Contreras, David et al.

Patent Trials and Appeals Board

Dec 20, 2019

14507919 - (D) (P.T.A.B. Dec. 20, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/507,919 10/07/2014 David Contreras AUS920140304US1 8872
50170 7590 12/20/2019
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
1701 N. COLLINS BLVD.
SUITE 2100
RICHARDSON, TX 75080
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
12/20/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID CONTRERAS, ROBERT C. SIZEMORE, and
STERLING R. SMITH
____________

Appeal 2019-002601
Application 14/507,919
Technology Center 3600
____________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal1,2 under 35 U.S.C. § 134(a) involving claims to
software for implicit duration calculations and similarity comparisons in
question answering systems. The Examiner rejected the claims as reciting
non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the Real Party in Interest as International Business
Machines Corporation (see Appeal Br. 2).
2 We have considered and herein refer to the Specification of Oct. 7, 2014
(“Spec.”); Final Office Action of Apr. 2, 2018 (“Final Act.”); Appeal Brief of
Sept. 4, 2018 (“Appeal Br.”); Examiner’s Answer of Dec. 12, 2018 (“Ans.”);
and Reply Brief of Feb. 12, 2019 (“Reply Br.”).
Appeal 2019-002601
Application 14/507,919

2

We affirm.
Statement of the Case
Background
“[H]umans are currently inundated and overwhelmed with the amount
of information available to them . . . QA [Question and Answer] systems
provide automated mechanisms for searching through large sets of sources of
content, e.g., electronic documents, and analyze them with regard to an input
question” (Spec. ¶ 2). “For example, in the medical domain, doctors often
make clinical notes regarding the patients that they treat . . . . While there are
explicit dates/times associated with such notes, durations are not generally
explicitly stated in such documents” (id. ¶ 15). “However, durations may be
important to know in order to make [medical] decisions” (id.). The
Specification teaches “automated mechanisms for analyzing dates/times in
different portions of one or more documents, as well as their associated text,
utilizing natural language processing techniques, to calculate implicit
durations in the documents” (id. ¶ 17).
The Claims
Claims 11–17 and 20–28 are on appeal. Independent claim 11 is
representative and reads as follows:
11. A computer program product comprising a computer
readable storage medium having a computer readable program
stored therein, wherein the computer readable program
comprises instructions, which when executed on a processor of a
computing device, causes the computing device to implement a
question answering system which operates for performing a
duration-based operation, wherein the computer readable
program causes the computing device to:
receive, by the question answering system, an input
question from a requesting user in a natural language form,
wherein the question is related to a medical treatment or
Appeal 2019-002601
Application 14/507,919

3

medical condition;
receive, by an implicit duration engine executing within
the question answering system, at least one medical document
having a plurality of associated dates and/or times and medical
concepts associated with the dates and/or times, wherein the at
least one medical document does not explicitly specify a duration
between the dates and/or times medical concepts;
identify one or more similar medical concepts from the
medical concepts in the at least one medical document, wherein
the similar medical concept are determined to be similar based
on a predetermined degree of similarity;
correlate, by implicit duration analysis logic executing
within the implicit duration engine, the dates and/or times
associated with the identified one or more similar concepts in the
at least one medical document;
calculate, by implicit duration comparison logic executing
within the implicit duration engine, for the correlated dates
and/or times, an implicit duration for each similar medical
concept based on the dates and/or times, wherein the implicit
duration for each similar medical concept is implicit in the at
least one medical document but not explicitly specified in the at
least one medical document;
associate, by the implicit duration comparison logic, each
similar medical concept with its corresponding implicit duration;
annotate, by implicit duration annotation logic executing
within the implicit duration engine, each document in the at least
one medical document with an implicit duration annotation that
specifies the implicit duration for each similar medical concept
identified in the at least one medical document;
generate, by the question answering system, a plurality of
candidate answers to the input question, wherein the generation
comprises accessing a knowledgebase of answers to determine
the plurality of candidate answers corresponding to the question,
wherein each candidate answer has an associated one or more
duration criteria;
score the plurality of candidate answers to achieve one or
more candidate answers meeting a predetermined scoring
threshold;
modify, by a hypothesis and evidence scoring stage of the
Appeal 2019-002601
Application 14/507,919

4

question answering system, the scoring of the one or more
candidate answers for the input question based on a
correspondence between the implicit duration specified in the
implicit duration annotation for each concept and the one or more
duration criteria associated with the one or more candidate
answers;
rank, by a final confidence merging and ranking stage of
the question answering system, the one or more candidate
answers based on the modified scoring to form a ranked set of
candidate answers; and
present, by the question answering system, the ranked set
of candidate answers to the requesting user.

The Rejection
The Examiner rejected claims 11–17 and 20–28 under 35 U.S.C. § 101
as directed to an abstract idea (Final Act. 2–7).
The Examiner finds the claims are
analogous to the court-identified abstract idea(s) of (1) receiving
information, characterizing the information based on identifiers,
and communicating the characterization or (2) collecting
information, analyzing it, and displaying certain results of the
collection and analysis and do not, when either view[ed] alone or
in an ordered combination, add anything significantly more than
the abstract idea(s).
(Final Act. 7).
Appellant contends “the present claims recite an improvement to
computer-related technology with regard to performing duration-based
operations in a question answering, system. This is not simply an
abstract idea, but is an improvement rooted in computer technology and
directed to solving a problem in the software arts” (Appeal Br. 6–7).
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
Appeal 2019-002601
Application 14/507,919

5

machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However,
the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and therefore patent
ineligible, include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611) and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second step
of the Alice and Mayo framework, where “we must examine the elements of
Appeal 2019-002601
Application 14/507,919

6

the claim to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.” Alice,
573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract
idea must include ‘additional features’ to ensure ‘that the [claim] is more than
a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting
Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The United States Patent and Trademark Office published revised
guidance on the application of 35 U.S.C. § 101. USPTO’s 2019 Revised
Patent Subject Matter Eligibility Guidance (“Revised Guidance”).3 Under the
Guidance, in determining what concept the claim is “directed to,” we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Revised Guidance Step 2A, Prong
1); and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)) (Revised Guidance Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, do we then look to whether the
claim contains an “‘inventive concept’ sufficient to ‘transform’” the claimed
judicial exception into a patent-eligible application of the judicial exception.

3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–
57 (January 7, 2019).
Appeal 2019-002601
Application 14/507,919

7

Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 82). In so doing, we thus
consider whether the claim:
(3) adds a specific limitation beyond the judicial exception
that are not “well-understood, routine and conventional in the
field” (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
(Revised Guidance Step 2B). See Guidance, 84 Fed. Reg. at 54–56.

Analysis
Applying the Revised Guidance to the facts on this record, we find that
Appellant’s claims 11–17 and 20–28 are directed to patent-ineligible subject
matter. Because the same issues are present in each of the claims, we focus
our consideration on representative claim 11. The same analysis applied
below to claim 11 also applies to the other rejected claims.
A. Revised Guidance Step 2A, Prong 1
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human behavior such as fundamental economic practices, and (3)
mental processes.
Claim 11 reasonably falls within one of the three of the judicially-
excepted groupings listed in the Revised Guidance: mental processes of
determining durations in medical records.
The Federal Circuit has “recognize[d] that defining the precise abstract
Appeal 2019-002601
Application 14/507,919

8

idea of patent claims in many cases is far from a ‘straightforward’ exercise.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150 (Fed. Cir.
2016). However, “we continue to ‘treat[] analyzing information by steps
people [could] go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.’” Id. at 1146. The Federal Circuit has recognized that “a claim for
a new abstract idea is still an abstract idea.” Id. at 1151. It is well established
that mental processes are abstract ideas. CyberSource instructs that “a method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under § 101.” CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373, 1375 (Fed. Cir. 2011) (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”).
Claim 11 implements on a machine the types of mental analyses
performed by a physician considering a patient’s medical records. Indeed, we
determine “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.” Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). In particular, the
physician, in considering medical treatments, reviews medical documents in
natural language form for medical concepts such as symptoms, drugs or
procedures, and/or test results, and determines the duration of time between
medical events in the patient’s record to determine what further treatment, if
any, is required by the patient based on the medical concepts and the times
between activities. The physician may have varying levels of confidence in
the diagnosis, depending upon the particular fact pattern. As a simple
Appeal 2019-002601
Application 14/507,919

9

example, an OB/Gyn who reviews a patient’s positive pregnancy test would
reasonably expect that within about 40 weeks, a hospital visit for delivery of
a newborn would be necessary, with reasonably high confidence. Indeed,
Appellant acknowledges that a “human has the ability to intuit implicit
durations in documents without the durations being implicitly indicated”
(Appeal Br. 12). “Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention could
be performed via pen and paper or in a person’s mind.” Versata Dev. Grp. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015).
This understanding of claim 11 is consistent with the Specification,
which teaches that “the mechanisms operate on documents that are patient
medical histories and medical policy documents” (Spec. ¶ 20). The
Specification explains that “the QA system operates to analyze an input
question and generate a final response” where “user inputs, via a user
interface, an input question for which the user wishes to obtain an answer”
(id. ¶ 60). The next step “parses the input question using natural language
processing (NLP) techniques to extract major features” following which the
“queries are applied to one or more databases storing information” (id.
¶¶ 60, 62). Then “algorithms of various complexity may be used to generate
scores for candidate answers and evidence” (id. ¶ 67).
We find the instant claims similar to those in SmartGene, where the
Federal Circuit held that claims directed to “comparing new and stored
information and using rules to identify medical options” did not satisfy Alice
step one. See SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F.
App’x 950, 951–52, 955–56 (Fed. Cir. 2014) (nonprecedential). As in
SmartGene, the instantly claimed steps do not rely on an inventive device or
Appeal 2019-002601
Application 14/507,919

10

technique for obtaining or displaying medical information, but rather recite
undefined algorithms for mathematically manipulating naturally occurring
data. See id. at 954 (holding claims were patent ineligible because they did
“no more than call on a ‘computing device,’ with basic functionality for
comparing stored and input data and rules, to do what doctors do routinely.”).
Here, the claims recite steps of a computer program for analyzing
medical information for specific durations and concepts within that
information, which people could go through in their minds to determine and
rank the most likely medical conditions, diagnoses, and then present those to
the patient, which is a mental process within the abstract-idea category.
Accordingly, we conclude that the steps of claim 11 recite the judicial
exceptions of mental processes.
B. Revised Guidance Step 2A, Prong 2
Having determined that the claims are directed to a judicial exception,
the Revised Guidance directs us to next consider whether the claims integrate
the judicial exception into a practical application. Revised Guidance Step 2A,
Prong 2. “[I]ntegration into a practical application” requires that the claim
recite an additional element or a combination of elements, that when
considered individually or in combination, “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.” Revised Guidance, 84 Fed. Reg. at 54.
We agree with the Examiner that a judicial exception is not integrated
into a practical application when the claims are drawn to the mere use of “a
computer as a tool to perform an abstract idea.” Revised Guidance, 84 Fed.
Reg. at 55; see Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
Appeal 2019-002601
Application 14/507,919

11

(Fed. Cir. 2016) (finding that “the focus of the claims is not on . . . an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools”); Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335–36 (Fed. Cir. 2016) (determining whether the claims at issue were
focused on a “specific asserted improvement in computer capabilities” or “a
process that qualifies as an ‘abstract idea’ for which computers are invoked
merely as a tool”).
Here, there is no practical integration of the abstract idea. Other than
the limitations directed to the abstract idea, discussed above, the invention is
claimed at a very high level of generality and relies upon standard computing
devices (see Spec. ¶ 54). We appreciate that simply because standard devices
are used is not solely dispositive of practical integration.
However, in addition to using standard computer technology, the
instant claims do not recite anything unconventional regarding the types of
“natural language” questions (see Spec. ¶ 66, “What was the first movie?”);
the types of medical documents being evaluated (see id. ¶ 15, “doctors often
make clinical notes regarding the patients that they treat”); the medical
concepts being identified (see id. ¶ 73, “resources 393 may comprise a
dictionary of medical terms/phrases, e.g., the terms ‘renal’, ‘autoimmune’,
‘carcinoma’, and a plethora of other terms/phrases in the medical domain”);
the algorithms used to determine and associate durations of the medical
information or the algorithms used for generating, ranking, and scoring the
information (see id. ¶ 38, “application of the queries using a variety of
reasoning algorithms. There may be hundreds or even thousands of reasoning
algorithms applied”). We note that the Specification does not clearly disclose
or provide specific algorithms from among the thousands that may be applied.
Appeal 2019-002601
Application 14/507,919

12

Moreover, the Specification acknowledges known prior art computer
based question answering systems such as “the IBM Watson™ QA system
[that] receives an input question which it then parses to extract the major
features of the question, that in turn are then used to formulate queries that are
applied to the corpus of data” (Spec. ¶ 47).
Thus, claim 11 does not recite elements that integrate the abstract idea
into a practical application that is more than the abstract idea itself. Instead,
the claims recite conventional components that are used to apply the abstract
algorithms.
Appellant contends the
Federal Circuit found that the claims in Enfish were not ones in
which general-purpose computer components are added after the
fact to a fundamental economic practice or mathematical
equation, but were directed to a specific implementation of a
solution to a problem in the software arts, and concluded that the
Enfish claims were thus not directed to an abstract idea (under
Step 2A).
(Appeal Br. 6). Appellant contends “the present claims recite an improvement
to computer-related technology with regard to performing duration-based
operations in a question answering, system” (id.).
We are unpersuaded by Appellant’s reliance on Enfish (see Appeal Br.
7). Enfish explains that “the first step in the Alice inquiry in this case asks
whether the focus of the claims is on the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract
idea’ for which computers are invoked merely as a tool.” Enfish, 822 F.3d at
1335–36. Applied to claim 11, the claimed software product does not teach a
technical improvement in a computer processor or even in a Question and
Answer software system, but rather uses the computer as a tool to perform
Appeal 2019-002601
Application 14/507,919

13

data analysis on medical data (see claim 11, Spec. ¶ 2 “QA systems provide
automated mechanisms for searching through large sets of sources of content,
e.g., electronic documents, and analyze them with regard to an input question
to determine an answer to the question and a confidence measure as to how
accurate an answer is for answering the input question.”) That is, the current
claims simply use the computer and software as tools to perform a mental
process routinely performed by a physician as discussed above. See Elec.
Power Grp., 830 F.3d at 1355 (“[M]erely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes.”)
Appellant also contends that in BASCOM “the CAFC held that the
claim limitations, taken as an ‘ordered combination’ under the second step of
the Alice/Mayo analysis, represent significantly more than the individual
abstract ideas and individual generic computing components and thus, are
sufficient for patent eligibility under 35 U.S.C. § 101” (Appeal Br. 7).
Appellant contends
the claims are directed to an ordered combination of elements
that set forth a technology-based solution to a computer-based
problem, namely at least one memory comprising instructions
which are executed by the at least one processor and configure
the processor to implement a question answering system for
categorizing a user providing a text input, the question answering
system executing a question answering pipeline on the at least
one processor of the data processing system, a question and
topic analysis stage of the question answering pipeline; and a
hypothesis generation stage of the question answering pipeline.
(Appeal Br. 8).
We are not persuaded by Appellant’s arguments. In BASCOM, the
Federal Circuit found the patent claimed “a technology-based solution (not an
Appeal 2019-002601
Application 14/507,919

14

abstract-idea-based solution implemented with generic technical components
in a conventional way) to filter content on the Internet that overcomes existing
problems with other Internet filtering systems.” BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016).
Unlike BASCOM, claim 11 recites an abstract-idea-based solution, i.e., a
mental process for analyzing medical data including time durations that uses
a computer, but does not indicate or identify any unconventional components
in the analysis, or indeed, any aspect that cannot be performed in the human
mind.
While Appellant states that the ordered combination is “significantly
more,” we are not persuaded that the evidence of record supports this position
because, as discussed above, the process is identical to that performed by an
ordinary physician analyzing patient records. As the Examiner points out
the problem of determining implicit durations in documents and
answering questions based on that implicit duration is not a
problem that was caused by the technological environment to
which the claim is confined. It was a problem that was in
existence prior to the computer and the computer is merely being
used as a tool to implement the abstract idea . . . .
(Ans. 5). Therefore, unlike BASCOM, the invention at issue is not “a
‘software-based invention[] that improve[s] the performance of the computer
system itself.’” BASCOM, 827 F.3d at 1351.
Appellant contends “while the claims in Finjan do not recite application
of the additional functionality, the instant claims go farther to recite the actual
application of the new functionality of the annotated documents” (Appeal Br.
9).
We find this argument unpersuasive because the claims in Finjan
“employ[] a new kind of file that enables a computer security system to do
Appeal 2019-002601
Application 14/507,919

15

things it could not do before. The security profile approach allows access to
be tailored for different users and ensures that threats are identified before a
file reaches a user’s computer.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d
1299, 1305 (Fed. Cir. 2018). Here, while the claims recite a specific abstract
idea implemented in software, that software does not alter the computer itself,
but rather falls into the category of methods “that can be performed by human
thought alone . . . and is not patent-eligible under
§ 101.” CyberSource, 654 F.3d at 1373, 1375 (“That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”).
Therefore, on this record, we conclude that the ineligible subject matter
in Appellant’s claim 11 is not integrated into a practical application.
C. Revised Guidance Step 2B
Having determined that the judicial exception is not integrated into a
practical application, the Revised Guidance requires us to evaluate the
additional elements individually and in combination to determine whether
they provide an inventive concept, such as a specific limitation beyond the
judicial exception that is not well-understood, routine, conventional in the
field, or simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to the
judicial exception. See Revised Guidance, 84 Fed. Reg. 51.
Appellant contends “that the claimed invention does improve the
computer itself, as the computer implements a question answering system
which operates for performing a duration-based operation and the claimed
invention improves the accuracy of the question answering system with
respect to duration-based operations” (Appeal Br. 11). Appellant contends
Appeal 2019-002601
Application 14/507,919

16

“the problem relates to computer understanding of implicit durations in
artificial intelligence (question answering). This problem could not have
existed prior to the computer. Also, this problem is specific to computer
artificial intelligence and not specific to the medical or business field” (id. at
12).
We find these arguments unpersuasive because the Federal Circuit has
“held that section 101 [does] not embrace a process defined simply as using a
computer to perform a series of mental steps that people, aware of each step,
can and regularly do perform in their heads.” SmartGene, 555 F. App’x at
954 (citing CyberSource, 654 F.3d at 1373). Appellant acknowledges that
“humans have the ability to use intuition to understand implicit durations”
(Appeal Br. 12). Thus, consistent with Appellant’s own statement, the process
of claim 11 is simply using a computer to perform mental steps that a human
can, and does perform.
In SmartGene, the claim at issue guided therapeutic treatment regimens
using knowledge bases with expert rules and other information. See
SmartGene, 555 F. App’x at 951–52. As in SmartGene, the instant “claim
does not purport to identify new computer hardware: it assumes the
availability of physical components for input, memory, look-up, comparison,
and output. Nor does it purport to identify any steps beyond those which
doctors routinely and consciously perform.” Id. at 955. “Whatever the
boundaries of the ‘abstract ideas’ category, the claim at issue here involves a
mental process excluded from section 101: the mental steps of comparing new
and stored information and using rules to identify medical options.” Id.
Moreover, in specifically addressing the issue of whether the claim
elements excluding the abstract idea of determining durations in medical
Appeal 2019-002601
Application 14/507,919

17

records are well-understood, routine, conventional in the field, the evidence
in the Specification itself demonstrates the routine nature of these elements.
The Specification establishes that question and answer (QA) systems were
well known (see Spec. ¶ 3); that electronic medical records including clinical
notes with duration information were known (see id. ¶ 18); that computers,
computer readable media, and computer components were well known (see
id. ¶¶ 25–27, 58); that algorithms for QA systems were well known including
scoring and ranking (see id. ¶¶ 38–39, 42–43, 47).
We therefore find that Appellant’s claims do not require anything other
than the use of conventional and well-understood techniques and equipment
to analyze medical records for duration information according to the recited
judicial exception. Accordingly, the preponderance of evidence of record
supports the Examiner’s finding that Appellant’s claimed invention is directed
to patent-ineligible subject matter. The rejection of the claims under 35
U.S.C. § 101 is affirmed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–17, 20–
28
101 Utility 11–17, 20–
28

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED