Vericle Corporation

Patent Trials and Appeals Board

Jan 26, 2021

2020004862 (P.T.A.B. Jan. 26, 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.
14/665,502 03/23/2015 Yuval Lirov 08018-P0003A 2652
136531 7590 01/26/2021
The Roy Gross Law Firm, LLC
50 Washington Street
Suite 737/745
Norwalk, CT 06854
EXAMINER
MOSELEY, GREGORY D
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
01/26/2021 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 YUVAL LIROV and EREZ LIROV
________________

Appeal 2020-004862
Application 14/665,502
Technology Center 3600
________________

Before ROBERT E. NAPPI, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 2, 4, 6, 7, 10, and 12–26.2 On January 13, 2021, there was an Oral
Hearing. We will add a transcript to the record in due course. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to enhancing security of payment transactions.
Spec. 2:11–12. Claim 2 is illustrative of the invention and is reproduced

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Vericle Corporation is the real
party in interest. Appeal Br. 2.
2 Claims 1, 3, 5, 8, 9, and 11 are cancelled. Appeal Br. 33–35.
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below:
2. A computer-implemented method for improving
quality assurance processing of medical insurance claims, the
method comprising:
storing a plurality of medical insurance claims in a medical
insurance database storing medical records;
executing, via a processor, a sampling component,
wherein the sampling component selects a subset of the plurality
of insurance claims;
creating, via a processor, a second plurality of a set of
intentionally defective tagged claims where the tagged claims
are intentionally defective in at least one quality control metric
selected from a group consisting of demographic information,
insurance information or diagnostic/procedure code, the second
plurality of a set of tagged claims being created by:
limiting the plurality of the set of tagged claims to
only select aspects of the sampled claims,
reusing previously flagged bad claims, or
building a database of fake control claims by
reusing earlier flagged bad claims;
combining the subset of the plurality of insurance claims
with the second plurality of the set of tagged claims;
providing the combined subset of the plurality of medical
claims and the set of tagged claims to quality assurance staff,
wherein the known number of tagged claims provided to the
quality assurance staff is proportional to the number of true
claims provided to the quality assurance staff;
receiving an analysis from the quality assurance staff that
has reviewed the combined subset of the plurality of medical
claims and the set of tagged claims;
verifying the analysis of the quality assurance staff by
comparing the analysis with the known set of tagged claims using
the following formula: Total bad claims=(((sample bad+sample
tagged)*total claims)/total sample)-tagged claims;
comparing the analysis performed by the quality
assurance staff with previous verified analyses performed by the
quality assurance staff to evaluate the quality assurance staff;
determining whether the quality assurance staff detected a
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proportional number of tagged clams to the number of true
claims provided to the quality assurance staff; and
transmitting a metric to indicate whether or not the quality
assurance staff detected a proportional number of tagged clams
to the number of true claims provided to the quality assurance
staff,
wherein the tagged claims are generated using a
randomization program in combination with previously flagged
true claims.
Appeal Br. 33 (Claims Appendix) (emphases added).

REJECTIONS
The Examiner rejects claims 2, 4, 6, 7, 10, and 12–26 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. Final
Act. 2–3.
The Examiner rejects claims 2, 4, 6, 7, 10, and 12–26 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter. Final Act. 3–13.
The Examiner rejects claims 2, 4, 6, 7, 10, and 12–26 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Dawson (US
2008/0219557 A1; published Sept. 11, 2008), Dorris (US 2014/0304008 A1;
published Oct. 9, 2014), and Young (US 2016/0171181 A1; filed Dec. 10,
2014). Final Act. 13–39.
ANALYSIS
I. Claims 2, 4, 6, 7, 10, and 12–26 Rejected Under 35 U.S.C. § 112(a)
The Examiner finds the limitation “storing a plurality of medical
insurance claims in a medical insurance database storing medical records”
fails to comply with the written description requirement because there is no
support for a database storing medical records that are not medical insurance
claims. Ans. 3–4; Final Act. 2–3.
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Appellant argues the Specification states database 28 stores “‘true’
insurance claims” and medical claims comprise “the diagnostic and
procedure information” (i.e., medical records). Appeal Br. 11–13 (citing
Spec. ¶¶ 6, 25); Reply Br. 3–4 (citing Spec. ¶¶ 6, 25). We agree with
Appellant.
Paragraph 25 states database 28 stores “‘true’ insurance claims.”
Spec. ¶ 25. Paragraph 25 states medical claims comprise “the diagnostic and
procedure information”; the “diagnostic and procedure information” provide
support for the limitation “medical records.” Id. ¶ 6.
We disagree with the Examiner’s finding that there is no support for a
database storing medical records that are not medical insurance claims. In
particular, the Specification states that medical claims are generally made up
of three parts such that one out of the three parts is “diagnostic and
procedure information” (i.e., the claimed “medical records”). Id. ¶¶ 6, 25.
Stated another way, medical claims comprise three parts: 1, 2, and 3; part 3
includes “medical records”; therefore, “medical records” (in part 3) are a
subset of the generic “medical claims” (medical claims are the combination
of parts 1, 2, and 3). Id.
Accordingly, we do not sustain the Examiner’s rejection of:
(1) independent claims 2, 12, and 26; and (2) dependent claims 4, 6, 7, 10,
and 13–25 under § 112(a).
II. Claims 2, 4, 6, 7, 10, and 12–26 Rejected Under 35 U.S.C. § 101
A. Principles of Law
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
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35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. 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 Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. 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 (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 182 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))).
In Diehr, the claim at issue recited a mathematical formula, but the
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Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
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
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
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(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“Update”); see also
October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct.
18, 2019) (notifying the public of the availability of the Update). “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also
October 2019 Guidance Update at 1. The Manual of Patent Examining
Procedure (“MPEP”) now incorporates this revised guidance and subsequent
updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).3
Under MPEP § 2106, we first look to whether the claim recites the
following:
(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.4
MPEP §§ 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not

3 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
4 “Examiners evaluate integration into a practical application by
(a) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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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, [and] conventional activity” in the field; or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
MPEP § 2106.05(d).
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Ans. 5, 8; Final Act 2, 5. The Examiner
concludes the present claims recite mental processes. Final Act. 7. The
Examiner concludes the present claims recite mathematical concepts. Final
Act. 40. The Examiner concludes the present claims are not integrated into a
practical application and there are no limitations recited in the present claims
that add significantly more to the abstract idea. Ans. 7–8; Final Act. 6–7,
40. The Examiner determines the present claims do not amount to
significantly more than an abstract idea itself because the abstract idea is
implemented using additional elements that are well-understood, routine,
and conventional. Ans. 8, 11 (citing MPEP § 2106.05(b)); Final Act. 7–10
(citing MPEP § 2106.05(d)).
Appellant argues that the present claims do not recite fundamental
economic practices because the present claims recite improving the
operation of a dedicated, pre-programmed special use computer system to
improve the quality assurance of processing insurance claims. Appeal Br.
14–15. Appellant argues the present claims do not recite a mathematical
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concept because it recites merely one mathematical formula. Id. at 21.
Appellant argues that the present claims recite an improvement to problems
encountered in medical offices in which bad insurance claims are generated.
Appeal Br. 23–24, 27 (citing Trading Technologies International Inc., v.
CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017) (non-precedential); Spec.
¶¶ 4–7). Appellant further argues the present claims are necessarily rooted
in computer technology to solve Internet-centric problems. Appeal Br. 24–
25 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014)). We disagree with Appellant.
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question that we resolve
pursuant to the MPEP §§ 2106.04(a), (d). The emphasized portions of claim
1, reproduced above (see supra at 2–3)5, recite fundamental economic
principles or practices (including insurance or mitigating risk) because they
pertain to improving quality assurance processing of medical insurance
claims. See MPEP §§ 2106.04(a), (d). Fundamental economic principles or
practices (including insurance or mitigating risk) fall into the category of
certain methods of organizing human activity. Id. Certain methods of
organizing human activity are a type of abstract idea. Id.
Furthermore, the present claims recite “verifying the analysis of the
quality assurance staff by comparing the analysis with the known set of
tagged claims using the following formula: Total bad claims=(((sample
bad+sample tagged)*total claims )/total sample)-tagged claims,” “comparing
the analysis performed by the quality assurance staff with previous verified

5 We determine that the “storing” limitation amounts to insignificant extra-
solution activities.
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analyses performed by the quality assurance staff to evaluate the quality
assurance staff,” and “determining whether the quality assurance staff
detected a proportional number of tagged,” which are concepts performed in
the human mind (including an observation, evaluation, judgement, or
opinion) because they can be performed using pen and paper. See MPEP
§§ 2106.04(a), (d). Concepts performed in the human mind (including an
observation, evaluation, judgement, or opinion) fall into the category of
mental processes. Id. Mental processes are an abstract idea. Id.
In addition, the present claims recite “verifying the analysis of the
quality assurance staff by comparing the analysis with the known set of
tagged claims using the following formula: Total bad claims=(((sample
bad+sample tagged)*total claims)/total sample)-tagged claims,” which is a
mathematical formula or equation. See MPEP §§ 2106.04(a), (d). A
mathematical formula or equation falls into the category of mathematical
concepts. Id. Mathematical concepts are a type of abstract idea. Id.
We disagree with Appellant’s argument that the present claims do not
recite fundamental economic practices because the present claims recite
improving the operation of a dedicated, pre-programmed special use
computer system to improve the quality assurance of processing insurance
claims. Appeal Br. 14–15. The present claims recite fundamental economic
practices for the reasons stated supra in § II.D. and they do not recite an
improvement to the operation of a dedicated, pre-programmed special use
computer system to improve the quality assurance of processing insurance
claims for the reasons stated infra in § II.E.
We disagree with Appellant’s argument that the present claims do not
recite a mathematical concept because it recites merely one mathematical
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formula. Appeal Br. 21. The present claims recite a mathematical concept
(and certain methods of organizing human activity) as discussed supra.
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See MPEP §§ 2106.04(a), (d). We therefore
(1) identify whether there are any additional recited elements beyond the
abstract idea, and (2) evaluate those elements both individually and
collectively to determine whether they integrate the exception into a
practical application. See id.
Accordingly, we proceed to Prong 2.
E. Step 2A, Prong 2
Here, the elements in the present claims used to implement the
abstract idea are the “medical insurance database,” “processor,” and
“database.” See MPEP §§ 2106.04(a), (d).6 The additional elements of the
present claims do not integrate the abstract idea into a practical application
(Ans. 7–8; Final Act. 6–7, 40) because they do not impose any meaningful
limits on practicing the abstract idea for the following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. Appeal Br. 23–24, 27 (citing Trading
Technologies International Inc., v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir.
2017) (non-precedential); Spec. ¶¶ 4–7). The MPEP, which incorporates the
Update addresses how we consider evidence of improvement that is

6 Therefore, we need not address Appellant’s arguments pertaining to
managing personal relationships. Appeal Br. 15–16.
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presented to us. The Update states:
[T]he evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole integrates [the]
judicial exception into a practical application [that] will apply,
rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial
exception.
MPEP §§ 2106.04(a), (d) (citing Update 11 (emphases added)). The Update
further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
MPEP §§ 2106.04(a), (d) (citing Update 13 (emphasis added)).
We, therefore, focus on any evidence Appellant cites in its briefs, as
discussed in the Update. Appellant refers us to paragraphs 4 through 7 of
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the Specification. Appeal Br. 23–24, 27 (citing Trading Technologies
International Inc., v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017) (non-
precedential); Spec. ¶¶ 4–7). However, paragraphs 4 through 7 discuss the
past problems with medical billing systems, which is an abstract idea as
discussed supra in § II.D.
At best, this is an improvement to certain methods of organizing
human activity (i.e., an abstract idea as discussed supra in § II.D). Id.; see,
e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”).
“[U]nder the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016) (citations omitted).
Furthermore, the additional elements in the present claims, namely
“medical insurance database,” “processor,” and “database” do not, either
individually or in combination, integrate the abstract idea into a practical
application. In particular, Appellant’s Specification discloses that these
elements encompass generic computer components. Spec. ¶¶ 28, 32, Fig. 1.
Merely adding generic computer components to perform abstract ideas does
not integrate those ideas into a practical application. See MPEP
§§ 2106.04(a), (d) (citing 2019 Revised Guidance, 84 Fed. Reg. at 55
(identifying “merely includ[ing] instructions to implement an abstract idea
on a computer” as an example of when an abstract idea has not been
integrated into a practical application)).
We disagree with Appellant’s argument that the present claims recite
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an improvement to problems encountered in medical offices in which bad
insurance claims are generated. Appeal Br. 23–24, 27 (citing Trading
Technologies International Inc., v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir.
2017) (non-precedential)). The present claims recite an abstract idea as
discussed supra in § II.D.
Moreover, Appellant’s citation to Trading Technologies is unavailing.
In Trading Technologies, the patents described electronic trading of stocks,
bonds, futures, options, and similar products. Trading Technologies Int’l
Inc., v. CQG, Inc., 675 F. App’x at 1002. The patents explained problems
that arose when a trader attempted to enter an order at a particular price, but
missed the price because the market fluctuated prior to the order entry and
execution. Id. Also, sometimes the trades were executed at different prices
than intended because of rapid market movement. Id. at 1002–03. Unlike
the claims of Trading Technologies, the present claims do not recite a
graphical user interface that prevents order entry at a changed price or
similar improvements. Id. at 1003.
We disagree with Appellant’s argument that the present claims are
necessarily rooted in computer technology to solve Internet-centric
problems. Appeal Br. 24–25 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014)). The subject claim considered by the
DDR court pertained to a visitor of a host’s website clicking on an
advertisement for a third-party product displayed on the host’s website,
whereby the visitor is no longer being transported to the third party’s
website. DDR Holdings, 773 F.3d at 1257. In DDR, instead of losing
visitors to the third-party’s website, the host website can send its visitors to a
web page on an outsource provider’s server that (1) incorporates “look and
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feel” elements from the host website and (2) provides visitors with the
opportunity to purchase products from the third-party merchant without
actually entering that merchant’s website. Id. at 1257–58.
Here, in contrast to the claims of DDR Holdings, the present claims
are not necessarily rooted in computer technology to solve Internet-centric
problems. See DDR Holdings, 773 F.3d at 1257. Unlike DDR Holdings,
Appellant’s device is not claimed as solving or otherwise addressing an
Internet-centric problem, but rather is directed to an improved abstract idea,
which is still an abstract idea as discussed supra in §§ II.D. and II.E.
We, therefore, conclude that the additional elements, whether
considered individually or as an ordered combination, do not integrate the
abstract idea into a practical application because the additional elements are
generic computer components that do not impose meaningful limits on
practicing the abstract idea.
Appellant does not make any other arguments pertaining to Step 2A,
Prong 2. Because we determine that the present claims recite an abstract
idea that is not integrated into a practical application, we proceed to Step 2B.
F. Step 2B
We agree with the Examiner’s determination that the present claims
do not amount to significantly more than an abstract idea itself because the
abstract idea is implemented using additional elements that are well-
understood, routine, and conventional. Ans. 8, 11 (citing MPEP
§ 2106.05(b)); Final Act. 7–10 (citing MPEP § 2106.05(d)). Furthermore,
the Specification indicates that the additional elements (i.e., “medical
insurance database,” “processor,” and “database”) are nothing more than
generic computer components. Spec. ¶¶ 28, 32, Fig. 1. Appellant’s
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Specification indicates these additional elements were well-understood,
routine, and conventional components because it describes them at a high
level of generality and in a manner that indicates that they are sufficiently
well-known. Id.
The additional elements, either individually or in combination, do not
amount to an inventive concept. Final Act. 7–10; Ans. 8. An inventive
concept “cannot be furnished by the unpatentable law of nature (or natural
phenomenon or abstract idea) itself.” Genetic, 818 F.3d at 1376; see also
2019 Revised Guidance; Alice, 573 U.S. at 217 (explaining that, after
determining a claim is directed to a judicial exception, “we then ask, ‘[w]hat
else is there in the claims before us?’” (alteration in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim, as a whole, amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional” (emphasis added)).
For at least the above reasons, we conclude that each of the present
claims, considered as a whole, is directed to a patent-ineligible abstract idea
that is not integrated into a practical application, and does not include an
inventive concept. We, therefore, sustain the Examiner’s rejection of:
(1) independent claims 2, 12, and 26; and (2) dependent claims 4, 6, 7, 10,
and 13–25 under § 101.
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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
III. Claims 2, 4, 6, 7, 10, and 12–26 Rejected Under 35 U.S.C. § 103
The Examiner concludes a person having ordinary skill in the art at
the time of the invention (hereinafter “PHOSITA”) would have used
Young’s equations to apply numerous assumptions and derivations to arrive
at the claimed formula “Total bad claims = (((sample bad+sample
tagged)*total claims)/total sample) – tagged claims” recited in claims 2, 12,
and 26. Ans. 14–15 (citing Young ¶ 58); Final Act. 24–25 (citing Young
¶¶ 27, 58).
Appellant argues the Examiner finds Dawson, Dorris, and Young fail
to teach the equation recited in claims 2, 12, and 26 and, instead, improperly
relies on complicated derivations with errors such as “(SE Counts)=(Bad
Claims + Tagged Claims” in the Examiner’s supposition. Appeal Br. 30–31;
Reply Br. 6–7. We agree with Appellant.
We determine that a PHOSITA would not have relied on the incorrect
equation “(SE Counts)=(Bad Claims + Tagged Claims)” to arrive at the
claimed “Total bad claims = (((sample bad + sample tagged)*total
claims)/total sample) – tagged claims.” The Examiner makes some
questionable assumptions and questionable derivations to reject the claimed
equation.
Accordingly, we do not sustain the Examiner’s rejection of:
(1) independent claims 2, 12, and 26; and (2) dependent claims 4, 6, 7, 10,
and 13–25 under § 103.
Appeal 2020-004862
Application 14/665,502

18

CONCLUSION

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). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2, 4, 6, 7,
10, 12–26
112(a) Written
Description
2, 4, 6, 7,
10, 12–26
2, 4, 6, 7,
10, 12–26
101 Eligibility 2, 4, 6, 7,
10, 12–26

2, 4, 6, 7,
10, 12–26
103 2, 4, 6, 7,
10, 12–26
Overall
Outcome
2, 4, 6, 7,
10, 12–26