NANTHEALTH, INC.

Patent Trials and Appeals Board

Jul 8, 2021

2021001291 (P.T.A.B. Jul. 8, 2021)

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.
16/384,781 04/15/2019 Patrick Soon-Shiong NANDO-1026C 8280
7663 7590 07/08/2021
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
SOREY, ROBERT A
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
07/08/2021 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 PATRICK SOON-SHIONG,
VASU RANGADASS, and RAVI SESHADRI
Appeal 2021-001291
Application 16/384,781
Technology Center 3600
Before JOHNNY A. KUMAR, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–27 and 29–52. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as NantHealth, Inc.
Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The claims, according to Appellant, are directed to a personal health
operating system. Spec. ¶¶ 1–2. Claim 21, reproduced below, is illustrative
of the claimed subject matter:
21. A method performed by a mobile device having at least one
processor, a GPS location sensor, and a memory, the method
comprising:
generating a dataset according to a data structure
indicative of a fitness of an individual, wherein the fitness
represents a composite effect of various health conditions of the
individual including interdependencies of the health conditions,
the various health conditions including a disease, and the dataset
comprising genomic data of the individual and time-stamped
location data collected by the GPS location sensor of the mobile
device;
assigning tokens representing health related events to one
or more portions of the genomic data of the individual, at least
one of the tokens having a value from a health record of the
individual, the value being indicative of a medication interaction
propensity;
identifying repeated health related events by
implementing an optimistic concurrency control algorithm on the
dataset using the time-stamped location data collected by the
GPS location sensor of the mobile device;
generating candidate groups of the tokens;
estimating a frequency of each of the candidate groups of
tokens in the dataset;
ranking the candidate groups of tokens by the estimated
frequencies thereof to associate a ranking coefficient with each
of the candidate groups of tokens;
calculating the individual’s fitness as a function of the
candidate groups of tokens and the associated ranking
coefficients; and
providing a recommendation based on the individual’s
calculated fitness, wherein the providing a recommendation
comprises at least one of displaying or transmitting the
recommendation.
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REJECTION
Claims 21–27 and 29–52 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception without
significantly more. Final Act. 2.
ANALYSIS
Appellant argues the Examiner’s rejection of claim 21 under 35
U.S.C. § 101 as directed to patent-ineligible subject matter is in error. To the
extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant argues claims 21–27 and 29–52 as a group.
Appeal Br. 11. Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we
decide the § 101 rejection of claims 21–27 and 29–52 based on
representative claim 21.
Principles of Law
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
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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.”).
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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.2, 3
Under MPEP § 2106, we first look to whether the claim recites:

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). 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”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106 (9th ed. rev.
10.2019 June 2020). All references to the MPEP are to the Ninth Edition,
Revision 10.2019 (Last Revised June 2020), unless otherwise indicated.
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(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 (“Step 2A, Prong Two”).4
MPEP §§ 2106.04(a), 2106.04(d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,5 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 activity” in the field; 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.6
MPEP § 2106.05(d).

4 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether” the claim as
a whole “integrates the exception into a practical application.” MPEP
§ 2106.04(d)(II).
5 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under part one of the Alice framework, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
6 This corresponds to Alice part two where it is determined whether the
claim contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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Prima Facie Case
Appellant argues that the Examiner failed to make a prima facie case
of subject-matter ineligibility by overgeneralizing and ignoring certain claim
elements. Appeal Br. 12–13.
We disagree. The procedural burden of establishing a prima facie case
is carried when the rejection satisfies the requirements of 35 U.S.C. § 132. In
re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). “Section 132 is violated
when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). That is, the Examiner must set
forth the rejection’s statutory basis “in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132.” Jung,
637 F.3d at 1363.
This is not a case where the “rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” Id. at 1362. Rather, the Examiner has provided a rationale that
identifies the abstract idea recited in the claim and why it is considered an
exception. See Final Act. 2–3. And Appellant clearly identifies the abstract
idea identified by the Examiner. See, e.g., Appeal Br. 13.
Accordingly, we are not persuaded that the Examiner has failed to set
forth a prima facie case of patent ineligibility for representative claim 21.
Step 1
Claim 21, as a method claim, falls within the process category of
§ 101. See MPEP §§ 2106.03, 2106.06.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 21 recites an abstract
fundamental economic practice and/or managing personal behavior or
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relationships or interactions between people. Final Act. 3; Ans. 6. The
Examiner determined that the broadest, reasonable interpretation of the
limitations recited in claim 21 cover “providing a recommendation based on
the individual’s fitness as represented by a composite effect of various health
conditions of the individual including interdependencies of health
conditions,” which is a fundamental economic practice, a category of certain
methods of organizing human activity and, thus, an abstract idea. Final Act.
3; MPEP § 2106.04(a)(2)(II)(A). The Examiner further determined that the
limitations of claim 21 cover “managing personal behavior or relationships
or interactions between people,” which is a certain method of organizing
human activity and, thus, an abstract idea. Final Act. 3; MPEP
§ 2106.04(a)(2)(II)(C).
Appellant argues the Examiner erred because “there is no explanation
as to why these limitations fall into either of these sub-groupings.” Appeal
Br. 13. Appellant argues “[t]here is nothing ‘economic’ or ‘commercial’
about the alleged abstract idea of providing a recommendation based on the
individual’s fitness as represented by a composite effect of various health
conditions of the individual including interdependencies of the health
conditions.” Id. at 14. As for the sub-grouping of “managing personal
behavior or relationships or interactions between people,” Appellant argues
the subgrouping includes “social activities, teaching, and following rules or
instructions.” Appellant argues that the alleged abstract idea “has nothing to
do with social activities or teaching.” Appellant also argues that claim 21
“does not bear any resemblance to the examples of “following rules or
instructions” set forth in MPEP § 2106.04(a)(2)(II)(C).
We are not persuaded that the Examiner erred. With regard to
Appellant’s conclusory argument that there is nothing commercial or
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economic about providing a recommendation based on the individual’s
fitness, we disagree. Providing recommendations is a fundamental practice
of human behavior that, for example, has long been universally resorted to in
the medical, financial, and other fields, in order to advance a common course
of action. Moreover, while Appellant argues that claim 21 does not recite
“social activities” or “following rules or instructions,” Appellant does not
argue persuasively that claim 21 fails to recite “managing personal
behavior.” The limitations recited in claim 21 include conduct that would
ordinarily occur when managing personal behavior. For example,
recommending actions based on the fitness level and health conditions of
someone would occur when managing the personal behavior of that person.
Consistent with Appellant’s description of the claims, we find that the
following limitations recite the abstract idea of managing personal behavior,
which is a certain method of organizing human activity ineligible for
patenting:
assigning tokens representing health related events to one
or more portions of the genomic data of the individual, at least
one of the tokens having a value from a health record of the
individual, the value being indicative of a medication
interaction propensity;
. . . .
generating candidate groups of the tokens;
estimating a frequency of each of the candidate groups of
tokens in the dataset;
ranking the candidate groups of tokens by the estimated
frequencies thereof to associate a ranking coefficient with each
of the candidate groups of tokens;
calculating the individual’s fitness as a function of the
candidate groups of tokens and the associated ranking
coefficients;
See Appeal Br. 23 (Claims App.); MPEP § 2106.04(a)(2)(II)(C).
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Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determined that claim 21 recites a patent-ineligible
concept, we next determine whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. In
claim 21, the additional elements include the limitation “a mobile device
having at least one processor, a GPS location sensor, and a memory,” the
“identifying” step, and the “providing” step.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)).
The Examiner determined that none of the additional limitations is
sufficient to integrate the judicial exception into a practical application
because the additional computer elements “are merely incidental or token
additions to the claim that do not alter or affect how the process steps or
functions in the abstract idea are performed” and “do not add meaningful
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limitations to the indicated claims beyond a general linking to a
technological environment.” Final Act. 4 (citing MPEP § 2106.05(h)).
Appellant argues that “no explanation is provided as to why the
particularly recited way of calculating the individual’s fitness does not
integrate the alleged abstract idea into a practical application.” Appeal Br.
