3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Aug 3, 2020

2020001886 (P.T.A.B. Aug. 3, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/827,482 03/14/2013 Herb FILLMORE 75364US003 2644
32692 7590 08/03/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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 HERB FILLMORE
____________

Appeal 2020-001886
Application 13/827,482
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which constitute all of the claims pending in
this application. 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 the real party in interest 3M
Innovative Properties Company. Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed and claimed invention is directed to a “method for
evaluating health care provider quality.” Spec. ¶ 1.2
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for evaluating health care provider quality, the
method comprising:
obtaining, in a computerized system, data including health
care claims data corresponding to health care claims by a
member panel of a health care provider, the member panel
comprising multiple patients to which the health care provider
provides health care services;
determining, by executing program instructions in a
processor of the computerized system, based at least partially on
the obtained health care claims data, quality scores for the health
care provider across the member panel and across multiple health
care quality domains, wherein a health care quality domain of the
multiple health care quality domains comprises a health status
domain, wherein a determined quality score of the health status
domain comprises a measure of disease progression selected
from a plurality of defined progression stages of a chronic
disease in members of the member panel of the health care
provider, the measure of disease progression further comprising
a difference between an expected rate of disease progression and
an actual rate of disease progression, and wherein the quality
scores comprise Z-scores calculated in the computerized system
for the provider across multiple health care domains relative to a
larger peer reference base of other providers, the Z-scores
calculated as a standard deviation above or below the mean of
the larger peer reference base to reflect relative outcomes of the
health care services provided;

2 We refer to the Specification filed Mar. 14, 2013 (“Spec.”); Final Office
Action mailed Mar. 7, 2019 (“Final Act.”); Appeal Brief filed Sept. 6, 2019
(“Br.”); and Examiner’s Answer mailed Oct. 25, 2019 (“Ans.”).
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wherein the multiple health care quality domains further
comprise a continuity of care domain indicative of an extent to
which an ongoing health care relationship is maintained between
the health care provider and individual members within the
member panel, the continuity of care domain further comprising,
for multiple individual members, a total number of providers
providing care to each individual member of the multiple
individual members;
determining, by executing instructions in the processor of
the computerized system, a composite health provider quality
score of the health care provider, the composite health provider
quality score being a composite of the determined quality scores
for the health care provider across the member panel and across
multiple variables comprising the multiple health care quality
domains; and
identifying one or more health care quality domains in
which improvements would increase the composite health
provider quality score for the health care provider.

REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2.

ANALYSIS
Section 101 Rejection
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See 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, 69 (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 (1854))); 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
Supreme 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
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme 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. (citing Benson and Flook); see, 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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of

3 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
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internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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 (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, 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” in the field (see
MPEP § 2106.05(d)); 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 This evaluation is performed 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. See 2019 Revised Guidance - Section III(A)(2),
84 Fed. Reg. 54–55.
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Furthermore, the Revised Guidance “extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the abstract
idea exception includes the following groupings of subject matter, when
recited as such in a claim limitation(s) (that is, when recited on their own or
per se)”:
(a) Mathematical concepts—mathematical
relationships, mathematical formulas or equations, mathematical
calculations;

(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and

(c) Mental processes—concepts performed in the
human mind (including an observation, evaluation, judgment,
opinion).
2019 Revised Guidance, 84 Fed. Reg. at 52 (footnotes omitted).
USPTO Step 2A, Prong 1
The Examiner determines that the claims are directed to “the abstract
idea of obtaining data including health care claims data, determining quality
scores for the healthcare provider across health care quality domains, and
determining a composite healthcare provider quality score, which is further
characterized as: an idea of itself.” Final Act. 2–3. The Examiner finds the
claimed invention “may be further analogized to collecting information
(collecting health care claims data), analyzing it, and displaying certain
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results of the collection and analysis (analyzing the claims to determine
health care provider quality and displaying the results).” Final Act. 3 (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
According to the Examiner, the claimed limitations are directed to mental
processes and mathematical calculations. Final Act. 8.
Appellant contends that it is “improper to characterize the system as a
performance of limitations in the mind” because the “obtaining” step is “not
performed in the mind.” Br. 8. Appellant also argues that the “human mind
is not capable of ‘determining a composite health provider quality score . . .
across the member panel and across multiple variables.’” Id. (citing Spec.
¶ 2).
We are not persuaded by Appellant’s arguments that the Examiner
erred.
Representative claim 1—with emphasis added—is reproduced below:
1. A method for evaluating health care provider quality, the
method comprising:
obtaining, in a computerized system, data including health
care claims data corresponding to health care claims by a
member panel of a health care provider, the member panel
comprising multiple patients to which the health care provider
provides health care services;
determining, by executing program instructions in a
processor of the computerized system, based at least partially on
the obtained health care claims data, quality scores for the
health care provider across the member panel and across
multiple health care quality domains, wherein a health care
quality domain of the multiple health care quality domains
comprises a health status domain, wherein a determined quality
score of the health status domain comprises a measure of disease
progression selected from a plurality of defined progression
stages of a chronic disease in members of the member panel of
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the health care provider, the measure of disease progression
further comprising a difference between an expected rate of
disease progression and an actual rate of disease progression,
and wherein the quality scores comprise Z-scores calculated in
the computerized system for the provider across multiple health
care domains relative to a larger peer reference base of other
providers, the Z-scores calculated as a standard deviation above
or below the mean of the larger peer reference base to reflect
relative outcomes of the health care services provided;
wherein the multiple health care quality domains further
comprise a continuity of care domain indicative of an extent to
which an ongoing health care relationship is maintained
between the health care provider and individual members within
the member panel, the continuity of care domain further
comprising, for multiple individual members, a total number of
providers providing care to each individual member of the
multiple individual members;
determining, by executing instructions in the processor of
the computerized system, a composite health provider quality
score of the health care provider, the composite health provider
quality score being a composite of the determined quality scores
for the health care provider across the member panel and across
multiple variables comprising the multiple health care quality
domains; and
identifying one or more health care quality domains in
which improvements would increase the composite health
provider quality score for the health care provider.
As relevant here, the Guidance explains that mental processes include
“concepts performed in the human mind,” such as “an observation,
evaluation, judgment, [or] opinion.” 2019 Revised Guidance, 84 Fed. Reg.
at 52.
The emphasized limitations above are steps of observation,
evaluation, and judgment that can be practically performed by a human,
either mentally or with the use of pen and paper. Specifically, the claim
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limitations identified above are directed to (i) obtaining health care claims
data (collecting information), and (ii) determining quality scores for health
care providers based on the obtained health care claims data, specifically
considering disease progression measurements and continuity of care and
also calculating Z-scores, determining a composite health provider quality
score from quality scores, and identifying health care quality domains that
can be improved to increase composite health provider quality scores
(analyzing the collected information).
Each of those steps, both individually and as a combination, can be
performed by a human, either mentally or with the aid of paper and pencil,
which is similar to the claims found patent ineligible as mental processes in
Electric Power. See Elec. Power, 830 F.3d at 1353, 1355 (“collecting
information, analyzing it, and displaying certain results of the collection and
analysis” are “abstract-idea processes,” and “selecting information, by
content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes”); see
also SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950,
955 (Fed. Cir. 2014) (“[T]he claim at issue here involves a mental process
excluded from section 101: the mental steps of comparing new and stored
information and using rules to identify medical options” and “calls on a
computer to do nothing that is even arguably an advance in physical
implementations of routine mental information-comparison and rule-
application processes.”); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011) (“Thus, claim 3’s steps can all be
performed in the human mind. Such a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
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under § 101. Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with claiming mental
method steps as part of a process containing non-mental steps, but rather
because computational methods which can be performed entirely in the
human mind are the types of methods that embody the ‘basic tools of
scientific and technological work’ that are free to all men and reserved
exclusively to none.” (quoting Benson, 409 U.S. at 67) (footnote omitted));
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.”); Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person’s mind.”).
Appellant further argues that the “human mind is not capable of
‘determining a composite health provider quality score . . . across the
member panel and across multiple variables.’” Br. 8. According to
Appellant, “the metrics for quality have not been as clear cut” because there
are “arguably hundreds, or even thousands, of process-oriented or disease-
specific quality measures.” Id. (quoting Spec. ¶ 1). We are not persuaded
by Appellant’s argument. Although the claimed steps can consider a large
enough quantity of data such that the algorithm cannot be reasonably
performable in the human mind, the steps do not exclusively consider such a
vast amount of data. That is, the claims are broad enough to encompass a
sufficiently small enough quantity of data such that the computations can be
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reasonably performed in the human mind. Therefore, we agree with the
Examiner that a “user can manually look at information and scores regarding
a provider and identify areas that need improvement that would increase
their score.” Ans. 8.
Accordingly, we conclude that claim 1 recites a method of
observation, evaluation, and judgment that can be performed in the human
mind, which is a mental process identified in the Revised Guidance, and thus
an abstract idea. See In re Nuijten, 500 F.3d 1346, 1354–57 (Fed. Cir. 2007)
(holding claims that encompass both patent eligible and patent ineligible
subject matter are unpatentable).
As also relevant here, the Revised Guidance explains that
mathematical concepts include “mathematical relationships, mathematical
formulas or equations, mathematical calculations.” Revised Guidance, 84
Fed. Reg. at 52.
The claimed “determining . . . quality scores” step recites that the
quality scores comprise Z-scores calculated in the computerized
system for the provider across multiple health care domains
relative to a larger peer reference base of other providers, the Z-
scores calculated as a standard deviation above or below the
mean of the larger peer reference base to reflect relative
outcomes of the health care services provided.
The claim specifically requires calculating Z-scores as standard
deviations relative to the mean of a reference base, and using those Z-scores
to determine quality scores. Then the quality scores from those calculated
Z-scores are compiled to determine a composite score. This is similar to
Digitech, where the court found that “a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for
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Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); see Digitech Info. Sys.,
Inc. v. BMW Auto Leasing, LLC, 504 F. App’x 920 (Fed. Cir. 2013)
(“requir[ing] a decision to be rendered based on the data and mathematical
formulas” is an abstract idea); see Bancorp Servs., LLC v. Sun Life Assur.
Co. of Can., 687 F.3d 1266 (Fed. Cir. 2012) (“the determination of those
values, and their subsequent manipulation [using formulae], is a matter of
mere mathematical computation”).
Accordingly, we conclude that claim 1 recites using mathematical
relationships and mathematical calculations to determine quality scores,
which is a mathematical concept identified in the Revised Guidance, and
thus an abstract idea.
USPTO Step 2A, Prong 2
In determining whether claim 1 is “directed to” the identified abstract
ideas, we next consider whether claim 1 recites additional elements that
integrate the judicial exception into a practical application. For the reasons
set forth below, we discern no additional element (or combination of
elements) recited in claim 1 that integrates the judicial exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 54–55.
The Examiner determines that the additional claim elements
(“computer system,” “memory,” “processor”) merely “recit[e] the
computing structure as a tool to implement the claimed limitations,” and
could include “a general purpose computer.” Final Act. 4–5; see Final Act.
3–4. The Examiner further determines that, “while utilizing a computer to
perform the abstract idea may improve the efficiency of carrying out the
abstract idea, the claims do not result in any measurable improvement.”
Ans. 8. According to the Examiner, the “current invention executes the
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claimed limitations more expediently solely due to the fact that they are
executed on a general-purpose computer, as opposed to being done
manually.” Final Act. 5.
Appellant argues that “the judicial exception is integrated into a
practical application of determining and using quality scores, and not just
determining quality scores using a particular mathematical technique.”
Br. 8. Specifically, Appellant argues that the integration into a practical
application is based in “identifying one or more health care quality domains
in which improvements would increase the composite health provider
quality score for the health care provider.” Id.
We are not persuaded by Appellant’s arguments. Claim 1 does not
constitute an improvement to computer technology; rather, it merely adapts
the abstract idea of “obtaining . . . data,” using the data to “determin[e] . . .
quality scores” that “comprise Z-scores calculated,” “determining . . . a
composite . . . quality score,” and “identifying one or more . . . quality
domains in which improvements would increase the composite . . . quality
score” to an execution of steps practically performed by computers. See
Final Act. 5–6 (citing Spec. ¶¶ 121–125). For example, the Specification
describes the “[d]ata processing system 900 is suitable for storing and/or
executing program code, such as program code for performing the processes
described . . . and includes at least one processor 902 coupled directly or
indirectly to memory 904.” Spec. ¶ 121. As another example, the
Specification describes the memory “may include local memory employed
during actual execution of the program code, bulk storage, and cache
memories.” Id. The memory further “includes an operating system 905 and
one or more computer program 906, such as one or more programs for
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evaluating health provider quality in accordance with aspects of the present
invention.” Id. Additionally, the data processing system “may include any
computing device known in the art, such as a mainframe, server, personal
computer, workstation, laptop, handheld computer, telephony device,
network appliance, virtualization device, storage controller, etc.” Id. ¶ 125.
Relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible. See Alice, 573
U.S. at 224 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not an inventive
concept); Bancorp Servs., 687 F.3d at 1278 (a computer “employed only for
its most basic function . . . does not impose meaningful limits on the scope
of those claims”); MPEP § 2106.05(f)(2) (“Use of a computer or other
machinery in its ordinary capacity for economic or other tasks (e.g., to
receive, store, or transmit data) or simply adding a general purpose computer
or computer components after the fact to an abstract idea (e.g., a
fundamental economic practice or mathematical equation) does not provide
significantly more.”). Moreover, the “mere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology.” Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044, 1055 (Fed. Cir. 2017).
Accordingly, we are not persuaded of error in the Examiner’s
determination that claim 1 is directed to an abstract idea, and we find the
claimed additional elements do not integrate the abstract idea into a practical
application.
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USPTO Step 2B
Turning to step 2B of the Revised Guidance, we look to whether
claim 1 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. Revised Guidance, 84 Fed. Reg. at 56.
The Examiner concludes that the additional claim elements
(“computer system,” “memory,” “processor”) are “well-understood, routine,
and conventional.” Final Act. 3; see Final Act. 4–5; see Ans. 9–10.
Specifically, the Examiner finds that the claimed additional elements
“generally link[] the abstract idea to a particular technological environment”
by merely specifying “that the limitations be performed by any generic
computer.” Final Act. 3–4.
Appellant argues that there is no evidence that any of the claimed
limitations are “well-understood, routine, and conventional within the
healthcare process management industry.” Br. 9.
We are not persuaded by Appellant’s argument that the Examiner
erred. As discussed above, claim 1 is directed to obtaining data, using that
data to determine quality scores by calculating Z-scores, determining a
composite quality score, and identifying areas that can be improved to
increase the composite quality score, which are steps that can be performed
in the human mind and are also directed to mathematical concepts.
Similarly, the claimed additional elements (i.e., “computer system,”
“memory,” “processor”) amount to no more than mere instructions to apply
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the abstract idea using generic computer components, which is insufficient
to provide an inventive concept. See Alice, 573 U.S. at 225–26.
Appellant specifically argues that the Examiner “must make a factual
determination of whether” the additional elements provide an inventive
concept or instead are well-understood, routine, and conventional. Br. 9
(citing Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)).
PTO guidance states that “the well-understood, routine, conventional
nature of the additional element(s)” may be demonstrated by citations to the
specification, citations to court decisions, citations to publications, or a
statement of official notice. USPTO Memorandum, Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), 3–4 (Apr. 19,
2018). The Examiner cites to Paragraphs 121–125 of the Specification to
support that “the current invention embodiments may include a plurality of
different types of general purpose computing systems.” Final Act. 5–6
(citing Spec. ¶¶ 121–125); see Ans. 9. The Specification, as cited by the
Examiner, describes that the data processing system “may include any
computing device known in the art, such as a mainframe, server, personal
computer, workstation, laptop, handheld computer, telephony device,
network appliance, virtualization device, storage controller, etc.” Spec.
¶ 125. Therefore, the Examiner makes a factual determination as required
by Berkheimer v. HP Inc. and explained in the PTO Guidance, supported by
the Specification’s description that the system can use conventional
computing devices.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
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understood, routine, and conventional functions, such as collecting data (i.e.,
obtaining health care claims data) and manipulating data (i.e., determining
quality scores using the health care claims data and by calculating Z-scores,
determining a composite quality score from the determined quality scores,
and identifying areas that can be improved to increase the composite quality
score). Moreover, those types of generic computer components performing
generic computer functions have been found to be well-understood, routine,
and conventional. See, e.g., Elec. Power, 830 F.3d at 1355 (“Nothing in the
claims, understood in light of the specification, requires anything other than
off-the-shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information.”); buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“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, 610, 614 (Fed. Cir. 2016) (server that receives
data, extracts classification information from the received data, and stores
the digital images insufficient to add an inventive concept); Alice, 573 U.S.
at 225–26 (receiving, storing, sending information over networks
insufficient to add an inventive concept); CyberSource, 654 F.3d at 1370
(use of Internet to verify credit-card transaction does not add enough to
abstract idea of verifying the transaction); see also MPEP § 2106.05(d)
(“Courts have held computer‐implemented processes not to be significantly
more than an abstract idea (and thus ineligible) where the claim as a whole
amounts to nothing more than generic computer functions merely used to
implement an abstract idea, such as an idea that could be done by a human
analog (i.e., by hand or by merely thinking.”)).
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Application 13/827,482

19
Appellant further argues that the claimed features are unconventional
and not known in the industry because “there are no other rejections.” Br. 9.
Appellant’s argument is not persuasive because it improperly conflates the
requirements for eligible subject matter (§ 101) with the independent
requirements of novelty (§ 102) and nonobviousness (§ 103). Although the
second step in the Alice framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or nonobviousness.
Alice, 573 U.S. at 217–18. A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at
78–79. Further, “under 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).
Conclusion on Section 101 Rejection
Accordingly, we sustain the Examiner’s rejection of claim 1 as being
directed to patent-ineligible subject matter, as well as independent claims 11
and 20 with commensurate limitations, and dependent claims 2–10 and 12–
19, which are argued for the same reasons. See Br. 9.

CONCLUSION
We affirm the Examiner’s § 101 rejection of claims 1–20.
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Application 13/827,482

20
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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