Ohnemus, Peter et al.

Patent Trials and Appeals Board

Jan 22, 2020

14257855 - (D) (P.T.A.B. Jan. 22, 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.
14/257,855 04/21/2014 Peter Ohnemus 00053/002374-US3 8711
76808 7590 01/22/2020
Leason Ellis LLP
One Barker Avenue
Fifth Floor
White Plains, NY 10601-1526
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/22/2020 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):
uspto@leasonellis.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER OHNEMUS, ANDRE NAEF,
LAURENCE JACOBS, and DAVID LEASON

Appeal 2019-001267
Application 14/257,855
Technology Center 3600
____________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appellant1
appeals from the Examiner’s decision to reject the claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as DACADOO
AG. Appeal Br. 2.
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STATEMENT OF THE CASE
Claims 1–5, 7, 10–16, and 18–28 stand rejected by the Examiner
under 35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception to patent eligibility. Final Act. 8; Ans. 8–9.
Independent claim 1 is representative and reads as follows (bracketed
numbering has been added for reference to the claim limitations):
1. A computer implemented method for processing private
health related data into a masked numerical score and
restricting access to the masked numerical score to specific
users, comprising the steps of:
[1] connecting, by a processor executing code and via a
communication subsystem, to each of a plurality of electronic
devices, wherein each of the electronic devices is configured
with a respective module for communication with the
communication subsystem via a respective communication
session;
[2] validating, by the processor executing code, data
representing at least one intrinsic medical parameter and at least
one extrinsic physical activity parameter of a user, wherein the
data are received from each of the plurality of electronic
devices via the communication subsystem;
[3] determining, by the processor executing code, that at
least one parameter used to calculate a masked composite
numerical value is missing from the received data;
[4] imputing, by the processor executing code, at least
one value in place of the at least one missing parameter;
[5] applying respective ones of weighting factors to the
received at least one intrinsic medical parameter and the
received at least one extrinsic physical activity parameter,
[6] applying a decay component to the processed at least
one extrinsic physical activity parameter to reduce the relative
weight of the processed at least one extrinsic physical activity
parameter for a physical activity in dependence on at least one
factor associated with the user;
[7] transforming the processed received data by
executing additional code in the processor, wherein the
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processed received data are transformed into the masked
composite numerical value by combining the weighted
parameters and the at least one imputed value in accordance
with an algorithm, while maintaining the received data
representing the at least one intrinsic medical parameter and the
at least one extrinsic physical activity parameter private;
[8] automatically publishing the masked composite
numerical value via a portal;
[9] restricting access to the masked composite numerical
value via the portal to a designated group of the plurality of
users represented by received designated users information
while preventing access to the masked composite numerical
value via the portal for any user who is not among the
designated group of the plurality of users, using code executing
in the processor and free of human intervention;
[10] receiving, by the processor executing code, data
representing at least one intrinsic medical parameter or at least
one extrinsic physical activity parameter of the user, wherein
the data are received substantially in real-time from each of at
least one of the plurality of electronic devices via the
communication subsystem in response to a change in the
respective parameter;
[11] modifying, by the processor executing code in
accordance with the algorithm, the masked composite
numerical value using the received data in response to the
changed parameter;
[12] automatically publishing, by the processor executing
code, the modified masked composite numerical value via a
portal;
[13] generating, by the processor executing code in
response to the modified masked composite numerical value, an
alert; and
[14] sending, by the processor executing code and free of
human intervention, the alert to the user via at least one user
interface.
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
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However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves
a 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
upon the [ineligible concept] itself.”
Id. at 217–18 (citing from Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO has published revised guidance on the application of 35
U.S.C. § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
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(“2019 Eligibility Guidance”). This guidance provides additional direction
on how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Eligibility Guidance, looks at the
specific limitations in the claim to determine whether the claim recites a
judicial exception to patent eligibility. In Step 2A, Prong Two, the claims
are examined to identify whether there are additional elements in the claims
that integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 2019
Eligibility Guidance, 84 Fed. Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
2019 Eligibility Guidance instructs us to determine whether there is a
claimed inventive concept to ensure that the claims define an invention that
is significantly more than the ineligible concept, itself. 2019 Eligibility
Guidance, 84 Fed. Reg. 56. In making this determination, we must consider
whether there are specific limitations or elements recited in the claim “that
are not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” or whether the claim
“simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception, which is indicative that an inventive concept may not be present.”
Id. (footnote omitted).
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.
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Step 2A, Prong One
In Step 2A, Prong One, of the 2019 Guidance, the specific limitations
in the claim are examined to determine whether the claim recites a judicial
exception to patent eligibility, namely whether the claim recites an abstract
idea, law of nature, or natural phenomenon.
The Examiner found that the claims are directed to an abstract idea.
Final Act. 9–10, 16. The 2019 Eligibility Guidance lists three groupings of
abstract ideas. 2019 Eligibility Guidance, 84 Fed. Reg. at 52. We therefore
will examine the steps in the claimed method to determine whether the claim
recites subject matter that falls within the groupings of abstract ideas listed
in the 2019 Eligibility Guidance.
Step [1] of claim 1 is directed to connecting a plurality of electronic
devices to a communication subsystem. The Specification discloses that the
“electronic device” can be “smart phone or cellular telephone, a personal
digital assistant (PDA), netbook, laptop computer, and so on” or “a device
such as a heart rate or blood pressure monitor.” Spec. 9: 14–21.
In step [2], the data of “at least one intrinsic medical parameter and at
least one extrinsic physical activity parameter of a user” is validated. The
Specification explains that this is done to avoid false scores. Spec. 38: 21–
22. As an example, a medical parameter can be glucose levels or body
weight. Spec. 11: 14–15. “Other parameters . . . include blood pressure
measurements, height, body mass index, fat mass, medical conditions such
as diabetes, ventricular hypertrophy, hypertension, irregular heartbeat and
fasting glucose values.” Spec. 12: 2–4. A physical activity parameter can
be exercise, e.g., using “an exercise machine such as a treadmill, elliptical,
stationary bike or weight lifting machine with a rack of weights or bands”
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and fitness activity at a gym. Spec. 12: 15–16; 15: 11–16. The data is
received from the electronic device “via the communication subsystem.”
The claim does not specify how the validation in step [2] is
accomplished, but the Specification states that “validation methods can
range from ones based on outlier detection to ones based on
multidimensional likelihood estimators.” Spec. 38: 21–39: 1. However, the
claim is not limited to any one of these methods. We find that the data
validation could be accomplished in the human mind by evaluating the data
and determining which values are outliers, e.g., a body weight value that is
significantly different from the weight the previous day, or a blood pressure
value significantly different than values the previous day and week. Thus,
step [2] is a mental process, one of the three groups of abstract ideas listed in
the 2019 Eligibility Guidance (“(c) Mental processes—concepts performed
in the human mind (including an observation, evaluation, judgment,
opinion”)). 2019 Eligibility Guidance, 84 Fed. Reg. at 52.
Step [3] comprises determining “that at least one parameter used to
calculate a masked composite numerical value is missing from the received
data.” The parameters comprise the medical and physical activity
parameters. This step can be performed in the human mind because it is an
observation that a parameter is missing, for example, body weight or
exercise performed a particular day. Thus, step [3] is also a mental process,
one of the three groups of abstract ideas listed in the 2019 Eligibility
Guidance.
In step [4] of the claim, the missing value is imputed by the processor
executing code. The claim does not recite how the “imputing” is
accomplished. The Specification discloses that the missing value can be
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imputed “using a variety of statistical methods that range from ones based
on global population statistics, to methods based on the use of more
complicated statistical models that are built into the platform.” Spec. 39: 4–
6. However, the claim is not limited to statistical models, and the imputing
can be as simple as substituting the body weight (medical parameter) or
exercise (physical parameter) from the previous day. Therefore, step [4] is
broad enough to include “imputing” by a mental process.
Weighting factors are applied to the medical and physical parameters
in step [5]. The Specification explains this is done to “control the relative
affect [sic] each parameter has on the user’s calculated health score.” Spec.
44: 15–16. The Specification explains:
Some health parameters are more important than others in the
calculation of the user[’]s health score. Accordingly, weighting
factors are applied to the health parameters [to] increase or
decrease the relative affect [sic] each factor has in the
calculation of the user’s health score. For example, a user’s
current body weight can be more important than the amount of
fitness activity the user engages in. In this example, the body
weight parameter would be weighted more heavily by assigning
a larger weighting factor to this parameter.
Spec. 16: 8–13. See also Spec. 11: 15–19 (“If the blood glucose data is a
more important factor in determining a person’s health than body weight,
then the weighting factor ‘a’ will be larger than weighting factor ‘b’ so that
the blood glucose data has a larger impact on the calculated health score
(e.g., Healthscore = Glucose*a + (Weight/100)*b).”)
The determination of what weighting factors to apply in step [5] can
be a mental evaluation or judgment (84 Fed. Reg. at 52) because a human
can decide to weigh one factor over another, e.g., based on the determination
that a normal blood glucose level is more important to health than exercise.
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The step is therefore broad enough to encompass a mental process, which is
an abstract idea.
A “decay component” is applied in step [6] to the weighted physical
activity parameter in step [5] to “reduce” its “relative weight” depending “on
at least one factor associated with the user.” The Specification discloses that
the “factor” can be “the user’s weight or weight range, age or age range, any
medical conditions known to the system.” Spec. 13: 10–13. The
Specification states that the “decay component can itself comprise a
weighting value, but can also comprise an equation.” Spec. 13: 10–11. In
other words, an evaluation or judgement can be made to reduce the weight
given to physical activity (the “decay” of the parameter value) based on the
age or weight of the user. Such determination could be performed in the
mind and is therefore a mental process and an abstract idea.
In step [7], the processed data of step [6] is “transformed into the
masked composite numerical value by combining the weighted parameters
and the at least one imputed value in accordance with an algorithm.” The
claim does not recite the “algorithm.” Appellant did not direct us to a
description in the Specification where a specific algorithm for determining
the composite score is described. Therefore, the claimed transformation can
be accomplished by any type of calculation, including one where the
processed parameters of steps [5] (medical) and [6] (physical activity) are
added together in the human mind. Step [7] is thus broad enough to include
transforming the data by a mental process.
Step [7] further requires that “the received data representing the at
least one intrinsic medical parameter and the at least one extrinsic physical
activity parameter” is kept “private.” The Specification explains “since the
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health score is derived from several factors, the underlying data used to
calculate the score is kept private.” Spec. 24: 2–4. Thus, the health
information privacy is a result of transforming the data into the masked
composite value.
The “masked composite numerical value” is published via a portal in
step [8] and access is restricted to designated users in step [9]. The latter
step is an abstract idea because it can be determined mentally which users
can access the value and which cannot.
The data is received in real-time from the electronic devices in step
[10] in response to a changed medical or physical parameter.
The “masked composite numerical value” in step [11] is modified in
accordance with the algorithm of step [7] using the received data in response
to the changed parameter. Thus, like step [7], step [11] is a mental process
and an abstract idea.
The modified masked composite numerical value is automatically
published (step [12]), an alert generated in response to the modified masked
composite numerical value (step [13]), and the alert sent to the user (step
[14]). The user is therefore informed by an alert that the masked composite
numerical value has been modified in response to a changed parameter
(steps [10], [11]). Appellant identifies support for the limitations (Appeal
Br. 6–7), but the cited disclosure provides no guidance on the software or
computer implementation used to generate and send alerts. The
Specification teaches that the alerts can be sent by email and SMS (Spec. 6:
10–11), which we take note of are conventional computer-based
communication methods.
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Appellant did not provide arguments as to why any the limitations in
the claim are not abstract. Rather, Appellant contends that “the Examiner
fails to identify with sufficient or virtually any specificity as to what the so-
called recited abstract idea is and how it is similar to ‘abstract ideas found by
the courts to be abstract.’” Appeal Br. 13. Appellant contends that the
Examiner “has not carried his burden” to identify the abstract idea in the
claim. Id. at 14.
We do not agree. The Examiner stated that “present invention
generically applies computer technology to perform a problem that has been
performed as long as providers have been taking care of patients, e.g.,
presenting needed personal information while keeping personal information
private.” Final Act. 13. The latter would be understood to be applicable to
step [7], which keeps the medical and physical activity parameters private by
masking them. Thus, the Examiner considered this step to be abstract
because it was performed “generically,” namely not restricted to a particular
way in which the information is masked. The Examiner also listed the
various steps in the claim and found they were directed to collecting and
analyzing information, and then displaying it, which the Examiner
concluded were the same steps found to be abstract in Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Final Act. 15–16. The
Examiner also specifically found that “[]imputing data [(step [4])],
transforming data [(steps [7] and [11])] and generating data[] is merely
analyzing data, which is encompassed in Electric Power Group.” Id. at 16.
In other words, the Examiner found that these steps are abstract ideas for the
same reason the court found so in Electric Power Group. Appellant did not
provide an explanation as to why they are not.
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In sum, steps [2]–[7], [9], and [11] recite abstract ideas.

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. As set out in the Mayo/Alice framework, we must look
at the claim elements individually and “as an ordered combination” to
determine whether the additional elements integrate the recited abstract idea
into a practical application. As discussed in the 2019 Eligibility Guidance,
“[a] claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner” that places a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 2019
Eligibility Guidance, 84 Fed. Reg. at 54.
Integration into a practical application is evaluated by identifying
whether there are additional elements individually, and in combination,
which go beyond the judicial exception. 2019 Eligibility Guidance, 84 Fed.
Reg. at 54–55. One consideration indicating that an exception is integrated
into a practical application is an additional element that improves the
functioning of a computer or other technology. Id. at 55. As explained in
the October 2019 Update to Subject Matter Eligibility2 “first the
specification should be evaluated to determine if the disclosure provides
sufficient details such that one of ordinary skill in the art would recognize
the claimed invention as providing an improvement.” PEG Update at 12.

2 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (last accessed Nov. 15, 2019) (“PEG Update.”)
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According to the PEG Update, the “specification need not explicitly set forth
the improvement, but it must describe the invention such that the
improvement would be apparent to one of ordinary skill in the art.” Id.
The Specification discloses that privacy laws restrict the type of health
information that can be shared, making it difficult to share with family and
friends. Spec. 2: 8–20. The Specification also discloses that prior art
systems for numerical scores related to person’s health have been described,
but these do not take into account actual physical activity. Spec. 2: 8–3: 6.
The Specification discloses in the “Summary of the Invention” that
“an aspect of the present invention” is “a computer implemented method for
processing private health related data into a masked numerical score suitable
for publishing.” Spec. 3: 16–18 (boldface omitted). The Specification
describes the steps for doing so, which correspond to steps [2]–[8] of claim
1. Spec. 3: 18–4: 9; 44: 5–19. The Specification also discloses that in an
embodiment of the invention medical and physical parameters can be
“updated in substantially real-time” without access to a medical practitioner
and that alerts can be sent out based on changes in the health score. Spec. 6:
1–13. This description corresponds to steps [10]–[14] of claim 1.
Appellant contends that the claims “recite a technical solution to a
problem arising specifically because of technical limitations inherent to that
field (i.e., health-related data reception, processing, management, access,
alert generation and distribution).” Appeal Br. 14. Appellant also asserts
the claims are directed to an improvement in computing devices. Id. The
“specific implementation of hardware and software elements that improve
technical aspects relating to receiving, processing, managing, and providing
information” (id. at 16) is described by Appellant as follows:
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suitably configured hardware (e.g., a computer having a
processor, a memory, a communication unit), and software
elements (e.g., “code” executed by the processor) that “[step
[2]] validate data representing at least one intrinsic medical
parameter and at least one extrinsic physical activity parameter
of a user,” as well as to “[step [3]] determine that at least one
parameter used to calculate a masked composite numerical
value is missing from the received data.” Furthermore, and
notably, the claims on appeal “[step [4]]impute at least one
value in place of the at least one missing parameter.”
Appeal Br. 16.
Appellant also identifies the detecting of changes in the parameters in
steps [10]–[12] and resulting “alerts” in step [14] as overcoming technical
problems. Appeal Br. 17, 19, 21.
Steps [2]–[4] are asserted by Appellant to be the improvement to the
technological field of health-related data collection, processing, and
management. Step [2] is validating the data. Step [3] is determining that a
value for a parameter is missing. Step [4] is “imputing” the missing value.
As discussed under Step 2A, Prong One, each of these steps are broad
enough to include their execution in the human mind, and therefore
represent abstract ideas. The improvement asserted by Appellant is
therefore to the abstract idea, itself. As explained in McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016), we must
“look to whether the claims . . . focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery.” In this case, the recited steps asserted by Appellant to be an
improvement to the technology are not limited to a specific algorithm,
software, or set of specific rules by which the validating and imputing steps
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are accomplished. Rather, they are so broadly recited that they encompass
the abstract idea, itself.