17. In Appellant’s view, the “particularly recited steps for calculating the
individual’s fitness go beyond mere instructions to ‘apply’ the allegedly
abstract idea of ‘provid[ing] a recommendation based on the individual’s
fitness as represented by a composite effect of various health conditions of
the individual including interdependencies of the health conditions.’” Id.
at 18.
Appellant’s argument is not persuasive. As the Examiner explained
(Ans. 7–8), the steps that calculate an individual’s fitness are part of the
abstract idea itself and are not additional elements. In Prong 2, we look to
the additional elements beyond the abstract idea to determine whether, when
viewing the claim as a whole, these additional elements integrate the abstract
idea into a practical application.
Appellant next argues that the “identifying” step integrates the
abstract idea into a practical application because “the mobile nature of the
‘mobile device’ introduces the possibility of unwanted repeated events.
Appeal Br. 18 (citing Spec. ¶ 38). Appellant argues that, by identifying
repeated events with an optimistic concurrency control algorithm using time-
stamped location data collected by the GPS location sensor, “the claimed
method can account for such repeated events when ‘assigning tokens
representing health related events’ as claimed, which is the basis for
‘generating candidate groups of the tokens,’ etc., resulting in the calculation
of the individual’s fitness and the claimed recommendation flowing
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therefrom.” Appeal Br. 20. According to Appellant, then, “irrespective of
exactly how the repeated events might be accounted for in a given
implementation, the claimed GPS and OCC algorithm[s] integrate the
alleged abstract idea into a practical application in the sense of Prong Two of
Step 2A.” Id.
Appellant’s arguments are not persuasive. As the Examiner pointed
out, the features on which Appellant relies for integration into a practical
application are not recited in claim 21. See Ans. 10. The “identifying” step is
claimed as an “algorithm” which is applied to the collected data in order to
identify repeated health related events, and those repeated health events are
not referenced at any other point in claim 21. See id. For example, the
limitation “generating candidate groups of the tokens” does not rely upon the
identified repeated health related events, and nowhere it is claimed that the
claimed OCC algorithm identifies repeated events, “which can then be
flagged, removed, or otherwise accounted for as desired,” as Appellant
argues. See id. For these reasons, we agree with the Examiner that
identifying repeated health related events, as recited in claim 21, is not
sufficient to integrate the abstract idea into a practical application.
Considering claim 21 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem. Claim 21 as a whole merely uses
instructions to implement the abstract idea on a computer or, alternatively,
merely uses a computer as a tool to perform the abstract idea. Here, the
additional limitation(s) do not integrate the judicial exception into a practical
application. More particularly, the claims do not recite (i) an improvement to
the functionality of a computer or other technology or technical field; (ii) a
“particular machine” to apply or use the judicial exception; (iii) a particular
transformation of an article to a different thing or state; or (iv) any other
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meaningful limitation. See 84 Fed. Reg. at 55. Rather, claim 21 recites an
abstract ideas as identified in Step 2A(i), supra, and none of the limitations
integrates the judicial exception into a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determined that using the additional elements in
claim 21 to perform the abstract idea amounts to no more than mere
instructions to apply the exception using generic components. Final Act. 5.
The Examiner further determined that the claimed additional elements “are
not sufficient to amount to significantly more than the judicial exception
because they are generic components that are configured to perform well-
understood, routine, and conventional activities previously known to the
industry.” Id. at 5–7 (citing Spec., Figs. 1, 9, ¶¶ 19, 25, 27, 28, 42, 56, 57,
70, 74, 87, 90).
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Appellant argues that the claim limitations detailing the calculation of
the individual’s fitness constitute “[a]pplying or using the judicial exception
in some other 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.” Appeal Br. 21 (citing MPEP § 2106.04(d)(I)). Appellant further
argues that the combination of claim limitations detailing the calculation of
fitness, “as well as the combination of the claimed GPS and OCC algorithm
in the context of operating the claimed method in a mobile device
environment, amounts to significantly more than the alleged abstract idea
within the meaning of Step 2B.” Id. at 22.
We are not persuaded by Appellant’s arguments that the Examiner
erred. Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as generating a
dataset, assigning data, identifying data, processing data, and displaying or
transmitting data. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (“That a computer receives and sends the information over
a network—with no further specification—is not even arguably inventive”);
In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016)
(server that receives data, extracts classification information from the
received data, and stores the digital images insufficient to add an inventive
concept); Alice, 573 U.S. at 225–26 (receiving, storing, sending information
over networks insufficient to add an inventive concept).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
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components and techniques. See MPEP § 2106.07(a)(III)(D) (explaining that
a specification that describes additional elements in a manner that indicates
that the additional elements are so well-known that they do not need to be
described in detail to satisfy 35 U.S.C. 112(a) can show that the elements are
well understood, routine, and conventional); Spec., Figs. 1, 9, ¶¶ 19, 25, 27,
28, 42, 56, 57, 70, 74, 87, 90. We conclude claim 21 does not have an
inventive concept because the claim, in essence, merely recites various
computer-based elements along with no more than mere instructions to
implement the identified abstract idea using the computer-based elements.
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner’s § 101 rejection of independent
claim 21 and grouped claims 22–27 and 29–52, not argued separately with
particularity.
CONCLUSION
The Examiner’s decision rejecting claims 21–27 and 29–52 is
affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–27,
29–52
101 Eligibility 21–27,
29–52

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED