Ajit A. Dhavle et al.Download PDFPatent Trials and Appeals BoardJul 24, 201912836205 - (D) (P.T.A.B. Jul. 24, 2019) Copy Citation 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. 12/836,205 07/14/2010 Ajit A. Dhavle H14.00020000 1716 68242 7590 07/24/2019 FIALA & WEAVER P.L.L.C. C/O CPA GLOBAL 900 Second Avenue South Suite 600 MINNEAPOLIS, MN 55402 EXAMINER PAULSON, SHEETAL R. ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 07/24/2019 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): DOCKETING@CPAGLOBAL.COM docketing@fwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AJIT A. DHAVLE and DAVID YAKIMISCHAK ____________ Appeal 2018-0024551 Application 12/836,2052 Technology Center 3600 ____________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–4, 6–15, 17–21, 23–25, 28–31, and 33–41. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed September 5, 2017) and Reply Brief (“Reply Br.,” filed January 2, 2018), and the Examiner’s Answer (“Ans.,” mailed November 2, 2017) and Final Office Action (“Final Act.,” mailed January 4, 2017). 2 Appellants identify Surescripts, LLC as the real party in interest. App. Br. 1. Appeal 2018-002455 Application 12/836,205 2 CLAIMED INVENTION Appellants’ claimed invention “relates to quality control checking and more particularly to quality control checking of an electronic prescription” (Spec. ¶ 1). Claims 1, 28, 29, and 39–41 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A method, performed on a computer, for quality control checking of an electronic prescription, the method comprising: [(a)] receiving an electronic prescription by the computer from a prescriber across a computer network; [(b)] determining, by a hardware processor of the computer subsequent to receiving the electronic prescription, whether or not the electronic prescription meets a quality standard for each of a plurality of quality issues by applying a set of rules to data fields of the electronic prescription, wherein the determining includes at least: [(b1)] determining whether at least one entry of the data fields of the electronic prescription matches at least one entry in a drug product database; and [(b2)] determining whether at least one entry of the data fields of the electronic prescription matches at least one entry in a database of prescriber information; [(c)] generating an indication of whether or not the electronic prescription meets the quality standard for each of the plurality of quality issues; and [(d)] forwarding the electronic prescription across the computer network to a pharmacy for fulfillment if the indication indicates the electronic prescription meets a minimum quality standard. Appeal 2018-002455 Application 12/836,205 3 REJECTION Claims 1–4, 6–15, 17–21, 23–25, 28–31, and 33–41 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS Appellants argue the pending claims as a group (App. Br. 10–27). We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv). 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. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the Appeal 2018-002455 Application 12/836,205 4 nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original). In rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that the claims are directed to “comparing prescription data to quality standards of a prescription,” which the Examiner concluded is an abstract idea similar to other concepts that the courts have held abstract (Final Act. 4; see also id. at 6). The Examiner also determined that the claims do not include additional elements or a combination of elements that is sufficient to transform the nature of the claims into a patent-eligible application (id. at 4–7). After Appellants’ briefs were filed, and the Examiner’s Answer mailed, the USPTO published revised guidance for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) providing groupings of subject matter that is considered an abstract idea; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Id. Appeal 2018-002455 Application 12/836,205 5 Step One of the Mayo/Alice Framework (USPTO Guidance Step 2A) The first step in the Mayo/Alice framework, as mentioned above, is to determine whether the claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next consider whether the claim includes additional elements, beyond the judicial exception, “that integrate the [judicial] exception into a practical application,” i.e., that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. We are not persuaded by Appellants’ arguments that the Examiner erred in determining that the claims are directed to an abstract idea (App. Br. 19–24). 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 Appeal 2018-002455 Application 12/836,205 6 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the Specification, including the claim language, that the claims focus on an abstract idea, and not on any improvement to technology and/or a technical field. The Specification is entitled “METHOD AND APPARATUS FOR QUALITY CONTROL OF ELECTRONIC PRESCRIPTIONS,” and, in the Background section, describes the various improvements in productivity that are attributable to electronic prescribing of pharmaceuticals and the attendant benefits for the prescriber, the patient, and the pharmacist (Spec. ¶ 3). The prescriber, for example, may benefit by having a computer program assist in filling out the prescription and by having an electronic record of the prescription prescribed to the patient; the patient may benefit by not having to call the pharmacist or wait at the pharmacy while the prescription is being fulfilled; and the pharmacist may benefit because the electronic prescription may be easier to understand than a doctor’s handwriting; the pharmacist also may have an electronic record of the prescriptions the pharmacy has fulfilled without having to key in the prescription (id.). The Specification discloses that although standards for electronic prescribing have been implemented, some of the data in electronic prescriptions do not have a standardized format and/or may be free text that is entered by a prescriber. As such, there is a risk that the prescriber may err in typing in this free text (e.g., by choosing the wrong medication or typing in the wrong patient directions) and, therefore, a danger that a patient “will Appeal 2018-002455 Application 12/836,205 7 receive the wrong pharmaceutical or the wrong dosage of the pharmaceutical, or that the pharmacist will not be able to fulfill the prescription” (id. ¶ 4). The claimed invention is ostensibly intended to address this issue by providing a method and system for quality control checking of electronic prescriptions to ensure that each prescription meets a minimum quality standard before the prescription is forwarded to a pharmacy for fulfillment (id. ¶ 5). Claim 1, thus, recites a method for quality control checking of an electronic prescription comprising: (1) receiving an electronic prescription, i.e., “receiving an electronic prescription by the computer from a prescriber across a computer network” (step (a)); (2) determining whether the electronic prescription meets quality standards by comparing the information included in the electronic prescription to information in a drug product database and a database of prescriber information, i.e., “determining . . . whether or not the electronic prescription meets a quality standard for each of a plurality of quality issues by applying a set of rules to data fields of the electronic prescription, wherein the determining includes . . .”; “determining whether at least one entry of the data fields of the electronic prescription matches at least one entry in a drug product database”; and “determining whether at least one entry of the data fields of the electronic prescription matches at least one entry in a database of prescriber information” (steps (b), (b1), and (b2)); (3) generating an indication of whether the prescription meets quality standards based on the comparison, i.e., “generating an indication of whether or not the electronic prescription meets the quality standard for each of the plurality of quality issues” (step (c)); and (4) forwarding the prescription to a pharmacy for fulfilment if a minimum Appeal 2018-002455 Application 12/836,205 8 quality standard is met, i.e., “forwarding the electronic prescription across the computer network to a pharmacy for fulfillment if the indication indicates the electronic prescription meets a minimum quality standard” (step (d)). Simply put, claim 1 broadly encompasses checking the quality of an electronic prescription by (1) receiving information, i.e., the electronic prescription; (2) analyzing the information, i.e., determining whether the information in the electronic prescription matches a drug product in a drug product database and a prescriber in a database of prescriber information; and (3) reporting the results of the collection and analysis, i.e., forwarding the prescription to a pharmacy for fulfillment based on the comparison, i.e., when matches are found. Claim 1, thus, recites a commercial interaction, which is a method of organizing human activity and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. The Federal Circuit has held similar concepts to be abstract. Thus, for example, the Federal Circuit has held that abstract ideas include the concepts of collecting data, analyzing the data, and reporting the results of the collection and analysis, including when limited to particular content. See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information, analyzing information by steps people go through in their minds, or by mathematical algorithms, and presenting the results of collecting and analyzing information, without more, as matters within the realm of abstract ideas); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 Appeal 2018-002455 Application 12/836,205 9 (Fed. Cir. 2018) (“As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases)). Determining whether to forward an electronic prescription to a pharmacy for fulfillment, by comparing information included in the electronic prescription to information contained in a drug product database and a database of prescriber information, also is substantially similar to other concepts that the courts have held abstract. See, e.g., Berkheimer v. HP, Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) (concluding that parsing, comparing, storing, and editing data are abstract ideas); SmartGene, Inc. v. Advanced Biological Labs., 555 F. App’x 950, 955 (Fed. Cir. 2014) (comparing new and stored information and using rules to identify options is an abstract idea). Having concluded that claim 1 recites a judicial exception, i.e., an abstract idea (Step 2A, Prong 1), we next consider whether the claim recites “additional elements that integrate the judicial exception into a practical application” (Step 2A, Prong 2). The only additional elements recited in claim 1, beyond the abstract idea, are the claimed “computer,” “hardware processor,” “drug product database,” “database of prescriber information,” and “computer network” — elements that, as the Examiner observes (Final Act. 5), are described in the Specification at a high level of generality, i.e., as generic computer components (see, e.g., Spec. ¶¶ 60–63). We find no indication in the Specification, nor do Appellants direct us to any indication, that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, Appeal 2018-002455 Application 12/836,205 10 i.e., a particular machine, invoke any assertedly inventive programming, 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 also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes an improvement in technology and/or a technical field to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the 2019 Revised Guidance.3 Appellants variously argue that the Examiner erred in determining that the claims are directed to an abstract idea. But, none of Appellants’ arguments is persuasive of Examiner error. Noting that each of independent claims 1, 28, 29, and 39–41 recites “forwarding the electronic prescription across the computer network to a pharmacy for fulfillment if the indication indicates the electronic prescription meets a minimum quality standard,” Appellants first argue that 3 The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e)–(h) in describing the considerations that are indicative that an additional element or combination of elements integrates the judicial exception, e.g., the abstract idea, into a practical application. Id. at 55. If the recited judicial exception is integrated into a practical application, as determined under one or more of these MPEP sections, the claim is not “directed to” the judicial exception. Appeal 2018-002455 Application 12/836,205 11 the pending claims are not directed to an abstract idea because the “forwarding” feature is “a technical improvement for the field [of] electronic prescriptions that allows an automated filtering process to provide only electronic prescriptions that meet a minimum quality standard” (App. Br. 19–20). Appellants maintain that, rather than being directed to an abstract idea, the claims “are specifically directed to solving technical problems with quality checking for electronic prescriptions” (id. at 20–21). But, we are not persuaded that quality checking of electronic prescriptions is a technical problem, as opposed to a business problem, or that the claimed solution of, at best, using generic computer components to compare data fields of the electronic prescription to drug product and prescriber database entries, is a technical improvement, where, as described above, there is no indication here that the operations recited in the claims require any specialized computer hardware or other inventive computer components, invoke any assertedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving, storing, processing, and transmitting information. Considered in light of the Specification, the claimed invention clearly appears to be focused on achieving a business objective, i.e., addressing the business risk that a prescriber will err in entering data in an electronic prescription, and, thus, expose a patient to the danger associated with receiving the wrong pharmaceutical or the wrong dosage of the pharmaceutical (see Spec. ¶ 4), and not on any claimed means for accomplishing this goal that improves technology. Appeal 2018-002455 Application 12/836,205 12 For much the same reasons, and contrary to Appellants’ assertions (App. Br. 21–23), we also find no parallel between claim 1 and the claims at issue in either DDR Holdings or Trading Technologies International v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017). In DDR Holdings, the claims were directed to retaining website visitors, and in particular to a system that modified the conventional web browsing experience by directing a user of a host website, who clicks an advertisement, to a “store within a store” on the host website, rather directing the user to the advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257–1258. The court determined “the claims address a business challenge (retaining website visitors) [that] is a challenge particular to the Internet.” Id. at 1257. The court also determined that the invention was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” and that the claimed invention did not simply use computers to serve a conventional business purpose. Id. Similarly in Trading Technologies, the Federal Circuit affirmed the district court’s holding that the patented claims (which recited a method and system for displaying market information on a graphical user interface) were not directed to an abstract idea because the district court found, and the Federal Circuit agreed, that the challenged patents did not simply claim displaying information on a graphical user interface; instead, the claims required “a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in Appeal 2018-002455 Application 12/836,205 13 the prior state of the art.” Trading Technologies, 675 F. App’x at 1004.4 The Federal Circuit, thus, found that the district court’s ruling was in accord with precedent that has recognized that “specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter.” Id. at 1004–05. Appellants maintain here that the pending claims, similar to the claims in DDR Holdings and Trading Technologies, should not be treated as being directed to an abstract idea because the claims address problems, i.e., relating to the potential introduction of errors, that are specific to a particular field of endeavor, i.e., electronic prescriptions (App. Br. 21). Appellants argue that these problems arise from the “electronic, network-delivered nature of electronic prescriptions,” which has created an environment in which a “high volume of electronic prescriptions could flow into a pharmacy over a network from a wide variety of different prescribers for a multitude of different drugs,” — an environment that Appellants assert has made it difficult, if not impossible, for a pharmacy to quality check all the electronic prescriptions that it receives (id. at 21–22). Appellants argue that “[a]bsent the technical solution provided by the instant claims, there is no quality 4 Specifically, the district court found that with prior art GUIs, the best bid and best ask prices changed based on updates received from the market; therefore, there was a risk with these GUIs that a trader would miss her intended price as a result of prices changing from under her pointer at the time she clicked on the price cell on the GUI. The patents-in-suit provided a system and method whereby traders could place orders at a particular, identified price level, not necessarily the highest bid or the lowest ask price by keeping the prices static in position, and allowing the quantities at each price to change. Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-cv-4811, 2015 WL 774655 *4 (N.D. Ill. Feb. 24, 2015). Appeal 2018-002455 Application 12/836,205 14 checking oversight in place before the electronic prescriptions arrive at the pharmacy” (id. at 22). And Appellants assert that the pending claims should not be treated as directed to an abstract idea, in view of DDR Holdings and Trading Technologies, because the claims are “directed to solving new problems arising specifically from the new technological field of electronic prescriptions and the need for integrity checking therefor” (id. at 23). There is no dispute that the claimed invention, as recited in claim 1, may well provide an improvement in the field of electronic prescriptions by confirming the quality/accuracy of the information included in the prescription before forwarding the prescription to a pharmacy for fulfillment. But, we are not persuaded that this is technological improvement, as opposed to an improvement in a business practice. Although electronic prescriptions may be network-centric, quality checking of prescriptions is not a problem rooted in technology or one arising out of computer networks, like the problem in DDR Holdings. Instead, this is a business problem that existed before, and still exists, outside the realm of computers and computer networks. Confirming the accuracy of drug and/or prescriber information would seemingly be no less critical in the case of traditional, paper prescriptions than with their electronic counterparts. The court, in DDR Holdings, held that the claims distinguished over patent-ineligible claims that “broadly and generically claim ‘use of the Internet’ to perform an abstract business practice (with insignificant added activity),” because they “specify how interactions with the Internet are manipulated to yield a desired result — a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a Appeal 2018-002455 Application 12/836,205 15 hyperlink.” DDR Holdings, 773 F.3d at 1258. Here, we do not find, and Appellants do not identify, any analogous modification to the routine and conventional functioning of computer network technology. At best, the claimed invention appears to use generic computer components to perform an abstract business practice (i.e., quality checking of electronic prescriptions).5 We also are not persuaded by Appellants’ argument that the claims are not directed to an abstract idea because the claims do not preempt all forms of quality checking (App. Br. 23–24). There is no dispute that the Supreme Court has described “the concern that drives [the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216. But, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility.” Id. We conclude, for the reasons outlined above, that claim 1 recites a method of organizing human activity, i.e., an abstract idea, and that the 5 We fail to see how, and Appellants do not adequately explain how, the holding in Trading Technologies impacts the patent-eligibility of the pending claims. The pending claims do not involve a user interface. Nor, as described above, do the claims solve a technological problem. Appeal 2018-002455 Application 12/836,205 16 additional elements recited in the claim are no more than generic computer components used as tools to perform the abstract idea of checking the quality of an electronic prescription. As such, they do not integrate the recited abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is not generally the sort of ‘additional feature[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B) Having determined under step one of the Mayo/Alice framework that claim 1 is directed to an abstract idea, we next consider under Step 2B of the 2019 Revised Guidance, the second step of the Mayo/Alice framework, whether claim 1 includes additional elements or a combination of elements that provide an “inventive concept,” i.e., whether the additional elements amount to “significantly more” than the judicial exception itself. 2019 Revised Guidance, 84 Fed. Reg. at 56. Citing the Federal Circuit’s holding, in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that an inventive concept that can be found in the non-conventional and non- generic arrangement of known conventional pieces, Appellants argue that even if the claims are directed to an abstract idea, the claims are nonetheless patent-eligible because the claims “provide for ‘significantly more’ than abstract ideas” (App. Br. 24). Appellants note that the pending claims “provide for features that receive electronic prescriptions over a network at a central location after they are created by prescribers, but before they are Appeal 2018-002455 Application 12/836,205 17 provided to a pharmacy for fulfillment, and then forward the electronic prescriptions over the network to the pharmacy if the electronic prescription meets a minimum quality standard” (id.). And Appellants argue that the present claims are, thus, analogous to BASCOM because the arrangement and situating of computing devices/systems on a network between prescribers and pharmacies “provide an implementation for quality control checking of electronic prescriptions ‘versatile enough that it could be adapted to many different’ patients’/prescribers’ electronic prescriptions ‘while also being installed remotely in a single location’ in order to forward electronic prescriptions to pharmacies” (id. at 24–25). Appellants’ reliance on BASCOM is misplaced. In BASCOM, the Federal Circuit determined that the claimed installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user provided an inventive concept in that it gave the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server. BASCOM, 827 F.3d at 1350. The court, thus, held that the second step of the Mayo/Alice framework was satisfied because the claimed invention “represents a ‘software-based invention[ ] that improve[s] the performance of the computer system itself.’” BASCOM, 827 F.3d at 1351 (stating that like DDR Holdings, where the patent “claimed a technical solution to a problem unique to the Internet,” the patent in BASCOM claimed a “technology-based solution . . . to filter content on the Internet that overcomes existing problems with other Internet filtering systems . . . making it more dynamic and efficient”) (internal citations omitted). Appeal 2018-002455 Application 12/836,205 18 Here, Appellants do not identify, and we do not find, any improvement to computer technology analogous to the ordered combination described in BASCOM or any additional element or elements recited in claim 1 that yield an improvement in the functioning of a computer, or an improvement to another technology or technical field. Appellants further argue that the claims include specific limitations that are “other than what is well-understood, routine, and conventional in the field” (App. Br. 25–27). Yet, the limitations that Appellants identify (i.e., receiving electronic prescriptions over a network after they are created by prescribers, but before they are provided to a pharmacy for fulfillment, and then forwarding the electronic prescriptions over the network to the pharmacy if the electronic prescription meets a minimum quality standard) are part of the abstract idea itself, i.e., quality control checking of an electronic prescription; they are not additional elements to be considered when determining whether claim 1 includes additional elements or a combination of elements that is sufficient to amount to significantly more than the judicial exception. It could not be clearer from Alice, that under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (internal quotations and citation omitted); see Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the Appeal 2018-002455 Application 12/836,205 19 patent in practice amounts to significantly more than a patent upon the natural law itself” (emphasis added) (internal citation omitted)). In other words, the inventive concept under step two of the Mayo/Alice test cannot be the abstract idea itself: It is clear from Mayo that the “inventive concept” cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged “inventive concept” is the abstract idea. Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”) (internal citation omitted). The Examiner determined here, and we agree, that the only claim elements beyond the abstract idea are the claimed computer, computer network, processor, and databases, i.e., generic computer components used to perform generic computer functions (Final Act. 5) — a determination amply supported by, and fully consistent with the Specification (see, e.g., Spec. ¶¶ 61–63).6 6 The Office’s April 19, 2018 Memorandum to the Examining Corps from Deputy Commissioner for Patent Examination Policy, Robert W. Bahr, entitled, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), available at https://www.uspto.gov/sites/default/files/documents/ memo-berkheimer-20180419.pdf, expressly directs that an examiner may support the position that an additional element (or combination of elements) is not well-understood, routine or conventional with “[a] citation to an express statement in the specification . . . that demonstrates the well- Appeal 2018-002455 Application 12/836,205 20 Appellants cannot reasonably contend, nor do they, that there is a genuine issue of material fact regarding whether the operation of these components is well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 1 require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving, matching, and processing information. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer, 890 F.3d at 1373 (Moore, J., concurring) (internal citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well- understood, routine and conventional database structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). Finally, Appellants misapprehend the controlling precedent to the extent Appellants maintain that claim 1 includes additional elements or a combination of elements that is not well-understood, routine, and conventional, because the claim is allegedly novel and/or non-obvious in view of the prior art (App. Br. 26). Neither a finding of novelty nor a non- understood, routine, conventional nature of the additional element(s)” (id. at 3). Appeal 2018-002455 Application 12/836,205 21 obviousness determination automatically leads to the conclusion that the claimed subject matter is patent-eligible. Although the second step in the Mayo/Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18 (citation omitted). “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non- obvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 1, and claims 2–4, 6–15, 17–21, 23–25, 28–31, and 33–41, which fall with claim 1. DECISION The Examiner’s rejection of claims 1–4, 6–15, 17–21, 23–25, 28–31, and 33–41 under 35 U.S.C. § 101 is affirmed. Appeal 2018-002455 Application 12/836,205 22 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation