Oesterheld, Jessica et al.

Patent Trials and Appeals Board

Feb 3, 2020

14163993 - (D) (P.T.A.B. Feb. 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.
14/163,993 01/24/2014 Jessica Oesterheld P242236.US.05 2875
27076 7590 02/03/2020
DORSEY & WHITNEY LLP - SEATTLE
INTELLECTUAL PROPERTY DEPARTMENT
COLUMBIA CENTER
701 FIFTH AVENUE, SUITE 6100
SEATTLE, WA 98104-7043
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
ipdocket-se@dorsey.com
seattle.ip@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JESSICA OESTERHELD, ROBERT D. PATTERSON, and
HOWARD C. COLEMAN
____________

Appeal 2019-002551
Application 14/163,9931
Technology Center 3600
_______________

Before HUNG H. BUI, DAVID J. CUTITTA II, and
SCOTT RAEVSKY, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3, 4, 6–11, 13, 14, and 16–20, which
are all the claims pending in the application. Claims 2, 5, 12, and 15 are
cancelled. Appeal Br. 10–14 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. The real party in interest is Youscript, Inc. Appeal Br. 3.
2 Our Decision refers to Appellant’s Appeal Brief (“Appeal Br.”) filed July
24, 2018; Reply Brief (“Reply Br.”) filed February 7, 2019; Examiner’s
Answer (“Ans.”) mailed December 12, 2018; Final Office Action (“Final
Act.”) mailed January 24, 2018; and original Specification (“Spec.”) filed
January 24, 2014.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to “business models to support
computerized implementation of systems [shown in Figure 1] designed [1]
to store and process metabolic, pharmacologic, and pharmacogenetic data
(herein ‘metabolomics data’), [2] to interpret that data in the context of
patient-specific factors such as age, pregnancy, smoking and use of alcohol
(herein ‘clinical factors,’ or ‘patient characteristics’), [3] to make available
that data at the point of care, prioritized by relevance, and [4] to provide
integrated reimbursement tools for the costs of the equipment, database
updates and maintenance.” Spec. ¶ 3.
Figure 1 is reproduced below:

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Figure 1 shows a computer-implemented system including host servers 20,
predictive algorithms 21, 24 and databases 17, 18 for storing, collating, and
interpreting genetic and pharmacologic data, and networks 31, 32, 34, 41, 51
for enabling client laboratory providers 10 and other customers 6–9 to access
host servers 20 for genetic testing, test interpretation, test reporting, and
preventing adverse drug reactions (ADRs) to prescribed drugs. Spec. ¶¶ 12,
13, 16, 80–85. According to Appellant, “predictive algorithms . . . can
prevent many ADRs by issuing warnings on a graphical user interface at the
point of care before the prescription is written [by a physician].” Spec. ¶ 12.
Representative Claim
Claims 1 and 11 are independent. Representative claim 1 is
reproduced below:
1. A method comprising:
[1] receiving, at a computing system, an identification of
a drug;
[2] identifying, using a processor of the computing system,
metabolic routes used in metabolism of the drug;
[3] selecting, using the processor of the computing system,
certain factors from a plurality of factors affecting exposure of a
patient to the drug and which may cause or be subject to an
interaction, wherein the plurality of factors are stored in at least
one database accessible to the computing system, wherein the
plurality of factors include other drugs, substances,
characteristics of the patient, phenotypes of the patient,
genotypes of the patient, clinical factors, or combinations or sub-
combinations thereof;
[4] for each metabolic route of the metabolic routes,
determining, using the processor of the computing system, an
intensity of inhibition or induction of the respective metabolic
route due to each of the certain factors;
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[5] summing, using the processor of the computing
system, individual scores determined for each metabolic route of
the metabolic routes to determine a total score, the individual
scores determined based, at least in part, on a metabolic
throughput of the respective metabolic route and the determined
intensities of inhibition or induction of the respective metabolic
route;
[6] converting the total score to a predicted percent change
in AUC for the drug by matching the total score with the
predicted percent change in AUC in a lookup table; and
[7] providing an indicator of total effect on metabolism of
the drug due to the certain factors to another computing system
for adjusting a dosage of the drug, the indicator comprising the
predicted percent change in AUC.
Appeal Br. 10 (Claims App.) (bracketing added).

EXAMINER’S REJECTION
Claims 1, 3, 4, 6–11, 13, 14, and 16–20 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 3–5; Ans. 3–4.

ANALYSIS
In support of the § 101 rejection of claims 1, 3, 4, 6–11, 13, 14, and
16–20, the Examiner determines Appellant’s claims recite limitations such
as “receiving an identification of a drug,” “identifying metabolic routes . . .”,
“selecting certain factors . . . “, “determining an intensity of inhibition or
induction of the respective metabolic route,” “summing individual scores,”
“converting the total score to a predicted percent change,” and “providing an
indicator” that are similar or analogous to the claims found by the Federal
Circuit to be an abstract idea in Electric Power Group, LLC v. Alstom S.A.,
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830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that the concept of
“collecting information, analyzing it, and displaying certain results of the
collection and analysis” is an abstract idea). Ans. 3–4; see also Final Act. 3–
4.
The Examiner also determines the additional elements (i.e.,
“processor,” “computing system,” “database,” and “electronic medical
record”) recited in claims 1 and 11, when analyzed individually and as an
ordered combination, do not amount to significantly more than the abstract
idea because these additional elements: (1) are “well-understood, routine and
conventional activities previously known to the industry” and (2) do not
improve “the functioning of a computer or improve[] any other technology.”
Final Act. 4.
Eligibility Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court’s two-step framework articulated in Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the claims are
directed to a patent-ineligible concept: laws of nature, natural phenomena,
and abstract ideas. Id. at 216. If so, we then proceed to the second step to
consider 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.” Id. at
217. In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original,
internal quotation marks omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the U.S. Patent
and Trademark Office (the “Office”) applies the Supreme Court’s two-step
framework, the Office has published revised guidance interpreting the
governing case law and establishing a prosecution framework for all patent-
eligibility analysis under Alice and § 101 effective as of January 7, 2019.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–
57 (Jan. 7, 2019); see also USPTO October 2019 Update: Subject Matter
Eligibility, 84 Fed. Reg. 55942–53 (Oct. 18, 2019) (updating the guidance
promulgated in January 2019 with “examples as well as a discussion of
various issues raised by the public comments”) (collectively, the “2019
Revised Guidance”).
2019 Revised Guidance
Under the 2019 Revised Guidance, we look under “Step 2A” (Alice
step 1) to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
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opinion), or [iii] certain methods of organizing human activity
such as a fundamental economic practice or managing
personal behavior or relationships or interactions between
people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).3
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
In the briefing, Appellant refers to prior USPTO guidance regarding
§ 101, including, for example: (1) May 2016 Subject Matter Eligibility
Update (“2016 Update”) and (2) USPTO Memorandum dated April 19, 2018
(“2018 Memo”). Appeal Br. 5. This prior guidance. See 2019 Revised

3 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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Guidance, 84 Fed. Reg. 52. As such, our analysis will not address the
sufficiency of the Examiner’s rejection against the cited prior guidance.
Rather, our analysis will comport with the 2019 Revised Guidance as
discussed below.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance
Step 2A—Prong 1
Appellant does not dispute the Examiner’s determination that claims
recite an abstract idea. Ans. 3–4. As recognized by the Examiner, the
limitations of Appellant’s claim 1, under their broadest reasonable
interpretation, recite nothing more than a series of steps collecting
(receiving), analyzing (identifying “metabolic routes,” selecting “certain
factors . . . affecting exposure of a patient,” determining “an intensity of
inhibition or induction of the respective metabolic route,” and “the total
score to a predicted percent change in AUC for the drug), and providing “an
indicator of total effect on metabolism of the drug, which are similar or
analogous to the claims found by the Federal Circuit to be patent-ineligible
in Electric Power Group. Ans. 4; see also Electric Power Group, 830 F.3d
at 1355 (“[M]erely selecting information, by content or source, for
collection, analysis, and display does nothing significant to differentiate a
process from ordinary mental processes.”).
Under the October 2019 Update: Subject Matter Eligibility, 84 Fed.
Reg. 55942–53 (Oct. 17, 2019), we determine that these limitations are
“mental processes” that could also be performed in the human mind or by a
human using pen and paper (including an observation, evaluation, judgment,
opinion), and therefore an abstract idea. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (“[A] method that
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can be performed by human thought alone is merely an abstract idea and is
not patent-eligible under § 101.”); see also In re Comiskey, 554 F.3d 967,
979 (Fed. Cir. 2009) (“[M]ental processes—or processes of human
thinking—standing alone are not patentable even if they have practical
application.”); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena
of nature, . . . mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.”
(Emphasis added)). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 1375 (“That
purely mental processes can be unpatentable, even when performed by a
computer, were precisely the holding of the Supreme Court in Gottschalk v.
Benson.”).
Thus, under Step 2A, Prong One, we agree with the Examiner that
limitations (1)–(7) in Appellant’s claim 1 recite a series of mental processes
as identified in the 2019 Revised Guidance, and thus, an abstract idea. See
2019 Revised Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at 52,
54.
According to the Federal Circuit, “collecting information, including
when limited to particular content (which does not change its character as
information),” falls within the realm of abstract ideas. Elec. Power Grp.,
830 F.3d at 1353; see also, e.g., Internet Patents Corp., 790 F.3d at 1346;
OIP Techs., 788 F.3d at 1363; Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); CyberSource, 654 F.3d at 1370. Likewise, “analyzing
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information by steps people go through in their minds, or by mathematical
algorithms, without more,” is “essentially mental processes within the
abstract-idea category.” Elec. Power Grp., 830 F.3d at 1353; see, e.g., In re
TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016);
Digitech, 758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological Labs.,
SA, 555 F. App’x 950, 955 (Fed. Cir. 2014); Bancorp Servs., 687 F.3d at
1278; CyberSource Corp., 654 F.3d at 1372; SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Parker v. Flook,
437 U.S. 584, 589–90 (1978); Gottschalk v. Benson, 409 U.S. at 67. And
the Federal Circuit has recognized that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis. See, e.g., Content Extraction,
776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d at 715.
Because the claims recite an abstract idea, we next proceed to Step 2A,
Prong Two of the Revised Guidance, to determine whether the claims
integrate the recited idea into a practical application. See Revised Guidance,
84 Fed. Reg. at 54.
Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong Two of the 2019 Revised Guidance, we discern
no additional element (or combination of elements) recited in Appellant’s
claims 1 and 11 that integrate(s) the judicial exception into a practical
application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong
Two”).
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Appellant argues, “the claims include multiple elements which,
especially in combination, integrate the alleged abstract idea into a practical
application of the idea.” Reply Br. 3. For example, Appellant argues:
Claim 1, for example, integrates metabolic, pharmacologic and
pharmacogenetic data storage, processing and interpretation into
a practical application thereof at least by “converting the total
score to a predicted percent change in A UC for the drug by
matching the total score with the predicted percent change in
AUC in a lookup table; and providing an indicator of total effect
on metabolism of the drug due to the certain factors to another
computing system for adjusting a dosage of the drug, the
indicator comprising the predicted percent change in AUC.”
Reply Br. 3 (emphasis added).
Appellant’s arguments are not persuasive. Neither limitation argued
by Appellant is indicative of “integration into a practical application.”
Instead, these limitations are part of the recited judicial exception. See SAP
Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (The
abstract idea itself cannot supply the inventive concept, “no matter how
groundbreaking the advance.”).
Under the 2019 Revised Guidance, “integration into a practical
application” requires an additional element or a combination of additional
elements in the claim to apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the
exception. See 2019 Revised Guidance, 84 Fed. Reg. at 53–55; id. n.24
(“USPTO guidance uses the term ‘additional elements’ to refer to claim
features, limitations, and/or steps that are recited in the claim beyond the
identified judicial exception.”). For example, additional elements that are
indicative of “integration into a practical application” include:
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1) Improvements to the functioning of a computer, or to any other
technology or technical field – see MPEP § 2106.05(a);
2) Applying the judicial exception with, or by use of, a particular
machine – see MPEP § 2106.05(b);
3) Effecting a transformation or reduction of a particular article to
a different state or thing – see MPEP § 2106.05(c); and
4) Applying 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 – see MPEP § 2106.05(e).
See 20919 Revised Guidance, 84 Fed. Reg. at 53–55.
In contrast, additional elements that are not indicative of “integration
into a practical application” include:
1) Adding the words “apply it” (or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on
a computer, or merely uses a computer as a tool to perform an
abstract idea – see MPEP § 2106.05(f);
2) Adding insignificant extra-solution activity to the judicial
exception – see MPEP § 2106.05(g); and
3) Generally linking the use of the judicial exception to a particular
technological environment or field of use – see MPEP
§ 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
We determine Appellant’s additional elements (i.e., “processor,”
“computing system,” “database,” and “electronic medical record”) recited in
claims 1 and 11, when analyzed individually or in combination, do not (1)
improve the functioning of a computer or other technology, (2) are not
applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
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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).
As acknowledged by Appellant’s own Specification, the focus of
Appellant’s invention is not to improve the performance of computers or any
computer-related technologies; instead, the focus is to create “business
models to support computerized implementation of systems [shown in
Appellant’s Figure 1] designed [1] to store and process metabolic,
pharmacologic, and pharmacogenetic data (herein ‘metabolomics data’), [2]
to interpret that data in the context of patient-specific factors such as age,
pregnancy, smoking and use of alcohol (herein ‘clinical factors,’ or ‘patient
characteristics’), [3] to make available that data at the point of care,
prioritized by relevance, and [4] to provide integrated reimbursement tools
for the costs of the equipment, database updates and maintenance.” Spec.
¶ 3. Utilizing (1) generic servers 20, algorithms 21, 24 and databases 17,
18, shown in Appellant’s Figure 1, for storing, collating, accessing, cross-
referencing and interpreting genetic and pharmacologic data, and (2) known
networks 31, 32, 34, 41, 51 for contracting client laboratory providers 10 of
genetic testing services, and other customers 6–9 to access host servers 20
for genetic testing, test interpretation, test reporting, and preventing adverse
drug reactions (ADRs) to prescribed drugs are insufficient to show
“integration into a practical application.” See MPEP § 2106.05(f); see also
Spec. ¶¶ 12, 13, 16, 80–85. Instead, these generic computing components
are simply the automation of the abstract idea. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015). “[M]erely
requir[ing] generic computer implementation . . . does not move into [§] 101
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eligibility territory.” buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354
(Fed. Cir. 2014).
For these reasons, we determine that Appellant’s “additional
elements” recited in claims 1 and 11 do not integrate the abstract idea into a
practical application and, as such, Appellant’s claims are directed to an
abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the 2019 Revised Guidance
Under the 2019 Revised Guidance, only if a claim: (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then (3) look to whether the claim adds a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)); or, instead, it
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See 2019 Revised Guidance, 84 Fed. Reg. at 56. However, we
find no element or combination of elements recited in Appellant’s claims 1,
17, and 32 that contain any “inventive concept” or add anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. 208 at 221.
Appellant does not identify any specific limitation of claims 1 and 11
beyond the judicial exception that is not “‘well-understood, routine,
conventional’ in the field” as per MPEP § 2106.05(d). Instead, Appellant
argues the Examiner has not provided evidence to show that “any of the
elements recited in the independent claims” is “well-understood, routine and
conventional” as per Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir.
2018). Appeal Br. 5–8.
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Appellant’s argument is not persuasive. In Berkheimer, the Federal
Circuit held “[w]hether something [(i.e., any additional elements beyond the
abstract idea)] is well-understood, routine, and conventional to a skilled
artisan at the time of the patent is a factual determination.” Berkheimer, 881
F.3d at 1369. However, Berkheimer is limited to Alice step 2 and is only
applicable after a determination is made that a patent claim is directed to an
abstract idea under Alice step 1. As previously discussed, we find the
additional elements beyond the abstract idea recited in Appellant’s claims 1
and 11 ((i.e., “processor,” “computing system,” “database,” and “electronic
medical record”) do not transform the abstract idea into a patent eligible
invention. As our reviewing court has observed, “after Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Alice, 573
U.S. at 222).
Here, Appellant refers to limitations recited in claims 1 and 11 that are
part of the abstract idea identified under Alice step 1 and argues the
Examiner has to provide evidence to show these limitations are “well-
understood, routine[,] and conventional” under Alice step 2. Appeal Br. 6–8;
Reply Br. 2–4. However, the law is clear that the claim element(s) to be
considered under Alice step 2 cannot be part of the abstract idea
itself. Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore,
J., concurring) (“Berkheimer . . . leave[s] untouched the numerous cases
from [the Federal Circuit] which have held claims ineligible because the
only alleged ‘inventive concept’ is the abstract idea.”); BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1283 (Fed. Cir. 2018) (indicating same).
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“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013).
Lastly, Appellant argues “claims 1 and 11 amount to significantly
more than an abstract idea” because (1) “the absence of similar technology
in the medical field” and (2) “the novelty and non-obviousness of the
claimed technology. Appeal Br. 6. However, this argument improperly
conflates the test for 35 U.S.C. § 101 with the separate tests under 35 U.S.C.
§§ 102 and 103. See, e.g., Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1376 (Fed. Cir. 2016) (“[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility.”). As the Supreme Court
emphasizes, “[t]he ‘novelty’ of any element or steps in a process, or even of
the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis
added). Thus, a novel and nonobvious claim directed to an abstract idea is,
nonetheless, patent-ineligible. See Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 89–91 (2012). Nor does the lack of any
obviousness or anticipation rejections support Appellant’s argument that
“the limitations of claims 1, 13, and 20 are not routine or conventional
activities.”
Because Appellant’s independent claims 1 and 11 are directed to a
patent-ineligible abstract idea and do not recite an “inventive concept” or
provide a solution to a technical problem under the second step of the Alice
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analysis, we sustain the Examiner’s § 101 rejection of independent claims 1
and 11, and their dependent claims 3, 4, 6–10, 13, 14, and 16–20 not
separately argued.

CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1, 3, 4, 6–11, 13, 14, and 16–20 under
35 U.S.C. § 101. As such, we AFFIRM the Examiner’s rejection of claims
1, 3, 4, 6–11, 13, 14, and 16–20.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.§ Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6–11, 13,
14, 16–20
101 Eligibility 1, 3, 4, 6–
11, 13, 14,
16–20

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)(iv).

AFFIRMED