Dan Alloway et al.

Patent Trials and Appeals Board

Aug 27, 2019

14314174 - (D) (P.T.A.B. Aug. 27, 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.
14/314,174 06/25/2014 Dan Alloway 464.002.US1 8731
109785 7590 08/27/2019
Dunkiel Saunders Elliott Raubvogel & Hand
Justin W. McCabe
91 College St.
Burlington, VT 05401
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/27/2019 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):
ip@dunkielsaunders.com
jmccabe@dunkielsaunders.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAN ALLOWAY and ALAIN MOMDJOL1
____________

Appeal 2018-005201
Application 14/314,174
Technology Center 3600
____________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and
JAMES B. ARPIN, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–20, all the pending claims in the
present application (see Claims Appendix). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to providing an evidence based
treatment plan (see Abstract).

1Appellants name Systems4PT, LLC as the real party in interest (App. Br.
7).
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Independent claim 1, reproduced below, is representative of the
appealed claims:
l. A method for developing an evidence-based treatment
plan for a patient having functional deficits by executing a computer-
executable instructions stored on a non-transitory computer-readable
medium, the method comprising the steps of:
receiving, as inputs, a standardized outcome test (“SOT”)
data representative of the patient’s functional deficits and a diagnosis
category;
generating an SOT score based upon the SOT data;
accessing a database comprising a plurality of treatment
plans and a plurality of supporting documentation, wherein each of
the plurality of treatment plans is associated with:
a plan diagnosis category;
an average initial SOT score;
one or more output measures including an average
final SOT score and an average number of patient visits; and
an indicator of supporting documentation;
providing a list of ones of the plurality of treatment plans
where the plan diagnosis category corresponds to the diagnosis
category and where the average initial SOT score is similar to the
SOT score;
selecting, from the list, one of the plurality of treatment
plans based upon at least one of the one or more output measures and
the indicator of supporting documentation; and
generating an evidence based documentation statement
based upon the selecting, the evidence based documentation statement
being formulated from ones of the plurality of supporting
documentation associated with the selected treatment plan.

Appellants appeal the following rejection:
Claims 1–20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter (Final Act. 2–4).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
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(precedential).
ANALYSIS
Rejection under § 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.
However, the U.S. 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. 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 Court’s two-step framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with the 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.”). For example, concepts determined to be abstract ideas, and
thus 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); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
The USPTO has published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
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Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the
Revised Guidance “Step 2A,” the Office first looks 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, 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. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 1, and, similarly, system
claims 9 and 19, the Examiner determines that the claims are directed to
“organizing information through mathematical correlations and collecting
information, analyzing it, and displaying certain results of the collection and
analysis” (Final Act. 3) (emphasis omitted), which we conclude are mental
processes, which is a type of abstract idea. We also determine that the
claims recite certain methods of organizing human activity, as well as,
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mental processes. As such, for at least the following reasons, we are
persuaded that representative claim 1 recites plural abstract ideas.
The Specification discloses:
In an effort to improve patient care and reduce expenses and fraud,
payers have started requiring more detailed explanations and in some
cases, evidence-based documentation before they will submit payment
for a given medical treatment or service. Evidence-based
documentation details the treatment plan of care that will restore the
patient’s functional deficits, including supporting evidence that proves
that these positive outcomes will likely occur. Although evidence-
based documentation appears to be a reasonable request from the
payers perspective, this documentation shift has been an unwelcome
and stressful requirement for medical service providers. These
providers now have the burden of researching and finding evidence to
support each treatment plan they propose which takes a great deal of
time away from actually treating the patient.
Spec. ¶ 4.
A treatment plan effectiveness system (TPES) according to the
present disclosure allows for the receipt of information related to a
patient’s medical condition and the type and severity of the patient’s
functional deficits, and from that information provides one or more
treatment plans meeting predetermined criteria. The TPES can
provide an outcome focused analysis of available treatment plans
available for a given diagnosis and functional deficit set, with
statistical support, thus allowing a medical service provider to provide
better, more consistent, substantiated care. Outcomes, after or during
treatment plan administration, are added to TPES thereby enhancing
the useful knowledge available to medical service providers serving
future patients. A TPES according to the present disclosure can also
provide automated evidence based documentation in support of a
given treatment plan, facilitating treatment plan decision making or
for reimbursement. With the understanding that the universe of
treatment plans is not stagnant, the TPES can also allow for medical
service providers to alter existing plans to meet the needs of patients
and store information related to those altered plans for use by other
medical service providers.
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Id. at ¶ 11.
Claim 1 recites at least the following limitations: (1) “receiving . . .
SOT data,” (2) “generating an SOT score,” (3) “accessing a database . . . of
treatment plans and . . . supporting documentation,” (4) “providing a list . . .
of treatment plans,” (5) “selecting, from the list . . . one of the plurality of
treatment plans,” and (6) “generating an evidence based documentation
statement based upon the selecting.”
These limitations, under their broadest reasonable interpretation, at
least recite mental processes because the limitations all encompass acts
people can perform using their minds or pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person's mind.”); see also 2019 Eligibility Guidance 84 Fed.
Reg. at 52 n.14 (“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
cannot practically be performed in the mind.”).
For example, these limitations, under their broadest reasonable
interpretation, encompass acts people can perform using their minds or pen
and paper because people can perform the “receiving” step by simply
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administering a series of questions on paper to a patient and using a pen to
record the answers thereto (see Spec. ¶ 13). People can perform the
“generating” step by looking at the data given by the patient and using pen
and paper to calculate a numerical value, i.e., a score. People can perform
the “accessing” step by simply looking at known treatment plans and
supporting documentation. People can perform the “providing,” “selecting,”
and “generating” steps by merely passing a piece of paper to one another
with a list of plans, using a pen to select a plan, and using pen and paper to
generate an evidence based documentation.
Thus, we agree with the Examiner that the claims are comparable to
other claims found to be directed to abstract ideas (see Final Act. 3). See,
e.g., Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353–54
(Fed. Cir. 2016) (“collecting information, analyzing it, and displaying
certain results of the collection and analysis” are “abstract-idea processes”);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) (“organizing information through mathematical
correlations”).
Additionally, in SmartGene, Inc. v. Advanced Biological Labs., SA,
555 Fed. App’x 950, 955 (Fed. Cir. 2014) (nonprecedential),2 the Federal
Circuit concluded that claims reciting methods and systems of selecting a
therapeutic treatment regimen for a patient with a known disease were
directed to an abstract idea. The court concluded the claims at issue were
abstract because the claims did “no more than call on a ‘computing device,’
with basic functionality for comparing stored and input data rules, to do

2 See, Electric Power Group, 830 F.3d at 1354 (citing SmartGene with
approval); Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1378 (Fed.
Cir. 2016) (citing SmartGene with approval).
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what doctors do routinely.” Id. The court explained that “every [claimed]
step is a familiar part of the conscious process that doctors can and do
perform in their heads.” Id.
We also determine that the claim recitations are akin to managing
interactions between people, e.g., between medical service providers and
patients, which illustrates another type of abstract idea, i.e., certain methods
of organizing human activity. Specifically, the claimed invention seeks to
provide an evidence-based treatment plan for a patient by receiving
information from such patient and providing treatment plans from the doctor
based thereon (see Spec. ¶ 6).
In any case, merely combining several abstract ideas (such as mental
processes and a method of organizing human activity) does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea ... to another
abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
Here, we find unavailing Appellants’ contention that the recited
limitations “are far from what doctors can be said to routinely do” given that
Appellants’ own Specification states that medical service providers “now
have the burden of researching and finding evidence to support each
treatment plan they propose” (see Spec. ¶ 4). Such routine acts were,
nonetheless, very time consuming and take “a great deal of time away from
actually treating the patient” (id.). However, Appellants are reminded that
“relying on a computer to perform routine tasks more quickly or more
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accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134
S. Ct. at 2359 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not an inventive
concept)). We shall address “inventive concept” in more detail below.
Regarding Appellants’ contention that “there is no evidence to suggest
that the claimed invention has been or could be performed by a human” (see
App. Br. 32–33), we note that Appellants’ admission in the Specification
noted supra (see Spec. ¶ 4) along with our analysis supra is sufficient
evidence that the claimed invention could be performed by a human.
Regarding dependent claims 8 and 18, Appellants contend that
“[t]here is nothing abstract about a patient’s post-treatment functional
deficits, and data related to such post-treatment functional deficits cannot be
said to be merely incidental or post-solution activity . . . since they are
integral to the solution” (App. Br. 33). We determine that the limitations set
forth in claims 8 and 18 are merely further mental processes and/or methods
of organizing human activity that a doctor can perform, as such steps merely
represent a type of follow-up to the previous acts performed by the doctor,
something doctors routinely do. See RecogniCorp, 855 F.3d at 1327.
Therefore, for at least the aforementioned reasons, we determine that
representative claim 1 recites plural abstract ideas, which we conclude are
“mental processes” and “certain methods of organizing human activity.”

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Step 2A—Prong 2 (integration into Practical Application) 3
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
We discern no additional element (or combination of elements)
recited in Appellants’ representative claim 1 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellants’ claimed additional elements
(e.g., “a database,” “a processor,” “a non-transitory computer readable
medium,” “an input module,” “a plan of treatment engine,” and “an
evidence based documentation (“EBD”) engine,”) do not: (1) improve the
functioning of a computer or other technology; (2) are not applied with any
particular machine (except for a generic computer); (3) do not effect a
transformation of a particular article to a different state; and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellants contend that clam 1 “covers a different and improved
technique in the field for generating and selecting evidence-based treatment
plans for patients” (App. Br. 29), including “improving the likelihood of
replicability of the outcomes achieved by the chosen treatment plan . . . [by]

3 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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discriminat[ing] from many thousands to many millions of disparate
treatment plans” (id. at 31). As an initial matter, we point out that claim 1
merely recites “a plurality of treatment plans,” not many thousands to many
millions of disparate treatment plans, as proffered by Appellants.
Furthermore, while we agree that it may take some considerable
amount of time for a human to sort through thousands of treatment plans
(although not explicitly required by the claims), we note that the addition of
a processor and a database for permitting larger volumes of treatment plans
to be processed more quickly is insufficient to render a claim patent eligible.
See OIP Techs., 788 F.3d at 1363; See also SiRF Tech., Inc. v. Int'l Trade
Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).
Appellants’ Specification discloses:
A treatment plan effectiveness system (TPES) according to the
present disclosure allows for the receipt of information related to a
patient’s medical condition and the type and severity of the Patient’s
functional deficits, and from that information provides one or more
treatment plans meeting predetermined criteria. The TPES can
provide an outcome focused analysis of available treatment plans
available for a given diagnosis and functional deficit set, with
statistical support, thus allowing a medical service provider to provide
better, more consistent, substantiated care. Outcomes, after or
during treatment plan administration, are added to TPES thereby
enhancing the useful knowledge available to medical service
providers serving future patients. A TPES according to the present
disclosure can also provide automated evidence based documentation
in support of a given treatment plan, facilitating treatment plan
decision making or for reimbursement. With the understanding that
the universe of treatment plans is not stagnant, the TPES can also
allow for medical service providers to alter existing plans to meet the
needs of patients and store information related to those altered plans
for use by other medical service providers.
Spec. ¶ 11.
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In other words, the focus of the claimed invention is not an
improvement to any computer functionality itself, but rather using a
computer in its ordinary capacity to provide better, more consistent, and
substantiated treatment plans. Here, the arguably innovative technique of
the appealed claims is inextricably a part of “organizing information through
mathematical correlations and collecting information, analyzing it, and
displaying certain results of the collection and analysis,” which we conclude
are at least mental processes, which is a type of abstract idea, not to mention
certain methods of organizing human activity. Moreover, nothing in the
claims, understood in light of the Specification, requires anything other than
an off-the-shelf, conventional computer used for collecting and processing
various information/data.
For at least the reason noted supra, we determine that claim 1
(1) recites judicial exceptions and (2) does not integrate those exceptions
into a practical application. Thus, representative claim 1 is directed to the
aforementioned abstract ideas.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) “adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
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which is indicative that an inventive concept may be present;”
or
(2) “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.”
Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Appellants contend “[b]ecause claim 1 includes steps that are not
routine, conventional steps for developing treatment plans, it does include an
inventive concept” (App. Br. 22).
However, we find no element or combination of elements recited in
Appellants’ claim 1 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Appellants have not adequately explained how claim 1 is
performed, such that its steps do not describe routine and conventional
functions of a generic computer.
To the extent that Appellants are arguing the novelty of the present
invention, we note that a finding of novelty or non-obviousness does not
require 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
nonobviousness, but, rather, is a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 216. “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-
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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.”).
With the exception of dependent claims 8 and 18 (discussed above),
Appellants do not argue claims 2–7, 9–17, 19, and 20 separately from
independent claim 1. App. Br. 36. Because Appellants’ independent claim
1 recites patent-ineligible abstract ideas, does not include additional
elements that integrate the judicial exceptions into a practical application,
and does not add a specific limitation or limitations beyond the judicial
exceptions that is not “well-understood, routine, and conventional,” we
sustain the Examiner’s rejection of the claims 1–20 under 35 U.S.C. § 101 as
directed to non-statutory subject matter in light of Alice, its’ progeny, and
the Revised Guidance.
DECISION
We affirm the Examiner’s § 101 rejection of claims 1–20.
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