopher John Rourk
Jackson Walker LLP
2323 ROSS AVENUE
SUITE 600
DALLAS, TX 75201
EXAMINER
BARR, MARY EVANGELINE
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
08/03/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SRIKANTH SRINIVAS and NICOLE DE MICCO
___________

Appeal 2019-002756
Application 14/709,349
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., JOHN P. PINKERTON and
NABEEL U. KHAN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1–20 under
35 U.S.C. § 134(a). See Appeal Brief 12. Claims 1, 11, and 20 are
independent. We have jurisdiction under 35 U.S.C. § 6(b).

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed October 18, 2018), the
Reply Brief (filed February 19, 2019), the Final Action (mailed May 29,
2018) and the Answer (mailed December 18, 2018), for the respective
details. An Oral Hearing was held on July 9, 2020. A transcript of the
hearing will be added to the record in due course.

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies MEDECISION, INC., as the real party in
interest. Appeal Brief 4.
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We affirm.
Introduction
According to Appellant, the claimed subject matter “relates generally
to medical analysis and treatment, and more specifically to a care planning
tool for medical analysis and treatment that does not require formalistic
question and answer processes that can impede patient care and which also
significantly increase processor and communications workload.”
Specification ¶ 1.
Claim 1 is reproduced below for reference (bracketed step lettering
added):
Representative Claim3
1. A system implemented in a combination of hardware and
software for reducing workload of a processor comprising:
[a] an engagement module operating on the processor and configured
to generate one or more profile user interface controls in response to data
received from a mapped clinical intelligence rule and to generate user profile
data in response to user selection of the profile user interface controls;
[b] an assessment module operating on the processor and configured
to generate one or more assessment user interface controls in response to
data received from the mapped clinical intelligence rule and to generate

3 For the 35 U.S.C. § 101 rejection, Appellant argues claims 1–20 as a
group, focusing on subject matter common to independent claims 1, 11 and
20. See Appeal Brief 11–13. We select independent claim 1 as the
representative claim. See 37 C.F.R. § 41.37(c)(1)(iv).
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assessment data in response to user selection of the assessment user interface
controls; and
[c] wherein the mapped clinical intelligence rule includes one or more
algorithms for generating a relevancy metric for the one or more profile user
interface controls and the one or more assessment user interface controls.

Reference
Name4 Reference Date
Block US 2012/0089909 A1 April 12, 2012

Rejections on Appeal
Claims 1–20 stand rejected under 35 U.S.C. §112(a) or 35 U.S.C.
§112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. The claim(s) contains subject matter which was not
described in the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA
the inventor(s), at the time the application was filed, had possession of the
claimed invention. Final Action 10–12.
Claims 1–10 and 20 stand rejected under 35 U.S.C. §112(b) or 35
U.S.C. §112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant, regards as the
invention. Final Action 9–10.

4 All reference citations are to the first named inventor only.

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Claims 1–10 and 20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Action 2–3.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Action 3–6.
Claims 1–20 stand rejected under 35 U.S.C. §102(a)(1) as being
anticipated by Block. Final Action 12–17.

35 U.S.C. §112(a) Rejection
35 U.S.C. §112(a) and pre-AIA 35 U.S.C. §112, first paragraph,
require that the specification include the following:
(A) A written description of the invention;
(B) The manner and process of making and using the invention (the
enablement requirement); and
(C) The best mode contemplated by the inventor of carrying out his
invention.
M.P.E.P. §2161 (II).
Appellant argues the rejection of claims 1–20 under 35 U.S.C.
§112(a) is erroneous because the Examiner failed to “provide a prima facie
showing that claims 1-20 fail to comply with the written description
requirement.” Appeal Brief 15.
The Examiner determines:
As per Claims 1, 11 and 20, the claims recite the limitation
“generating a relevancy metric for the one or more profile user
interface controls and the one or more assessment user interface
controls”; however, there is not sufficient support for the concept
of generating a relevancy metric. The specification does not
provide a description of how one of ordinary skill would generate
this metric.
Final Action 11 (emphasis added).
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The test for sufficiency of an application’s written description is
whether the application reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.
See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010). The Examiner’s finding that, “The specification does not provide a
description of how one of ordinary skill would generate this metric” is not a
question of sufficient written description, but is more of a question of
enablement. See Final Action 11(emphasis added); see also M.P.E.P.
§2161 (II)5. Appellant discloses “generating a relevancy metric” in the
Specification, as well as in the originally filed claims. See Specification
Abstract, ¶ 3; page 21. Accordingly, we do not agree with the Examiner’s
finding that the Specification fails to provide written support for generating a
relevancy metric as claimed. We find Appellant’s argument persuasive of
Examiner error and, therefore, we reverse the Examiner’s rejection of claims
1–20 under 35 U.S.C. §112(a).

5 The written description requirement is separate and distinct
from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly
and Co., 598 F.3d 1336, 1341, 94 USPQ2d 1161, 1167 (Fed. Cir.
2010) . . . Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19
USPQ2d 1111, 1115 (Fed. Cir. 1991) (While acknowledging that
some of its cases concerning the written description requirement
and the enablement requirement are confusing, the Federal
Circuit reaffirmed that under 35 U.S.C. 112, first paragraph, the
written description requirement is separate and distinct from the
enablement requirement and gave an example thereof.).
M.P.E.P. § 2161 (II) (emphasis added).
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35 U.S.C. §112(b) Rejection
The Examiner finds the claim limitations, ‘“engagement module ...
configured to’, ‘assessment module ... configured to’, and ‘action plan
module ... configured to’ in Claims 1, 2, 8-10 and 20 invoke[] 35 U.S.C.
112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.” Final Action 9; see
Final Action 6–8. The Examiner determines, “the written description fails to
disclose the corresponding structure, material, or acts for performing the
entire claimed function and to clearly link the structure, material, or acts to
the function. The specification is devoid of any structure that performs the
function of the claims.” Final Action 9.
Appellant argues the rejection erroneously ‘“concludes that the
following terms are ‘generic placeholders:’ 1) ‘engagement module,’ 2)
‘assessment module,’ and 3) ‘action plan module.’” Appeal Brief 13.
We first address the issue of whether the claims are subject to §112(f) before
we determine if the claims are indefinite under §112(b). See Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1351 (2015). We agree with the
Examiner’s finding that the claims recite generic place holders (or nonce
words) although the terms means is not recited in the claims. See Final
Action 6–7 (citing MPEP §2181 (I)6). We also agree with the Examiner’s
determination that the “module” limitations recited in the claims are generic
place holders or nonce words. See Final Action 8; Answer 6–7; see also

6 (“Accordingly, examiners will apply 35 U.S.C. 112(f) to a claim limitation
if it meets the following 3-prong analysis: (B) the term ‘means’ or ‘step’ or
the generic placeholder is modified by functional language, typically, but not
always linked by the transition word ‘for’ (e.g., ‘means for’”) or another
linking word or phrase, such as ‘configured to’ or ‘so that’)”. MPEP §2181
(I) (B).
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Williamson 792 F.3d at 1350 (‘“Module’ is a well-known nonce word that
can operate as a substitute for ‘means’ in the context of § 112, para. 6. As
the district court found, ‘“‘module” is simply a generic description for
software or hardware that performs a specified function.”’”).
Appellant contends claim 1 “includes ‘an engagement module
operating on the processor and configured to generate one or more profile
user interface controls in response to data received from a mapped
clinical intelligence rule and to generate user profile data in response to
user selection of the profile user interface controls’” and that the “Office
fails to address this additional structure and these additional acts in its
assessment of whether the claimed engagement module is claimed in a
manner that was intended to invoke the provisions of 35 U.S.C. 112(6), so as
to overcome the presumption that it was not.” Appeal Brief 14. Appellant
argues the claims in the instant application “are unlike those in Williamson
v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015)” that the court held
was subject to 35 U.S.C. §112(6) because of “the presence of controls” in
the instant application claims. Appeal Brief 14 (“The additional structure of
the content selection control was sufficient to remove this element from the
consideration under 35 U.S.C. 112(6).”).
We agree with the Examiner findings that the claims are in a format
consistent with means-plus-function claim limitations. We recognize the
additional terms or modifiers in claim 1’s disputed limitations; nevertheless,
the additional terms do not alter the means-plus-function format of the
claims as Appellant argues. The additional terms, including the presence of
controls, do not impart structure to the term module. See e.g. Williamson
792 F.3d at 1350 (“Here, the word ‘module’ does not provide any indication
of structure because it sets forth the same black box recitation of structure
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for providing the same specified function as if the term ‘means’ had been
used.”).
We now determine if the claims are indefinite under §112(b).
Appellant contends:
[I]t is noted that the pending application explicitly discloses two
algorithms in Figures 3 and 4, but the Office does not even
address those algorithms in its rejection or why those explicitly
disclosed algorithms fail to provide the claimed algorithmic
structure. It is clear that the Office has failed to address this
explicitly disclosed algorithmic structure in concluding that there
is no algorithmic structure disclosed in the specification.
Reply Brief 3.
The Examiner finds, “The specification is devoid of any structure that
performs the function of the claims. The specification describes the system
as being implemented in hardware or a suitable combination of hardware
and software.” Final Action 9. The Examiner determines in regard to the
§112(a) rejection, “Appellant argues that the specification provides written
support for the rejected claim elements by way of algorithmic structures . . .
There is not sufficient support for the concept of generating a relevancy
metric. The specification does not provide a description of how one of
ordinary skill would generate this metric.” Answer 7. We note the
Examiner does not address Appellant’s algorithmic structures in regard to
the §112(b) rejection. See Final Action 9–10; see also Answer 6–7.
We find, however, Appellant’s Specification discloses, for example:
FIGURE 3 is a diagram of an algorithm 300 for reducing
processor and communications system loading in accordance
with an exemplary embodiment of the present disclosure.
Algorithm 300 reduces processor and communications system
loading by omitting questions that are not relevant from a plan of
care process and by providing suggested topics, goals, actions or
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barriers for an action plan prior to completion of an assessment
process.
Specification ¶27.
FIGURE 4 is a diagram of an algorithm 400 of a work
flow for reducing processor and communications system loading
in accordance with an exemplary embodiment of the present
disclosure. Algorithm 400 reduces processor and
communications system loading by omitting questions that are
not relevant from a plan of care process and by providing
suggested topics, goals, actions or barriers for an action plan
prior to completion of an assessment process.
Specification ¶ 38.
We find Appellant’s argument persuasive because the Examiner did
not provide a rationale as to why the algorithms shown in the flow charts of
Figures 3 and 4 do not provide sufficient structure corresponding to the
claimed function as required by 35 U.S.C. §112(b). See MPEP §2181 (III):
A rejection under 35 U.S.C. 112(b) [ ] may be appropriate [ ]
when examining means-plus-function claim limitations under
35 U.S.C. 112(f) [when] [ ] 35 U.S.C. 112(f) is invoked and
there is no disclosure or there is insufficient disclosure of
structure, material, or acts for performing the claimed function.

See also Williamson 792 F.3d at 1352 (“We require that the specification
disclose an algorithm for performing the claimed function” . . . “The
algorithm may be expressed as a mathematical formula, in prose, or as a
flow chart, or in any other manner that provides sufficient structure.)
(citations omitted). Accordingly, we are constrained by the record and,
therefore, reverse the Examiner’s rejection of claims 1–10 and 20 under 35
U.S.C. §112(b).

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35 U.S.C. §101 Rejection – non-statutory subject matter
The Examiner determines, “the claims do not define any structural
elements of the apparatus, as the processor is not positively recited in the
claim.” Final Action 2. The Examiner concludes that the modules “can be
interpreted as computer programs” and therefore “the computer program
itself is not a process or physical structural elements of the apparatus and the
examiner therefore will treat a claim for a computer program, without the
non-transitory computer-readable medium needed to realize the computer
program’s functionality, as non-statutory functional descriptive material.”
Final Action 2–3. Appellant argues the Examiner’s determination is
erroneous because “claim 1 includes ‘an engagement module operating on
the processor and configured to generate one or more profile user interface
controls in response to data received from a mapped clinical intelligence rule
and to generate user profile data in response to user selection of the profile
user interface controls.’” Appeal Brief 10. We find Appellant’s argument
persuasive of Examiner error because the claims positively recite a structural
element - a processor - and the processor cannot be ignored. Thus, we
reverse the Examiner’s § 101 non-statutory subject matter rejection of
claims 1–10 and 20.

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

7 In response to received public comments, the Office issued further
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internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).8
2019 Revised Guidance 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

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).
8 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance at 52–56.
ANALYSIS
The Examiner determines claims 1–20 are patent ineligible under
35 U.S.C. § 101. See Final Action 3–6; see also Alice, 573 U.S. at 217
(describing the two–step framework “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the Revised Guidance.

Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
The Specification discloses:
[A] first mapped clinical intelligence rule can pertain to diabetes,
a second mapped clinical intelligence rule can pertain to
hypertension, and a third mapped clinical intelligence rule can
pertain to heart disease. As a user inputs profile information, the
inputted information can be processed by the first, second and
third mapped clinical intelligence rules to identify additional
topic questions for assessment of diabetes, hypertension and
heart disease, and one or more questions can be selected by
system 100 for display to the user.
Specification ¶14.
The Specification provides examples such as:
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[I]f the user’s profile mass index (BMI) value of greater than 30
and status information for the user of being diabetic, then a topic
pertaining to diet and exercise plans can be generated as having
a higher relevance than a question pertaining to chest pains.
Alternately, if the user’s profile information includes a body
mass index (BMI) value of greater than 30 and status information
for the user of previous reported chest pains, then a question
pertaining to whether the user has continued to experience chest
pains can be generated as having a higher relevance than a
question pertaining to diet and exercise plans.
Specification ¶ 14.
Claim 1 recites generating profile user interface controls in response
to received data and generating user profile data in response to the user’s
selection of the profile user interface controls in limitation [a]. Claim 1 also
recites generating assessment profile user interface controls in response to
received data and generating assessment data in response to the user’s
selection of the assessment user interface controls in limitation [b]. Claim 1
further recites generating a relevancy metric for profile and assessment user
interface controls in limitation [c].
These steps comprise “concepts performed in the human mind9
(including an observation, evaluation, judgment, opinion)”; thus, the claim
recites the abstract idea of “Mental processes.” See 2019 Revised Guidance,
Section I (Groupings of Abstract Ideas). Our reviewing court has found
claims to be directed to abstract ideas when they recited similar subject
matter. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-

9 “If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.” 2019 Revised Guidance 52
n.14.
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implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324
(Fed. Cir. 2016) (holding that computer-implemented method for
“anonymous loan shopping” was an abstract idea because it could be
“performed by humans without a computer”); Versata Dev. Grp. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of
“computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible); id. at 1376
(distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d
859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319 (Fed. Cir. 2010), as directed to inventions that “could not, as a practical
matter, be performed entirely in a human’s mind”). Therefore, we conclude
the claims recite an abstract idea pursuant to Step 2A, Prong One of the 2019
Revised Guidance. See 2019 Revised Guidance, Section III(A)(1) (Prong
One: Evaluate Whether the Claim Recites a Judicial Exception).
Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception into a
practical application of the exception.” 2019 Revised Guidance, Section
III(A)(2). It is noted that a “claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
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manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception.” 2019 Revised Guidance, Section III(A)(2).
We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See 2019 Revised Guidance at 55 nn.25, 27–32.
Appellant contends, “[T]he claimed profile user interface controls and
assessment user interface controls improve the efficiency of using an for
reducing workload of a processor, by bringing together a limited set of user
controls in response to user selections and data received from a mapper
clinical intelligence rule.” Appeal Brief 11 (citing Core Wireless Licensing
S.A.R.L. v. LG Electronics, 880 F.3d 1356, 1363 (Fed. Cir. 2018)). In Core
Wireless, the court held that claims which recited an interface were patent
eligible because the claims recited specific limitations of the interface such
as: an application summary that can be reached through a menu, the data
being in a list and being selectable to launch an application, and additional
limitations directed to the actual user interface displayed and how it
functions. Core Wireless, 880 F.3d at 1363. The court found the claims
were directed to an improved user interface and not the abstract concept of
an index as the claim “limitations disclose a specific manner of displaying a
limited set of information to the user, rather than using conventional user
interface methods to display a generic index on a computer.” Core Wireless,
880 F.3d at 1363; see also Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F.
App’x 1001 (Fed. Cir. 2017) (Holding that a user interface with a prescribed
functionality directly related to the interface’s structure, that is addressed to
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and resolves a problem in the art, is patent eligible.). Accordingly, we do
not find Appellant’s arguments persuasive because using data to establish a
treatment plan is unlike patent-eligible claims directed to particular technical
ways of displaying data such as the claimed user interface in Core Wireless.
See 2019 Revised Guidance at 55.
Additionally, we detect no additional element (or combination of
elements) recited in Appellant’s representative claim 1 that integrates the
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2). For example, Appellant’s claimed additional element
(e.g., processor, ): (1) does not improve the functioning of a computer or
other technology; (2) is not applied with any particular machine (except for a
generic computer device); (3) does not effect a transformation of a particular
article to a different state; and (4) is not applied in any meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§ 2106.05(a)–(c), (e)–(h).
Accordingly, we determine claim 1 does not integrate the recited
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application).

Step 2B identified in the 2019 Revised Guidance
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
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providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo,
566 U.S. at 72–73).
Appellant argues the claimed, “clinical intelligence rule is not based
on information that is collected, analyzed and displayed, but rather on
substantially more, as discussed at numerous places in the specification.”
Appeal Brief 12 (citing Specification ¶14 (“[A] first mapped clinical
intelligence rule can pertain to diabetes, a second mapped clinical
intelligence rule can pertain to hypertension, and a third mapped clinical
intelligence rule can pertain to heart disease.)”). Appellant contends a “user
inputs profile information, the inputted information can be processed by the
first, second and third mapped clinical intelligence rules to identify
additional topic questions for assessment of diabetes, hypertension and heart
disease, and one or more questions can be selected by system 100 for display
to the user.” Appeal Brief 12 (citing Specification ¶14).
We note in BASCOM10, our reviewing court found that while the
claims of the patent were directed to an abstract idea, the patentee alleged an
“inventive concept can be found in the ordered combination of the claim
limitations that transform the abstract idea of filtering content into a
particular, practical application of that abstract idea.” BASCOM, 827 F.3d at
1352. In particular, the patent in BASCOM claimed “a technology-based
solution (not an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on the Internet
that overcomes existing problems with other Internet filtering systems.”
BASCOM, 827 F.3d at 1351. Claim 1 is distinguishable, as it recites an

10 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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abstract-idea-based solution that uses data to establish a treatment plan. See
generally Specification. Therefore, we are not persuaded that the ordered
combinations of steps in representative claim 1 provide an inventive
concept. See 2019 Revised Guidance at 56. We find the claims do not
include a specific limitation or a combination of elements that amounts to
significantly more than the judicial exception itself. See Memorandum,
Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept).
Accordingly, we conclude claims 1–20 are directed to “concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)”; thus, the claim recites the abstract idea of “Mental
processes” identified in the 2019 Revised Guidance, as well as an abstract
idea failing to recite limitations that amount to significantly more than the
abstract idea itself. We sustain the Examiner’s § 101 rejection of claims 1–
20.

35 U.S.C. §102 Rejection
Appellant argues, “Block does not disclose entering of the patient
profile information to determine the user type, and does not require a user to
be a patient or disclose any patient-related functions.” Appeal Brief 16.
Appellant argues that because Block does not address patients, Block
logically, does not disclose clinical intelligence rules. Appeal Brief 17. We
find claim 1 does not recite that the user is a patient. See Answer 8
(“Examiner asserts that the claims do not require the user to be a patient, and
there is no mention of a patient or patient functions in the claims.”). The
Specification discloses “a first mapped clinical intelligence rule can pertain
to diabetes, a second mapped clinical intelligence rule can pertain to
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hypertension, and a third mapped clinical intelligence rule can pertain to
heart disease.” Specification ¶14 (emphasis added); see Appeal Brief 17.
Claim 1 does not specify that the mapped clinical intelligence rule pertains
to diabetes, hypertension or heart disease. See Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005)(“[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments . . . In particular,
we have expressly rejected the contention that if a patent describes only a
single embodiment, the claims of the patent must be construed as being
limited to that embodiment”) (citations omitted).
Appellant contends, “Block does not disclose clinical intelligence
rules that are associated with disease states, and only pertains to diet and
exercise independent of any disease state.” Appeal Brief 17. Block
discloses that, “Job demands, family demands, and financial constraints are
only some of the barriers that one has to overcome to maintain a healthful
diet and activity level. Especially with obesity and Type-2 Diabetes
becoming increasing health concerns in some developed countries.” Block
¶ 3. Block further discloses, “Chronic conditions are highly correlated with
obesity, low physical activity and other lifestyle factors. Increasing costs of
health care and loss in workforce productivity have employers, health care
providers and individuals looking for better preventative care measures.”
Block ¶ 4 (emphasis added). Block does not relate to merely general diet
and exercise as Appellant contends; Block is instead concerned with
preventive care to address health issues associated with obesity, low physical
activity and other lifestyle factors.
Appellant argues, “Block can provide information about risk of
disease such as heart disease or diabetes, see e.g. Block at [0040], but does
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not address any type of medical advice.” Appeal Brief 17. Block discloses,
“there may be four color-coded categories in the thermometer for Physical
Activity Outcome: ‘very inactive,’ ‘needs improvement,’ ‘good for health,’
and ‘for weight control.” Block ¶ 40 (emphasis added). Block also
discloses:
In addition to the thermometers, there is a narrative feedback 56
provided to the user. There may be a unique narrative feedback
56 presented for each Topic 58. The narrative feedback 56
includes quantitative information (e.g., “you are getting 150
minutes of moderate aerobic activity per week”) as well as
qualitative information (e.g., “you are eating far too much
sugar”).
Block ¶ 41 (emphasis added).
Block further discloses, “if the user’s answer reflects that she eats two
servings of fruits and vegetables per day but the recommended level is to
consume eight servings every day, the recommendation would state that she
needs to increase her total daily fruit and vegetable consumption by a certain
amount.” Block ¶ 19; see Final Action 13. We agree with the Examiner’s
finding that Block discloses a mapped clinical intelligence rule because
Block’s feedback is not merely for weight control. Block is concerned about
the underlying medical conditions that result from failing to control a user’s
weight. See Block ¶¶ 3–4.
Claim 1 recites, “wherein the mapped clinical intelligence rule
includes one or more algorithms for generating a relevancy metric for the
one or more profile user interface controls and the one or more assessment
user interface controls.” The Examiner finds Block discloses, “the mapped
clinical intelligence rule includes one or more algorithms for generating a
relevancy metric for the one or more profile user interface controls and the
one or more assessment user interface controls ([0019]-[0020]).” Final
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Action 14. Appellant argues, “The Office relies on [0006] and [0019]-
[0020] of Block as disclosing this limitation, but Block does not disclose
generation of any metric, much less a relevancy metric for a user interface
control.” Appeal Brief 18. The Specification discloses at step 306 of the
algorithm that, “[R]elevance can be determined from the mapped clinical
intelligence rules, such as by determining whether one or more parameters
of a user profile, prior assessments or an action plan render a particular
question irrelevant.” Specification ¶ 30; see Figure 3.
Block teaches:
[T]he user input including items and an input value associated
with each of the items. Individual values are assigned to the
items based on the input value. The individual values are then
summed to generate a total value. The items are ranked
according to the contributions of their respective individual
values to the total value.”
Block ¶ 6.
Block ranks the user’s input based upon a value, parameter and/or
metric. Block uses summation to generate the ranking; therefore we find
Block discloses an algorithm to generate the ranking. See Block ¶¶ 6, 19,
20, 48, 51–66. We do not find Appellant’s argument persuasive because
Block discloses an algorithm to generate a ranking or relevancy metric.
Accordingly, we sustain the Examiner’s anticipation rejection of claim 1.
We also sustain the Examiner’s anticipation rejection of claims 2, 3 and 11
because Appellant’s arguments in regard to claims 2, 3 and 11 are addressed
in regard to claim 1. See Appeal Brief 20, 22 and 23.
Appellant argues that claim 4 is distinguishable over Block because,
“Block is not associated with disease treatment and thus cannot disclose
topics that are associated with disease treatment.” Appeal Brief 20. We do
not find Appellant’s argument persuasive of Examiner error because as we
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stated above, we find that Block is associated with disease treatment. See
Block ¶¶ 3–4. Further, Appellant’s argument is not commensurate with the
scope of claim 4. Claim 4 recites, “wherein the assessment module further
comprises a response module having a plurality of operative links to a topics
module, wherein selection of one of a plurality of responses results in the
generation of an associated suggested topic for the selected response.”
There is no recitation of disease treatment in claim 4.
Appellant argues that claim 5 is distinguished over Block because
“Block only discloses that a user can set goals for diet and exercise, and does
not disclose goals associated with disease treatment, such as a change in
medical treatment associated with a reduction in body mass index.” Appeal
Brief 21 (citing Block ¶46). We do not find Appellant’s argument
persuasive of Examiner error because Block is concerned with setting goals
that are associated with medical treatment. See Block ¶¶ 3–4, 46. Further,
Appellant’s argument is not commensurate with the scope of claim 5. Claim
5 recites, “wherein the assessment module further comprises a response
module having a plurality of operative links to a goals module, wherein
selection of one of a plurality of responses results in the generation of an
associated goal for the selected response.” There is no recitation of medical
treatment in claim 5.
Accordingly, we do not find Appellant’s arguments in regard to
claims 6–10 persuasive of Examiner error because Appellant’s arguments
are not commensurate with the scope of the claims. Appellant argues that
Block “only discloses action plans associated with diet and exercise, and
does not disclose action plans associated with disease treatment.” Appeal
Brief 21–22. There is no recitation of disease treatment in claims 6–10.
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Further, as we stated above, we find that Block is associated with disease
treatment. See Block ¶¶ 3–4.
Appellant argues that claims 12 and 13 are distinguished over Block
because, “Block fails to disclose mapped clinical intelligence rules, it cannot
disclose that the mapped clinical intelligence rule includes one or more
algorithms for generating a relevancy metric for the one or more action plan
user interface controls.” Appeal Brief 23. We do not find Appellant’s
argument persuasive of Examiner error because, as we stated above, we find
Block teaches a mapped clinical intelligence rule and associated algorithms.
See Block ¶¶ 3–4, 6, 19, 20, 48, 51–66.
Appellant argues that claims 14–17 are distinguished over Block
because the claims include the method of claim 11 “wherein selection of one
of a plurality of responses results in the generation of an associated goal for
the selected response. The Office has not addressed this claim, and Block
fails to disclose that any single selection results in an action.” Appeal Brief
23–25. We do not find Appellant’s argument persuasive of Examiner error
because claim 11 does not recite generating an associated goal for a selected
response. Furthermore, contrary to Appellant’s assertions that the Examiner
failed to address the claim limitations, the Examiner addressed each claim.
See Final Action 13–16.
Appellant argues that claim 18 is distinguished over Block because
the claim include the method of claim 15 “comprising generating one or
more action plan user interface controls in response to data received from
the mapped clinical intelligence rule and generating action plan data in
response to user selection of the action plan user interface controls and the
associated goal. The Office has not addressed this claim.” Appeal Brief 25.
Claim 15 recites, “The method of claim 11 wherein selection of one of a
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plurality of responses results in the generation of an associated goal for the
selected response.” Appellant argues in regard to claim 18 that “Block fails
to disclose that any single selection results in an action.” We do not find
Appellant’s argument persuasive because Block discloses a single selection
can result in an action:
[T]he system includes a set of goals that are stored in a database,
separately from the system-generated base Action Plan, which
are tailored for each user. These stored goals may be accessed
and presented to the user as “Other goals you might like” in the
customizable goal setting section 84 of FIG. 5. If the user
chooses the goal, it becomes incorporated into the personalized
Action Plan. Goals may be added, deleted, or modified through
the system server 90 (see FIG. 7).

Block 84; see Final Action 16.
Appellant argues that claim 19 is distinguished over Block because
the claim includes the method of claim 16 “comprising generating one or
more action plan user interface controls in response to data received from
the mapped clinical intelligence rule and generating action plan data in
response to user selection of the action plan user interface controls and the
associated action.” Appeal Brief 25. Appellant contends, “The Office has
not addressed this claim, and because Block fails to disclose mapped clinical
intelligence rules, it cannot disclose that any action is taken in response to
data received from the mapped clinical intelligence rule.” Appeal Brief 25.
We do not find Appellant’s argument persuasive of Examiner error because,
as we stated above, we find Block teaches a mapped clinical intelligence
rule. See Block ¶¶ 3–4, 19.
Appellant contends that claim 20 is distinguished over Block because
“Block fails to disclose mapped clinical intelligence rules, it cannot disclose
generating one or more profile user interface controls using a processor in
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response to data received from a mapped clinical intelligence rule;” “Block
fails to disclose mapped clinical intelligence rules, it cannot disclose
generating one or more assessment user interface controls in response to data
received from the mapped clinical intelligence rule;” “Block fails to disclose
mapped clinical intelligence rules, it cannot disclose generating one or more
action plan user interface controls in response to data received from the
mapped clinical intelligence rule” and “Block fails to disclose mapped
clinical intelligence rules, it cannot disclose the mapped clinical intelligence
rule includes one or more algorithms for generating a relevancy metric
for the one or more action plan user interface controls.” Appeal Brief 26–27
(emphasis added). We do not find Appellant’s argument persuasive of
Examiner error because, as we stated above, we find Block teaches a
mapped clinical intelligence rule. See Block ¶¶ 3–4, 19.

CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(a) Written description 1–20
1–10, 20 112(b) Indefiniteness 1–10, 20
1–20 101 Eligibility 1–20
1–10, 20 101 Non-statutory 1–10, 20
1–20 102(a)(1) Anticipation 1–20
Overall
Outcome
1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(v).
AFFIRMED