Ajay Thukral et al.

Patent Trials and Appeals Board

Mar 26, 2021

2020006582 (P.T.A.B. Mar. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/492,801 06/26/2009 Ajay Thukral ROP 0038 PA/39260.192 7992
67491 7590 03/26/2021
DINSMORE & SHOHL, LLP
FIFTH THIRD CENTER
ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/26/2021 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):
daytonipdocket@dinsmore.com
jackie.pike@roche.com
pair_roche@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AJAY THUKRAL, STEFAN WEINERT, ROBIN WAGNER, and
MAURY ZIVITZ
____________

Appeal 2020-006582
Application 12/492,801
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 21–40. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims an adherence indication tool for chronic disease self-
management, and particularly to an adherence indication tool for chronic
disease self-management. (Spec. ¶ 4, Title).
Claim 21 is representative of the subject matter on appeal.
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21. A method for controlling a graphical user
interface of an adherence indication tool used for
improved diabetes self-management, the method
comprising:
operatively coupling a processing device to a
blood glucose meter or an insulin pump;
executing by said processing device an
adherence indication tool that provides an improved
graphical user interface on a display operatively
connected to the processing device, and in which
the adherence indication tool has a library contained
in a memory operatively connected to the
processing device that defines a plurality of
adherence units, each adherence unit is associated
with a plurality of rules governing patient activities
for completing a prescribed therapy, wherein each
of the patient activities is described in the memory
by a descriptive title, a description that describes the
associated patient activity by activity steps, a
specific sequence for the activity steps, a timeline
and list of actions expected at each activity step
included in the associated patient activity, and
parameters that enable quantifying each of the
activity steps by the plurality of rules for the
associated patient activity;
receiving by said processing device via the
improved graphical user interface of the adherence
indication tool a selection of the plurality of rules
governing the patient activities;
collecting data from the blood glucose meter
or the insulin pump upon each of the patient
activities being indicated accomplished to said
processing device via the improved graphical user
interface of the adherence indication tool;
receiving by said processing device via the
improved graphical user interface of the adherence
indication tool a specified time window of interest
in the collected data;
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calculating by said processing device a total
number of adherence units m the collected data
which fall within the specified time window of
interest;
calculating by said processing device each of
the adherence units in the specified time window of
interest as an adhered unit upon the collected data
indicating that the patient activities were
accomplished in accordance to the plurality of rules
governing the patient activities as automatically
assessed by the processing device;
calculating adherence, automatically with the
processing device, as a percentage of the count for
the adhered units to the total number of adherence
units for the specified time window; and
updating an adherence level provided by the
improved graphical user interface of the adherence
indication tool based on the calculated adherence
for the specified time window.
Appeal Br. 27–28 (Claims Appendix).

THE REJECTION
Claims 21–40 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 21–40, under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
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ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the elements
of each claim both individually and “as an ordered
combination” to determine whether the additional
elements “transform the nature of the claim” into a
patent-eligible application. . . . [The Court]
described step two of this analysis as a search for an
“‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept]
itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. 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.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 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 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 judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019).
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The Examiner determines that the claims recite “evaluating a diabetes
patient’s adherence by selecting from a library with a plurality of rules
governing patient activities for prescribed therapy.” (Final Act. 2). The
Examiner determines that the claims recite a mathematical concept and a
mental process. (Final Act. 3). The Examiner finds that the judicial
exceptions are not integrated into a practical application because the
additional elements of the claims such as the use of a processing device
merely uses a computer as a tool to perform an abstract idea and generally
links the use of the judicial exception to a particular technological
environment. (Final Act. 3). The Examiner also finds that the additional
elements are not sufficient to amount to significantly more than the judicial
exception because the additional elements of using a processing device to
perform the steps amounts to no more than using a computer or processor to
automate and/or implement the abstract idea of evaluating diabetes patient’s
adherence by selecting from a library with a plurality of rules governing
patient activities for a prescribed therapy. According to the Examiner, the
use of a computer or processor to merely automate and/or implement the
abstract idea cannot provide significantly more than the abstract idea itself.
(Final Act. 4).
The Specification discloses that the invention is related to a method of
achieving glycemic control to reduce long term complications for diabetic
patients. (Spec. ¶ 2). The invention is a method for measuring adherence to
following or achieving prescribed therapy steps to achieve target goals for
improved chronic disease self-management. (Spec. ¶ 5). The method of the
invention includes an adherence indication tool for measuring adherence to
following or achieving the prescribed therapy steps. The adherence
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indication tool comprises a memory containing data collected when the
activities were accomplished and a user interface facilitating selection of a
plurality of adherence units. Each adherence unit contains a plurality of
rules governing activities which need to be accomplished in order to
complete the prescribed therapy steps. (Id). The adherence indication tool is
a processing device with software for implementing the steps of the
invention. (Spec. ¶ 83). Adherence is the percentage of adhered unit to the
total number of adherence units for a specified time window. (Spec. ¶ 53).
We agree with the Examiner that the instant claims recite a method for
evaluating a diabetes patient’s adherence by selecting from a library with a
plurality of rules governing the patient activities. (Final Act. 5).
Consistent with this disclosure, claim 21 recites “executing . . . an
adherence indication tool . . . which has a library contained in a memory . . .
that defines a plurality of adherence units. . . associated with a plurality of
rules governing patient activities,” and “collecting data from the blood
glucose meter or insulin pump.”
The steps of receiving a plurality of rules, collecting data from a blood
glucose meter or insulin pump, receiving a specified time window of interest
in the collected data and updating an adherence level based on the calculated
adherence for the specified time window constitute “analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014).
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The claims recite a method of evaluating a diabetes patient’s
adherence to a plurality of rules governing patient activities which involves
judgment and evaluation and thus is a mental process. Guidance 84 Fed.
Reg. 52
Also, we find the steps of calculating a total number of adherence
units in the collected data, calculating each of the adherence units in the
specified time window of interest and calculating adherence automatically as
a percentage of the count are steps involving mathematical calculations and
thus claim 21 also recites the judicial exception of a mathematical concept.
Id. Thus, we find that claim 21 recites the judicial exceptions of a mental
process and in the alternative, a mathematical concept.
Turning to the second prong of the “directed to test”, claim 21
requires a “graphical user interface,” a “processing device.” These
recitations do not 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 at 18. We find no indication in the
Specification, nor does Appellant direct us to any indication, that the
operations recited in independent claim 1 invoke any inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”).
We consider the blood glucose meter and the insulin pump to be
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insignificant extra-solution activity, as these devices are merely healthcare
data sources, and are is not used to perform any of the method steps.
We find no indication in the Specification that the claimed invention
effects a transformation or reduction of a particular article to a different state
or thing. Nor do we find anything of record, short of attorney argument, that
attributes any improvement in computer technology and/or functionality to
the claimed invention or that otherwise indicates that the claimed invention
integrates the abstract idea into a “practical application,” as that phrase is
used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55.
In this regard, the recitations in claim 21 do not affect an
improvement in the functioning of the graphical user interface, the
processing device, or other technology, do not recite a particular machine or
manufacture that is integral to the claims, and do not transform or reduce a
particular article to a different state or thing. Id. Thus, we agree with the
Examiner that claim 21 is directed to judicial exceptions that are not
integrated into a practical application and thus claim 21 is directed to
“abstract ideas.”
Turning to the second step of the Alice analysis, because we find that
claim 21 is directed to abstract ideas, the claim 21 must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is 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 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
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The introduction of a computer i.e. a processing device into the claims
does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer” simply
combines those two steps, with the same deficient
result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an
abstract idea “on . . . a computer,” that addition
cannot impart patent eligibility. This conclusion
accords with the preemption concern that
undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of
“additional featur[e]” that provides any “practical
assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea]
itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claim 21 does more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
processing device or computer at each step of the process is purely
conventional. Using a computer to retrieve, select, and apply decision
criteria to data and modify the data as a result amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
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activities previously known to the trading industry. See Elec. Power Grp.,
830 F.3d at 1354; 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. As to the data operated
upon, “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.” SAP Am. Inc. v. InvestPic,
LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 21 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. 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.
Claim 21 does not, for example, purport to improve the functioning of
the processing device. As we stated above, the claims do not effect an
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improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios. (See, e.g., Spec. ¶ 77). Thus, claim 21 at issue amounts to
nothing significantly more than instructions to apply the abstract ideas 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 226.
We have reviewed all the arguments (Appeal Br.18–26; Reply Br. 2–
7) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of emphasis, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues that the claims do not recite a mathematical concept.
This argument is not persuasive because Appellant merely restates what is
recited in claims 21, 31 and 33 but does not explain why the claims do not
recite a mathematical concept. (Appeal Br. 18–19).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims are directed to an invented adherence
indication tool that is operatively coupled to a glucose meter or insulin pump
and is not a mathematical concept or mental process. (Appeal Br. 20). The
Specification discloses that the adherence method resides on a processing
device as a software implemented adherence indication tool. (Spec. ¶ 83).
The Specification also discloses that the processing device may be a
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personal computer such as a mobile phone, personal digital assistant or a
notebook computer. (Spec. §77). As such, claim 21 recites a method that is
implemented on a generic computer using adherence indication tool
software. As we explained above, recitation of a computer does not alter the
analysis of whether an abstract idea is recited in the claims.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claims 21, 31 and 33 integrate any alleged judicial
exception into a practical application of use through the invented adherence
indication tool to collect and analyze patient data. We agree with the
Examiner that the adherence indication tool, which as we discussed above is
a generic computer running adherence software, merely uses a computer as a
tool to perform an abstract idea and generally links the use of the judicial
exceptions to a particular technological environment. (Final Act. 3).
Appellant has not directed our attention to an improvement in the processing
device or any other technology.
We do not agree with Appellant that claim 21 recites significantly
more than the recited abstract ideas because the claim recites an improved
output through the transformation of data collected from a blood glucose
meter or an insulin pump. We do not find that the recited computer-related
limitations are sufficient to amount to significantly more than the recited
abstract ideas. Although the claim nominally requires these steps to be
performed by a computer hardware system including a processor, this
computer implementation of a mental process is insufficient to take the
invention out of the realm of abstract ideas. Versata Dev. Grp. 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,
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patent-ineligible invention could be performed via pen and paper or in a
person's mind.”); Alice, 573 U.S. at 223 (“Stating an abstract idea while
adding the words ‘apply it with a computer”’ is insufficient to confer
eligibility.). Further, the Specification does not provide additional details
about the computer hardware system/processor that would distinguish them
from any generic processing devices to convert input data from one type to
another. Although we do not dispute that the processing circuitry includes
specific instructions for performing the recited functions, Appellant has not
explained persuasively how the derived content transforms the received data
into a new state or thing. See MPEP § 2106.05(a). Rather, the claims
merely adapt the mental process of evaluating a diabetes patient’s adherence
to rules governing patient activities using a generic computer and software.
See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed.
Cir. 2017) (“Our prior cases have made clear that mere automation of
manual processes using generic computers does not constitute a patentable
improvement in computer technology.”); see also Bancorp Services, L.L.C.
v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012) (A computer “employed only for its most basic function . . . does not
impose meaningful limits on the scope of those claims.”).
Appellant argues that the lack of rejections under 102 or 103 is
evidence that the claims recite significantly more than any abstract idea
recited. (Appeal Br. 23). To the extent Appellant maintains that the
limitations of claim 21 necessarily amount to “significantly more” than an
abstract idea because the claimed apparatus is allegedly patentable over the
prior art, Appellant misapprehends the controlling precedent. Although the
second step in the Alice/Mayo framework is termed a search for an
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“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “‘an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 217. A novel and nonobvious claim directed to a purely abstract
idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
We do not agree with Appellant that the claims are similar to those
found in Core Wireless Licensing v. LG Electronics, Inc., 880 F.3d 1356
(Fed. Cir. 2018) because the instant claims recite a specific manner of
displaying information. (Appeal Br. 23). We do not consider claim 21 to
improve efficiency or to recite a particular machine or in a particular
technology as were the claims in Core Wireless. In Core Wireless the court
held that claims which recited an interface were patent eligible because the
claims recited specific limitations of the interface such as: an application
summary that can be reached through a menu, the data being in a list and
being selectable to launch an application, and additional limitations directed
to the actual user interface displayed and how it functions. Core Wireless,
880 F.3d at 1363. The court found that the claims were directed to an
improved user interface and not the abstract concept of an index as the claim
“limitations disclose a specific manner of displaying a limited set of
information to the user, rather than using conventional user interface
methods to display a generic index on a computer.” Id. Claim 21 does not
recite an improvement to the user interface. In fact, claim 21 does not recite
any details about the user interface other than reciting that information is
received and displayed via the user interface which is a function that any
general purpose user interface can perform. We note that the Specification
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discloses that the functions of the invention can be performed by similar
processors in different configurations and arrangements and that various
components can be integrated into a desktop or laptop computer,
workstation, tablet, and smartphones which is evidence that the user
interface used to perform the steps of the invention is a well-understood,
routine and conventional user interface and not an improved user interface.
(Spec. ¶ 13). As such, we agree with the Examiner that the claims are not
similar to those in Core Wireless.
Appellant also argues that the claims are similar to the claims in
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018). (Appeal
Br. 23). Appellant does not explain how the instant claims are similar to the
Finjan claims. In Finjan, the court found the claimed behavior-based virus
scan constituted an improvement in computer functionality over the
“traditional, ‘code-matching’ virus scans.” Finjan, 879 F.3d at 1304. The
court determined that the claimed method of Finjan employed a new kind of
file that allowed access to be tailored for different users, and allowed the
system to accumulate and use newly available, behavior-based information
regarding potential threats. Id. at 1305. The court ultimately held that the
Finjan claims were “directed to a non-abstract improvement in computer
functionality, rather than the abstract idea of computer security,” and that the
claims “recite[d] specific steps-- generating a security profile that identifies
suspicious code and linking it to a downloadable--that accomplish the
desired result.” Id.
Unlike the subject claims of Finjan, Appellant’s claim 21 fails to
recite an improvement to computer functionality. Rather, claim 21 recites a
method that uses software to process data using a generic computer.
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We also do not agree that the claims are similar Visual Memory LLC
v. NVIDIA Corporation, 867 F.3d 1253, 1260, (2017). The patent-eligible
claim of Visual Memory was directed to “[c]onfiguring the [claimed]
memory system based on the type of processor connected to the memory
system [, which] is the improvement in computer technology.” Visual
Memory, 867 F.3d at 1261. The patent-eligible claim in Visual Memory
recited features that improved the computer memory. In contrast to the
claim at issue in Visual Memory and as discussed above, Appellant’s claims
are directed to mathematically determining a patient’s adherence to rules for
management of diabetes using a mathematical calculation--not to an
improvement of computer technology. See SAP Am., Inc. v. Investpic, LLC,
890 F.3d 1016, 1018 (Fed. Cir. 2018) (“The claims here are ineligible
because their innovation is an innovation in ineligible subject matter.”);
Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972) (“The mathematical
formula involved here has no substantial practical application except in
connection with a digital computer, which means that . . . the patent would
wholly pre-empt the mathematical formula and in practical effect would be a
patent on the algorithm itself.”).
Appellant argues, relying on SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010), that the
claims recite a device with an adherence collection tool used to collect data
for transformation and therefore recite a particular machine because the
device with the adherence collection tool plays a significant part in the
output of the adherence level provided by a graphical user interface of the
adherence indication tool. (Appeal Br. 24). In SiRF, the court found that the
claims did not recite mental processes because they cannot be practically
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performed in the human mind. The SiRF claims recited a method for
calculating an absolute position of a GPS receiver and an absolute time of
reception of satellite signals, where the claimed GPS receiver calculated
pseudo ranges that estimated the distance from the GPS receiver to a
plurality of satellites, SiRF at 1331-33. The court in SiRF found that the
methods at issue could not be performed without the use of a GPS receiver;
indeed without a GPS receiver it would be impossible to generate pseudo
ranges or to determine the position of the GPS receiver whose position is the
precise goal of the claims. The method of Appellant’s claim 21 includes an
adherence indication tool in the form of the processing device and adherence
software but the processing device is not a significant part of the method but
rather a tool used to measure the adherence of patients to activity rules. We
agree with the Examiner’s finding on page 3 of the Final Action that nothing
in the claim elements precludes the step from practically being performed in
the mind and therefore the processing device does not play a significant part
in the method as was the case for the GPS devices in SiRF.
We also do not agree with Appellant that similar to the claims in
McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016), the instant claims improve the technical field of
diabetes management. (Appeal. Br. 24). Appellant contends that as in
McRO, the instant claims “are limited to application of a specific algorithm
(mathematical rules) to improve an existing technological process of
resampling a signal, which does not define an existing process.” Id.
We are not persuaded that the claimed invention is analogous to the claimed
invention in McRO. The claims in McRO were directed to a specific
asserted improvement in computer animation, i.e., the automatic use of rules
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of a particular type. McRO, 837 F.3d at 1313. By contrast, claim 21 under
appeal recites only determining adherence to a plurality of rules with no
improvement to the processing device.
We do not agree with Appellant that the claims are similar to those in
BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016). (Appeal Br. 25). More particularly, Appellant contends
that the elements of the claims is arranged in a non-conventional and non-
generic arrangement. Appellant does not explain how the arrangement is
non-conventional and non-generic. As we explained above, the, the
processing device, which is the additional element considered in the analysis
of whether a claim recites significantly more than the abstract idea is a
generic computer whose functions are well-understood, routine and
conventional.
Appellant also argues that the claims do not tie up any judicial
exception and thus are patent eligible. (Appeal Br. 25). While preemption
may signal patent ineligible subject matter, “the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015) (“[T]hat 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.”). And, “[w]here a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
In view of the foregoing, we will sustain the Examiner’s rejection as it
Appeal 2020-006582
Application 12/492,801

19

is directed to claims 21, 31 and 33. We will also sustain this rejection as it is
directed to the remaining claims because Appellant does not argue the
separate eligibility of these claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 21–40 under
35 U.S.C. § 101.

DECISION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–40 101 Eligibility 21–40

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