Ex Parte BoehlkeDownload PDFPatent Trials and Appeals BoardJun 26, 201912025154 - (D) (P.T.A.B. Jun. 26, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/025, 154 49691 7590 IP Strategies P.O. Box 6446 Asheville, NC 28816 FILING DATE FIRST NAMED INVENTOR 02/04/2008 Raimar Boehlke 06/28/2019 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BSSPT34 1756 EXAMINER LAM, ELIZA ANNE ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 06/28/2019 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): thomas.champagne@ipstrategiespc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAIMAR BOEHLKE Appeal 2018-0053 86 Application 12/025,154 Technology Center 3600 Before JOHN A. JEFFERY, CATHERINE SHIANG, and BETH Z. SHAW, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL 1 1 Throughout this Decision we have considered the Appeal Brief filed August 23, 2016 ("App. Br."), Reply Brief filed May 1, 2018 ("Reply Br."), the Examiner's Answer mailed March 2, 2018 ("Ans."), and the Non-Final Rejection mailed Nov. 20, 2015 ("Non-Final Act). Appeal 2018-0053 86 Application 12/025,154 Appellant2 appeals under 35 U.S.C. § 134 from a rejection of claims 2, 6-16, and 18-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION The claims are directed to a methods and systems for collecting and analyzing medical data. Independent claims 2, 6, and 12 are reproduced below: 2. A computer-implemented method of collecting medical data for a database, the medical data relating to symptoms, diseases, and treatments of individual users with respect to diseases, said method including: A) Requesting an individual user to input data descriptive of symptoms of a disease, and inputting the data descriptive, of symptoms of a disease by the individual user into the memory of a computer operationally connected to a programmable processor; B) Requesting the individual user to input data descriptive of a diagnosis made by a medical professional with respect to the symptoms and the individual user, and inputting the data descriptive of a diagnosis made by a medical professional with respect to the symptom and the individual user by the individual user, whereby the user is prompted to indicate whether the diagnosis is based on test verified-lab results, or on an assumption level; C) Requesting the individual user to input data descriptive of a treatment received by the individual user with respect to the symptoms and the diagnosis, and inputting the data descriptive of a treatment received by the individual user with respect to the symptoms and the diagnosis by the individual user; D) Requesting the individual user to input data descriptive of symptoms and diagnosed disease which has been successfully treated, and inputting the data descriptive of symptoms and diagnosed disease which has been successfully treated by the individual user; E) Requesting the individual user to input data descriptive of symptoms and diagnosed disease, which has not been successfully 2 According to Appellant, the present application has not been assigned, and therefore the inventor, Raimar Boehlke, is the real party in interest. 2 Appeal 2018-0053 86 Application 12/025,154 treated, and inputting the data descriptive of symptoms and diagnosed disease which has not been successfully treated by the individual user; F) Requesting input of qualification of the treatment received, and inputting the qualification by the individual user; G) Storing the inputted data; H) Requesting the individual user to input data descriptive of resources for the treatment received, the resources comprising at least one of: quantities of treatment; cost of treatment; time of treatment; and human resource factor, and inputting the data descriptive of resources for the treatment received by the individual user, thereby creating an individual user profile, and associating the inputted data with the individual user profile; I) Upon request by the same or another individual user: searching treatment with optimal / worst patient outcome by comparing different treatments with each other, searching for matches in the user's profile and reporting cases with highest or lowest overlap in in profile structure, searching for common false diagnoses, searching likely diseases from most to least frequent citations in the database; and creating a report that lists all relevant diseases thus obtained in the database of the system, the system differentiating between diseases that have been test-verified and diseases that have only been assumed; and J) Based on the report, optimizing treatment for the individual user. 3 Appeal 2018-0053 86 Application 12/025,154 6. A computer-implemented method of collecting medical data for a database, the medical data relating to diseases, symptoms and treatments of individual users, said method including: A) Requesting an individual user to input attribute data for the individual user into the memory of a computer operationally connected to a programmable processor, the attribute data being data which is constant during lifetime of the individual user; the attribute data comprising at least one of date of birth; blood group; genetic code; indications as to ethnic background; indications as to hereditary diseases; and inputting the attribute data by the individual user; B) Requesting the individual user to input variable data for an individual user, the variable data being data which is subject to changes during lifetime of the individual user; the variable data comprising at least one of body mass index; indications as to geographic location; indications as to environment; indications as to risks; and inputting the variable data by the individual user; C) Associating the inputted data with the individual user; D) Storing the inputted data associated with the individual user in the database; E) Associating a new user profile with the stored inputted data; F) Displaying the new user profile to the individual user for review; G) Requesting the individual user to input data regarding the individual user review and inputting data regarding the individual user review by the individual user; and H) Upon request by the same m another individual user to search matching epidemiological profiles, Screening the database for matching epidemiological profiles, and confirming their existence with yes or no, and applying the following: Searching treatment with optimal / worst patient outcome by comparing different treatments with each other, 4 Appeal 2018-0053 86 Application 12/025,154 Searching for matches in the user's profile and report cases with highest or lowest overlap in profile structure, Searching for common false diagnoses, and Searching likely diseases from most to least frequent citations in the database and I) creating a report that lists all relevant diseases in the database of the system, the report differentiating between diseases that have been test-verified and diseases that have only been assumed: J) Based on the report, optimizing treatment for the individual user. 12. A computer-implemented method of collecting medical data for a database, the medical data relating to diseases, symptoms and treatments of individual users, said method including; A) Displaying, to an individual user, text fields comprising data descriptive of predefined symptoms of predetermined diseases; B) Prompting the individual user to enter data descriptive of a disease symptom of interest to the individual user in a free text field, which is entered into the memory of a computer operationally connected to a programmable processor; C) Entering, by the individual user, data descriptive of the particular symptom in the free text field, in response to the prompting; D) Performing a search in the database for data similar to the data entered in the free text field; E) If data similar to the entered data is found in the database, discarding the entered data; F) If data similar to the entered data is not found in the database, initiating an evaluation process of the entered data, prompting a system administrator, clearance manager and expert to assume qualifying and verifying new content proposals; and G) If the evaluation process is positive, approving the new content proposal and entering the new content proposal into the database. 5 Appeal 2018-0053 86 Application 12/025,154 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Knowlton Heinze Schmitt US 2003/0204415 Al US 6,945,254 B 1 US 7,149,756 Bl Oct. 30, 2003 July 5, 2005 Dec. 12, 2006 Bernadette Murgue et al. West Nile Outbreak in Horses in Southern France, 2000: The Return after 35 Years, 7 EMERGING INFECTIOUS DISEASES 692-96 (2001) (hereinafter "Murgue"). REJECTIONS The Examiner made the following rejections: Claims 2, 6-16, and 18-20 are rejected under 35 U.S.C. § 101. Claim 20 is rejected under 35 U.S.C. § 102(b) as being anticipated by Knowlton. Claims 12-15 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Schmitt and Heinze. Claims 2, 6-11, and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Knowlton and Murgue. CONTENTIONS AND ANALYSIS We have reviewed Appellant's arguments in the Briefs, the Examiner's rejection, and the Examiner's response to Appellant's arguments. We do not find Appellant's arguments persuasive. Instead, we find the Examiner has provided a comprehensive response to Appellant's arguments supported by a preponderance of evidence. Ans. 3-7. As such, 6 Appeal 2018-0053 86 Application 12/025,154 we adopt the Examiner's findings and explanations provided in the Non- Final Rejection and Answer. Id.; Non-Final Act. 2-15. Section 1 OJ Rejection 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 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'!, 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. Id. 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. Kappas, 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 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 (Gottschalkv. 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 7 Appeal 2018-0053 86 Application 12/025,154 (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 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176, 187; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., Diehr, 450 U.S. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of 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. ( alterations in original) ( quoting Mayo, 8 Appeal 2018-0053 86 Application 12/025,154 566 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 ("USPTO") recently published revised guidance on the application of§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under that Revised Guidance, 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); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure ("MPEP") §§ 2106.05(a)-(c), (e)-(h) (Rev. 08.2017 2018)). 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: (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. See Revised Guidance, 84 Fed. at Reg. 54-56. Abstract Idea For the following reasons, we conclude the claims recite managing personal behavior or relationships or interactions between people, which is 9 Appeal 2018-0053 86 Application 12/025,154 one of certain methods of organizing human activity identified in the Revised Guidance, and thus an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52. Claim 2 We first address claim 2. The claim is directed to an abstract idea because it is directed to managing personal behavior or relationships or interactions between people, which is one of certain methods of organizing human activity, as discussed below. The steps of claim 2, including, with italics added: A) Requesting an individual user to input data descriptive of symptoms of a disease, and inputting the data descriptive, of symptoms of a disease by the individual user into the memory of a computer operationally connected to a programmable processor; B) Requesting the individual user to input data descriptive of a diagnosis made by a medical professional with respect to the symptoms and the individual user, and inputting the data descriptive of a diagnosis made by a medical professional with respect to the symptom and the individual user by the individual user, whereby the user is prompted to indicate whether the diagnosis is based on test verified-lab results, or on an assumption level; C) Requesting the individual user to input data descriptive of a treatment received by the individual user with respect to the symptoms and the diagnosis, and inputting the data descriptive of a treatment received by the individual user with respect to the symptoms and the diagnosis by the individual user; D) Requesting the individual user to input data descriptive of symptoms and diagnosed disease which has been successfully treated, and inputting the data descriptive of symptoms and diagnosed disease which has been successfully treated by the individual user; 10 Appeal 2018-0053 86 Application 12/025,154 E) Requesting the individual user to input data descriptive of symptoms and diagnosed disease, which has not been successfully treated, and inputting the data descriptive of symptoms and diagnosed disease which has not been successfully treated by the individual user; F) Requesting input of qualification of the treatment received, and inputting the qualification by the individual user; G) Storing the inputted data; H) Requesting the individual user to input data descriptive of resources for the treatment received, the resources comprising at least one of: quantities of treatment; cost of treatment; time of treatment; and human resource factor, and inputting the data descriptive of resources for the treatment received by the individual user, thereby creating an individual user profile, and associating the inputted data with the individual user profile; I) Upon request by the same or another individual user: searching treatment with optimal I worst patient outcome by comparing different treatments with each other, searching for matches in the user's profile and reporting cases with highest or lowest overlap in in profile structure, searching for common false diagnoses, searching likely diseases from most to least frequent citations in the database; and creating a report that lists all relevant diseases thus obtained in the database of the system, the system differentiating between diseases that have been test- verified and diseases that have only been assumed; and J) Based on the report, optimizing treatment for the individual user. recite steps of "requesting" many various types of "data" from a "user," and "upon request" by the user or another individual user, 11 Appeal 2018-0053 86 Application 12/025,154 "searching," "treatment options, diagnoses, likely diseases," and "creating a report that lists all relevant diseases," and "based on the report, optimizing treatment for the individual user." Under Supreme Court precedent, claims directed purely to an abstract idea are patent ineligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include ( 1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes. Among those certain methods of organizing human activity listed in the Revised Guidance are methods of managing personal behavior or relationships or interactions between people, such as in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). The patent claims at issue in Mayo covered processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage level was too low or too high. Id. The claims purported to apply natural laws describing the relationships between the concentration in the blood of certain thiopurine metabolites and the likelihood that the drug dosage would be ineffective or induce harmful side- effects. Id. At issue was whether the claimed processes have transformed these unpatentable natural laws into patent-eligible applications of those laws. Id. The Court concluded that they have not done so and that, therefore, the processes were not patentable. Id. Like Mayo, the claims at issue in this case also recite a method of managing personal behavior or relationships or interactions between people. Specifically, the italicized steps fall under the umbrella of managing personal behavior or relationships or interactions between people, including processes to help collect medical information from users and diagnose 12 Appeal 2018-0053 86 Application 12/025,154 patients, because these steps would ordinarily take place in an interaction with a doctor or medical professional obtaining information from a person, relevant to their medical care. Additionally, we are not persuaded that the claims recite an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. See Guidance, 84 Fed. Reg. at 55. The claims in this case are unlike the claims in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. Cir. 2018), which included "determining" with a genotyping assay, and then "administering" a certain quantity of drug based on that determination, in order to "treat a particular disease." Id. at 1134. The Federal Circuit noted that although the "claim in Mayo recited administering a thiopurine drug to a patient, the claim as a whole was not directed to the application of a drug to treat a particular disease." Id. That is, although the Mayo claims recited a step of administering a drug to a patient, that step was performed to gather data about the natural relationships, and thus was ancillary to the overall diagnostic focus of the claims. The Mayo claims, like the claims at issue in this case, were not "method of treatment" claims that practically apply a natural relationship. In accordance with the Revised Guidance, and looking to MPEP §§ 2106.05(a)-(c) and (e)-(h), we determine that the additional elements of claim 2, both individually and as an ordered combination, do not integrate a judicial exception into a practical application. Claim 2 is directed to little more than the implementation of the abstract idea on generic computer servers and devices. The claim, as a whole, describes how to generally apply or execute the concept as a "computer-implemented method." The 13 Appeal 2018-0053 86 Application 12/025,154 claimed "memory of a computer," "operationally connected to a programmable processor," and "database" are recited at a high level of generality and are merely invoked as tools to perform an existing process. See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special purpose microprocessors.") Simply implementing the abstract idea on generic computer components is not a practical application of the abstract idea. The claimed invention does not focus on improving computers as tools, but rather certain independently abstract ideas that use computers as tools. See Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (noting that components such as "database" are generic computer components that do not satisfy the inventive concept requirement); see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)). Accordingly, the claim, as a whole, does not integrate the abstract idea into a practical application, because the claim limitations do not impose any meaningful limits on practicing the abstract idea. Stated differently, the claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (except for generic computer components), (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). 14 Appeal 2018-0053 86 Application 12/025,154 Inventive Concept Because we determine that claim 2 is "directed to" an abstract idea, we next consider whether claim 2 recites an "inventive concept." The Examiner determined that claim 2 does not recite an inventive concept because the additional elements in the claim do not amount to "significantly more" than an abstract idea. See Non-Final Act. 2, 3; Ans. 3, 4. We agree with the Examiner's determination in this regard. The additional elements recited in claim 2 include a "memory of a computer operationally connected to a programmable processor." The claim recites these elements at a high level of generality, and the written description indicates that these elements are generic computer components. See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special purpose microprocessors."). Using generic computer components to perform abstract ideas does not provide the necessary inventive concept. See Alice, 573 U.S. at 223 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."). Thus, these elements, taken individually or together, do not amount to "significantly more" than the abstract idea itself. Appellant contends the Examiner erred in rejecting the claims under 35 U.S.C. § 101, because the claims do not preempt others from using the abstract idea. Reply Br. 6; App. Br. 40. We are not persuaded of Examiner error by this argument. Preemption is a driving concern when determining patent eligibility. See Alice, 5 73 U.S. at 216-17. Patent law cannot inhibit further discovery by improperly tying up the future use of the building blocks of human ingenuity. See id. ( citing Mayo, 566 U.S. at 85-86). Although preemption 15 Appeal 2018-0053 86 Application 12/025,154 is characterized as a driving concern for patent eligibility, preemption itself is not the test for patent eligibility. "Where a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Moreover, we are not persuaded that the claimed invention improves the computer or its components' functionality or efficiency, or otherwise changes the way those devices function, at least in the sense contemplated by the Federal Circuit in Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), despite Appellant's arguments to the contrary (App. Br. 14-15). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that the claimed invention uses such a data structure to improve a computer's functionality or efficiency, or otherwise change the way that device functions, there is no persuasive evidence on this record to substantiate such a contention. As the Examiner points out, the claimed computer is only used to perform insignificant extra-solution activity. Ans. 4; see also Mayo, 566 U.S. at 79 (concluding that additional element of measuring metabolites of a drug administered to a patient was insignificant extra-solution activity, which was insufficient to confer patent eligibility). In conclusion, the additional recited elements-considered individually and as an ordered combination-do not add significantly more 16 Appeal 2018-0053 86 Application 12/025,154 than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. Accordingly, we sustain the Examiner's rejection of claim 2. For the same reasons, we sustain the rejection of independent claim 20, for which Appellants present no additional arguments. We also sustain the rejection of dependent claims 18 and 19 for the same reasons, for which Appellants present no additional substantive arguments. App. Br. 52-54. Claim 6 Next, we address independent claim 6. The claim is directed to an abstract idea because it is directed to managing personal behavior or relationships or interactions between people, which is one of certain methods of organizing human activity, as discussed below. The steps of claim 6, including, with italics added: A) Requesting an individual user to input attribute data for the individual user into the memory of a computer operationally connected to a programmable processor, the attribute data being data which is constant during lifetime of the individual user; the attribute data comprising at least one of date of birth; blood group; genetic code; indications as to ethnic background; indications as to hereditary diseases; and inputting the attribute data by the individual user; B) Requesting the individual user to input variable data for an individual user, the variable data being data which is subject to changes during lifetime of the individual user; the variable data comprising at least one of body mass index; indications as to geographic location; indications as to environment; indications as to risks; and inputting the variable data by the individual user; 17 Appeal 2018-0053 86 Application 12/025,154 C) Associating the inputted data with the individual user; D) Storing the inputted data associated with the individual user in the database; E) Associating a new user profile with the stored inputted data; F) Displaying the new user profile to the individual user for review; G) Requesting the individual user to input data regarding the individual user review and inputting data regarding the individual user review by the individual user; and H) Upon request by the same or another individual user to search matching epidemiological profiles, Screening the database for matching epidemiological profiles, and confirming their existence with yes or no, and applying the following: Searching treatment with optimal I worst patient outcome by comparing different treatments with each other, Searching for matches in the user's profile and report cases with highest or lowest overlap in profile structure, Searching for common false diagnoses, and Searching likely diseases from most to least frequent citations in the database and I) creating a report that lists all relevant diseases in the database of the system, the report differentiating between diseases that have been test-verified and diseases that have only been assumed: J) Based on the report, optimizing treatment for the individual user. Claim 6 recites steps of "requesting" many various types of "data" to be input by an individual user, and "upon request" by the user or another individual user, "searching," "the database for matching epidemiological profiles," "Searching treatment with optimal/ worst patient outcome by comparing different treatments with each other, Searching for matches in the user's profile and report cases with highest or lowest overlap in profile structure, Searching for common false diagnoses, and Searching likely diseases from most to least frequent citations in the database," "creating a 18 Appeal 2018-0053 86 Application 12/025,154 report that lists all relevant diseases," and "based on the report, optimizing treatment for the individual user." Under Supreme Court precedent, claims directed purely to an abstract idea are patent ineligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include ( 1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes. Among those certain methods of organizing human activity listed in the Revised Guidance are methods of managing personal behavior or relationships or interactions between people, such as in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). The patent claims at issue in Mayo covered processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage level was too low or too high. Id. The claims purported to apply natural laws describing the relationships between the concentration in the blood of certain thiopurine metabolites and the likelihood that the drug dosage would be ineffective or induce harmful side- effects. Id. At issue was whether the claimed processes have transformed these unpatentable natural laws into patent-eligible applications of those laws. Id. The Court concluded that they have not done so and that, therefore, the processes were not patentable. Id. Like Mayo, claim 6 also recites a method of managing personal behavior or relationships or interactions between people. Specifically, the italicized steps fall under the umbrella of managing personal behavior or relationships or interactions between people, including processes to help collect medical information from users and diagnose patients, because these steps would ordinarily take place in an interaction with a doctor or medical 19 Appeal 2018-0053 86 Application 12/025,154 professional obtaining information from a person, relevant to their medical care. Additionally, we are not persuaded that claim 6 recites an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. See Guidance, 84 Fed. Reg. at 55. Claim 6 is unlike the claims in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. Cir. 2018), which included "determining" with a genotyping assay, and then "administering" a certain quantity of drug based on that determination, in order to "treat a particular disease." Id. at 1134. The Federal Circuit noted that although the "claim in Mayo recited administering a thiopurine drug to a patient, the claim as a whole was not directed to the application of a drug to treat a particular disease." Id. That is, although the Mayo claims recited a step of administering a drug to a patient, that step was performed to gather data about the natural relationships, and thus was ancillary to the overall diagnostic focus of the claims. The Mayo claims, like claim 6, were not "method of treatment" claims that practically apply a natural relationship. In accordance with the Revised Guidance, and looking to MPEP §§ 2106.05(a)-(c) and (e)-(h), we determine that the additional elements of claim 6, both individually and as an ordered combination, do not integrate a judicial exception into a practical application. Claim 6 is directed to little more than the implementation of the abstract idea on generic computer servers and devices. The claim, as a whole, describes how to generally apply or execute the concept as a "computer-implemented method." The claimed "memory of a computer," "operationally connected to a programmable processor," and "database" are recited at a high level of 20 Appeal 2018-0053 86 Application 12/025,154 generality and are merely invoked as tools to perform an existing process. See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special purpose microprocessors."). We find no specific description regarding the database in the Specification, and Appellants do not direct our attention to one. Simply implementing the abstract idea on generic computer components is not a practical application of the abstract idea. The claimed invention does not focus on improving computers as tools, but rather certain independently abstract ideas that use computers as tools. See Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (noting that components such as "database" are generic computer components that do not satisfy the inventive concept requirement); see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)). Accordingly, the claim, as a whole, does not integrate the abstract idea into a practical application, because the claim limitations do not impose any meaningful limits on practicing the abstract idea. Stated differently, the claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (except for generic computer components), (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). Inventive Concept Because we determine that claim 6 is "directed to" an abstract idea, we next consider whether claim 6 recites an "inventive concept." The 21 Appeal 2018-0053 86 Application 12/025,154 Examiner determined that claim 6 does not recite an inventive concept because the additional elements in the claim do not amount to "significantly more" than an abstract idea. See Non-Final Act. 2, 3; Ans. 3, 4. We agree with the Examiner's determination in this regard. The additional elements recited in claim 6 include a "database" and a "memory of a computer operationally connected to a programmable processor." The claim recites these elements at a high level of generality, and the written description indicates that these elements are generic computer components. See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special purpose microprocessors."). Using generic computer components to perform abstract ideas does not provide the necessary inventive concept. See Alice, 573 U.S. at 223 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."). Thus, these elements, taken individually or together, do not amount to "significantly more" than the abstract idea itself. Appellant contends the Examiner erred in rejecting the claims under 35 U.S.C. § 101, because the claims do not preempt others from using the abstract idea. Reply Br. 6; App. Br. 40. We are not persuaded of Examiner error by this argument. Preemption is a driving concern when determining patent eligibility. See Alice, 5 73 U.S. at 216-17. Patent law cannot inhibit further discovery by improperly tying up the future use of the building blocks of human ingenuity. See id. ( citing Mayo, 566 U.S. at 85-86). Although preemption is characterized as a driving concern for patent eligibility, preemption itself is not the test for patent eligibility. "Where a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, 22 Appeal 2018-0053 86 Application 12/025,154 as they are in this case, preemption concerns are fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Moreover, we are not persuaded that the claimed invention improves the computer or its components' functionality or efficiency, or otherwise changes the way those devices function, at least in the sense contemplated by the Federal Circuit in Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), despite Appellant's arguments to the contrary (App. Br. 14-15). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that the claimed invention uses such a data structure to improve a computer's functionality or efficiency, or otherwise change the way that device functions, there is no persuasive evidence on this record to substantiate such a contention. As the Examiner points out, the claimed computer is only used to perform insignificant extra-solution activity. Ans. 4; see also Mayo, 566 U.S. at 79 (concluding that additional element of measuring metabolites of a drug administered to a patient was insignificant extra-solution activity, which was insufficient to confer patent eligibility). In conclusion, the additional recited elements-considered individually and as an ordered combination-do not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Revised Guidance, 84 Fed. Reg. at 56. 23 Appeal 2018-0053 86 Application 12/025,154 Accordingly, we sustain the Examiner's Section 101 rejection of claim 6. We address additional arguments with respect to dependent claims 7-11 below. Dependent Claim 7 Dependent claim 7 recites the method of claim 6, further comprising presenting a plurality of optimization tools to the individual user, each tool providing data processing operations. With respect to the Section 101 rejection of dependent claim 7, Appellants additionally argue that the "optimization tools" recited in claim 7 further distinguish the claimed invention from a method of organizing human activities and add specific limitations and "unconventional steps" that confine the claim to a particular useful application, i.e., "reporting commonalities in treatment or epidemiological pattern." App. Br. 29. We conclude that claim 7' s "optimization tools," which provide data processing operations, while potentially beneficial, recite an abstract idea. Although the claimed invention may be beneficial by reporting commonalities in treatment or epidemiological pattern, a claim for a useful or beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379-80 (Fed. Cir. 2015). As discussed above with respect to claim 6, the claimed invention does not focus on improving computers as tools, but rather certain independently abstract ideas that use computers, such as the "optimization tools" providing data processing operations, as tools. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)). For these reasons and for the reasons discussed above with respect to claim 6, we sustain the Examiner's Section 101 rejection of dependent claim 7. 24 Appeal 2018-0053 86 Application 12/025,154 Dependent Claim 8 Claim 8 recites the method of claim 7, further comprising presenting a set of resource tracking tools. Appellants argue claim 8 adds specific unconventional steps that confine claim 8 to a new and useful end, that is, "provision of quantities of treatment, cost of treatment, time of treatment, and/or human resource factor." App. Br. 31. Yet, we determine this claimed provision of information, such as the quantity, cost, or time of treatment, is insignificant extra-solution activity insufficient to integrate the abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). For these reasons and for the reasons discussed above with respect to claims 6 and 7, we sustain the Examiner's Section 101 rejection of dependent claim 8. Dependent Claim 9 Claim 9 recites the method of claim 8, further comprising presenting the set of resource tracking tools as a function of a qualification group of the individual user. Appellants argue that presenting the set of tracking tools as a function of qualification group of the individual user is unconventional and confines the claim to a new and useful end. App. Br. 32-33. We are not persuaded by this argument because not only is the recited presenting step implemented via generic computing components, but it also constitutes insignificant extra-solution activity insufficient to integrate the abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). For these reasons and for the reasons discussed above with respect to claims 6-8, we sustain the Examiner's Section 101 rejection of dependent claim 9. 25 Appeal 2018-0053 86 Application 12/025,154 Dependent Claim 10 Dependent claim 10 recites the method of claim 9, further comprising providing the set of resource tracking tools "via internet." Appellants argue that presenting the set of tracking tools further distinguishes the claimed invention from a method of organizing human activities. App. Br. 34-35. We are not persuaded by this argument because not only is the recited providing step implemented via generic computing components, but it also constitutes insignificant extra-solution activity insufficient to integrate the abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). For these reasons and for the reasons discussed above with respect to claims 6-9, we sustain the Examiner's Section 101 rejection of dependent claim 10. Dependent Claim 11 Dependent claim 11 recites the method of claim 10, further comprising providing the set of resource tracking tools "on portable devices." Appellants argue that presenting the set of tracking tools further distinguishes the claimed invention from a method of organizing human activities. App. Br. 36-37. We are not persuaded by this argument because not only is the recited providing step implemented via generic computing components, but it also constitutes insignificant extra-solution activity insufficient to integrate the abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). For these reasons and for the reasons discussed above with respect to claims 6- 10, we sustain the Examiner's Section 101 rejection of dependent claim 11. 26 Appeal 2018-0053 86 Application 12/025,154 Claim 12 Next, we address independent claim 12. The claim is directed to an abstract idea because it is directed to managing personal behavior or relationships or interactions between people, which is one of certain methods of organizing human activity, as discussed below. The steps of claim 12, including, with italics added: A) Displaying, to an individual user, text fields comprising data descriptive of predefined symptoms of predetermined diseases; B) Prompting the individual user to enter data descriptive of a disease symptom of interest to the individual user in a free text field, which is entered into the memory of a computer operationally connected to a programmable processor; C) Entering, by the individual user, data descriptive of the particular symptom in the free text field, in response to the prompting; D) Performing a search in the database for data similar to the data entered in the free text field; E) If data similar to the entered data is found in the database, discarding the entered data; F) If data similar to the entered data is not found in the database, initiating an evaluation process of the entered data, prompting a system administrator, clearance manager and expert to assume qualifying and verifying new content proposals; and G) If the evaluation process is positive, approving the new content proposal and entering the new content proposal into the database. recite steps of "displaying ... text fields" "prompting the individual user to enter data descriptive of a disease symptom," entering the data, "performing a search in a database," and discarding the entered data, or alternatively, approving new content if similar data is found in the database. Under Supreme Court precedent, claims directed purely to an abstract idea are patent ineligible. As set forth in the Revised Guidance, which 27 Appeal 2018-0053 86 Application 12/025,154 extracts and synthesizes key concepts identified by the courts, abstract ideas include ( 1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes. Among those certain methods of organizing human activity listed in the Revised Guidance are methods of managing personal behavior or relationships or interactions between people, such as in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). The patent claims at issue in Mayo covered processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage level was too low or too high. Id. The claims purported to apply natural laws describing the relationships between the concentration in the blood of certain thiopurine metabolites and the likelihood that the drug dosage would be ineffective or induce harmful side- effects. Id. At issue was whether the claimed processes have transformed these unpatentable natural laws into patent-eligible applications of those laws. Id. The Court concluded that they have not done so and that, therefore, the processes were not patentable. Id. Like Mayo, claim 12 also recites a method of managing personal behavior or relationships or interactions between people. Specifically, the italicized steps fall under the umbrella of managing personal behavior or relationships or interactions between people, including processes to help collect medical information from users, because these steps would ordinarily take place in an interaction with a doctor or medical professional obtaining information relevant to medical care or medical research. Additionally, we are not persuaded that claim 12 recites an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. See Revised 28 Appeal 2018-0053 86 Application 12/025,154 Guidance, 84 Fed. Reg. at 55. In accordance with the Revised Guidance, and looking to MPEP §§ 2106.05(a)-(c) and (e)-(h), we determine that the additional elements of claim 12, both individually and as an ordered combination, do not integrate a judicial exception into a practical application. Claim 12 is directed to little more than the implementation of the abstract idea on generic computer servers and devices. The claim, as a whole, describes how to generally apply or execute the concept as a "computer-implemented method." The claimed "memory of a computer," "operationally connected to a programmable processor," and "database" are recited at a high level of generality and are merely invoked as tools to perform an existing process. See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special purpose microprocessors.") We find no specific description regarding the database in the Specification, and Appellants do not direct our attention to one. Simply implementing the abstract idea on generic computer components is not a practical application of the abstract idea. The claimed invention does not focus on improving computers as tools, but rather certain independently abstract ideas that use computers as tools. See Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (noting that components such as a "database" are generic computer components that do not satisfy the inventive concept requirement); see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)). Accordingly, the claim, as a whole, does not integrate the abstract idea into a practical application, because the claim limitations do not impose any meaningful limits on practicing the abstract idea. Stated differently, the claims do not (1) improve the functioning of a computer or other technology, 29 Appeal 2018-0053 86 Application 12/025,154 (2) are not applied with any particular machine (except for generic computer components), (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). Inventive Concept Because we determine that claim 12 is "directed to" an abstract idea, we next consider whether claim 12 recites an "inventive concept." The Examiner determined that claim 12 does not recite an inventive concept because the additional elements in the claim do not amount to "significantly more" than an abstract idea. See Non-Final Act. 2, 3; Ans. 3, 4. We agree with the Examiner's determination in this regard. The additional elements recited in claim 12 include a "database" and a "memory of a computer operationally connected to a programmable processor." The claim recites these elements at a high level of generality, and the written description indicates that these elements are generic computer components. See, e.g., Spec. 33, 11. 5-25 ("Processors may include general and special purpose microprocessors."). Using generic computer components to perform abstract ideas does not provide the necessary inventive concept. See Alice, 573 U.S. at 223 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."). Thus, these elements, taken individually or together, do not amount to "significantly more" than the abstract idea itself. 30 Appeal 2018-0053 86 Application 12/025,154 Appellant contends the Examiner erred in rejecting the claims under 35 U.S.C. § 101, because the claims do not preempt others from using the abstract idea. Reply Br. 6; App. Br. 40. We are not persuaded of Examiner error by this argument. Preemption is a driving concern when determining patent eligibility. See Alice, 5 73 U.S. at 216-17. Patent law cannot inhibit further discovery by improperly tying up the future use of the building blocks of human ingenuity. See id. ( citing Mayo, 566 U.S. at 85-86). Although preemption is characterized as a driving concern for patent eligibility, preemption itself is not the test for patent eligibility. "Where a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Moreover, we are not persuaded that the claimed invention improves the computer or its components' functionality or efficiency, or otherwise changes the way those devices function, at least in the sense contemplated by the Federal Circuit in Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), despite Appellant's arguments to the contrary (App. Br. 14-15). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that the claimed invention uses such a data structure to improve a computer's functionality or efficiency, or otherwise change the way that 31 Appeal 2018-0053 86 Application 12/025,154 device functions, there is no persuasive evidence on this record to substantiate such a contention. As the Examiner points out, the claimed computer is only used to perform insignificant extra-solution activity. Ans. 4; see also Mayo, 566 U.S. at 79 (concluding that additional element of measuring metabolites of a drug administered to a patient was insignificant extra-solution activity, which was insufficient to confer patent eligibility). In conclusion, the additional recited elements-considered individually and as an ordered combination-do not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Revised Guidance, 84 Fed. Reg. at 56. Accordingly, we sustain the Examiner's Section 101 rejection of independent claim 12. For the same reasons, we sustain the rejection of dependent claims 1315. Accordingly, we sustain the Examiner's rejection of claims 2, 6-16, and 18-20 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Section 103 Rejection Claims 12-15 With respect to the Section 103 rejection of claims 12-15, Appellant argues Schmitt's database is "completely static; that is, a user of the system, such as the physician, has no opportunity to provide any input to the database through content proposal." App. Br. 61. "Thus, Schmitt[] do[es] not describe or suggest that the database is able to "learn" new diseases or treatments for these new diseases." Id. at 62. Appellant additionally argues that Heinze also "does not disclose or suggest a system that allows for 32 Appeal 2018-0053 86 Application 12/025,154 learning new diseases and new treatments." Id. at 63. Yet, as the Examiner points out, and we agree, the features of being "dynamic" and "learning new diseases and new treatments" are not claimed. Ans. 5. Appellant also argues neither reference includes prompting a user to enter data in a free text field. App. Br. 62. We are not persuaded by this argument. As the Examiner finds, and we agree, Heinze teaches a free text note entered by a user. Non-Final Act. 6 (citing Heinze, 8:9-39 ("Note segmentation involutes the processing of input notes ... each note ... typically is required to contain certain sections: the history of the present illness .... ")). Next, Appellant argues "neither reference discloses or suggests a system that prompts a system administrator, clearance manager, and expert to assume qualifying and verifying new content proposals, or, if the evaluation process is positive, approving the new content proposal and entering the new content proposal into the database, as recited in claim 12." App. Br. 63. Yet, the Examiner points out that these "features are recited in the alternative, if a branch of the 'if statement is taught by the art (Heinze is relied upon for one branch of the 'if statement as above), then it meets the claim limitation." Ans. 5. As an initial matter of claim construction, we conclude the conditional limitations "F) If data similar to the entered data is not found in the database, initiating an evaluation process ... " and "G) If the evaluation process is positive ... " are not required to be performed in the event data similar to the entered data is not found in the database. Conditional steps employed in a method claim need not be found in the prior art, if, under the broadest reasonable interpretation, the method 33 Appeal 2018-0053 86 Application 12/025,154 need not invoke those steps. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792 at *4 (PTAB April 28, 2016) (precedential) (holding "[t]he Examiner did not need to present evidence of the obviousness of the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim .... "); see also Ex parte Katz, No. 2010-006083, 2011 WL 514314, at *A-4 (BPAI Jan. 27, 2011); Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243 F. App'x 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed."). Applying this reasoning here, we conclude the broadest reasonable interpretation of claim 12 includes situations that fail to satisfy the condition of step "F" ("If data similar to the entered data is not found in the database"), and in these situations, the contested language following the condition precedent is not required to be performed, including step G. Therefore, we find unavailing Appellant's arguments that the cited references fail to teach or suggest the conditional steps or acts of claim 12, because such arguments are not commensurate with the broadest reasonable interpretation of claim 12. See Schulhauser, at *4-5 (precedential). Moreover, claim 13 depends from claim 12 and recites "wherein the evaluation process comprises .... " Because we conclude this evaluation process is not required to be performed, we find unavailing Appellant's arguments that the cited references fail to teach or suggest the conditional steps or acts of claim 13. Similarly, claim 14 depends from claim 13, and claim 15 depend from claim 14. Because we conclude this evaluation 34 Appeal 2018-0053 86 Application 12/025,154 process is not required to be performed, we find unavailing Appellant's arguments that the cited references fail to teach or suggest the conditional steps or acts of dependent claims 14 and 15. Claim 2 With respect to the obviousness rejection of claim 2, 3 Appellant argues the Examiner has not shown the claimed "creating a report that lists all relevant diseases thus obtained in the database of the system, the system differentiating between diseases that have been test-verified and diseases that have only been assumed," as recited in claim 2. App. Br. 77. The Examiner relies on Murgue for the report. Non-Final Act. 7; Ans. 6. The Examiner states "[i]t is evident that this non-patent literature is of itself a report that lists the relevant diseases in the database differentiating between test verified and assumed diseases." Id. (emphasis added). The Examiner also states that because the feature of creating a report is only used upon request, it may never be used and is therefore an optional step. Id. Appellant disputes that "upon request" renders the creation of the report an optional step. Reply Br. 12-14. We agree with Appellant that the language "upon request" does not render the creation of the report an optional step of claim 2. Under a broadest reasonable interpretation of the claim, and read in light of the Specification, the report generation in the context of claim 2 is not an optional step. The summary of the invention, and original claim 1, for 3 We note that both the Examiner and Appellant label the rejection of claim 2 as one of anticipation under Section 102, but the rejection of claim 2 is framed in the Non-Final Action and the Answer as a Section 103 rejection over the combination of Knowlton and Murgue, and we treat it as one of obviousness under Section 103. See Non-Final Act. 7; Ans. 3. 35 Appeal 2018-0053 86 Application 12/025,154 example, contain several limitations discussing generating a report, which indicates this step is not intended to be optional. Spec. 2. We agree with Appellant that Murgue itself being a report is insufficient to teach the claimed limitation, which recites "creating a report that lists all relevant diseases thus obtained in the database of the system, the system differentiating between diseases that have been test-verified and diseases that have only been assumed." Accordingly, we do not sustain the Section 103 rejection of claim 2, or of claims 6-11 and 16. Section 102 Rejection Claim 20 is rejected under 35 U.S.C. § 102(b) as being anticipated by Knowlton. Appellant argues that Knowlton does not disclose requesting an individual user to input data, and the individual user inputting, descriptive of symptoms of a disease, data descriptive of a diagnosis made by a medical professional, with respect to the symptoms and the individual user, data descriptive of a treatment received by the individual user, with respect to the symptoms and the diagnosis, data descriptive of symptoms and diagnosed disease which has been successfully treated, data descriptive of symptoms and diagnosed disease which has not been successfully treated, qualification of the treatment received, and data descriptive of quantities of treatment, cost of treatment, tin 1 e of treatment, and/ or human resource factor for the treatment received, as recited in claim 20. App. Br. 100. First, Knowlton's paragraph 53 describes medical history including all pertinent medical information. Knowlton describes: Medical history includes all pertinent medical information such as the patient's treating physician information, medication history including current prescription and over-the-counter medications, lab results, generic history, hospital and hospice 36 Appeal 2018-0053 86 Application 12/025,154 records, recent diagnosis, existing allergy, etc. Medical history may also include a physician's ( or any other qualified caretaker's) observation of using a particular medication on a patient. Demographic profile includes all other relevant information such as patient's age, contact information, race, geographic information, etc. The patient database also includes the subjective patient profile attributes such as the pain level indicated by the patient and the pain level diagnosed by a treating physician. The subjective attributes further include a patient's opinion, such as one's satisfaction, regarding using a particular medication. Knowlton ,-J 53 ( emphasis added). Moreover, we conclude the phrase "at least one of' recited in the last element of claim 20 only requires one of the following descriptive resources: quantities of treatment, cost of treatment, time of treatment, or human resource factor. Thus, only one of the four recited resources needs to be disclosed to render the contested limitation anticipated. The Examiner points to Knowlton's disclosure of "cost information," and Appellant does not specifically dispute this finding with respect to the disclosure of "cost of treatment" for claim 20. Ans. 7; Knowlton ,-J 55. And, as the Examiner explains, and we agree, a cost of a medication falls within the broadest reasonable interpretation of a "treatment" because a medication is a type of treatment. Ans. 6. To the extent Appellant argues Knowlton does not disclose creating a report (App. Br. 102), the Examiner points out, and we agree, claim 20 does not recite creating a report. Ans. 7. Accordingly, we are not persuaded of error in the Examiner's rejection of claim 20. 37 Appeal 2018-0053 86 Application 12/025,154 CONCLUSIONS The rejection of claims 2, 6-16, and 18-20 under 35 U.S.C. § 101 is affirmed. The rejection of claim 20 under 35 U.S.C. § 102(b) as being anticipated by Knowlton is affirmed. The rejection of claims 12-15 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Schmitt and Heinze is affirmed. The rejection of claims 2, 6-11, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Knowlton and Murgue is reversed. DECISION Because we affirm at least one ground of rejection for each claim, we affirm the rejection of claims 2, 6-16, and 18-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv) (2009). AFFIRMED 38 Copy with citationCopy as parenthetical citation