OP DEN BUIJS, Jorn et al.

Patent Trials and Appeals Board

Jan 29, 2020

14205399 - (D) (P.T.A.B. Jan. 29, 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.
14/205,399 03/12/2014 Jorn OP DEN BUIJS 2013P00503US01 7263
24737 7590 01/29/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
GO, JOHN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JORN OP DEN BUIJS and STEFFEN CLARENCE PAUWS

Appeal 2019-003646
Application 14/205,399
Technology Center 3600

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN and
JAMIE T. WISZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as lacking
patent-eligibility. 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 Koninklijke
Philips N.V. Appeal Br. 1.
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STATEMENT OF THE CASE
Claims 1, 3, 4, 9–12, 18, and 20–22 stand finally rejected by the
Examiner under 35 U.S.C. § 101 as directed to a judicial exception to patent
eligibility. Final Act. 2.
Claim 1, which is representative, is reproduced below (bracketed
numbering has been added for reference to the specific limitations in the
claim):
1. A method for population health management, the method
comprising:
[1] with at least one processor of a clinical decision
support system, retrieving patient data associated with one or
more patients;
[2] with the at least one processor, retrieving one or more
chronic disease management (CDM) programs applicable to
each patient based on the patient data;
[3] with the at least one processor, retrieving a health
effect and cost for each of the applicable one or more CDM
programs, the health effect including survival rate,
hospitalization rate, risk of a fall, risk of ambulance transport to
the emergency department, quality of life, and quality of life
adjusted survival; and the cost including disease management
program costs, ambulance service costs, emergency department
costs, hospitalization costs, medication costs, general
practitioner costs, and costs related to workflow;
[4] with the at least one processor, computing a cost-
effectiveness ratio for each of the one or more CDM programs
from the retrieved patient data, the retrieved one or more CDM
programs, and the retrieved health effect and cost of the
retrieved CDM programs;
[5] with the at least one processor, removing CDM
programs with a cost-effectiveness ratio less than zero;
[6] with the at least one processor, sorting the one or
more CDM programs by their cost effectiveness ratio;
[7] with the at least one processor, determining which
combination of the one or more CDM programs are within
budget;
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[8] with the at least one processor, not recommending
one or more CDM programs that are not within budget;
[9] with the at least one processor, recommending a
remaining CDM program with a largest health effect and within
a determined budget for each patient, the recommended CDM
program having a smaller cost-effectiveness ratio relative to the
other retrieved CDM programs; and
[10] with the at least one processor, controlling a display
to display the recommended CDM program for the one or more
patients.

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.”
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. Pty. Ltd. 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.’
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Alice, 573 U.S. 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)
(“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.” 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
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. 84 Fed. Reg. 56. In
making this determination, we must consider whether there are specific
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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,
indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(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.
DISCUSSION
Claim 1 recites a “method for population health management.”
Following the first step of the Mayo analysis, we find that the claim is
directed to a method, and therefore falls into one of the broad statutory
categories of patent-eligible subject matter under 35 U.S.C. § 101. We thus
proceed to Step 2A, Prong One, of the Eligibility Guidance.

Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility 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 the abstract idea of
recommending a treatment plan to a patient. Final Act. 2. The Examiner
further found the claims are directed to the abstract idea of organizing
human activity because they recite “a fundamental economic practice (i.e.
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because it mitigates risk by calculating the cost-effectiveness ratio for each
plan and recommends a plan in light of budget considerations) and/or
manages personal behavior (i.e. following rules or instructions regarding
which plan should be chosen).” Ans. 3.
The claimed method, performed with “at least one processor,”
comprises [1] retrieving patient data and [2] “retrieving one or more chronic
disease management (CDM) programs applicable to each patient based on
the patient.” The Specification explains that CDM “is a systematic approach
for coordinating health care interventions and communication at the
individual, organizational, regional or national level.” Spec. 1:16–18. The
Specification states that CDMs “incorporate the coordination of health care,
pharmaceutical or social interventions designed to improve outcomes.”
Spec. 1:22–23.
Step [3] of the claim is “retrieving a health effect and cost for each of
the applicable one or more CDM programs.” In step [4], a cost-
effectiveness ratio is calculated for each of CDM programs. In the
subsequent steps, CDM programs with a cost-effectiveness ratio less than
zero are removed (step [5]) and sorted by their cost-effectiveness ratio (step
[6]). The method determines which CDM programs are within budget (step
[7]) and doesn’t recommend those which are not within budget [step [8]).
Finally, the method [9] recommends a remaining CDM program “with a
largest health effect and within a determined budget for each patient, the
recommended CDM program having a smaller cost-effectiveness ratio
relative to the other retrieved CDM programs.” The recommendation is
displayed in step [10].
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The claimed method therefore, as concluded by the Examiner,
calculates “the cost-effectiveness ratio for each plan and recommends a plan
in light of budget considerations.” Ans. 3. The method organizes human
activity, as found by the Examiner, because the steps in the claim recite “a
fundamental economic practice (i.e. because it mitigates risk by calculating
the cost-effectiveness ratio for each plan and recommends a plan in light of
budget considerations) and/or manages personal behavior (i.e. following
rules or instructions regarding which plan should be chosen).” Final Act. 3.
Steps [1]–[3] involve data collection (retrieving patient and program data)
and steps [4]–[8] enable the recommendation of the CDM program and
represent the abstract idea. Appellant in the Appeal Brief did not identify a
defect in the Examiner’s finding that the claim recites the abstract of
organizing human activity.
The steps of the claimed method also comprise mental processes,
which is another one of the three categories of abstract ideas listed in the
2019 Eligibility Guidance. Eligibility Guidance, 84 Fed. Reg. 52.
Specifically, steps [5]–[9] of claim 1 could all be performed in the human
mind because a human, without the aid of the computer, could remove the
programs with a cost-effectiveness ratio less than zero (step [5]), sort the
programs by their cost effectiveness ratio (step [6]), determine programs
within budget (step [7]), not recommend programs that are not within budget
(step [8]), and recommend a program with “a largest health effect and within
a determined budget for each patient, the recommended CDM program
having a smaller cost-effectiveness ratio relative to the other retrieved CDM
programs.”
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Appellant states that the Examiner “incorrectly defines abstract idea.”
Appeal Br. 9. Appellant argues that “the present claims do no[t] claim an
end result, but rather claim only a limited and specific apparatus or method
for achieving the end result, hence are not directed to an abstract idea.” Id.
at 10. Appellant also argues that the claims are performed with hardware
and computer operations. Id.
A claim can recite a specific manner of achieving an end result, and
still be classified as an abstract idea. For instance, a claim can recite a
specific mathematical formula and still be ineligible for a patent under § 101.
In Parker v. Flook, 437 U.S. 584 (1978), the claims comprised determining a
new alarm base using a specific mathematical algorithm, applying the
determined alarm base to update an alarm limit, and then adjusting the alarm
limit to the updated value. Id. While the claim recited a specific
mathematical algorithm for achieving the desired result, the Court concluded
that the claim was ineligible for a patent under § 101 because “[t]he process
itself, not merely the mathematical algorithm, must be new and useful.” Id.
at 591. Thus, reciting a specific way of achieving a desired result does not
necessarily evade an eligibility rejection.
With respect to Appellant’s argument that the claims use a computer
processor and hardware, Appellant did not explain how executing the
method on a computer makes it any less directed to an abstract idea. Appeal
Br. 9–10. “The Court in Alice made clear that a claim directed to an abstract
idea does not move into section 101 eligibility territory by ‘merely
requir[ing] generic computer implementation.’ Alice, 134 S.Ct. at 2357.”
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014).
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In sum, for the foregoing reasons, we find that claim 1 recites an
abstract idea. Accordingly, we proceed to Step 2A, Prong Two, of the
Eligibility Guidance.
Step 2A, Prong One
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 discussed in the Eligibility Guidance, “[a] claim
that integrates a judicial exception in 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.” Eligibility Guidance, 84
Fed. Reg. 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. Id. at 54–55. 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 12. 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.

