THE S.M.A.R.T. CORPORATION

Patent Trials and Appeals Board

Jul 30, 2021

2020004800 (P.T.A.B. Jul. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/223,881 07/29/2016 Gus J. Slotman SLOT0056US.P1 2575
26259 7590 07/30/2021
LICATA & TYRRELL P.C.
66 E. MAIN STREET
MARLTON, NJ 08053
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
PTOactions@licataandtyrrell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GUS J. SLOTMAN
____________

Appeal 2020-004800
Application 15/223,881
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–5 and 7. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
CLAIMED INVENTION
The claimed invention uses baseline pre-operative data for an
individual patient to predict outcomes for weight, weight loss, and the
presence or absence of comorbidities after bariatric surgeries in order to

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies “The S.M.A.R.T. Corporation” as the real party
in interest. Appeal Br. 1.
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2
select an appropriate bariatric surgery for a patient. See Spec. ¶ 9; see also
id. at 7.
Claims 1 and 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for selecting a bariatric surgery for a patient,
comprising:
(a) entering baseline parameters of a patient into a
network system comprising a processor that runs one or more
statistical tests and compares the baseline parameters of the
patient with control profiles comprising independent variables
for subjects who have responded positively to bariatric surgeries,
wherein the statistical tests comprise generating linear regression
models of independent variables for weight and weight loss as
dependent variables, and logistic regression models of
independent variables for comorbidities as dependent variables,
wherein the independent variables comprise at least one of age
or employment;
(b) generating output from the processor indicating
predicted post-operative outcomes for the patient for each of the
bariatric surgeries based on the comparison; and
(c) selecting a bariatric surgery for the patient.

Appeal Br. 21 (Claims Appendix).

REJECTIONS
Claims 1–5 and 7 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1, 3–5, and 7 are rejected under 35 U.S.C. § 103 as
unpatentable over Harris (WO 2014/047388 A9, pub. Mar. 27, 2014),
Maria E. Valera-Mora et al., Predictors of Weight Loss and Reversal of
Comorbidities in Malabsorptive Bariatric Surgery, 81 Am. J. Clin. Nutr.
1292–7 (2005) (hereinafter “Valera-Mora”), and Anja Schienkiewitz et al.,
Comorbidity of Overweight and Obesity in a Nationally Representative
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Sample of German Adults Aged 18–79 Years, 12 BMC Public Health (2012)
(hereinafter “Schienkiewitz”).
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Harris, Valera-Mora, Schienkiewitz, and Jensen (US 8,036,912 B2, iss.
Oct. 11, 2011).
ANALYSIS
Patent-Ineligible Subject Matter
Principles of Law
35 U.S.C. § 101
An invention is patent eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-part framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice, “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217. The first step in that
analysis is to “determine whether the claims at issue are directed to one of
those patent-ineligible concepts,” such as an abstract idea. Id. According to
Supreme Court precedent, concepts determined to be abstract ideas include
certain methods of organizing human activity, such as fundamental
economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611
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(2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)).
If the claims are not directed to a patent-ineligible concept, e.g., an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
This is “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 (alteration in original).
USPTO Guidance
The U.S. Patent and Trademark Office (“USPTO”) has set out agency
policy with respect to its interpretation of Supreme Court and Federal Circuit
decisions concerning the requirements for subject matter eligibility. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51
(Jan. 7, 2019) (“2019 Guidance”); see also October 2019 Update
(responding to comments on the 2019 Guidance solicited from the public);2
Berkheimer Memo.3 “The guidance sets out agency policy with respect to

2 October 2019 Update: Subject Matter Eligibility, available at:
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf
3 Memorandum from Robert W. Bahr, Deputy Commissioner for Patent
Examination Policy, to the Patent Examining Corps, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Decision (Berkheimer v. HP, Inc.)” (April 19, 2018),
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the USPTO’s interpretation of the subject matter eligibility requirements of
35 U.S.C. § 101 in view of decisions by the Supreme Court and the Federal
Circuit.” 2019 Guidance, 84 Fed. Reg. at 51. However, the “guidance . . .
does not create any right or benefit, substantive or procedural, enforceable
by any party against the USPTO” and “[r]ejections will continue to be based
upon the substantive law.” Id. Because the MANUAL OF PATENT
EXAMINATION PROCEDURE §§ 2104–06, Ninth Edition, Rev. 10.2019 (June
2020) (“MPEP”) now incorporates the 2019 Guidance, the October 2019
Update, and the Berkheimer Memo, this opinion refers to the MPEP instead
of those materials.
The MPEP acknowledges that “[t]he Alice/Mayo two-part test is the
only test that should be used to evaluate the eligibility of claims under
examination.” MPEP § 2106(I). It treats the first step (i.e., whether the
claim is directed to a judicial exception) as a two-prong inquiry. Id.
§ 2106.04(II). “Prong One asks does the claim recite an abstract idea, law of
nature, or natural phenomenon?” Id. § 2106.04(II)(A)(1). For determining
whether a claim recites an abstract idea, the MPEP defines enumerated
groupings of abstract ideas, distilled from precedent. Id. § 2106.04(a); see
also id. § 2106.04(a)(2) (defining abstract idea groupings). If the claim
recites a judicial exception, then the claim requires further analysis at Prong
Two. Id. § 2106.04(II)(A)(1). “Prong Two asks does the claim recite
additional elements that integrate the judicial exception into a practical
application?” Id. § 2106.04(II)(A)(2); see also id. § 2106.04(d). Only if a
claim (1) recites a judicial exception and (2) does not integrate that

available at: https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF
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exception into a practical application, do we then look, under Step 2B, to
whether the additional elements, individually or in combination, provide an
inventive concept. See MPEP §§ 2106(III), 2106.05.
“An inventive concept ‘cannot be furnished by the unpatentable law
of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05(I)
(quoting Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir.
2016)). Among the considerations in determining whether the additional
elements, individually or in combination, amount to significantly more than
the exception itself, we look to whether they add a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II).
Rejection
The Examiner determines that the claims are directed to selecting a
bariatric surgery for a patient based on a comparison of baseline parameters
of the patient with control profiles comprising independent variables for
subjects who have responded positively to bariatric surgeries. Final Act. 3.
The Examiner determines that this concept involves managing personal
behavior or relationships or interactions between people, including social
activities, teaching, and following rules or instructions, which is a certain
method of organizing human activity, i.e., an abstract idea. Id. The
Examiner further determines that the claims do not recite additional
elements that integrate the abstract idea into a practical application or that
amount to significantly more than the abstract idea. Id. at 4–8.
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Step One of the Mayo/Alice Framework (2019 Guidance, Step 2A)
Appellant argues claims 1–5 and 7 as a group. Appeal Br. 9–14. We
select claim 1 as representative. Consequently, claims 2–5 and 7 stand or
fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on a process that itself qualifies as
an abstract idea, and not on any improvement to technology and/or a
technical field.
The Specification is titled “System and Method for Selecting a
Bariatric Surgery,” and identifies, in the Background section, health
improvements achieved by obese patients who lose weight. Spec. ¶¶ 2–3.
Bariatric surgery is a weight loss treatment for qualifying patients, but
postoperative complications commonly result. Id. ¶ 5. “Given the risks
associated with bariatric surgery, it would be of significant benefit to know
the outcome of a bariatric surgery prior to conducting the surgery. The
present invention meets this need in the art.” Id. ¶ 6. The inventors
found that individual patient weight, weight loss, presence or
absence of co-morbidities, and adverse events up to 24 months
after open gastric bypass (ORYGP), laparoscopic gastric bypass
(LRYGB), adjustable gastric band (AGB), duodenal switch
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(DS), and sleeve gastrectomy (SLEEVE) can be predicted from
baseline pre-operative data from an individual patient. Using the
present invention, demographic, physiologic and medical
information about morbidly obese subjects can be entered into
the models described herein and surgery outcome can be
obtained prior to open gastric bypass, laparoscopic gastric
bypass, adjustable gastric banding, sleeve gastrectomy, or
duodenal switch surgery. Alternatively stated, using the method
of this invention, it can be determined prior to surgery how much
weight the subject would lose and whether or not co-morbidities
such as sleep apnea, hypertension, diabetes, GERD, and the like
will resolve with each of the five operations, thus allowing the
subject and the subject’s surgeon to choose objectively which
operation would be best for the subject.
Id. ¶ 9.
Consistent with this disclosure, claim 1 recites a method for selecting
a bariatric surgery for a patient comprising three steps:
entering baseline parameters of a patient into a . . .
system . . . that runs one or more statistical tests and compares
the baseline parameters of the patient with control profiles
comprising independent variables for subjects who have
responded positively to bariatric surgeries, wherein the
statistical tests comprise generating linear regression models of
independent variables for weight and weight loss as dependent
variables, and logistic regression models of independent
variables for comorbidities as dependent variables, wherein the
independent variables comprise at least one of age or
employment;
(step (a)); “generating output . . . indicating predicted post-operative
outcomes for the patient indicating for each of the bariatric surgeries based
on the comparison” (step (b)); and “selecting a bariatric surgery for the
patient” (step (c)).
These steps, when given their broadest reasonable interpretation,
recite a method for selecting a bariatric surgery for a patient. This concept
pertains to “managing personal behavior or relationships or interactions
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between people (including . . . following rules or instructions),” which is a
subgrouping of the “certain methods of organizing human activity” grouping
of abstract ideas. See MPEP § 2106.04(a)(2)(II). For example, steps (a)
through (c) recite a set of rules or instructions that, when performed, manage
an interaction between a patient and surgeon — namely, the selection of a
bariatric surgery to be performed on a patient by a surgeon.
Appellant does not dispute that claim 1 recites an abstract idea.
Instead, Appellant argues that claim 1 is not directed to an abstract idea
because it integrates the recited abstract idea into a practical application
(Step 2A, Prong Two). Appeal Br. 10–12. Citing McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) for the
proposition that “computing claims are eligible when they are directed to the
specific way in which a computer performs a task, even when that overall
task is one that humans have done before, such as lip-synching of computer
models,” Appellant contends that claim 1, like the patent-eligible claims in
McRO, recites a “specific method that improves the relevant technology” of
selecting a bariatric surgery for a patient. Appeal Br. 10; see also Reply
Br. 2–3. Appellant further asserts that claim 1 “describe[s] a more specific
process than merely entering data, conducting a comparison and generating
an output.” Appeal Br. 10.
Contrary to Appellant’s suggestion, however, the Federal Circuit in
McRO did not base its determination that the claimed animation scheme was
patent eligible solely on the specificity of the claim language. Instead, the
court found that the representative claim was patent eligible because, when
looked at as a whole, the claim was directed to a technological improvement
over existing, manual 3-D animation techniques by using rules in a process
specifically designed to achieve an improved technological result in
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conventional industry practice. McRO, 837 F.3d at 1316. In particular, the
Federal Circuit found that the claim used limited rules allow computers to
produce accurate and realistic lip synchronization and facial expressions in
animated characters that previously could only be produced by human
animators through a visual and subjective process. Id. at 1313; see also id.
at 1306 (describing conventional 3-D computer animation as a visual and
subjective process performed manually by human animators using a
computer). However, we find no parallel technological improvement in
claim 1 analogous to the improvement to 3-D animation techniques obtained
in McRO.
Appellant concedes that claim 1 does not recite an improvement in
“computer technologies” analogous to claims in McRO. Reply Br. 2.
Instead, Appellant argues that claim 1 improves the “relevant technology” of
“selecting an appropriate bariatric surgery for a patient.” Id. at 2–3; see
also Appeal Br. 10–11 (arguing that claim 1 “allow[s] for the selection of a
bariatric surgery for a patient by running statistical tests and comparing
baseline parameters of a patient with control profiles comprising
independent variables for subjects who have responded positively to
bariatric surgeries,” thereby “provid[ing] a specific way to determine
whether a bariatric surgery is appropriate for a patient”). Yet, selecting an
appropriate bariatric surgery pertains to “managing personal behavior or
relationships or interactions between people (including . . . following rules
or instructions),” which is a subgrouping of the “certain methods of
organizing human activity” grouping of abstract ideas. And patent eligibility
“cannot be furnished by the unpatentable . . . abstract idea . . . itself.”
Genetic Techs., 818 F.3d at 1376.
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We are not persuaded by Appellant’s arguments concerning Enfish for
similar reasons. In this regard, Appellant maintains that the Federal Circuit
in Enfish instructed that “the effect of the claim limitations cannot be
discarded in determining the character of the claims as a whole and whether
they provide a specific way of performing an abstract idea.” Appeal Br. 11.
Appellant asserts that claim 1 is “not directed to ‘any form’ of ‘selecting a
bariatric surgery.’” Id. at 12. Instead, claim 1 “provide[s] a specific way of
performing an abstract idea” and, thus, is “not directed to a judicial
exception.” Id.
However, the Federal Circuit in Enfish did not hold that an abstract
idea performed in a specific way renders a claim patent eligible. Such a
holding would be inconsistent with Supreme Court precedent. See Mayo,
566 U.S. at 88–89 (explaining that “cases have not distinguished among
different laws of nature [(or other judicial exceptions)] according to whether
or not the principles they embody are sufficiently narrow”).
In Enfish the Federal Circuit explained that when determining whether
improvements in computer-related technology, including software, are
directed to an abstract idea, it is “relevant to ask whether the claims are
directed to an improvement to computer functionality versus being directed
to an abstract idea.” Enfish, 822 F.3d at 1335. After considering this
question, the court concluded that the claims at issue were not focused on a
task for which a computer is used in its ordinary capacity. Id. at 1336.
Instead, the Federal Circuit found that the “plain focus of the claims” was on
an improvement to computer functionality itself — namely, an improvement
in computer capabilities achieved by a self-referential table for a computer
database. Id.; see also id. at 1339 (finding that the claimed self-referential
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table is “designed to improve the way a computer stores and retrieves data in
memory”).
Here, in contrast, claim 1 is not focused on any improvement to
computer functionality itself. Instead, claim 1 focuses on a process that
qualifies as an abstract idea (i.e., a method of organizing human activity).
The only additional elements recited in claim 1 beyond the abstract idea are
a “processor” in a “network system.” The Examiner determines, and we
agree, that the additional limitations, considered individually and as a
combination, amount to no more than implementing the abstract idea on a
computer (i.e., a processor), and generally linking the abstract idea to a
particular technological environment (i.e., a network system). Final
Act. 4–5. As such, the additional limitations do not integrate the abstract
idea into a practical application. See Alice, 573 U.S. at 223–24 (“[W]holly
generic computer implementation is not generally the sort of ‘additional
featur[e]’ that provides any ‘practical assurance that the process is more than
a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting
Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that
claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Guidance, the second step of the Mayo/Alice framework, whether
claim 1 includes additional elements or a combination of elements that
provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself. MPEP
§ 2106.05(I). We agree with the Examiner that it does not.
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Appellant argues that
the additional elements of entering baseline parameters of a
patient into a network system comprising a processor, the use of
linear regression models of independent variables for weight and
weight loss as dependent variables and logistic regression
models of independent variables for comorbidities as dependent
variables, wherein the independent variables comprise at least
one of age or employment, and generating output from the
processor indicating predicted post-operative outcomes for the
patient for each of the bariatric surgeries based on the
comparison recite a specific improvement over prior art
approaches for selecting a bariatric surgery for a patient by
providing at least 90% predictive specificity for resolution of co-
morbidities such as sleep apnea, cholelithiasis, liver disease,
congestive heart failure, abdominal hernia and diabetes at 24
months after surgery (Spec., ¶ [0009], ¶ [00040]). Thus, the
claimed method recites additional elements that amount to
significantly more than the judicial exception.
Appeal Br. 12. Appellant additionally argues that the Examiner fails to
provide evidentiary support that these additional elements are well-
understood routine, and conventional, as required by the Berkheimer Memo.
See id. at 12–13.
Yet, the relevant question at step two is not whether the claimed
invention as a whole is unconventional or non-routine. BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). For example, in
Alice, the Court did not consider whether it was well-understood, routine,
and conventional to execute the claimed intermediated settlement method on
a generic computer. See Alice, 573 U.S. at 221–27. Instead, the Court
considered the features other than the abstract idea, individually and in
combination, to determine whether they contained an “inventive concept”
sufficient to transform the abstract idea into a patent-eligible application. Id.
at 221; see also id. at 223 (holding that the “mere recitation of a generic
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computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention”); Mayo, 566 U.S. at 78 (instructing that after identifying
the judicial exception at step one, we ask at step two “[w]hat else is there in
the claim before us?”).
Here, as described above, other than the abstract idea, claim 1
additionally recites a “processor” in a “network” system. The Examiner
determines, and we agree, that “the additional elements are well-understood,
routine, and conventional in nature.” Final Act. 5–6 (citing Spec. ¶¶ 26, 27,
30); see also Spec. ¶¶ 7, 8, 26, 30. Appellant does not dispute that these
non-abstract features of the claimed invention, considered alone or in
combination, are well-understood, routine, or conventional. Nor do we find
any inventive concept when the additional elements are considered
individually and as an ordered combination. Claim 1 requires no more than
using generic functionality of a generic network system and processor— i.e.,
entering data into a network system comprising a processor (step (a)) and
generating output from the processor (step (b)) — to implement the
underlying idea. See Alice, 573 U.S. at 221 (holding that generic computer
implementation fails to transform an abstract idea into a patent-eligible
invention).
That the claimed method for selecting a bariatric surgery may be
unconventional over prior methods for selecting a bariatric surgery is not
relevant as a factual matter. A novel and non-obvious claim directed to a
purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S.
at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The
‘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.”).
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Accordingly, we are not persuaded, on the present record, that the
Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of
claim 1 and claims 2–5 and 7, which fall with claim 1.
Obviousness
Independent Claims 1 and 7, and Dependent Claims 3–5
We are persuaded that the Examiner erred in rejecting independent
claims 1 and 7 under 35 U.S.C. § 103 because Schienkiewitz does not teach
or suggest
run[ning] one or more statistical tests and compar[ing] the
baseline parameters of the patient with control profiles
comprising independent variables for subjects who have
responded positively to bariatric surgeries, wherein the statistical
tests comprise generating . . . logistic regression models of
independent variables for comorbidities as dependent variables,
wherein the independent variables comprise at least one of age
or employment[,]
as recited in claim 1, limitation (a), and similarly recited in claim 7.
The Examiner finds that Harris teaches entering baseline parameters
of a patient into a network system comprising a processor that: runs one or
more statistical tests, and compares the baseline parameters of the patient
profile with control profiles comprising independent variables for subjects
who have responded positively to bariatric surgeries. Final Act. 8–9 (citing
Harris ¶¶ 7, 160, Fig. 1). Harris relates to predicting outcomes for bariatric
surgery. Harris ¶ 7. Harris’s system includes a patient data input module
and an outcome prediction module. Id. The patient data input module
receives patient data, such as patient age, weight, and health issues other
than obesity, from a client terminal. Id. ¶¶ 7, 129. The outcome prediction
module receives the patient data, and predicts an outcome for each of a
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plurality of bariatric surgery procedures based on the received patient data
and historical data regarding outcomes of the plurality of bariatric surgery
procedures. Id.; see also id. ¶¶ 130, 160. More specifically, the output
prediction module has a model for each bariatric surgical procedure. Id.
¶ 160. The model includes an equation with coefficients based on historical
data. Id. Patient data are plugged into the equation’s input variables to
predict an output for the bariatric surgical procedure. Id. Exemplary models
include multivariable models, such as multivariable regression models, that
base variable selection based on a variety of statistical measures. Id. The
outcome from the outcome prediction module includes an amount of BMI
reduction and/or an amount of weight loss. Id. ¶ 7.
The Examiner acknowledges that Harris does not teach that the
statistical tests comprise “logistic regression models of independent
variables for comorbidities as dependent variables, wherein the independent
variables comprise at least one of age or employment,” as recited in claim 1,
limitation (a), and similarly recited in claim 7. However, the Examiner finds
that Schienkiewitz teaches “logistic models using chronic health conditions,
interpreted as comorbities, as dependent variables” and using age as an
independent variable. Final Act. 9–10 (citing Schienkiewitz, Abstract, 2–3).
Schienkiewitz relates to determining comorbidities associated with
overweight and obesity in a study of German adults.
Schienkiewitz Abstract, 2. The study involved interviewing participants to
assess disease, health problems and current medication used, using
information from twenty five chronic health problems. Id. at 2. The study
also used a questionnaire to gather information on covariates, such as age,
smoking habits, education, and professional status. Id. To assess for a
comorbidity, the study fitted a separate multivariate logistic model for each
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health condition or comorbidity (dependent variable) and for overweight,
obesity, or abdominal obesity (independent variable), adjusting for
covariates. Id. at 3. Specifically, the study adjusted the models for age,
social status, and drinking. Id. at Abstract, 3. For example, “[a]fter
adjustment for age, social status, and smoking, both overweight and obesity
were significantly associated with cardiometabolic risk factors and
osteoarthritis in men and women (Table 3).” Id. at 4, Table 3.
The Examiner determines that it would have been obvious to combine
Harris and Schienkiewitz to identify comorbidities associated with
overweight and obesity. Final Act. 10 (citing Schienkiewitz, Abstract). Yet,
claims 1 and 7 require that the statistical tests generate logistic regression
models of independent variables for subjects who have responded positively
to bariatric surgeries, wherein at least one of the independent variables is age
or employment. Although Harris involves predicting weight loss for each of
a plurality of bariatric surgeries based on patient data and historical data
regarding outcomes for the respective bariatric surgeries, Harris does not
predict resolution of comorbidities. Schienkiewitz uses multivariate logistic
models to identify comorbidities associated with overweight and obesity.
However, Schienkiewitz does not concern predicting resolution of
comorbidities as an outcome for bariatric surgeries. Accordingly,
Schienkiewitz’s logistic regression models do not comprise independent
variables for subjects who have responded positively to bariatric surgeries,
as required by independent claims 1 and 7.
It is unclear, and the Examiner does not adequately explain, why or
how one of ordinary skill in the art would be motivated to combine Harris
and Schienkiewitz in a manner to result in the claimed invention. For
example, because Schienkiewitz identifies particular comorbidities
Appeal 2020-004800
Application 15/223,881
18
associated with overweight and obesity, Schienkiewitz in combination with
Harris may suggest to one of ordinary skill in the art that the bariatric
surgery that predicts the largest amount of weight loss via the claimed linear
regression models would also offer the most likely resolution of a
comorbidity when there is an association between the comorbidity and
overweight/obesity. That is, there is no apparent reason that one of ordinary
skill in the art would be motivated to modify Harris to generate the claimed
logistic regression model, particularly given that Schienkiewitz does not
teach the claimed regression model comprising independent variables for
subjects who have responded positively to bariatric surgeries.
We also agree with Appellant that Schienkiewitz does not teach or
suggest that at least one of age or employment is an independent variable of
the logistic regression model, as required by claim 1, limitation (a) and
claim 7. Schienkiewitz teaches adjusting the model based on age, but not
using age as an independent variable. See Schienkiewitz Abstract, 3, 4,
Table 3.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 7, and dependent claims 3–5, under 35 U.S.C.
§ 103 as unpatentable over Harris, Valera-Mora, and Schienkiewitz.
Dependent Claim 2
The Examiner’s rejection of dependent claim 2 under 35 U.S.C. § 103
as unpatentable over Harris, Valera-Mora, Schienkiewitz, and Jensen does
not cure the deficiency in the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 103 as unpatentable over Harris, Valera-Mora, and
Schienkiewitz. Therefore, we do not sustain the Examiner’s rejection of
claim 2 under 35 U.S.C. § 103 for the same reasons set forth above.

Appeal 2020-004800
Application 15/223,881
19
CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7 101 Eligibility 1–5, 7
1, 3–5, 7 103 Harris, Valera-
Mora,
Schienkiewitz
1, 3–5, 7
2 103 Harris, Valera-
Mora,
Schienkiewitz,
Jensen
2
Overall
Outcome
1–5, 7
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED