THESMAN, DEBRA

Patent Trials and Appeals Board

Feb 18, 2020

13712776 - (D) (P.T.A.B. Feb. 18, 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.
13/712,776 12/12/2012 DEBRA THESMAN MNDRL-001A 1893
7663 7590 02/18/2020
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
02/18/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBRA THESMAN
Appeal 2018-004987
Application 13/712,776
Technology Center 3600
Before ADAM J. PYONIN, MICHAEL J. ENGLE, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 8–10. 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(a). Appellant identifies the real party in interest as Quality
Standards, LLC. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The claims relate to optimizing managed healthcare administration
and achieving objective quality standards. Spec., Title. Claim 8, reproduced
below, is illustrative of the claimed subject matter:
8. A healthcare information system, comprising:
a plurality of servers, each of the plurality of servers
corresponding to, exclusively, a plurality of patients enrolled in
one of a plurality of health management plans;
a plurality of central databases stored on the plurality of
servers, each of the plurality of central databases dedicated to
store information in records corresponding to one of the
plurality of patients enrolled in one of the plurality of health
management plans, and structured to filter out all incoming
updates to the central databases except those corresponding to
one of the plurality of patients;
a computer running applications, including an application
for creating a patient profile, wherein the patient profile for
each of the plurality of patients is stored in the central database;
an access management application providing a hierarchy
of access to the patient profile for each of the plurality of
patients in the central database, the hierarchy of access
including the categories of enrollee, healthcare provider,
management, and coder; and
an application which dynamically creates a plurality of
graphical user interfaces in response to requests from the
computer;
wherein the plurality of graphical user interfaces
dynamically created by the application for viewing information
from the central database provide users with a capability to
derive information at a primary care physician (PCP)/member
level;
wherein a first graphical user interface of the plurality of
graphical user interfaces displays a dashboard for displaying
information on the patient population with review capabilities
as to healthcare provided to patients within the patient
population, wherein the dashboard includes a navigation menu
with a plurality of navigation elements, the plurality of
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navigation elements including Summary, Review by Health
Plan, Review By PCP, Review by Category, Evaluations And
Surveys, Prevalence, Record Upload, Reports Library, and
Physician Incentive, wherein, under Review by Health Plan, a
plurality of reports by PCP are selectable including: a risk
adjusted factor (RAF): revenue current year (CY) versus
revenue previous year (PY) report; a RAF: expense CY versus
expense PY report; and an open review/encounter per member
per year (PMPY) report;
wherein a second graphical user interface of the plurality
of graphical user interfaces displays information providing RAF
comparative analysis by health plan for the CY active or termed
members to provide users an overall RAF score for the same
membership between two years;
wherein a third graphical user interface of the plurality of
graphical user interfaces displays a member summary page,
wherein the member summary page displays information
identifying and summarizing healthcare information associated
with an individual patient including: member demographic
information; outstanding health care effectiveness data and
information set (HEDIS) quality measures; health status
indicator; CY hierarchical condition categories (HCCs);
potential health condition; three-year history of HCC/diagnosis;
three year history of procedures; scanned medical records;
medication prescription/refills for the preceding six-month
period; lab results for the preceding twelve-month period; and
clinician comments;
wherein a fourth graphical user interface of the plurality
of graphical user interfaces displays information on claims,
hospital admissions, lab results, medication refills, healthcare
provider, designated specialty of said healthcare provider,
diagnosis for which treatment was provided to an individual
patient of the patient population, and date of services rendered;
wherein a fifth graphical user interface of the plurality of
graphical user interfaces displays diagnostic information for an
individual patient, as represented by a diagnostic code, wherein
the diagnostic code may be added or modified based on a
review of healthcare information, retrievable from the central
database, associated with the individual patient;
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wherein a sixth graphical user interface of the plurality of
graphical user interfaces displays information on objective
quality measures and quality outcomes as represented in a CMS
star ratings program format;
wherein a seventh graphical user interface of the plurality
of graphical user displays information of a monthly trend report
tracking historical compliance scores for each objective quality
measure;
wherein an eighth graphical user interface of the plurality
of graphical user interfaces displays information specific to a
patient of the patient population regarding specific quality
measures that have been met or not met, and providing for
supplemental data or exclusions that may apply to said patient
for the specific quality measure; and
wherein a user’s assigned category within the hierarchy
of access determines which of the plurality of graphical user
interfaces a user may access.
REJECTION
Claims 8–10 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception. Final Act. 2.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See id.

I. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described
in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed
to.” See id. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
After the docketing of this Appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See, e.g., USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”); USPTO, October 2019 Update: Subject Matter
Eligibility (Oct. 17, 2019) (“Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019)
(notice).
Under the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice,
or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.

II. Step 2A, Prong One (Judicial Exception)
The Examiner determines that claim 8 is directed to the abstract idea
of
receiving and storing enrolled patient health plans for the
patient profile, filtering data updates to corresponding stored
patient profiles, providing a hierarchy of access to patient
profiles, dynamically creating plurality of graphical user
interfaces based on stored patient profile, associated risk
factors, & patient population data and outputting a graphical
user interfaces displaying objective quality measures based no
quality outcomes associated the treatment for the patient
profile.
Final Act. 2. For the reasons set forth below, we determine that claim 8
recites a mental process, which is an abstract idea.
We determine that claim 8 recites a mental process because claim 8
broadly recites creating a profile, providing access to the profile, and
displaying information. Specifically, claim 8 recites at least the following
mental process limitations:
. . . store information in records corresponding to one of the
plurality of patients enrolled in one of the plurality of health
management plans, . . .;
. . . creating a patient profile . . .;
. . . providing a hierarchy of access to the patient profile
for each of the plurality of patients . . ., the hierarchy of access
including the categories of enrollee, healthcare provider,
management, and coder; and
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. . .;
. . . provide users with a capability to derive information
at a primary care physician (PCP)/member level;
. . . displays a dashboard for displaying information on
the patient population with review capabilities as to healthcare
provided to patients within the patient population, . . . [a]
plurality of . . . elements including Summary, Review by Health
Plan, Review By PCP, Review by Category, Evaluations And
Surveys, Prevalence, Record Upload, Reports Library, and
Physician Incentive, wherein, under Review by Health Plan, a
plurality of reports by PCP are selectable including: a risk
adjusted factor (RAF): revenue current year (CY) versus
revenue previous year (PY) report; a RAF: expense CY versus
expense PY report; and an open review/encounter per member
per year (PMPY) report;
. . . displays information providing RAF comparative
analysis by health plan for the CY active or termed members to
provide users an overall RAF score for the same membership
between two years;
. . . displays a member summary page, wherein the
member summary page displays information identifying and
summarizing healthcare information associated with an
individual patient including: member demographic information;
outstanding health care effectiveness data and information set
(HEDIS) quality measures; health status indicator; CY
hierarchical condition categories (HCCs); potential health
condition; three-year history of HCC/diagnosis; three year
history of procedures; scanned medical records; medication
prescription/refills for the preceding six-month period; lab
results for the preceding twelve-month period; and clinician
comments;
. . . displays information on claims, hospital admissions,
lab results, medication refills, healthcare provider, designated
specialty of said healthcare provider, diagnosis for which
treatment was provided to an individual patient of the patient
population, and date of services rendered;
. . . displays diagnostic information for an individual
patient, as represented by a diagnostic code, wherein the
diagnostic code may be added or modified based on a review of
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healthcare information, retrievable from the central database,
associated with the individual patient;
. . . displays information on objective quality measures
and quality outcomes as represented in a CMS star ratings
program format;
. . . displays information of a monthly trend report
tracking historical compliance scores for each objective quality
measure;
. . . displays information specific to a patient of the
patient population regarding specific quality measures that have
been met or not met, and providing for supplemental data or
exclusions that may apply to said patient for the specific quality
measure; and
wherein a user’s assigned category within the hierarchy
of access determines which of the . . . interfaces a user may
access.
As drafted, these limitations, under their broadest reasonable
interpretation, recite a mental process that can be performed in the human
mind or using pen and paper. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a
claim whose “steps can be performed in the human mind, or by a human
using a pen and paper” is directed to an unpatentable mental process). In
this case, these limitations encompass acts people can perform using their
minds or pen and paper because a user can mentally or on paper store
information, create a profile, provide a hierarchy of access (e.g., permit
some but not others to access certain aspects), supply information enabling
users to derive information therefrom, and display the numerous forms of
claimed information. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (“But merely selecting information, by content
or source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
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exclusion from § 101 undergirds the information-based category of abstract
ideas.”).
Although the claim nominally requires certain aspects to be performed
by a computer (e.g., “a computer running applications”), a computer
implementation of a mental process is insufficient to take the invention out
of the realm of abstract ideas. See Versata Dev. Grp. v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that
required the use of a computer and still found that the underlying, patent-
ineligible invention could be performed via pen and paper or in a person’s
mind.”); Alice, 573 U.S. at 223 (“Stating an abstract idea while adding the
words ‘apply it with a computer’” is insufficient to confer eligibility.).
Accordingly, for the aforementioned reasons, we determine that claim
8 recites a mental process, and thus, an abstract idea. See Revised Guidance,
84 Fed. Reg. at 52.

III. Step 2A, Prong 2 (Integration into a Practical Application)
Under the Guidance, we now must determine if additional elements in
the claims integrate the judicial exception into a practical application
(see MPEP §§ 2106.05(a)–(c), (e)–(h)).2
We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 8 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.

2 We acknowledge that some of the considerations at Step 2A, Prong 2 may
be evaluated under Step 2 of Alice (Step 2B of the Guidance). For purposes
of maintaining consistent treatment within the Office, we evaluate them
under Step 1 of Alice (Step 2A of the Guidance). See Revised Guidance, 84
Fed. Reg. at 55 n.25, 27–32.
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at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements
(e.g., “servers,” “databases,” “a computer running applications,” “an access
management application,” “an application,” “graphical user interfaces,” and
“navigation elements”) (1) do not improve the functioning of a computer or
other technology; (2) are not applied with any particular machine (except for
a generic computer); (3) do not effect a transformation of a particular article
to a different state; and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h). Instead, these limitations merely serve to narrow
the recited abstract idea using generic computing devices, which cannot
impart patent-eligibility. See Spec. ¶¶ 38 (“With respect to the hardware
necessary to implement the foregoing transfer of data between the central
database and the various databases connected therewith, such may be
accomplished by a variety of computer systems and servers well-known in
the art.”), 59 (“As will be understood, such healthcare information may be
compiled utilizing existing technology and computer and server hardware.”);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014)
(determining that a general-purpose processor that merely executes the
judicial exception does not tie the claims to any particular machine).
Appellant’s arguments focus on limitations that we determine are part
of the judicial exception as discussed above; thus, these limitations are not
“additional elements” that can impart patent eligibility to the claim. See,
e.g., Appeal Br. 12–24; see also Revised Guidance, 84 Fed. Reg. at 55 n.24
(“USPTO guidance uses the term ‘additional elements’ to refer to claim
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features, limitations, and/or steps that are recited in the claim beyond the
identified judicial exception.”).
Even assuming these limitations could be considered additional
elements, we are not persuaded the Examiner’s rejection is in error. For
example, Appellant contends the claims are analogous to the claims in
Trading Techs. Int’l Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)
(“CQG”) (nonprecedential). Appeal Br. 18–21. Specifically, Appellant
contends, “[j]ust like the claims at issue in Trading Technologies, the present
claims ‘require a specific, structured graphical user interface,’ namely the
recited first through eighth graphical user interfaces.” Id. at 19.
First, CQG is non-precedential, whereas two related precedential
cases with user interfaces had claims held ineligible. Trading Techs. Int’l,
Inc. v. IBG LLC, 921 F.3d 1084 (Fed. Cir. 2019) (“IBG I”); Trading Techs.
Int’l, Inc. v. IBG LLC, 921 F.3d 1378 (Fed. Cir. 2019) (“IBG II”). Thus,
user interface limitations are not per se patent eligible. Second, the claims
do not recite and the Specification does not describe an improvement in
computers or technology, but rather, merely outputting more information in
different interfaces. In IBG II, in response to a similar argument that the
claims “provide a particular graphical user interface that improves usability,
visualization, and efficiency,” the court determined that “the claims are
focused on providing information to traders in a way that helps them process
information more quickly, not on improving computers or technology. . . .
The ‘tool for presentation’ here . . . is simply a generic computer.” 921 F.3d
at 1384–85 (citations omitted). Similarly here, the claims are not focused on
improving computers or technology, but on providing information to users in
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a way that helps them access more information, and the tool for presentation
is merely a generic computer (or computers).
Appellant also relies on DDR Holdings, but this argument is
unpersuasive. See Appeal Br. 22–24 (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). Appellant contends that
like DDR, “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 22. Appellant contends, “the present claims
address the failure of such computer-based systems to prevent or correct
inappropriately entered diagnostic codes and other deficiencies in coding,
which lead to increased healthcare costs.” Id. at 23. Appellant asserts “such
problem of coding deficiencies did not exist in the pre-computer, brick-and-
mortar world.” Id.
We disagree. Unlike DDR Holdings, the claims here do not offer a
particular solution to a problem that, as in DDR Holdings, was unique to the
Internet. The asserted improvement here is the presentation of information
in conjunction with other information. Such an information-based
improvement is not an improvement “rooted in computer technology.” DDR
Holdings, 773 F.3d at 1257.
Accordingly, we determine that claim 8 does not integrate the judicial
exception into a practical application and, therefore, is directed to the recited
abstract idea.

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IV. Step 2B (Inventive Concept)
Because we determine that the claims are directed to an abstract idea,
we next consider whether the claims include additional limitations, such that
the claims amount to significantly more than the abstract idea.
The Examiner determines, and we agree, that the additional elements
are well-understood, routine, and conventional in the field. Final Act. 3. As
we explained above, the additional limitations, considered individually and
as an ordered combination, merely narrow the recited abstract ideas using
generic computer components. See Spec. ¶¶ 38, 59. Accordingly, we
determine that there are no additional limitations that cause the claims to
amount to significantly more than the abstract idea. Thus, we determine no
element or combination of elements recited in claim 8 contains any
“inventive concept” or adds anything “significantly more” to transform the
abstract concept into a patent-eligible application.
Because Appellant’s independent claim 8 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not
recite significantly more than the abstract idea to which the claim is directed,
we sustain the Examiner’s rejection of claims 8–10, which Appellant argues
as a group, under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice, its progeny, and the Guidance.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § 
Reference(s)/Basis Affirmed Reversed
8–10 101 Eligibility 8–10
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