2 Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (last accessed Nov. 15, 2019) (“PEG Update”).

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The Specification discloses that one of the reasons “for healthcare
costs continuing to soar is that an estimated $300 billion dollars are wasted
annually due to inefficient allocation of healthcare resources.” Spec. 1:25–
26. The Specification further discloses that the “present application is
directed to a system and method to most effectively allocate healthcare
resources, given individual patient risks and organizational budget
constraints.” Spec. 2:19–21. The Specification teaches that the method can
be used by “healthcare organizations providing health care to a patient
population where a selection among a variety of CDM programs or program
elements must be made for each individual patient.” Spec. 2:21–23. The
Specification discloses that “if a care organization is constrain[ed] by a
single total budget (lump sum for the whole population) and there is a
distribution of costs across different programs, then there might be different
subsets of programs across patients that fit within this budget by possibly
trading-off some of the benefits of these programs differently.” Spec. 2:25–
28. The Specification teaches that the “present application addresses this
issue by recommending the most effective care programs given the budget
constraint.” Spec. 2:28–30. The Specification describes the method as
follows:
[I]nputs patient clinical data and costs parameters and outputs a
recommendation of a chronic disease management (CDM)
program for each patient, such that for the entire population
under consideration the largest health effect is achieved. During
this recommendation, the present application utilizes predictors
of the health effects and costs for all patient-CDM program
combinations. The present application also takes into account
monetary constraints that are applicable to the organization
providing the care for the patient population under
consideration.
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Spec. 4:24–30.
The Specification further describes a decision support system 16
(“DSS”) (Spec. 5:8–9) and a cost-health effectiveness engine of the DSS 16
to perform the method. The Specification explains:
The DSS 16 stores clinical models and algorithms embodying
the clinical support tools or patient decisions aids. The clinical
models and algorithms are utilized by a recommendation engine
40 and a cost-health effectiveness engine 42 of the DSS 16 to
generate one or more recommendations of a chronic disease
management (CDM) program for each patient, such that for the
entire population under consideration the largest health effect is
achieved.
Spec. 6:22–27.
We cannot discern from reading the Specification an improvement to
the cost-effectiveness analysis which places “a meaningful limit on the
judicial exception” recited in claim 1. Eligibility Guidance, 84 Fed. Reg. 53.
The Specification describes DDS 16 and cost-health effectiveness engine 42
to perform the analysis, which appear to comprise the software programs
that enable the steps of the claimed method to be accomplished. The
Specification does not explain how these “engines” improve the computer,
itself, on which they perform their analytic functions. Rather, the
Specification describes the engines as using “clinical models and
algorithms,” but does not explain how these models and algorithms change,
enhance, or otherwise improve the computer which uses them in the claimed
method. Spec. 6:22–27. The other description in the Specification, as
discussed above, describes using budget constraints, clinical data, and cost
parameters to make the CDM recommendation. Spec. 2:25–30, 4:24–30
(reproduced above). The employment of these parameters might be an
improvement to how the CDM program is recommended, but as discussed in
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more detail below, such improvement is to the abstract idea, itself, and not to
a technological or technical field and therefore is inadequate to establish
eligibility. Eligibility Guidance, 84 Fed. Reg. 55.
As discussed above, an additional element, beyond the abstract idea of
identifying a recommended CDM program, is necessary to integrate the idea
into a practical application. See supra at pp. 4, 9. The improvement
described in the Specification is to how the analysis is accomplished (steps
[4]–[9] (calculating cost-effectiveness ratio, etc.); the analysis recited in
these steps represent the abstract idea, itself, and therefore cannot serve as
the “additional element” necessary to integrate the abstract idea into a
practical application.
Appellant contends that the “the claims are directed to a specific
implementation of a solution to a problem.” Appeal Br. 10. Appellant
argues:
In contrast, in the present case, the ability to combine the
specific factors to determine the cost-effectiveness ratio for the
CDM programs, in order to perform generation (of the ratios)
and then to perform analysis (removing the selected CDM
programs) provide “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, 134 S. Ct. at 2357.
Appeal Br. 12.
Appellant further argues “the claims solve the problem of how to
identify a disease management program that is within a patient's budget and
has a desired health effect.” Appeal Br. 14. Appellant states that it “should
be understood that prior to the claimed invention, existing chronic disease
management programs do not explicitly consider individual patient risks and
budget constraints of a health care organization.” Id.
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The problem that Appellant asserts to have solved is accomplished by
following the specific steps in the claim. The question raised by Appellant’s
assertion is whether these steps are stated with sufficient specificity to confer
eligibility on the claim. We begin with McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) because the steps in McRO were
determined by the court to recite sufficient specificity to avoid the judicial
restrictions on patent eligibility under § 101.
In McRO, the claims were directed to a “method for automatically
animating lip synchronization and facial expression of three-dimensional
characters.” McRO, 837 F.3d, 1307–08. The claim recited a series of steps
that “produce[d] lip synchronization and facial expression control of said
animated characters.” Id. The court found that 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.” McRO, 837 F.3d at 1313. The claims
were found to be directed to a “technological improvement over the existing,
manual 3-D animation techniques.” McRO, 837 F.3d 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,]; see also
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Mayo, 132 S.Ct. at 1301.” McRO, 837 F.3d at 1314. McRO stated that
therefore, a court must “look to whether the claims in these patents 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.” McRO, 837 F.3d at 1314.
Here, the claimed steps recite the desired result, but not with enough
specificity that would deter preemption of the abstract idea recited in claim
1. 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. The court explained that “[t]he
specific structure of the claimed rules would prevent broad preemption of all
rules-based means of automating lip synchronization.” Id. In contrast, the
steps in rejected claim 1 are recited in general terms, namely, “computing a
cost-effectiveness ratio” (step [4]), “removing CDM programs with a cost-
effectiveness ratio less than zero” (step [5]), “sorting the one or more CDM
programs by their cost effectiveness ratio” (step [6]), “determining which
combination of the one or more CDM programs are within budget” (step
[7]), “not recommending one or more CDM programs that are not within
budget” (step [8]), and “recommending a remaining CDM program with a
largest health effect and within a determined budget for each patient” (step
[9]). Unlike McRO, none of these steps recite how the result is achieved or
how they are implemented in a specific manner.
Step [4], in which the health effects and risks for the individual patient
and the costs are used to compute a cost-effectiveness ratio, does not
specifically identify how the ratio is determined. While the factors recited in
step [4] to calculate the ratio may be new or unique, as alleged by Appellant,
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the step does not recite how they factors are specifically employed to
compute “a cost-effectiveness ratio for each of the one or more CDM
programs.” Thus, only the end result of the computation is recited in the
claim, and not how to accomplish the computation. Compare McRO which
found the recited rules to be “limiting in that they define morph weight sets
as a function of the timing of phoneme sub-sequences.” McRO, 837 F.3d at
1313.
Steps [1]–[3] comprise data collection and step [10] implements the
display of the CDM recommendation. Appellant did not assert these steps
invoke a technological or technical improvement to a field. We find that
each of these steps involve “insignificant extra-solution activity which the
courts have found insufficient to integrate the judicial exception into a
practical application. Eligibility Guidance, 4 Fed. Reg. 55.
Appellant cites DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014) to support the contention that the claims are patent
eligible. Appeal Br. 14. In DDR, the claims were directed to an “e-
commerce outsourcing system “to serve a composite web page to the visitor
computer wit[h] a look and feel based on the look and feel description in the
data store and with content based on the commerce object associated wit[h]
the link.” DDR, 773 F.3d at 1249. The court found the claims to be patent
eligible:
[T]hese claims stand apart because they do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks.
Id. at 1257.
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The rejected claims here are not “necessarily rooted in computer
technology” as they were in DDR. The steps in the claim are performed on a
computer processor, but the steps do not address a problem that improves the
computer processor which carries out the method. Rather, the problem is
addressed by following steps that comprise computing a cost-effectiveness
ratio, taking into account a number of specific factors. Appellant did not
adequately explain how such steps improve the computer technology on
which the method is performed.
There are several court cases in which claims were found to be
eligible when computer function was improved. See, e.g., Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); Finjan, Inc. v. Blue Coat
Sys., 879 F.3d 1299 (Fed. Cir. 2018); Core Wireless Licensing S.A.R.L. v.
LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018). But none of the blaze
marks of eligibility found in these cases are present here because the claimed
method does not impart a change to how the computer is used or to how the
computer operates.
Appellant also argues that the recommended CDM program is used to
“treat” a patient which is practical application. Reply Br. 5. This argument
is not persuasive. The last step of claim 1 is [10] “controlling a display to
display the recommended CDM program for the one or more patients.”
There is no requirement in the claim that the displayed program is applied to
the treatment of a patient. Unlike Vanda, there is no drug administration
step. Vanda Pharm. Inc. v. West-Ward Pharm. Int. Ltd., 887 F.3d 1117,
1121 (Fed. Cir. 2018). The instant claim does not even specify what that
treatment would be. Consequently, we find this argument unavailing.
In sum, we have not been guided to an additional element in the
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claim, beyond the abstract idea, that integrates the judicial exception in
practical application. The improvement is to the abstract idea, itself, and not
to the function of a technology or technical field. Eligibility Guidance, 84
Fed. Reg. 55.

Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the Eligibility
Guidelines, 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,
indicative that an inventive concept may not be present.” Eligibility
Guidance, 84 Fed. Reg. 56 (footnote omitted). We must also consider
whether the combination of steps perform “in an unconventional way and
therefore include an ‘inventive step,’ rendering the claim eligible at Step
2B.” Id. In this part of the analysis, we consider “the elements of each
claim both individually and ‘as an ordered combination’” to determine
“whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217.
Appellant has not established that the claims, when considered as an
ordered combination, provide “inventive” step. Step [4] of computing the
cost-effectiveness ratio is not performed any differently in combination with
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the additional limitations recited in the claim. Steps [1], [2], and [3] involve
retrieving data that is used in [4] for computing the cost effectiveness ratio.
Neither the Specification nor Appellant has identified anything in these steps
alone, or as an ordered combination, that retrieves the data in a non-
conventional, inventive way. The subsequent steps in the claim, culminating
in the CDM program recommendation, represent the abstract idea.
Appellant has not explained how the combination of steps operates in a non-
conventional way to achieve the stated purpose of a CDM recommendation.
The “improvement” to the computation of the cost-effectiveness ratio
is deficient for the same reason as was the method for updating alarms in
Flook, namely, there must be an “inventive” application of the algorithm to
confer subject matter eligibility under § 101. Flook, 437 U.S. at 594.
Accordingly, we conclude that claim 1 does not provide an inventive
step.
Summary
For the foregoing reasons, the rejection of claim 1 based on 35 U.S.C.
§ 101 is affirmed. Claims 3, 4, 7, 9–12, 18, and 20–22 were not argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 7,
9–12, 18,
20–22
101 Eligibility 1, 3, 4, 7,
9–12, 18,
20–22

Appeal 2019-003646
Application 14/205,399

19
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED