3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

May 18, 2021

2021000189 (P.T.A.B. May. 18, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/570,795 10/31/2017 Steven M. Austin 76487US005 8769
32692 7590 05/18/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
REICHERT, RACHELLE LEIGH
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/18/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN M. AUSTIN, GARRI L. GARRISON, KHALOD S.
KELANTAN, and JEREMY M. ZASOWSKI
Appeal 2021-000189
Application 15/570,795
Technology Center 3600
Before ERIC S. FRAHM, BETH Z. SHAW, and JOYCE CRAIG,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 3–6, 8–11, 16–25, 29–36, and 44.
See Final Act. 2. Claims 2, 7, 12–15, 26–28, and 37–43 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies 3M Company, as the real party in
interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to “systems
and techniques for managing and updating medical information.” Spec. ¶ 3.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method for managing medical
information, the method comprising:
receiving, by a computing device, current diagnostic
information for a patient, the current diagnostic information
including one or more current individual diagnoses for the patient
comprising diagnostic codes;
comparing, by the computing device, the current diagnostic
information to prior diagnostic information for the patient, the prior
diagnostic information including one or more prior individual
diagnoses for the patient comprising diagnostic codes, wherein
comparing comprises comparing the diagnostic codes of the one or
more current individual diagnoses and the diagnostic codes of the
one or more prior individual diagnoses;
determining, by the computing device, one or more possible
errors in the current diagnostic information based on the comparison
by determining that the diagnostic codes of the one or more prior
individual diagnoses is missing from the diagnostic codes of the one
or more current individual diagnoses;
detecting, by the computing device, co-morbidity information
linking one or more current individual diagnosis and one or more
prior individual diagnosis, a prior individual diagnosis does not
correspond to a current individual diagnosis, the co-morbidity
information describes coexisting chronic medical conditions for the
patient;
generating, by the computing device, an alert associated with
each possible error of the one or more possible errors responsive to
detecting the co-morbidity information; and
transmitting each generated alert to a client computing device.
Appeal Br. 24 (Claims App’x.).
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REJECTIONS
Claims 1, 3–6, 8–11, 16–25, 29–36, and 44 stand rejected under
35 U.S.C. § 101. Final Act. 2.
In the Answer, the Examiner withdrew the obviousness rejection
under 35 U.S.C. § 103 of claims 1, 3–6, 8–11, 16–25, 29–36, and 44. Ans. 3.
ANALYSIS
Rejection of Claims 1, 3–6, 8–11, 16–25, 29–36, and 44 under
35 U.S.C. § 101
Appellant argues the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter is in error. Appellant
argues claims 1, 3–6, 8–11, and 16–24 as a group. Appeal Br. 7. Given our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the § 101 rejection
of claims 1, 3–6, 8–11, 16–25, 29–36, and 44 based on representative claim
1.
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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
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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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); 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 part
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 (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
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requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.2, 3
Under MPEP § 2106, 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 activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).4
MPEP § 2106.04(a) and § 2106.04(d).

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
3 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). 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: (1)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) 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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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,5 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, 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.6
MPEP § 2106.05(d).
Step 1
Claim 1, as a method claim, falls within the process category of
§ 101. See 2019 Revised Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 recites a mental process, which
is an abstract idea. See Final Act. 3. Appellant argues that the Examiner
erred because “the human mind is not equipped to perform the claim
limitations.” Appeal Br. 9. Furthermore, Appellant argues that “[t]he human
mind would have to store perhaps thousands of codes and be aware of the

5 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under part one of the Alice framework, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
6 This corresponds to Alice part two where it is determined whether the
claim contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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co-morbidity information.” Id. Appellant also argues “the feature of
receiving and comparing alone would be impractical to be performed in the
human mind due to the potential volume of records.” Id. at 10.
We are not persuaded of error. We agree with the Examiner that the
claim limitations, “given the broadest reasonable interpretation, cover a
mental process because it recites a process that is performed in the human
mind, but for the recitation of generic computer components.” Final Act. 2–
3. The Examiner clearly identified elements of the claim that represent
mental processes, including “comparing current diagnosis information to
prior diagnostic information for a patient,” “determining one or more
possible errors in the current information based on the comparison,”
“detecting co-morbidity information linking the current individual diagnosis
and one or more prior individual diagnosis,” and “generating and
transmitting an alert with each possible error responsive to detecting co-
morbidity information.” Final Act. 2–3.
“Mental processes” include acts that people can perform in their mind
or using pen and paper, even if the claim recites that a generic computer
component performs the acts. See MPEP § 2106.04(a)(2)(III)(C); 84 Fed.
Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”); see also Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(“[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.”). Appellant provides
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insufficient objective evidence or persuasive argument to support its position
that the identified limitations of claim 1 cannot be performed in the human
mind or using pen and paper.
Appellant argues that the Federal Circuit has routinely found that error
correction is a type of technical problem that supports a finding of patent
eligibility under 35 U.S.C. § 101. See e.g., Koninklijke KPN N.V. v. Gemalto
M2M GmbH, 942 F.3d 1143, 1150 (Fed. Cir. 2019) (citing cases). Appellant
further argues that “many cases in Koninklijke concluded the claims at issue
in those respective cases are eligible under Step 2A, prong one because the
error correction ‘made non-abstract improvements to existing technological
processes and computer technology.’” Reply Br. 4.
This invention is not analogous to that which the court held eligible in
Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir.
2019). There, the recited device checked for data errors based on original
data provided in blocks, where each block had bits in a particular ordered
sequence. Gemalto, 942 F.3d at 1147–48. The recited device further
included a varying device configured to, among other things, permute bit
position relative to the particular ordered sequence for at least some bits in
each block making up the original data without reordering any original data
blocks. Id. In reaching its eligibility conclusion, the court noted that the
claimed invention specifically recited how the permutation was used,
namely by modifying the permutation applied to different data blocks, and
this specific implementation was a key insight to enabling prior art error
detection systems to catch previously undetectable systematic errors. Id. at
1153. The court then concluded that the claimed invention was not directed
to an abstract idea because it sufficiently captured the specific asserted
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improvement in detecting systematic errors contributed by the inventors in
that case. Id.
That is not the case here. To the extent that Appellant contends that
the claimed invention here is directed to such technical improvements and
capabilities (see Reply Br. 4), we disagree.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole is
not “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We next determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Revised Guidance at 55 n.24. In claim 1, the additional elements include the
“computing device,” “client computing device,” “receiving. . . current
diagnostic information for a patient, the current diagnostic information
including one or more current individual diagnoses for the patient
comprising diagnostic codes,” and “transmitting each generated alert.” The
computing device and client computing device encompass generic
components. See Spec. Fig. 1, ¶¶ 37–39. Moreover, the “receiving” and
“transmitting” steps are insignificant extra-solution activity. See, e.g., MPEP
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§ 2106.05(g) (explaining that gathering data for use in a claimed process is
an example of extra-solution activity); Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1354-55 (Fed. Cir. 2016). Receiving information and
transmitting a generated alert is considered insignificant extra-solution
activity, given the high level of generality and context in the claimed
invention.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See 2019 Revised Guidance.
Appellant argues that “like example 42 of the Guidelines, claims 1 is
patent eligible because it ‘recites a combination of additional elements
including storing information, providing remote access over a network,
generating [an alert] whenever [an error is detected], and transmitting the
[alert].’” Reply Br. 6. Appellant further argues that while the claims
admittedly do not explicitly recite a storing step, the claims read in light of
the Specification make storing information necessarily inherent because the
claimed limitations cannot occur without the current and prior diagnostic
information being stored in some fashion by the computing device. See
Reply Br. 6.
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Example 42 (claim 1) recites a distributed network that allows remote
users to access and update patient information in real time and different
formats. The system converts and stores data in a standard format, and
generates and transmits messages to users when updated data is stored.
October 2019 Update, Examples, at 17–18. Remote users share information
in real time in a standardized format regardless of the format user’s input
patient information. Id. at 18–19.
In contrast, the Specification here merely indicates that “[s]erver 22
may utilize commination interface 23 to communicate with . . . other
storage devices such as additional repositories over a network or direct
communication,” but does not further explain the formatting of the
information, as in Example 42. Spec. ¶ 57; SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1168 (Fed. Cir. 2018) (“As many cases make clear, even if a
process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.”).
Claim 1 as a whole merely uses instructions to implement the abstract
idea on a computer or, alternatively, merely uses a computer as a tool to
perform the abstract idea. Here, the additional limitation(s) do not integrate
the judicial exception into a practical application. More particularly, the
claims do not recite; (i) an improvement to the functionality of a computer or
other technology or technical field; (ii) a “particular machine” to apply or
use the judicial exception; (iii) a particular transformation of an article to a
different thing or state; or (iv) any other meaningful limitation. See 84 Fed.
Reg. at 55. Rather, claim 1 recites an abstract idea as identified in Step
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2A(i), supra, and none of the limitations integrate the judicial exception into
a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determined that claim 1 does not include additional
elements that are sufficient to amount to “significantly more” than the
judicial exception because, the additional elements (i.e. the elements other
than the abstract idea) amount to no more than limitations which amount to
elements that have been recognized as well-understood, routine, and
conventional activity in particular fields. See Final Act. 6; Spec.¶ 39.
Appellant’s reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 12) is
likewise unavailing. There, the court held eligible claims directed to a
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technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by making a known filtering
solution—namely a “one-size-fits-all” filter at an Internet Service Provider
(“ISP”)—more dynamic and efficient via individualized filtering at the ISP.
BASCOM, 827 F.3d at 1351. This customizable filtering solution improved
the computer system’s performance and, therefore, was patent-eligible. See
id. Unlike the filtering system improvements in BASCOM that added
significantly more to the abstract idea in that case, the claimed invention
here uses generic computing components to implement an abstract idea, as
explained previously.
Moreover, the claims do not result in a technical improvement, as a
computer is merely used as a tool to implement the recited abstract idea,
which does not rise to the level of significantly more. See, e.g., Spec. ¶¶ 37–
39; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014);
MPEP § 2106.05(d).
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving data,
comparing data, detecting information, , and generating and transmitting an
alert. See buySAFE, 765 F.3d at 1355 (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images is
insufficient to add an inventive concept); Alice, 573 U.S. at 225–26
(receiving, storing, and sending information over networks is insufficient to
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add an inventive concept). Appellant’s arguments do not persuade us that
claim 1 is “directed to” a patent-eligible concept.
Accordingly, we sustain the Examiner’s § 101 rejection of
representative claim 1, as well as claims 1, 3–6, 8–11, 16–25, 29–36, and 44,
grouped therewith.
DECISION
We affirm the Examiner’s rejection of claims 1, 3–6, 8–11, 16–25,
29–36, and 44.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 3–6, 8–
11, 16–25,
29–36, 44
101 Eligibility 1, 3–6, 8–11,
16–25, 29–36,
44

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