CareFusion 303, Inc.

Patent Trials and Appeals Board

Oct 21, 2020

2020001590 (P.T.A.B. Oct. 21, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/931,282 06/28/2013 Clifton PAIT 122295-6157 2753
80236 7590 10/21/2020
Morgan, Lewis & Bockius LLP (OC)(BD)
600 Anton Boulevard
Suite 1800
Costa Mesa, CA 92626-7653
EXAMINER
KOPPIKAR, VIVEK D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/21/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ocipdocketing@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CLIFTON PAIT, RYAN NGUYEN, and VIKAS GUPTA
____________________

Appeal 2020-001590
Application 13/391,282
Technology Center 3600
____________________

Before JOHN A. EVANS, JUSTIN BUSCH, and JOHN P. PINKERTON,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–4, 6, 8, 16–22, and 24–29. Claims 5, 7, 15, and
23 have been canceled. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellant’s disclosure generally relates to systems and methods “for
providing aggregated patient data.” Spec. ¶ 3. More specifically, the

1 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies CareFusion 303, Inc. as the real party in
interest. Appeal Br. 4.
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claimed subject matter receives patient clinical and healthcare data,
generates patient data objects from the received data, filters the patient data
objects based on third party access privileges, transforms the filtered patient
data objects based on a third-party rule, and provides the transformed patient
data objects to the third party. Spec. ¶¶ 3, 26, Fig. 3.
Claims 1, 13, and 18 are independent claims, and claim 1 is
reproduced below:
1. A method for providing aggregated patient data, the
method comprising:
receiving clinical data items from at least one healthcare
data system and healthcare device data items from a patient
interfacing healthcare device, wherein each of the clinical data
items and each of the healthcare device data items are associated
with one of a plurality of patients;
generating a plurality of patient data objects corresponding
to the plurality of patients, wherein each of the plurality of patient
data objects is in a first data format and comprises patient
identifying information and at least one of the clinical data items
and at least one of the healthcare device data items;
filtering the plurality of patient data objects to generate a
first filtered plurality of patient data objects with the patient
identifying information replaced with patient unidentifiable data,
and a second filtered plurality of patient data objects without the
patient identifying information replaced, based at least in part on
predetermined access privileges of a first third party organization
and a second third party organization, respectively;
receiving, by a patient data server, a first data
transformation rule from the first third party organization and a
second data transformation rule, different from the first data
transformation rule, from the second third party organization;
transforming, from the first data format, by a patient data
provider server, the first filtered plurality of patient data objects
based on the first transformation data rule to generate a first
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transformed plurality of patient data objects in a second data
format used by the first third party organization;
transforming, from the first data format, by the patient data
provider server, the second filtered plurality of patient data
objects based on the second transformation data rule to generate
a second transformed plurality of patient data objects in a third
data format used by the second third party organization, the
second and third data formats being different from each other and
the first data format; and
providing, over a network, the first transformed plurality
of patient data objects to at least one device associated with the
first third party organization based on the first transformation
data rule received from the first third party organization, and the
second transformed plurality of patient data objects to at least
one device associated with the second third party organization
based on the second transformation data rule received from the
second third party organization.
The Pending Rejections
Claims 1–4, 6, 8–14, 16–22, and 24–29 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2–4.
Claims 1–4, 6, 8–14, 16–22, and 24–29 stand rejected under 35 U.S.C.
§ 103 as obvious in view of Zaleski (US 2003/0149597 A1; Aug. 7, 2003),
Erickson (US 2004/0199781 A1; Oct. 7, 2004), Bishop (US 2006/0042632;
Mar. 2, 2006), and Farooq (US 2011/0295622 A1; Dec. 1, 2011). Final Act.
4–19.
ANALYSIS
REJECTION UNDER 35 U.S.C. § 101
Based on our review of the record in light of recent policy guidance
on patent subject matter eligibility under 35 U.S.C. § 101, we sustain the
§ 101 rejection of claims 1–4, 6, 8–14, 16–22, and 24–29 for the reasons
discussed below. Appellant argues the claims as a group. See Appeal Br.
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12–17. We select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
If a claim falls within one of the statutory categories of patent
eligibility, the Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101—that is, evaluating whether the
claim is directed to a judicially recognized exception. Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014). We also consider the United States
Patent and Trademark Office’s (USPTO) revised guidance for applying the
Alice framework when evaluating subject matter eligibility under 35 U.S.C.
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”); USPTO, October 2019 Patent
Eligibility Guidance Update (Oct. 18, 2019), https://www.uspto.gov/
PatentEligibility (“Guidance Update”).
As part of our inquiry, we “look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016); see Alice, 573 U.S.
at 217 (“First, we determine whether the claims at issue are directed to one
of those patent-ineligible concepts.”). The Guidance breaks this “directed
to” inquiry (“Step 2A”) into two prongs of analysis: (i) does the claim recite
a judicial exception (e.g., an abstract idea) (“Prong 1”), and (ii) if so, is the
judicial exception integrated into a practical application (“Prong 2”).
Guidance, 84 Fed. Reg. at 54.
If we determine the claim is directed to an abstract idea, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
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nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “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 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73); see Guidance, 84 Fed.
Reg. at 56 (directing us to consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry” (“Step 2B”)).
We find the Examiner’s § 101 analysis and explanations to be
consistent with both § 101 case law and the Guidance. See Final Act. 2–4;
Ans. 3–6. The Examiner determines, and we agree, that the claims are
patent-ineligible under 35 U.S.C. § 101. Final Act. 2–4; Ans. 3–6.
Guidance Step 2A (The Alice “Directed To” Inquiry)
The Examiner determines the claims are directed to “providing
aggregated data,” which is an abstract idea. Final Act. 2–3. More
specifically, the Examiner makes the following determinations about the
steps of claim 1. First, “filtering data objects based on their association with
a third party organization, transforming the data objects based on rules
received from the third party organization, providing the transformed data
objects and updating infusion-related metrics . . . correspond to organizing
information through mathematical correlations,” which was “identified by
the courts as abstract in Digitech. Final Act. 2–3 (citing Digitech Image
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Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1350–51 (2014)).
Second, receiving data and filtering the data objects “collect and obtain and
compare intangible data,” which was “identified as abstract by the courts in
CyberSource.” Final Act. 3 (citing CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)). And third, “identifying a
patient at risk and identifying an intervention for the patient . . . correspond
to comparing new and stored information and using rules to identify
options,” which was “identified by the courts as abstract in SmartGene.”
Final Act. 3 (citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555
F. App’x 950, 955 (Fed. Cir. 2014)).
We agree with the Examiner’s finding that the claims are directed to
the abstract idea of “providing aggregated data.” See Guidance, 84 Fed.
Reg. at 52.2 This characterization is consistent with how Appellant
describes the claimed embodiments of the invention. At a high level, the
claims themselves recite that they are methods and systems “for providing
aggregated patient data.” Appeal Br. 25, 27, 29 (independent claims 1, 13,
and 18). Moreover, Appellant explicitly states that the claims solve the
problem of “providing aggregated patient data to multiple healthcare data
systems without improper disclosure of sensitive data to those not
authorized.” Appeal Br. 16. The Specification also supports this
characterization. See, e.g., Spec. ¶¶ 1 (“The present description relates . . .
to providing aggregated patient data.”), 3–5, 16, 20, 26, 37, Fig. 3, Title
(“SYSTEM FOR PROVIDING AGGREGATED PATIENT DATA”).

2 We discuss our reasoning, and the Examiner’s application of the Guidance
with respect to the “directed to” inquiry’s two prongs (see Ans. 3–6), in the
following subsections.
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Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 13–17.
Appellant argues that their claims are not like those in Digitech, which were
“primarily concerned with a collection of data, . . . not . . . with replacing
identifying information or transforming the data from one format to
another.” Appeal Br. 14. But, contrary to Appellant’s argument, the
claimed invention in Digitech was concerned with “transforming data from
one format to another,” as at least one claim explicitly recited “a device
dependent transformation of . . . information content of the image to a device
independent color space.” Digitech, 758 F.3d at 1349. One of the Digitech
claims also recited the concept of “combining two data sets into a device
profile,” which resembles claim 1’s recited concept of generating patient
data objects based on patient-identifying information, clinical data items,
and healthcare device data items. Digitech, 758 F.3d at 1351. And even
though the claims in Digitech did not explicitly recite “replacing identifying
information,” an exact match is not needed when comparing the claims at
issue to those previously analyzed by the courts. By contrast, our reviewing
court has adopted a “more flexible approach” that “examine[s] earlier cases
in which a similar or parallel descriptive nature can be seen.” Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(emphasis added). We find the Examiner’s § 101 analysis to be consistent
with that approach.
Appellant next argues that “CyberSource was primarily concerned
with whether claimed features could be performed in the human mind and
determining certain claim steps were extra-solution activity” and “is not seen
as being applicable to the claimed features of generating first . . . and . . .
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second filtered data objects . . . , much less a server transforming each set of
data objects based on respective data transformation rules, as claimed.”
Appeal Br. 13. Appellant’s argument is not persuasive. First, the argument
focuses on the “transforming” steps of claim 1, but the Examiner analogizes
only the “receiving” and “filtering” steps of claim 1 to the claims in
CyberSource. See Final Act. 3. Second, the argument overlooks claim 1’s
act of “receiving clinical data items . . . and healthcare device data items,”
which is extra-solution activity just as the “obtaining information” step of
the CyberSource claim was. Our reviewing court has held that such “[data-
gathering] step[s] cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (alteration in original) (quoting In re Grams,
888 F.2d 835, 840 (Fed. Cir. 1989)); see also Guidance, 84 Fed. Reg. at 55,
55 n.31. And third, just as the claim in CyberSource “compare[d] intangible
data” by comparing a map of credit card numbers to credit card transaction
information to determine valid transactions, claim 1 compares intangible
data when it filters patient data objects based on third party access
privileges. See, e.g., Spec. ¶ 40 (describing the filtering of patient data
objects using a list of patients a third party may access).
Appellant argues further that “SmartGene was also concerned with
whether a claim involved mental steps, and is not seen as being implacable
to the instant claims.” Appeal Br. 13–14. Appellant explains that “the
U.S.P.T.O., in it’s [sic] November 2, 2016 memorandum, instructed
examiners to limit their reliance on SmartGene and similar non-precedential
cases.” Appeal Br. 14.
The mere fact that the Examiner analogized certain claim elements to
those in Smartgene does not control our decision regarding whether the
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claims are patent-eligible under 35 U.S.C. § 101. Moreover, even if
Appellant were correct that SmartGene differs from Appellant’s claims, the
Examiner cites other Federal Circuit cases—e.g., Digitech and
CyberSource—that identify abstract ideas similar to concepts recited in
claim 1. See also HealthTrio, LLC v. Aetna, Inc., 2015 WL 5675303 (D.
Colo. Sept. 28, 2015), aff’d, 673 F. App’x. 1006 (Mem) (Fed. Cir. 2017)
(affirming district court decision holding the “collection of data from various
sources with the goal of compiling a single, comprehensive, patient health
record” was a patent-ineligible abstract idea); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1317 (Fed. Cir. 2016) (recognizing as
abstract the concept of keeping business rules about certain received
information, applying those business rules to the received information, and
taking certain actions as a result).
Therefore, consistent with our Office Guidance and case law, and as
discussed in greater detail below, we determine that the claims are directed
to the abstract idea of providing aggregated data, as described by the abstract
concepts of collecting and combining multiple data sets into a single data
object; transforming data from one format to another; obtaining and
comparing intangible data; and keeping business rules about certain received
information, applying those business rules to the received information, and
taking certain actions as a result.
Guidance Step 2A, Prong 1 (Recite an Abstract Idea)
The Examiner determines the claims recite the steps of “receiv[ing]
data,” “providing aggregated data,” “filtering data objects based on their
association with a third party organization, transforming the data objects
based on rules received from the third party organization, providing the
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transformed data objects and updating infusion-related metrics,” “identifying
a patient at risk and identifying an intervention for the patient.” Final Act.
2–3. The Examiner determines these steps are part of the claimed concept of
“providing aggregated data.” Final Act. 2. The Examiner explains that “the
rejection . . . identif[ies] the inventive concept set forth in the claims as the
abstract idea of aggregating data,”3 which “falls into the broad grouping
(enumerated in the January 2019 PEG) of mental processes, concepts
performed in the human mind.” Ans. 3. The Examiner explains further that
“the inventive process can be mentally performed through observation of
data, evaluation of the data and then judgment and opinion to transmit this
data or select portions of the observed data to protect confidentiality.” Ans.
3. Therefore, consistent with the Guidance, the Examiner determines the
claims fall within the mental processes grouping of abstract ideas. Ans. 3;
see also Final Act. 2–3 (analogizing the claims to claims identified by the
courts as being drawn to unpatentable mental processes).4
More specifically, claim 1 is reproduced below and includes the claim
limitations that recite aspects of the abstract idea emphasized in italics:

3 Even though the Examiner characterizes the abstract idea slightly
differently in the Answer (“aggregating data”) than in the Final Office
Action (“providing aggregated data”), this is not erroneous. “An abstract
idea can generally be described at different levels of abstraction” without
“impact[ing] the patentability analysis.” Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1240–41 (Fed. Cir. 2016).
4 See, e.g., CyberSource, 654 F.3d. at 1372 (“It is clear that unpatentable
mental processes are the subject matter of claim 3. All of claim 3’s method
steps can be performed in the human mind, or by a human using a pen and
paper.”); Digitech, 758 F.3d at 1351 (quoting Gottschalk v. Benson, 409
U.S. 63, 68 (1972)) (“The method claimed in the ’415 patent is thus ‘so
abstract and sweeping’ as to cover any and all uses of a device profile.”).
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1. A method for providing aggregated patient data, the
method comprising:
receiving clinical data items from at least one healthcare
data system and healthcare device data items from a patient
interfacing healthcare device, wherein each of the clinical data
items and each of the healthcare device data items are associated
with one of a plurality of patients;
generating a plurality of patient data objects
corresponding to the plurality of patients, wherein each of the
plurality of patient data objects is in a first data format and
comprises patient identifying information and at least one of the
clinical data items and at least one of the healthcare device data
items;
filtering the plurality of patient data objects to generate a
first filtered plurality of patient data objects with the patient
identifying information replaced with patient unidentifiable data,
and a second filtered plurality of patient data objects without the
patient identifying information replaced, based at least in part
on predetermined access privileges of a first third party
organization and a second third party organization, respectively;
receiving, by a patient data server, a first data
transformation rule from the first third party organization and a
second data transformation rule, different from the first data
transformation rule, from the second third party organization;
transforming, from the first data format, by a patient data
provider server, the first filtered plurality of patient data objects
based on the first transformation data rule to generate a first
transformed plurality of patient data objects in a second data
format used by the first third party organization;
transforming, from the first data format, by the patient
data provider server, the second filtered plurality of patient data
objects based on the second transformation data rule to generate
a second transformed plurality of patient data objects in a third
data format used by the second third party organization, the
second and third data formats being different from each other
and the first data format; and
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providing, over a network, the first transformed plurality
of patient data objects to at least one device associated with the
first third party organization based on the first transformation
data rule received from the first third party organization, and the
second transformed plurality of patient data objects to at least
one device associated with the second third party organization
based on the second transformation data rule received from the
second third party organization.
In other words, the abstract mental process of providing aggregated
data includes the entirety of representative claim 1, except for the particular
hardware and software recited—i.e., at least one healthcare data system, a
patient interfacing healthcare device, data objects, a patient data server, a
first third party organization, a second third party organization, a network, at
least one device associated with the first third party organization, and at least
one device associated with the second third party organization. Guidance,
84 Fed. Reg. at 52 (describing the mental processes grouping of abstract
ideas as concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).
Appellant argues that the claims are not merely a mental process
because they recite features that “cannot be performed in the human mind,
and are not an observation, evaluation, judgement, or an opinion.” Appeal
Br. 14–15. More specifically, Appellant asserts that “generating data objects
cannot be performed in the human mind, and neither can a server receiving
different transformation rules from different organizations, or providing
transformed data objects to the different organizations over a network.”
Reply Br. 2.
We disagree. “If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
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cannot practically be performed in the mind.” Guidance, 84 Fed. Reg. at 52
n.14. As identified above, the claims recite a plurality of computing
elements for performing the recited steps, but we find no evidence that these
elements or the steps they perform require anything more than generic
computing technology. In other words, “with the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.” Symantec, 838 F.3d at 1318. Nor does Appellant present any
persuasive evidence that any of the underlying claim steps cannot practically
be performed in the human mind or with pen and paper. See Ans. 3–4.
Therefore, we determine that the claims belong in the mental processes
category.
Guidance Step 2A, Prong 2 (Integrate Into a Practical Application)
Because the claims recite an abstract idea, we next determine whether
the claims integrate the abstract idea into a practical application. Guidance,
84 Fed. Reg. at 54. To determine whether the judicial exception is
integrated into a practical application, we identify whether there are “any
additional elements recited in the claim beyond the judicial exception(s)”
and evaluate those elements to determine whether they integrate the judicial
exception into a recognized practical application. Guidance, 84 Fed. Reg. at
54–55 (emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018).
As noted above, the portions of representative claim 1 not italicized—
at least one healthcare data system, a patient interfacing healthcare device,
data objects, a patient data server, a first third party organization, a second
third party organization, a network, at least one device associated with the
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first third party organization, and at least one device associated with the
second third party organization—are the additional limitations recited in the
claim beyond the abstract idea. Here, we find the additional limitations do
not integrate the judicial exception into a practical application. More
particularly, we find the claims do not recite (i) an improvement to the
functionality of a computer or other technology or technical field (see MPEP
§ 2106.05(a)); (ii) a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See also Guidance, 84 Fed.
Reg. at 55.
The Examiner determines the additional limitations of the claim,
“when considered both individually and as an ordered combination[,] do not
amount to significantly more than the abstract idea,” but instead reflect steps
performed on “generic hardware computers.” Final Act. 3 (citing Spec.
¶¶ 23–25). For example, the Examiner points out that the claim recites a
particular function of a “healthcare device,” but “the particulars of the
device are not recited nor are any special functions called out.” Final Act. 3.
The Examiner explains further that “[t]here is no indication that the
additional limitations alone or in combination improves the functioning of a
computer or any other technology.” Final Act. 3–4; see also Ans. 4, 6.
We agree and adopt the Examiner’s findings and determinations with
respect to Prong 2. We respond to Appellant’s specific Prong 2 arguments
below.
Appellant argues the recited features of claim 1 “form a practical
application” and “involve a real world technical solution to the problem of
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providing aggregated patient data to multiple healthcare data systems
without improper disclosure of sensitive data to those not authorized.”
Appeal Br. 16; see also Reply Br. 2–4. Appellant asserts that “the
improvement is to the technology of providing patient data,” noting that its
invention relates to “big data.” Reply Br. 2. Appellant explains that the
claims “provide an improvement in how (aggregated) patient data is
provided to multiple healthcare data systems, specifically, without improper
disclosure of sensitive data to those not authorized, and in a manner specific
for each healthcare data system.” Reply Br. 2.
This argument is not persuasive. The Specification describes
Appellant’s invention as addressing a problem in which “the third party
payer may be unable to implement programs/interventions while the patient
is receiving treatment that may improve the patient’s outcome and,
consequently, may reduce the costs incurred by the third party payer.” Spec.
¶ 2. The Specification describes further that “[t]he subject system maps,
transforms, and/or normalizes the patient information into data structures
that are accessible by the third party organization,” such that “[t]he patient
information may be provided to the third party organizations in a format that
allows the third party organization to integrate the patient information into
their own systems or other systems.” Spec. ¶ 16. The Specification
additionally describes “data functions applied to the patient data objects . . .
to identify ventilated patients in a timely manner that have specific events
that may increase their risk for poor outcomes post discharge, e.g. so that
programs/intervention can be implemented to improve related outcomes.”
Spec. ¶ 45, see also id. ¶¶ 46–47 (describing similar data functions for
tracking patients with other health situations).
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But we do not find the requisite level of detail in the claims or the
Specification to show how an existing technological problem is overcome,
or that the computer and software technologies used to perform Appellant’s
invention are an improvement over existing technologies. Similarly, the
Federal Circuit found in Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1342 (2017)—about an invention that purportedly
“allow[ed] the user to view and update XML documents in different formats,
and . . . manipulate the data and perform actions without programming
skills”:
[T]he claims do not recite particular features to yield these
advantages. Although the claims purport to modify the
underlying XML document in response to modifications made in
the dynamic document, this merely reiterates the patent’s stated
goal itself. Nothing in the claims indicate what steps are
undertaken to overcome the stated incompatibility problems with
XML documents to propagate those modifications into the XML
document. Indeed, the claim language here provides only a
result-oriented solution, with insufficient detail for how a
computer accomplishes it. Our law demands more.
Intellectual Ventures I, 850 F.3d at 1342. Beyond that, Appellant suggests
that its invention involves “big data,” but the Examiner explains that “the
specification does not include a technical explanation as to how to
implement the invention, and the claims . . . reflect . . . an improvement to
the method of aggregating patient data and not an improvement to
technology.” Ans. 4. Indeed, the problem Appellant’s invention aims to
solve is rooted not in any technology itself, but in the organization,
management, and accessibility of data to improve patient outcomes.
And, even though the claims may recite specific elements that explain
how to “aggregate[e],” “filter[],” and “transform” patient data, these are not
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additional technological elements, but rather part of the recited abstract idea.
While they may narrow the recited abstract idea or limit it to a particular
field of use, that does not change our overall understanding of the claims
and, thus, does not render the claims non-abstract. See Guidance, 84 Fed.
Reg. at 55, id. n.32; see also, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716 (Fed. Cir. 2014) (determining that even though “some of the eleven
steps were not previously employed in this art,” that was “not enough—
standing alone—to confer patent eligibility upon the claims at issue.”).
Likewise, the claim’s recitation of various computer and software elements
merely links the recited abstract idea to a known technological environment.
See Guidance, 84 Fed. Reg. at 55 n.32.
Appellant argues further that claim 1 recites “an additional element
[that] effects a transformation or reduction of a particular article to a
different state or thing.” Appeal Br. 16. In particular, Appellant asserts that
“the claimed transformations mean more than simply using existing data or
changing the location of the data” because they “change data objects to a
different state or thing,” such that “new data objects are created/generated
based on different rules and with different data,” and they “change the
format of the data for specific third part [sic] organizations, such that each
organization receives an individualized transformation.” Appeal Br. 16;
Reply Br. 3.
We disagree with Appellant that claim 1 recites a transformation of a
particular article into a different state or thing. While claim 1 describes
transforming data objects from one format into new data objects of another
format based on a transformation rule (see, e.g., Claim 1, Spec. ¶ 42), the
resulting new data objects—although in a different format—are still data
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objects. We find no evidence that the new data objects are a representation
of a physical or tangible object, or some other different article or thing that
might show a transformation. See, e.g., In re Abele, 684 F.2d 902, 908–09
(CCPA 1982). Nor does the claim or the Specification show a specific
structure or specific implementation for performing the transformation steps
beyond the capabilities of a generic computer that might impose meaningful
limits on the claim. Rather, claim 1’s transformation steps are merely
generalized directives to use generic computing technology to implement a
rule-based formula. And though the claim may operate on and manipulate
data in a particular way, this is not evidence of a technological advance, but
instead the manipulation or reorganization of data, which fails to transform
an otherwise patent-ineligible concept into an eligible one. See
CyberSource, 654 F.3d at 1375. Similarly, in HealthTrio, the court held
that claims for transforming data collected from various sources with
disparate formats into an integrated format were patent-ineligible because
they “amount[ed] to nothing significantly more than an instruction to apply
the abstract idea of [normalizing data from different sources] using some
unspecified, generic computer.” HealthTrio, 2015 WL 5675303 at *3.
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application. Accordingly, the claims are
directed to an abstract idea.
Guidance Step 2B (Inventive Concept/Significantly More)
Because we determine representative claim 1 is directed to an abstract
idea or combination of abstract ideas, we evaluate whether the claims
provide an inventive concept. See Guidance, 84 Fed. Reg. at 56. As stated
in the Guidance, many of the considerations to determine whether the claims
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amount to “significantly more” under step two of the Alice framework
already are considered as part of determining whether the judicial exception
has been integrated into a practical application. Guidance, 84 Fed. Reg. at
56. Thus, at this point of the analysis, we determine whether the claims
(1) add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or (2) simply append
well-understood, routine, conventional activities at a high level of generality.
Guidance, 84 Fed. Reg. at 56.
The Examiner finds that claim 1’s “additional technological hardware
and software elements are . . . considered to be routine, well-understood and
conventional computer/technical functions recited and claimed at a high
level of generality.” Final Act. 4. The Examiner explains that claim 1’s
“computer is recited at a high level of generality and recited as performing
generic computer functions routinely used in computer applications such as
receiving and providing.” Final Act. 3. The Examiner explains further that
the additional elements’ “collective functions merely provide conventional
computer implementation,” and “[t]he newly added limitations on data
filtering and data transforming are routine, well-understood and
conventional computer/technical functions.” Final Act. 4.
We agree with the Examiner’s finding that the additional elements of
claim 1 were well-understood, routine, and conventional. See Final Act.
3– 4. The Examiner provides adequate supporting evidence (see Berkheimer
Memorandum 3–45) for this finding by citing both the Specification and case

5 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum titled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
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law. See Final Act. 3–4 (citing Spec. ¶¶ 23–25; MPEP § 2106.05(d)(II);
Symantec, 838 F.3d at 1321; Alice, 573 U.S. at 225; Versata Dev. Grp., Inc.
v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1348
(Fed. Cir. 2014)); accord Spec. ¶¶ 20–31, 57–73, Figs. 1, 2, 5–7 (disclosing
the computer and software technology for implementing Appellant’s
invention in no more than generic terms).
Appellant argues that “[t]he Final Rejection does not explain or show
how the elements of the instant claims (including the foregoing features) are
prevalent or in common use within the medical industry or the industry of
providing patient data to external systems.” Appeal Br. 17; see also Reply
Br. 3. This argument is not persuasive because it covers the abstract idea
recited in the claim, whereas only the additional limitations beyond the
abstract idea (for example, computer- and software-based limitations) are
subject to the “well-understood, routine, and conventional” inquiry. And as
discussed above, the Examiner has adequately shown that these additional
limitations were well-understood, routine, and conventional.

Decision (Berkheimer v. HP, Inc.) (“the Berkheimer Memorandum”)
(discussing the Berkheimer decision, Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018)) (available at https://www.uspto.gov/sites/default/files/
documents/memo-berkheimer-20180419.PDF). Support for a finding that an
element was well-understood, routine, or conventional may be shown by
citation to one or more court decisions noting the well-understood, routine,
conventional nature of the element(s). Berkheimer Memorandum at 4.
Additionally, a specification that describes additional elements “in a manner
that indicates that the additional elements are sufficiently well-known that
the specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well-
understood, routine, and conventional. Berkheimer Memorandum at 3.
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Nor does considering the additional limitations of claim 1 as an
ordered combination provide an inventive concept. The Federal Circuit has
held, under step two of the Alice framework, that a “non-conventional and
non-generic arrangement of known, conventional pieces” can provide an
inventive concept for a claim otherwise directed to an abstract idea.
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016). In BASCOM, the court found the claims at
issue contained such an inventive arrangement through “the installation of a
filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user.” BASCOM, 827
F.3d at 1350. The court explained that “[b]y taking a prior art filter solution
(one-size-fits-all filter at the ISP server) and making it more dynamic and
efficient (providing individualized filtering at the ISP server), the claimed
invention represents a software-based invention[] that improve[s] the
performance of the computer system itself.” BASCOM, 827 F.3d at 1351
(internal quotations and citations omitted).
Even though claim 1 exhibits some similarities to the patent-eligible
claims in BASCOM, we find no evidence that the claim includes an inventive
concept like the one described there. Similar to the BASCOM claims, claim
1 describes customized formats for filtered data objects based on
transformation rules provided by, and specific to, a particular end user—a
third-party organization. Claim 1 also describes the installation of a filtering
tool at a specific location remote from the end user because the patient data
provider server filters data objects and reformats the filtered data objects
remote from the third-party organization user devices and servers. See, e.g.,
Fig. 1, item 110. But Appellant does not identify—nor do we find—any
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persuasive evidence of an underlying inventive concept specific to a
particular technology. First, as discussed above, the Specification describes
the problem facing Appellant as one relating to the organization and
management of data, irrespective of any particular technology. See, e.g.,
Spec. ¶ 2. Second, although the Specification describes how the third party
organization may provide the patient provider server with various rules for
reformatting the aggregated and filtered patient data, neither the claims nor
Specification describe an improvement in the performance of the computer
system itself or any other technology. See, e.g., Spec. ¶¶ 16, 36, 39, 42
(describing Appellant’s system and method, without specifying what the
technological improvement is). And third, even if the technological
elements recited in claim 1 and in the BASCOM claims were analogous,
Appellant filed its claims more than a decade after the BASCOM claims
issued. Compare U.S. Patent Application Publication No. 2015/0006201,
code (43) (published Jan. 1, 2015, “Pait”), with U.S. Patent No. 5,987,606,
code (45) (issued Nov. 16, 1999, “Cirasole”). This fact weighs against a
determination that Appellant’s claimed computing system, including its
remote server for providing third-party specific data filtering and
reformatting, recites a “non-conventional and non-generic arrangement” that
provides an inventive concept.
Beyond that, there are noticeable procedural differences between
BASCOM and the appeal before us. First, BASCOM was an inter partes
litigation dispute over an issued patent—it was not an ex parte appeal of a
patent application, as is the case here. Issued patents enjoy the presumption
of validity (including subject matter eligibility); patent applications before
the Office do not. 35 U.S.C. § 282; In re Etter, 756 F.2d 852, 856 (Fed. Cir.
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1985) (“[T]he presumption [of validity] is operative to govern procedure in
litigation involving validity of an issued patent. A statute setting rules of
procedure and assigning burdens to litigants in a court trial does not
automatically become applicable to proceedings before the PTO.”). Second,
because BASCOM involved an appeal from the grant of a motion to dismiss
BASCOM’s complaint, which alleged that AT&T infringed BASCOM’s
patent, the claims were “construed in favor of BASCOM[,] as they must be
in [that] procedural posture.” BASCOM, 827 F.3d at 1353. The procedural
posture here, however—an ex parte appeal of the Examiner’s decision to
reject Appellant’s patent application—does not compel us to construe the
claims in favor of Appellant, lest we “abandon our role as impartial and
unbiased judges.” Spalding v. Pope, No. 104,699, 2002 WL 35632760, at
*5 (BPAI 2002).
For the reasons discussed above, we sustain the Examiner’s rejection
of claims 1–4, 6, 8–14, 16–22, and 24–29 under 35 U.S.C. § 101. See 37
C.F.R. § 41.37(c)(1)(iv).
REJECTIONS UNDER 35 U.S.C. § 103
The Examiner rejects claims 1–4, 6, 8–14, 16–22, and 24–29 as
obvious in view of Zaleski, Erickson, Bishop, and Farooq. Final Act. 4–19.
For the reasons discussed below, we are persuaded of Examiner error.
Of particular relevance to this Appeal, the Examiner finds: (1) Zaleski
teaches a system that may be controlled by a user to apply specific
algorithms or mappings to patient data, including the filtering of patient data
objects to generate a filtered plurality of patient data, Final Act. 6 (citing
Zaleski ¶ 30), 10; and (2) Erickson teaches a patient database in which third
parties are sold patient data in the database, access to data is restricted based
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on privacy “access privileges” of third parties, and data encryption is
optimized based on intended use, Final Act. 9 (citing Erickson ¶¶ 33, 41),
10.
Zaleski describes a system for automatic workflow control to support
clinical decision-making. Zaleski ¶ 3. Zaleski’s system is
built upon patient accounting and clinical data, accompanying
methodology, and embedded analytical functions for providing
investigators, such as physicians, with feedback on orders
written on patients in order to characterize the degree to which
patients within their care are being treated in a manner similar to
other patients receiving the same or similar diagnoses.
Zaleski ¶ 18.
In a disclosed embodiment, data representing an order
associated with treatment of a patient medical condition may be
received from a source and interpreted to determine search criteria for
identifying records related to the condition. Zaleski ¶ 30. A database
of patient medical records may then be searched based on the search
criteria, and a search result containing information about different
treatments previously employed for treating the condition may be
provided to the source. Zaleski ¶ 30.
Erickson describes methods and apparatus for performing
de-identification on electronic dataset records to produce a resulting dataset
that contains as much information as possible while minimizing the risk of
re-identifying an individual in the dataset. Erickson ¶ 11.
According to one embodiment of Erickson, a de-identification method
begins by extracting a sample record set from datasets input by the system
operator, pre-filtering the data to limit the number of restricted fields, and
rank-ordering the fields in the dataset according to perceived importance for
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the end-user. Erickson ¶¶ 11, 42–44, Fig. 1 (steps 102, 104, 106). The de-
identification method continues by defining a k-anonymity value (“k-
value”), which means that for every unique record there must be a total of at
least k records with exactly the same field values. Erickson ¶¶ 8, 44, Fig. 1
(step 107). The k-value may be set manually by the operator or
administrator or determined from publicly available or commercial reference
databases. Erickson ¶¶ 49, 52. In addition, the k-value may be set based on
the intended use of the data, such that a higher k-value may be required for
medical and psychological data, whereas a lower k-value may suffice for
income level and consumer preference data. Erickson ¶¶ 41, 49, 52. In
other words, “different data categories may require different pre-defined
k-values.” Erickson ¶ 44. After defining the k-value, the pre-filtered data is
screened for potentially identifiable records within the given k-value.
Erickson ¶ 44, Fig. 1 (step 108). The process then identifies and scrubs
(deletes, truncates, or encrypts) data elements in the least significant fields
that run the risk of re-identifying the patients. Erickson ¶ 45, Fig. 1 (step
110). In other words, the de-identification device prioritizes results
occurring with a frequency greater than or equal to k, while scrubbing
individual results occurring with a frequency less than k. Erickson ¶ 37.
The scrubbed data, having been encrypted and stored, may be decrypted and
restored later, for example, when the aggregate k-anonymity level meets the
minimum threshold. Erickson ¶¶ 37, 40. The process then creates an output
dataset identical to the input dataset except for the scrubbed elements, to
achieve the pre-selected k-anonymity. Erickson ¶ 46, Fig. 1 (step 112).
Subsequently, statistical analysis may be performed (for example, on records
or data elements failing to meet k-anonymity), and the output dataset’s level
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of compliance with privacy regulations may be documented. Erickson
¶¶ 47–48, Fig. 1 (steps 114, 116).
Erickson also describes an example in which a data clearinghouse
may use the de-identification software on personal claims data that is being
sold to pharmaceutical companies for marketing research. Erickson ¶ 33.
Erickson explains that the clearinghouse may sell the data in a continuous
stream while providing information to the de-identification software based
on all data streamed over a period of time, so that de-identification can be
based on a much larger number of records without having to withhold those
records from sale. Erickson ¶ 33. Erickson notes that the pharmaceutical
companies receiving the de-identified data stream could recover data
removed through encryption early in the stream as additional data pass
through sufficient to render the removed data no longer identifying.
Erickson ¶ 33.
The Examiner finds that, in combination, Zaleski and Erickson teach
or suggest the “filtering” step, which recites:
filtering the plurality of patient data objects to generate a first
filtered plurality of patient data objects with the patient
identifying information replaced with patient unidentifiable data,
and a second filtered plurality of patient data objects without the
patient identifying information replaced, based at least in part on
predetermined access privileges of a first third party organization
and a second third party organization, respectively.
Final Act. 9–11. The Examiner explains that “[i]t would have been
obvious to one of ordinary skill in the art at the time of filing to allow
third parties to access the database of Zaleski with access privileges to
protect privacy. . . [,] with predictable results and resulting in an
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improved system.” Final Act. 10. The Examiner explains further as
follows:
Since Erickson teaches selecting different rules (k-anonymity
values) to apply based on intended use, Erickson teaches that the
intended use of the data must be conveyed to the data
clearinghouse. It is within the scope of Erickson that one rule
could un-identify the patient data while the second rule would
not un-identify the patient data (Erickson: Section [0041]). It
would have been obvious to one of ordinary skill in the art to
substitute the rule to be applied (k-anonymity value) instead of
the intended use of the data with the motivation of allowing the
company to keep secret their intended use and protect the
company’s privacy.
Final Act. 10–11.
Appellant argues the Examiner’s proposed combination of prior art
teachings is erroneous. Appeal Br. 18–22. In relevant part, Appellant
argues that the cited portions of Erickson do not disclose or suggest
“generat[ing] a first filtered plurality of patient data objects . . . and a second
filtered plurality of data objects . . . based at least in part on predetermined
access privileges of a first third party organization and a second third party
organization, respectively,” as recited in claim 1. Appeal Br. 18. Rather,
according to Appellant, the cited portions of Erickson, at most, disclose
“collect[ing] statistics on those records presenting a risk to the patients’
privacy (i.e., risk of re-identification) and output[ting] a copy of the dataset
with those values truncated (or ‘scrubbed’ (sic)).” Appeal Br. 18 (citing
Erickson ¶ 40 (internal quotations omitted)).
Appellant argues further that even if (1) Erickson’s “disclosed
k-values could be construed as rules and that Erickson could be extended to
having two different rules,” (2) “the Final Rejection could bend the
disclosure of [Zaleski and Erickson] far enough to suggest access privileges
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and controlling rules (which it cannot),” and (3) “something must be
conveyed to a clearinghouse or . . . data could be identified or un-identified,”
then the above features of claim 1 still would not be suggested. Appeal Br.
18–20.
In response to Appellant’s arguments, the Examiner finds:
[T]his feature in Erickson of selectively identifying and
de-identifying data based on intended use (i.e. based on the
identity of the recipient organization) is set forth in Erickson
(Section [0041]) and this feature can be implemented in a wide
variety of embodiments and variations. It is not clear how the
“filtering” and “transforming” steps in the instant claims set
differ or are distinct from this broad disclosure in Erickson.
Ans. 7. Appellant responds that “referencing disclosure that a particular
feature or features ‘can be implemented in a wide variety of embodiments
and variations’ does not establish a prima facie case that the disclosed
feature or features would have been obvious in view of that disclosure.”
Reply Br. 4. We are persuaded of Examiner error.
In particular, we determine that the Examiner erred in finding
Erickson’s de-identification method of filtering datasets based on a k-value
teaches or suggests “filtering . . . based . . . on predetermined access
privileges of a first third party organization and a second third party
organization, respectively.” Appellant’s Specification describes examples of
“predetermined access privileges” of a requesting third party organization as
including (1) a third party organization providing “a list of patients for
which the third party organization is authorized to access patient
information” or (2) associating patient data objects with a third party
organization’s identifier. Spec. ¶¶ 39–40. By contrast, Erickson’s k-value
does not correspond to “predetermined access privileges” of one or more
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third party organizations. Rather, in Erickson, the k-value is defined based
on the characteristics or intended use of the input data, irrespective of the
end-user. See, e.g., Erickson ¶¶ 40–41, 50, Fig. 2 (step 211). For example,
Erickson discloses that the k-value can be defined based on the intended use
of the data, with a higher k-value defined for medical and psychological
data, and lower k-value defined for income level and consumer preference
data. Erickson ¶ 41. The pre-defined k-value also may be decreased if a
re-identification risk decreases after the addition of data. Erickson ¶¶ 40, 50,
Fig. 2 (step 211).
The Examiner therefore may be correct that the cited disclosures of
Erickson suggest the first part of the filtering limitation—“filtering the
plurality of patient data objects to generate a first filtered plurality of patient
data objects with the patient identifying information replaced with patient
unidentifiable data, and a second filtered plurality of patient data objects
without the patient identifying information replaced.” But the Examiner has
not adequately shown that the cited disclosures of Erickson teach or suggest
the second part of the filtering limitation—that Erickson’s de-identification
method of filtering datasets based on a k-value teaches or suggests “filtering
. . . based at least in part on predetermined access privileges of a first third
party organization and a second third party organization, respectively,” as
recited in claim 1, and commensurately recited in claims 13 and 18. Nor has
the Examiner provided an additional finding (for example, in Zaleski,
Bishop, or Farooq) or a rationale that fills the gaps in Erickson. See Final
Act. 5–19. We decline to resort to speculation to fill the gaps in the
Examiner’s rejection. See Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI
1999).
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For these reasons, we agree with Appellant and we do not sustain the
rejection of independent claim 1 or the rejection of independent claims 13
and 18, which recite a commensurate limitation. Nor do we sustain the
rejection of the dependent claims because (1) each dependent claim
ultimately depends from one of claims 1, 13, and 18 and, therefore,
incorporates the disputed filtering step, and (2) the Examiner does not find
any of the additionally cited references cures this deficiency.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. §
References /
Basis Affirmed Reversed
1–4, 6, 8–14,
16–22, 24–29 101 Eligibility
1–4, 6, 8–14,
16–22, 24–29
1–4, 6, 8–14,
16–22, 24–29 103
Zaleski, Erickson,
Bishop, Farooq
1–4, 6, 8–
14, 16–22,
24–29
Overall
Outcome
1–4, 6, 8–14,
16–22, 24–29

Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED