Ajit A. Dhavle et al.

Patent Trials and Appeals Board

Jul 24, 2019

12836205 - (D) (P.T.A.B. Jul. 24, 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.
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.
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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.
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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
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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.
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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
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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
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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
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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
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(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,
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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.
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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.
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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
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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).
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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
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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.
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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
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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).
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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
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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-
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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).
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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.
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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