The recited steps in claim 1 are distinguishable from the steps in
McRO found to make the claim patent eligible. In McRO, the court found
that, while the McRO claims involved the manipulation of data, e.g.,
generating morph weight sets to animate lip and facial expressions of three-
dimensional characters, the claimed “automation goes beyond merely
‘organizing [existing] information into a new form’ or carrying out a
fundamental economic practice.” McRO, 837 F.3d at 1315 (citation
omitted). Instead, the court found that the “claimed process uses a combined
order of specific rules that renders information into a specific format that is
then used and applied to create desired results: a sequence of synchronized,
animated characters.” Id. McRO found that the recited rules “are limiting in
that they define morph weight sets as a function of the timing of phoneme
sub-sequences.” Id. at 1313. The claims were found to be directed to a
“technological improvement over the existing, manual 3-D animation
techniques.” Id. at 1316.
In finding the claim patent-eligible, McRO noted that the “abstract
idea exception has been applied to prevent patenting of claims that abstractly
cover results where ‘it matters not by what process or machinery the result is
accomplished.’ [O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)]; see
also Mayo, 132 S.Ct. at 1301.” McRO, 837 F.3d at 1314. Here, the steps
[2]–[4] are not limited to how they are accomplished, but rather recite the
result of whatever process is used to validate the data, identify missing data,
and impute a value for the missing data.
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Preemption is another issue that must be considered. In McRO, the
court held that the “limitations in claim 1 prevent preemption of all
processes for achieving automated lip-synchronization of 3–D characters.”
McRO, 837 F.3d at 1315. Furthermore, the court found that “[t]he specific
structure of the claimed rules would prevent broad preemption of all rules-
based means of automating lip synchronization.” Id. Steps [2]–[4] are
recited in such general terms – [2] validating data, [3] identifying missing
data, and [4] imputing a value for the missing data – that there is a risk that
the abstract idea embodied in these steps and other steps in the claim reciting
abstract ideas would preempt the abstract idea. Thus, the technological
improvement asserted by Appellant is recited in such broad terms that it
“itself is the abstract idea,” differing only in being accomplished on a
computer. “Steps that do nothing more than spell out what it means to
‘apply it on a computer’ cannot confer patent-eligibility. Alice, 134 S.Ct. at
2359.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1370–71 (Fed. Cir. 2015).
As indicated above, Appellant also asserts that the technological
improvement is detecting the change in parameters received in real-time and
sending alerts based on the changes. Appeal Br. 17, 19, 21. This asserted
improvement is embodied in steps [10]–[14] of claim 1.
Step [11] is the abstract idea, itself, and therefore cannot serve as the
basis for integrating the abstract idea into a practical application. Step [10]
is receiving the data and steps [12]–[14] are accomplished for the purpose of
sending an alert to the user of the changed masked composite numerical
value determined in step [11]. Appellant asserts that alerts are sent in a
“non-generic” way, but the claim does not recite specific rules that limit how
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the alerts are sent or a specific method by which they are sent. Rather, steps
[13] and [14] only recite that the alert is generated and then sent via a user
interface without reciting how the alert is sent. The claim does not recite the
specific means to accomplish these steps, such as the specific rules recited in
McRO which made the claims eligible for a patent under § 101. The alert,
itself, as explained in Step 2A, Prong One, can be an email or SMS message,
which were conventional communication tools at the time of the invention.
We recognize that the idea of updating in real-time a health score
(“masked composite numerical value”) and sending an alert to the user may
be a new improvement, but an improvement in an abstract idea is not a
technological improvement unless the abstract idea is integrated into a
practical application (is there a “meaningful limit on the judicial exception,
such that the claim is more than a drafting effort designed to monopolize the
judicial exception.”). 2019 Eligibility Guidance, 84 Fed. Reg. at 54 (2.
Prong Two).
The receipt of the data in step [10] and the alert in steps [13] and [14]
are “insignificant extra-solution solution activity” to the judicial exception of
step [11] in which the masked composite numerical value is modified.
Appellant has not explained how the alert, itself, is a technological
improvement.
The claims are distinguishable from Core Wireless Licensing S.A.R.L.
v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), cited by Appellant.
Appeal Br. 14. In Core Wireless, 880 F.3d at 1362–63, the court found that
the claims were “directed to a particular manner of summarizing and
presenting information in electronic devices” that specified “a particular
manner by which the summary window must be accessed” and disclosed “a
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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.” Id. The court found that “these claims recite a specific
improvement over prior systems, resulting in an improved user interface for
electronic devices.” Id. at 1363. Claim 1 does not recite a “particular
manner” of sending user alerts as in Core Wireless. And unlike in McRO
where a specific “technical effect” was achieved by carrying out the specific
rules (Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1167 (Fed. Cir. 2019)
(discussing McRO)), the claim does not limit how the alert is sent.
The rejected claims in this appeal have the same deficiency identified
in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016),
which were held to be ineligible for a patent under 35 U.S.C. § 101 because
they did “not claim a particular way of programming or designing the
software to create menus that have [certain] features, but instead merely
claim the resulting systems.” Likewise, the claims recite certain functions in
steps [2]–[4] and [10]–[14], but not how the functions are accomplished. A
judicial exception is not integrated into a practical application when the
additional element “merely uses a computer as a tool to perform an abstract
idea.” 2019 Eligibility Guidance, 84 Fed. Reg. at 55.
For the foregoing reasons, we conclude that the abstract ideas recited
in claim 1 are not integrated into a practical application. Thus, claim 1 is
directed to an abstract idea.

Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the 2019 Guidelines,
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which asks whether there is an inventive concept. In making this Step 2B
determination, we must consider whether there are specific limitations or
elements recited in the claim “that are not well-understood, routine,
conventional activity in the field, which is indicative that an inventive
concept may be present” or whether the claim “simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.” 2019
Eligibility Guidance, 84 Fed. Reg. at 56 (footnote omitted). We must also
consider whether the combination of steps is performed “in an
unconventional way and therefore include an ‘inventive step,’ rendering the
claim eligible at Step 2B.” Id.
Appellant contends that the claims provide an “inventive solution”
which is “rooted in computer technology.” Appeal Br. 18. Appellant
identifies the steps discussed above of [4] imputing missing values and [10]–
[14], detecting changes in health and automatically sending alerts. Id. at 19.
“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”
BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
As explained in SAP Am., Inc. v. Investpic, LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018), “[w]hat is needed is an inventive concept in the non-abstract
application realm.”
The claimed method first determines an initial masked composite
numerical value in steps [1]–[7]. The masked composite numerical value is
modified by new data in steps [10]–[11]. An alert is then generated and sent
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(steps [13], [14]). The determination of the initial composite value and the
modified value are abstract ideas, and therefore cannot be the “additional
element” that serve as the inventive concept. 2019 Eligibility Guidance, 84
Fed. Reg. at 56; BSG Tech, 899 F.3d at 1290. The issue is whether the non-
abstract elements in the claim add “significantly more” to the claim than the
exception, itself.
As explained above, neither the Specification nor the claims recite
specifically how the claimed processes are implemented. The alert can be
sent by conventional email and SMS, and therefore, alone, cannot be
inventive. Spec. 6: 10–11. The claim does not require that anything be done
with the alert other than to inform the user of a change in the health score as
embodied in the masked composite numerical value. We find that the
inventive concept and improvement asserted by Appellant boils down to the
display of the result of the process of step [11] in the form of a message,
such as a SMS text or email. Therefore, while the generation and sending of
the alert is an additional element in the claim, in reading the Specification
and the claim, itself, we can discern nothing inventive in those processes that
would confer eligibility on the claim. Unlike in Diehr, where the abstract
idea was used to control a physical process by determining when a
compound was cured in order to automatically open the mold, the abstract
ideas in claim 1 are not applied in a practical or inventive way, but rather to
send an alert in a conventional manner.
Appellant has not identified how the claimed steps in combination, or
as an “ordered combination” (Mayo, 566 U.S. at 79), perform
unconventionally to send the health alert to the user. Consequently, under
Step 2B, we are not persuaded that the Examiner erred in determining that
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the additional limitations of claim 1 do not transform the claim into
significantly more than the abstract idea.
Summary
For the foregoing reasons, the rejection under 35 U.S.C. § 101 of
claim 1, and claims 2–5, 7, 10–16, and 18–28 which were not separately
argued, is affirmed. 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7, 10–
16, 18–28
101 Eligibility 1–5, 7, 10–
16, 18–28

TIME PERIOD
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