3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Nov 12, 2020

15126643 - (D) (P.T.A.B. Nov. 12, 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.
15/126,643 09/16/2016 Elizabeth C. McCullough 75195US005 4514
32692 7590 11/12/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
MUQUEETH, MOHMAD GHOUSE MOHIUDDIN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELIZABETH C. MCCULLOUGH, RICHARD L. FULLER,
NORBERT I. GOLDFIELD, and RICHARD F. AVERILL
____________

Appeal 2020-002297
Application 15/126,643
Technology Center 3600
____________

Before JAMES P. CALVE, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–24 and 26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
CLAIMED INVENTION
The claimed invention “relates to analysis of medical data in the
medical industry and more specifically analysis of patient medical data”
(Spec. ¶ 1).
Claims 1, 12, and 22 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of evaluating future healthcare event
risks of a specific patient, via one or more computers, the method
comprising:
[(a)] receiving, by the one or more processors, an
indication of a current healthcare event associated with the
specific patient;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed September 16, 2019) and Reply Brief (“Reply Br.,” filed January 29,
2020), and the Examiner’s Answer (“Ans.,” mailed November 29, 2019),
Advisory Action (“Adv. Act.,” mailed June 24, 2019), and Final Office
Action (“Final Act.,” mailed March 18, 2019). Appellant identifies 3M
Company of St. Paul, Minnesota and its affiliate 3M Innovative Properties
Company of St. Paul, Minnesota as the real parties in interest (Appeal Br. 2).
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[(b)] accessing, by the one or more processors and from
a risk database, indications of baseline risks of potentially
preventable healthcare events for the current healthcare event,
wherein the baseline risks of potentially preventable healthcare
events are based on the current healthcare event independent of
patient-specific information;
[(c)] accessing, by the one or more processors, personal
health information associated with the specific patient stored in
a computer-readable memory;
[(d)] adjusting, by the one or more processors and based
on the personal health information associated with the specific
patient, the baseline risks of potentially preventable healthcare
events to produce adjusted risks of potentially preventable
healthcare events for the specific patient; and
[(e)] presenting, by the one or more processors and via a
user interface, indications of the adjusted risks of potentially
preventable healthcare events to a user to facilitate mitigation of
the adjusted risks of potentially preventable healthcare events for
the specific patient.
REJECTION
Claims 1–24 and 26 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
Claims 1–24 and 26 are rejected under 35 U.S.C. § 103 as
unpatentable over Fillmore (US 2013/0191158 A1, published July 25, 2013)
and Sumner et al. (US 2003/0130973 A1, published July 10, 2003)
(“Sumner”).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group (Appeal Br. 4–11).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
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Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 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.” Id. 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.” Id. (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).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
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(Jan. 7, 2019) (the “2019 Revised Guidance”). 2 That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, 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. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under § 101, the Examiner
determined that independent claims 1, 12, and 22 recite “accessing personal
health information associated with the patient” and “presenting indications
of the adjusted risks of potentially preventable healthcare events to a user to
facilitate mitigation of the risks of potentially preventable healthcare events
for the patient,” i.e., a method of organizing human activity and/or a mental
process, and, therefore, an abstract idea, and that the claims do not include
additional elements that integrate the recited abstract idea into a practical
application (Final Act. 3–4). The Examiner also determined that the
independent claims do not include additional elements sufficient to amount
to significantly more than the abstract idea itself (id. at 5), and that the
dependent claims are patent ineligible for substantially the same reasons
(id.).
Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 5–8). 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
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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 clear from the Specification (including the
claim language) that claim 1 focuses on an abstract idea and not on any
improvement to technology or a technical field.
The Specification is titled “PREDICTING PERSONALIZED RISK
OF PREVENTABLE HEALTHCARE EVENTS,” and describes, in the
Background section, that “[i]n the healthcare field, patient readmissions are
a source of waste and contribute to increased overall costs for the system”
(Spec. ¶ 2). The Specification explains, “[a]s a result, hospitals are making
major investment[s] in processes and programs to reduce patient
readmission” — efforts that, to be most effective, “should begin and occur
during a patient’s stay in the hospital” (id.).
The claimed invention is ostensibly intended to advance this goal by
providing a method and system for predicting the risk of preventable patient
healthcare events (e.g., patient readmissions), on a patient-by-patient basis
based on a patient’s personal information (e.g., a patient’s reason for
hospitalization, acuity, demographic characteristics, health status,
socioeconomic status, pharmaceutical usage, and/or other clinical data)
(Spec. ¶ 3). “The probability of the occurrence of specific types of
potentially preventable readmissions may be used to allocate medical
provider, such as hospital, resources during a patient’s hospital stay in order
to prevent post discharge readmissions” (id.).
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Consistent with this disclosure, claim 1 recites a method of evaluating
future healthcare event risks of a specific patient comprising: (1) “receiving
. . . an indication of a current healthcare event associated with the specific
patient” (step (a)); (2) accessing indications of risks of potentially
preventable healthcare events based on the current healthcare event, i.e.,
accessing, by the one or more processors and from a risk
database, indications of baseline risks of potentially preventable
healthcare events for the current healthcare event, wherein the
baseline risks of potentially preventable healthcare events are
based on the current healthcare event independent of patient-
specific information
(step (b)); (3) adjusting the risks of potentially preventable healthcare events
based on the patient’s personal health information, i.e.,
accessing, by the one or more processors, personal health
information associated with the specific patient stored in a
computer-readable memory; [and]
adjusting, by the one or more processors and based on the
personal health information associated with the specific patient,
the baseline risks of potentially preventable healthcare events to
produce adjusted risks of potentially preventable healthcare
events for the specific patient
(steps (c) and (d)); and (4) “presenting . . . indications of the adjusted risks
of potentially preventable healthcare events to a user to facilitate mitigation
of the adjusted risks of potentially preventable healthcare events for the
specific patient” (step (e)).
Appellant argues that independent claim 1 is not directed to an
abstract idea at least because the claim does not recite subject matter that
falls within any one of the enumerated groupings of abstract ideas (Appeal
Br. 5–7). More particularly, Appellant argues that claim 1 does not recite a
mental process because the claim recites features (i.e., “accessing, by the one
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or more processors and from a risk database, indications of baseline risks of
potentially preventable healthcare events for the current healthcare event”
and “presenting, by the one or more processors and via a user interface,
indications of the adjusted risks of potentially preventable healthcare events
to a user”) that are required to be performed using a computerized system
associated with a risk database and user interface, and cannot be performed
in a human mind (id. at 6).
Claim 1 admittedly recites that the claimed method is performed by
one or more processors. Yet, the underlying processes are all acts that can
be performed by a human mentally or manually, using pen and paper,
without the use of a computer or any other machine. A person could, for
example, read both information relating to indications of baseline risks of
potentially preventable healthcare events and personal health information
associated with a specific patient from an existing database and/or from
paper documents or files (cf. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a limitation reciting
obtaining information about transactions that have used an Internet address
identified with a credit card transaction can be performed by a human who
simply reads records of Internet credit card transactions from a pre-existing
database)).3 Such a person also could adjust the baseline risks based on the

3 The Specification describes that “risk database 136 includes a matrix or
list that identifies potentially preventable healthcare events for each of a
plurality of healthcare codes (Spec. ¶ 27); “patient healthcare data 130 may
include information included in a patient healthcare record or any other
documents or files describing patient healthcare events” (id. ¶ 31); and that
“[m]emory 214 stores patient healthcare data 230, which may comprise data
collected in documents such as patient healthcare records, among other
information (id. ¶ 43).
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personal health information, e.g., assess the baseline risks in view of
demographic information about the patient, either mentally or using pen and
paper, and could present indications of the adjusted risks, e.g., the relative
probabilities of each of the potentially preventable healthcare events for the
patient, to a user via oral or written communication. Cf. Clarilogic, Inc. v.
FormFree Holdings Corp., 681 F. App’x 950 (Fed. Cir. 2018) (holding
ineligible a claimed method for providing certified financial data indicating
financial risk about an individual where a computer generated a report from
the financial account data including real-time and historical transaction and
balance data as directed to the abstract idea of collecting information,
analyzing it, and displaying certain results of the collection and analysis).
Simply put, we agree with the Examiner that claim 1 recites a mental
process, i.e., a concept performed in the human mind, including an
observation, evaluation, judgment, or opinion, and therefore, an abstract
idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52; CyberSource,
654 F.3d at 1373 (holding that method steps that can be performed in the
human mind, or by a human using a pen and paper, are unpatentable mental
processes). See also Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350,
1355 (Fed. Cir. 2016) (explaining that “selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes”); Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Circ. 2016)
(“[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose[s] them from being
performed by a human, mentally or with pen and paper.”); Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
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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.”).
We also are not persuaded by Appellant’s argument that claim 1
integrates the recited abstract idea into a practical application (Appeal Br. 7–
8). Quoting substantially the entirety of claim 1, including each of steps (a)
through (e), Appellant asserts that all of these features “describe the specific
manner in which a computer system must operate in order to arrive at the
alleged concept of ‘evaluating future healthcare event risks of a specific
patient’”; and Appellant concludes, “[t]herefore, the subject matter of
claim 1 is a practical application [of] the generate [sic] concept alleged by
the Office” (Appeal Br. 7–8). Yet, the relevant question under Step 2A,
Prong 2 is not whether the claimed invention itself is a practical application;
instead, the question is whether the claim includes additional elements
beyond the judicial exception that integrate the judicial exception into a
practical application.
The Examiner determined here, and we agree, that the only additional
elements recited in claim 1 beyond the abstract idea are “one or more
processors”; “a risk database”; and “a user interface” — elements that, as the
Examiner observes, are recited at a high level of generality and broadly
described in the Specification as generic computer components (Final Act. 4
(citing Spec. ¶ 26); see also Spec. ¶¶ 28, 30, 44, 45). We find no indication
in the Specification, nor does Appellant direct us to any indication, that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
allegedly inventive programming, or that the claimed invention is
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implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the additional
elements recited in claim 1 integrate the recited abstract idea into a
“practical application,” as that phrase is used in the 2019 Revised
Guidance.4
Appellant argues that the claimed features recited in claim 1 “provide
an improvement to the technical process of medical information
management technology” by “providing a computerized method and system
in which the computer system is able to leverage digitized medical
information to generate adjusted risks of potentially preventable healthcare
events for specific patients and enable mitigation of those risks and improve

4 The 2019 Revised Guidance references MANUAL OF PATENT
EXAMINING PROCEDURE, Ninth Edition (rev. Jan 2018) (available at
https://mpep.uspto.gov/RDMS/MPEP/E9_R-08.2017.) § 2106.05(a)–(c) and
(e) in non-exhaustively listing considerations that are indicative that an
additional element or combination of elements integrates the judicial
exception, e.g., the abstract idea, into a practical application. 2019 Revised
Guidance, 84 Fed. Reg. at 55. If the recited judicial exception is integrated
into a practical application, as determined under one or more of these MPEP
sections, the claim is not “directed to” the judicial exception.
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patient care” (Appeal Br. 9–10). But, we are not persuaded that adjusting
the baseline risks of potentially preventable healthcare problems using
patient information is a technological improvement, as opposed to an
improvement to the abstract idea of evaluating future healthcare event risks
of a specific patient. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1170 (Fed. Cir. 2018) (“[P]atent law does not protect such claims [i.e.,
claims to an asserted advance in the realm of abstract ideas], without more,
no matter how groundbreaking the advance.”).
Considered in light of the Specification, the claimed invention clearly
appears focused on avoiding the unnecessary waste and increased costs
associated with patient post-discharge readmissions by evaluating potential
future healthcare event risks for a specific patient and presenting indications
of the risks of potentially preventable healthcare events to a user to facilitate
mitigation of the risks (see, e.g., Spec. ¶ 2 (describing that “patient
readmissions are a source of waste and contribute to increased overall costs
for the system, which translate to higher payment costs for insurers and
higher healthcare coverage of individuals”); id. ¶ 3 (“[T]his disclosure
relates to predicting risk for preventable patient healthcare events, such as
patient readmission, on a patient-by-patient basis . . . The probability of the
occurrence of specific types of potentially preventable readmissions may be
used to allocate medical provider, such as hospital, resources during a
patient’s hospital stay in order to prevent post discharge readmissions”)),
and not on any claimed means for achieving that goal that improves
technology. That is particularly so, where, as here, there is no indication that
the operations recited in claim 1 require any specialized computer hardware
or other inventive computer components, invoke any allegedly inventive
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programming, or that the claimed invention is implemented using other than
generic computer components as tools operating in their normal, routine, and
ordinary capacity.
We conclude, for the reasons outlined above, that claim 1 recites a
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim beyond the abstract idea, i.e., “one or more processors”; “a risk
database”; and “a user interface,” are no more than generic computer
components used as tools to perform the recited abstract idea (see, e.g.,
Spec. 20:20–22:7). As such, they do not integrate the abstract idea into a
practical application. See Alice Corp., 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 Revised 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 Revised 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 an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
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to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant ostensibly maintains that claim 1 includes additional
elements or a combination of elements that provides an inventive concept
because “claim 1 recites features that provide a combination of steps that
operate in a non-conventional and non-generic way” (Appeal Br. 10–11).
But, that argument is not persuasive at least because the features that
Appellant identifies as the inventive concept, i.e., steps (b) through (e), are
part of the abstract idea itself; they are not additional elements to be
considered in determining whether claim 1 includes additional elements or a
combination of elements sufficient to amount to significantly more than the
judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
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It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
Appellant attempts to draw an analogy between claim 1 and the
patent-eligible claims in Example 35 of the USPTO’s December 2016
“Subject Matter Eligibility Examples: Business Methods” (the “2016
Examples”) (Appeal Br. 10–11). But the facts of Example 35 are clearly
distinguishable. 5
There, the USPTO determines that hypothetical claims 2 and 3 are
patent eligible because the additional element recited in the claims, i.e., the
automated teller machine (“ATM”), “operates in a non-conventional and
non-generic way to ensure that the customer’s identity is verified in a secure
manner that is more than the conventional verification process employed by
an ATM alone.” 2016 Examples 10 (emphasis added); see also id. at 11.
Here, the only additional elements recited in claim 1 beyond the
abstract idea are “one or more processors”; “a risk database”; and “a user
interface.” And unlike the ATM in claims 2 and 3 of Example 35, there is

5 The 2016 Examples, including Example 35, are available at
https://www.uspto.gov/sites/default/files/documents/ieg-bus-meth-exs-
dec2016.pdf.
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no indication that these components operate in other than their normal,
routine, and expected manner.
We also are not persuaded of Examiner error to the extent Appellant
maintains that claim 1 is patent eligible because there is no risk of
preemption (Appeal Br. 8–9). Although the Supreme Court has described
“the concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 is patent eligible because “none of the
applied references, alone or in any proper combination, discloses or
suggests” the claimed features (Appeal Br. 11). Neither a finding of novelty
nor a non-obviousness determination automatically leads to the conclusion
that the claimed subject matter is patent eligible. Although the second step
in the Mayo/Alice framework is termed a search for an “inventive concept,”
the analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18
(citation omitted). “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). 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.”).
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 of claim 1, and claims 2–24 and 26, which
fall with claim 1.
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 12, and 22 under 35 U.S.C. § 103 at least
because Sumner, on which the Examiner relies, does not disclose or suggest
“accessing . . . from a risk database, indications of baseline risks of
potentially preventable healthcare events for the current healthcare event,
wherein the baseline risks . . . are based on the current healthcare event
independent of patient-specific information,” i.e., limitation (b), as recited in
claim 1, and similarly recited in claims 12 and 22 (Appeal Br. 14–16).
In rejecting claim 1 under § 103, the Examiner cited Fillmore as
disclosing substantially all of the claim limitations (Final Act. 6–9). But, the
Examiner acknowledged that Fillmore does not explicitly disclose the
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argued limitation (id. at 9–10). And the Examiner cited Sumner to cure this
deficiency (id. (citing Sumner ¶ 288)). The Examiner then concluded that it
would have been obvious to a person of ordinary skill in the art at the time
of Appellant’s invention to “expand the system of Fillmore in view of
Sumner to access indications of risks of potentially preventable healthcare
events with the motivation of creating a tool which accurately predicts the
readmission potential of a patient after being discharged after treatment” (id.
at 10).
Sumner discloses a computer-based testing system, e.g., for medical
certification (see, e.g., Sumner ¶¶ 3–17), and describes that the system uses a
“knowledge base” and a patient simulation generator to instantiate patients
for presentation to the certification/recertification candidate (id. ¶¶ 23–26).
Sumner describes that the knowledge base stores disease history models,
describing the evolution of a health problem, along with modifiers that
calculate temporal constraints on disease progression, conditioned on
comorbidities and treatments (id. ¶¶ 282, 283), and discloses, in
paragraph 288, cited by the Examiner that “the progression of mild to
moderate knee osteoarthritis, given obesity, might indicate a probability
density of zero in the first five years following the onset of mild
osteoarthritis, a uniform probability density from year five to year twenty,
and then a probability of zero.”
Sumner explains that this “implies that all simulated obese patients
develop moderate osteoarthritis between five and twenty years after the
onset of mild osteoarthritis, and forbids simulated onsets at other times” (id.
¶ 288). But, as Appellant observes, “[i]n contrast to the ‘potentially
preventable events’ described by Fillmore, the cited passages of Sumner in
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paragraph [0288] are not associated with any potentially preventable events”
that could result in a readmission based on the current healthcare event
(Appeal Br. 15).
The Examiner takes the position that the “current healthcare event of
mild osteoarthritis of the specific patient” is potentially preventable because
Sumner discloses the progression of osteoarthritis “given obesity” (Final
Act. 10). However, we agree with Appellant that a person of skill in the art
would not reasonably consider a potential event that could happen only after
at least five years after diagnosis to be a potentially preventable healthcare
event that presents a risk of post-discharge readmission, as called for in the
independent claims (Appeal Br. 15).
We are persuaded that the Examiner erred in rejecting independent
claims 1, 12, and 22 under 35 U.S.C. ¶ 103. Therefore, we sustain the
Examiner’s rejection. For the same reasons, we also do not sustain the
Examiner’s rejection of dependent claims 2–11, 13–21, 23, 24, and 26.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious”).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–24, 26 101 Eligibility 1–24, 26
1–24, 26 103 Fillmore, Sumner 1–24, 26
Overall
Outcome
1–24, 26
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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