Ahmed Ghouri et al.

Patent Trials and Appeals Board

Sep 3, 2019

14086670 - (D) (P.T.A.B. Sep. 3, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/086,670 11/21/2013 Ahmed Ghouri HUM2027-156B 6001
8698 7590 09/03/2019
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
LULTSCHIK, WILLIAM G
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
standleydocketing@standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AHMED GHOURI, AND RAGHU SUGAVANAM
___________

Appeal 2018-003509
Application 14/086,6701
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claim 1. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 Appellants identify Humana Inc., as the real party in interest. App. Br. 2.
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THE INVENTION
Appellants state that “[t]he present invention relates to a system and
method for analyzing drug interactions in patient care and promptly
providing alerts to patients and/or care providers that a potentially serious
drug interaction has arisen so that actions can be taken before a negative
result occurs.” Spec. ¶2.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A healthcare system, comprising:
a database comprising historical insurance claims data from a
plurality of instances of care from a plurality of insured patients;
a computer processor comprising software instructions which
when executed, configure the computer processor to analyze a
plurality of patient outcomes from said historical insurance claims
data from a plurality of insured patients to generate drug interaction
data comprised of reported dangerous drug interactions for particular
patient conditions found in said historical insurance claims data;
an accessible database of drug interactions wherein said database
is comprised of said drug interaction data;
a computer network adapted to be in electronic communication
with said database of drug interactions and said database comprising
historical insurance claims data;
a computer processor configured to receive in real time, at said
computer network health insurance claims data, including claims data
for drugs purchased for use by an insured patient; said computer
processor in association with said computer network and said
drug interaction database, said processor comprising software
instructions and executing said instructions causing the processor to
perform the steps, in real time, of: generating a danger score using a
likelihood of an interaction and the severity of such an interaction said
generated danger score results from a real-time analysis of said
insurance claims data for said patient, said real-time analysis
comprising the consideration of claims data identifying prescribed
drugs and at least one of factors comprising: patient’s body weight,
age, allergies, existing medical conditions and medical history, said
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factors having a weighting factor applied such that factors with a
greater weighting have a greater impact on said danger score than
those with a lesser weighting, said software instructions further
comparing said danger score against a predetermined threshold to
determine whether there is an expected negative interaction between
two or more drugs purchased for use by an insured patient, said
computer processor configured to generate a real-time alert
comprising a warning when said generated danger score exceeds said
predetermined threshold;
a delivery subsystem for delivering an alert generated by said
computer processor, said delivery subsystem comprising an interface
to said computer network and an electronic messaging module
comprising hardware selected from a list consisting of: an outbound
dialer, a text message delivery interface, an email client, a printer, and
an interface to an electronic medical record system.

THE REJECTION
The following rejections are before us for review2.
I. Claim 1 is rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
II. Claim 1 is rejected under 35 U.S.C. § 112(a) first paragraph, as
failing to comply with the written description requirement.

2 The Notice of Panel Decision from Pre–Appeal Review dated 9/26/2017
withdraws the 35 U.S.C. § 103(a) rejection.
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FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–4 and 9–13
in the Final Office Action3 and on pages 3–7 and 11–14 in the Examiner’s
Answer, concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS
35 U.S.C. § 112(a) REJECTION
The Examiner rejected claim 1 because:
the specification does not provide sufficient
written description of the claimed subject matter to
show that applicant had possession of a method or
system capable of generating drug interaction data
comprised of reported dangerous drug interactions
for particular patient conditions found in historical
insurance claims data by analyzing a plurality of
patient outcomes from historical insurance claims
data from a plurality of insured patients.
(Final Act. 14–15, Answer 7–9). The Examiner also finds “newly added
recitation of “real-time” in lines 15, 21, 24, and 25 appears to constitute new
matter.” Id. at 16.
Appellants argue:
Additionally, Applicant submits that originally
filed claims 8 and 11 support this limitation.
MPEP § 2163 further notes that “[i]t is now well
accepted that a satisfactory description may be in
the claims or any other portion of the originally
filed specification.” Originally filed claim 8
requires that the “drug interaction data [be]
developed through [an] analysis of a plurality of
patient outcomes from historical health insurance

3 All references to the Final Office Action refer to the Final Office Action
mailed on June 6, 2007.
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claims data received for a plurality of insured
patients.” Originally filed claim 11 requires that
the drug on drug interaction data be “ ... developed
at least in part from patient outcomes when using
two or more drugs as obtained from historical
health insurance claims data.”
Originally filed claim 8 (a system claim) and claim
11 (a method claim) requires that the drug
interaction data be generated by analyzing past
patient data. These originally filed claims are very
similar to the proposed claim language. Therefore,
Applicant respectfully submits that they support
the claim limitation regarding the “generat[ion]
[of] drug interaction data.”
App. Br. 7
We agree with Appellants. Appellants cite several paragraphs, e.g.,
[0023–0026], [0027], [0025], [0028–0030] and [0004] from the
Specification including the incorporated–by–reference disclosure of U.S.
Patent 7,809,585, in support of the sufficiency of the Specification’s
description of the claim limitation, “generating a danger score using a
likelihood of an interaction and the severity of such an interaction said
generated danger score results from a real-time analysis of said insurance
claims data for said patient.” (Appeal Br. 6–7). But, as set forth above,
Appellants also cited to the Specification as originally filed at claims 8
and 11 wherein at least claim 8 recites, “said database is comprised of drug
interaction data developed through analysis of a plurality of patient
outcomes from historical health insurance claims data received for a
plurality of insured patients.” We find that claim 8 as originally filed
provides a sufficient basis for the limitation at issue here because it recited
almost the exact language which the Examiner found missing in the
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Specification, and hence the Specification included this disclosure as
originally filed. See MPEP § 2161(I).
Concerning the Examiner’s objection that newly added recitation of
“real-time” appears to constitute new matter, we disagree. Appellants cite to
paragraphs 6 and 7 (Appeal Br. 9–10), and the Examiner references
paragraph 28 (Final Act. 19) as relevant. But, the Examiner maintains
however that “[s]imply stating that the algorithm monitors for submitted
claims does not support the further limitation that the monitoring is done in
real-time, and no description is provided of performing the steps of
generating the danger score in real time resulting from a real time analysis of
the insurance claims data. Ans. 9
We disagree with the Examiner. Paragraph 7 describes “scoring the
level of seriousness of drug interactions on a patient by patient basis rather
than on a universal basis and then promptly informing the patient of only the
drug interactions that are scored as being serious for that patient.”
Paragraph 28 describes:
The existence of a first prescribed drug triggers the
drug interaction detection algorithm. The
algorithm then monitors for claims submitted by or
on behalf of the patient for a subsequent second
prescribed drug for the patient. The algorithm also
performs analysis of the prescribed drug(s) in view
of the patient’s diagnosis, any preexisting
condition(s), and other available patient data. In
this manner, drug on drug interaction(s) and drug
on disease/condition interaction(s) are detected.
On balance, we find that Specification provides sufficient written description
for the claimed invention to convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, that applicant was in possession of
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the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). The Specification at
paragraph 7 uses the word, “promptly,” and at paragraph 28 uses the words,
“interaction detection,” “triggering,” “monitoring,” “submitting,” “perform
analysis” and “detecting. Further, the Specification describes scoring and
promptly communicating serious drug interaction to a patient. Also, the use
of a “trigger” likewise connotes immediate response. Thus in sum, we find
that Appellants show possession of the claimed “real–time” limitation by
describing the claimed invention in circumstances requiring a real time
response. There is no in haec verba requirement, but claim limitations must
be supported in the specification through express, implicit, or inherent
disclosure. Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566
(Fed. Cir. 1997) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991)). Here, we find that the Specification does at least
implicitly or inherently disclose the real time feature.

35 U.S.C. § 101 REJECTION
We will affirm the rejection of claim 1 under 35 U.S.C. § 101.
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).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
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and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (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 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
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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., Diehr, 450 U.S. 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 (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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
“the ‘directed to’ inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether ‘their character as a whole is
directed to excluded subject 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.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] 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.” Guidance, 84
Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states:
The health care profession has known that
potentially dangerous drug interactions in patient
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care can lead to worsening health for the patient,
and if that occurs there is the potential for much
higher costs of health care for the patient. For
example, it is known that the patient's health may
deteriorate form a serious drug interaction. It is
also known that a patient's health may be
endangered from a serious drug interaction that
could lead to hospitalization and expensive
medical care that could have been avoided. Yet
another example is in the area of pharmacies.
Patients given multiple prescriptions that may be
filled by different pharmacists (not knowing what
another pharmacist has already filled for the same
patient) may result in a serious drug interaction
that could worsen a patient's condition.
Specification 3.
Understood in light of the Specification, claim 1, recites, in pertinent
part:
…analyz[ing] a plurality of patient outcomes from
said historical insurance claims data from a
plurality of insured patients to generate drug
interaction data comprised of reported dangerous
drug interactions for particular patient conditions
found in said historical insurance claims data;…
health insurance claims data, including claims data
for drugs purchased for use by an insured patient;
generating a danger score using a likelihood of an
interaction and the severity of such an interaction
said generated danger score results from a real-
time analysis of said insurance claims data for said
patient, said real-time analysis comprising the
consideration of claims data identifying prescribed
drugs and at least one of factors comprising:
patient's body weight, age, allergies, existing
medical conditions and medical history, said
factors having a weighting factor applied such that
factors with a greater weighting have a greater
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impact on said danger score than those with a
lesser weighting, said software instructions further
comparing said danger score against a
predetermined threshold to determine whether
there is an expected negative interaction between
two or more drugs purchased for use by an insured
patient,…generate a real-time alert comprising a
warning when said generated danger score exceeds
said predetermined threshold;…delivering an alert.
Accordingly, the Examiner found that claim 1 is directed to “using
patient drug information and stored drug information to predict a negative
outcome between two drugs being taken by a patient.” (Final Act. 9,
Answer 3).
We agree with the Examiner that claim 1 is directed to “using patient
drug information and stored drug information to predict a negative outcome
between two drugs being taken by a patient” because claim 1 requires, .e.g.,
“generating a danger score using a likelihood of an interaction and the
severity of such an interaction said generated danger score results from a
real-time analysis of said insurance claims data for said patient, said real-
time analysis comprising the consideration of claims data identifying
prescribed drugs and at least one of factors comprising: patient’s body
weight, age, allergies, existing medical conditions and medical history.”
Calculating a score to predict a likelihood of a bad drug interaction and
related severity is an evaluation which is a mental process or concept
performed by the human mind which in turn is an abstraction, an enumerated
exception. Guidance, 84 Fed. Reg. 52 citing Mayo, 566 U.S. at 71.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a database,” “computer processor[s],” “an accessible
database,” “a computer network,” “a delivery subsystem,” and “an electronic
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medical record system.” These components are described in the
Specification at a high level of generality. See Spec. ¶¶ 13, 21, 27, Figs. 1,
2. We fail to see how the generic recitations of these most basic computer
components and/or of a system so integrates the judicial exception as to
“impose[] a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exception of a mental
process that is not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to drug interactions, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step, the Examiner found the following:
The claims do not include additional elements that
are sufficient to amount to significantly more than
the judicial exception because the additional
computer elements, which are recited at a high
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level of generality, provide conventional computer
functions that do not add meaningful limits to
practicing the abstract idea.
(Final Act. 9, Answer 3).
We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, access, calculate, and apply decision criteria to data to
generate a result, and transmit and update data amounts to electronic data
query and transmit same are some of the most basic functions of a computer.
All of these computer functions are well-understood, routine, conventional
activities previously known to the industry. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) (“Absent a possible narrower construction of the terms ‘processing,’
‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any
general purpose computer without special programming”). In short, each
step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellants’ claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (receive,
access, calculate, and apply decision criteria to data to generate a result) and
storing is equally generic and conventional or otherwise held to be abstract.
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See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract), Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a mental process using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice,
573 U.S. at 225–26.
We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 12–14, Reply Br. 3–8). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue:
The system of the present invention is not capable
of being performed manually in any actually useful
way because of the plurality of patients, the
amount of data processed, the complexity of the
analysis, and the need for the results to be achieved
in real time is not possible if done manually. As
dangerous interactions are identified by the
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claimed invention a notification is delivered
automatically to the patient or healthcare
professional to warn them of the danger. The
automatic notification is a real-life transformation
of data - from medical claims data in a database,
the data is processed and a medical alert including
a danger score is generated and sent to a patient.
Therefore, Applicant submits that the claimed
system fundamentally transforms data and delivers
an actual alert. Indeed, what begins as voluminous
insurance and drug interaction data ends up as a
simple to understand, usable, real-time, danger
score communication provided to the user.
App. Br. 11.

We disagree with Appellants because as early as Parker v. Flook, the
Supreme Court held that calculations, while “primarily useful for
computerized calculations producing automatic adjustments in alarm
settings,” “can [still] be made by pencil and paper calculations.” Parker,,
437 U.S. at 586. As such, the Court did not deem the alleged primacy of
computer implementation to be persuasive in its 35 U.S.C. § 101 analysis.
Appellants here have not produced evidence showing that the claimed
computations cannot be made by human interaction using a pen and paper.
Instead, Appellants appear to be relying on attorney argument alone. It is
well settled merely using a computer to perform more efficiently what could
otherwise be accomplished manually does not confer patent-eligibility. See
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d 1266, 1279
(Fed. Cir.2012) (“Using a computer to accelerate an ineligible mental
process does not make that process patent-eligible.”); MySpace, Inc. v.
GraphOn Corp., 672 F.3d 1250, 1267 (Fed. Cir.2012) (“While running a
particular process on a computer undeniably improves efficiency and
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accuracy, cloaking an otherwise abstract idea in the guise of a computer-
implemented claim is insufficient to bring it within section 101.”).
Similarly, we find no error in the Examiner’s citation to SmartGene,
Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950 (Fed. Cir. 2014)
(Final Act. 10, Answer 12) to show like precedents.
Appellants however argue:
The claimed system is simply too complicated and
involves too much information to be performed
entirely in a human mind or using a pen and paper.
This distinction regarding the fundamental
transformation of data and the complexity of the
analysis involved is borne out in several post-Alice
cases. For example, in the SmartGene case cited
by the Examiner, the § 101 rejection was explicitly
limited to circumstances where “every step is a
familiar part of the conscious process that doctors
can and do perform in their heads.”
(Appeal Br. 12). We disagree with Appellants because Appellants fail to
note a distinguishing point in that case. In SmartGene, the Court was clear
that the broad limitations used in the claims to reference computer
implementation taken in conjunction with a rules–based thought process,
made the claims patent ineligible:
Claim 1 places only very broad limitations on a
“computing device”: it must contain—like a
doctor's mind—a set of “expert rules for evaluating
and selecting” from a stored “plurality of different
therapeutic treatment regimens,” as well as
“advisory information useful for the treatment of a
patient with different constituents of said different
therapeutic treatment regimens.”
SmartGene, 555 Fed. Appx. at 955. Similarly, the claims before us here use
like mental step rules, such as, a “weighting factor applied such that factors
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with a greater weighting have a greater impact on said danger score than
those with a lesser weighting” and “comparing said danger score against a
predetermined threshold to determine whether there is an expected negative
interaction between two or more drugs.” Such balancing of factors have
been historically practiced in the minds of pharmacists and doctors for years.
The Court in SmartGene went on to hold “[t]he claim does not purport to
identify new computer hardware: it assumes the availability of physical
components for input, memory, look-up, comparison, and output. Nor does
it purport to identify any steps beyond those which doctors routinely and
consciously perform.” Id. Similarly, as found above, the function
performed by the computer at each step of the process here is purely
conventional. The claims are directed to a mental process and amount to
nothing significantly more than instructions to apply the abstract ideas of a
mental process using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
Second, we also disagree with Appellants that “the claimed system
fundamentally transforms data and delivers an actual alert” such that patent
eligibility is effected. (Appeal Br. 11). The Supreme Court in Diamond v.
Diehr held that patent eligible transformation of an article occurs when “the
transformation of an article, in this case raw, uncured synthetic rubber, into a
different state or thing.” Diehr, 450 U.S. at 184. Conversely, at best,
independent claim 1 before us here analyzes data to arrive at a danger score.
The data upon which this score is based is not changed by the score
calculation, but still remains as the data it was even after the score was
calculated. As to the extent that delivering an alert is required by the claim,
Appeal 2018-003509
Application 14/086,670

19

this feature is limited to insignificant extra solution activity not covered
under 35 U.S.C. § 101. See In re Schrader, 22 F. 3d 290, 294 (Fed.
Cir. 1994) (recording step of the claimed process is incapable of imparting
patent-eligibility under 35 U.S.C. § 101).
Appellants rely on an opinion Ex Parte Shoji Kanada, Appeal No.
2016-005043 of another panel of the Patent Trial and Appeal Board in
another case. (Appeal Br. 13–14). However, since this opinion was non-
precedential, it is not binding on this panel.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claim 1 under 35
U.S.C. § 101.
We conclude the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 112(a).
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
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