Ex Parte FRIEDLANDER et al

Patent Trials and Appeals Board

Jun 27, 2019

12951139 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/951,139 11/22/2010 ROBERT R. FRIEDLANDER
79230 7590 07/01/2019
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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.
END920100192US1 9189
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT R. FRIEDLANDER, JAMES R. KRAEMER,
and EDWARD J. MACK0 1
Appeal2018-005925
Application 12/951,139
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRADLEY B. BAY AT, and
MATTHEWS. MEYERS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 2, 5-11, 13-16, and 18. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. Appeal Br. 2.
Appeal2018-005925
Application 12/951,139
THE INVENTION
Appellants state, "[t]he present disclosure relates to the field of
computers, and specifically to the use of computers in the business usage.
Still more particularly, the present disclosure relates to the use of computers
in facilitating the fulfillment of contract terms between parties." Spec. ,r 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
a computer receiving a request from a healthcare
provider for a healthcare authorizer to fulfill a term of a
contract between the healthcare provider and the healthcare
authorizer, wherein the healthcare provider provides medical
treatment to patients, wherein the healthcare authorizer
authorizes the medical treatment, and wherein the term of the
contract requires the healthcare authorizer to authorize the
healthcare provider to provide the medical treatment to a
patient, and wherein a healthcare provider bot on a healthcare
provider's computer:
detects a key word found in medical records of the
patients, and
generates the request based on the key word found
in the medical records of the patients;
the computer receiving, from the healthcare provider,
first confidential data related to the request, wherein the first
confidential data is provided by the healthcare provider bot,
wherein the healthcare provider bot is executed on the
healthcare provider's computer used by the healthcare provider,
and wherein the healthcare provider bot provides a first
communication functionality between the computer and the
healthcare provider's computer;
the computer receiving, from the healthcare authorizer,
second confidential data related to the request, wherein the
second confidential data is provided by a healthcare authorizer
bot, wherein the healthcare authorizer bot is executed on a
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healthcare authorizer's computer used by the healthcare
authorizer, and wherein the healthcare authorizer bot provides a
second communication functionality between the computer and
the healthcare authorizer's computer;
the computer generating a solution that fulfills the
request, wherein the solution is based on the contract, a
healthcare provider profile, a healthcare authorizer profile, the
first confidential data, and the second confidential data, wherein
the healthcare provider profile describes a first set of business
priorities for the healthcare provider, and wherein the
healthcare authorizer profile describes a second set of business
priorities for the healthcare authorizer, wherein:
the first set of business priorities for the healthcare
provider comprises financial priorities based on a level of
fees that are required to meet a business plan of
the healthcare provider, patient health priorities that
include what treatment has been predetermined to be
necessary to provide each particular patient with a
predetermined level of healthcare, and legal priorities
based on what treatment is predetermined to be required
in order to avoid malpractice; and wherein
the second set of business priorities for the
healthcare authorizer includes maintenance of cash levels
required by a statute, ensuring customer satisfaction of
both the healthcare provider and the patient, and
compliance with a predetermined level of timeliness of
payments to the healthcare provider;
the computer detecting an entry into a patient's electronic
medical record;
the computer associating a key word in the entry with a
medical history of a particular patient;
the computer determining a course of treatment for the
particular patient based on the key word in the entry and the
medical history of the particular patient; and
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the computer automatically transmitting a request to the
healthcare authorizer for authorization for the course of
treatment for the particular patient.
THE REJECTION2
Claims 1, 2, 5-11, 13-16, and 18 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception.
FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 2-6 in the
Final Office Action and on pages 4---6 in the Examiner's Answer, concerning
only the 35 U.S.C. § 101 rejection.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1, 2, 5-11, 13-16, and 18 under
35 U.S.C. § 101.
The Appellants argue claims 1, 2, 5-11, 13-16, and 18 as a group, and
we select claim 1 as the representative claim for this group (App. Br. 9), and
so the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
2 The Examiner has withdrawn the rejection of claims 1, 2, 5-11, 13-16, and
18 under 35 U.S.C. § 112(b) or§ 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter applicant regards as the invention.
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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 Bankint'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. 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 id. 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
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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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; 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., id. 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,
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 PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
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84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the 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)).
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 generally Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
"the 'directed to' inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether 'their character as a whole is
directed to excluded subject matter."' Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing, as indicated above, we apply a "directed to" two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
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claim recites a judicial exception, evaluate whether the claim "appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." Guidance, 84
Fed. Reg. at 53; see also MPEP §§ 2106.05(a}-(c), (e}-(h).
The Specification states:
There are many commercial and other situations where multiple
parties must agree on complex analytics based on multiple
sources of complex heterogeneous data. Often the parties have
differing or sometimes contradictory goals and purposes. An
example might include a healthcare authorizer and a healthcare
provider negotiating cohort based pay for performance. The
parties wish to reach agreement, but each wishes the most
favorable terms. Each may provide some of the data. The
different parties each may use different terminology, different
candidate metrics, etc.
Spec. ,r 2.
Understood in light of the Specification, claim 1 recites in pertinent
part,
detect[ing] a key word found in medical records of the
patients, and
generat[ing] the request based on the key word found in
the medical records of the patients;
... receiving from the healthcare provider, first
confidential data related to the request, wherein the first
confidential data is provided by the healthcare provider ... ,
wherein the healthcare provider ... provides a first
communication functionality ... ,
computer receiving, from the healthcare authorizer,
second confidential data related to the request, wherein the
second confidential data is provided by a healthcare authorizer .
. . , and wherein the healthcare authorizer ... provides a second
communication functionality ...
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generating a solution that fulfills the request, wherein the
solution is based on the contract, a healthcare provider profile, a
healthcare authorizer profile, the first confidential data, and the
second confidential data, wherein the healthcare provider
profile describes a first set of business priorities for the
healthcare provider, and wherein the healthcare authorizer
profile describes a second set of business priorities for the
healthcare authorizer, wherein:
the first set of business priorities for the healthcare
provider comprises financial priorities based on a level of fees
that are required to meet a business plan of the healthcare
provider, patient health priorities that include what treatment
has been predetermined to be necessary to provide each
particular patient with a predetermined level of healthcare, and
legal priorities based on what treatment is predetermined to be
required in order to avoid malpractice; and wherein
the second set of business priorities for the healthcare
authorizer includes maintenance of cash levels required by a
statute, ensuring customer satisfaction of both the healthcare
provider and the patient, and compliance with a predetermined
level of timeliness of payments to the healthcare provider;
... detecting an entry into a patient's electronic medical
record;
... associating a key word in the entry with a medical
history of a particular patient;
... determining a course of treatment for the particular
patient based on the key word in the entry and the medical
history of the particular patient; and
... transmitting a request to the healthcare authorizer for
authorization for the course of treatment for the particular
patient.
The Examiner found that the claims "are directed to the abstract idea
of fulfilling terms and rules of a contract between a healthcare provider and
a healthcare authorizer." Final Act. 2 ( emphasis omitted).
We agree with the Examiner that claim 1 is directed to "fulfilling
terms and rules of a contract between a healthcare provider and a healthcare
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authorizer" which is a form of managing personal behavior, relationships or
interactions between people. See Guidance, 84 Fed. Reg. at 52. To this
point, claim 1 requires managing a "first set of business priorities for the
healthcare provider" against a "second set of business priorities for the
healthcare authorizer" to determine a "course of treatment for the particular
patient." These items balance the interaction/relationships between the
patient, health care provider and authorizer, where the healthcare authorizer
has the obligation to pay on a claim and the health care provider has the
obligation to provide effective cost effective care to the patient.
Managing personal behavior, interactions or relationships between
people is a certain method of organizing human activity and the patent-
ineligible end of the spectrum includes certain methods of organizing human
activity. Guidance, 84 Fed. Reg. at 52 ( citing Alice, 573 U.S. at 220).
Turning to the second prong of the "directed to" test, claim 1 only
generically requires "a computer," "healthcare provider bot," and
"healthcare authorizer bot." These components are described in the
Specification at a high level of generality. See Spec. ,r,r 7-18, Fig. 1. We
fail to see how the generic recitations of these most basic computer
components and/or of a system so integrates the judicial exception as to
"impose[] a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception."
Guidance, 84 Fed. Reg. at 53.
Thus, we determine that the claims recite the judicial exception of a
certain method of organizing human activity that is not integrated into a
practical application.
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That the claims do not preempt all forms of the abstraction or may be
limited to medical treatment solutions, does not make them any less abstract.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed.
Cir. 2015) ("And that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.").
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217-18 (quoting Mayo, 566 U.S. at 72-73).
Concerning this step, the Examiner found the following:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea.
Final Act. 4--5. We agree with the Examiner. "[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea ... on a generic computer." Alice, 573 U.S.
at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to generate a request, detect, determine and generate a result based
on data amounts to electronic data query and transmit same are some of the
most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
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industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower
construction of the terms 'processing,' 'receiving,' and 'storing,' ... those
functions can be achieved by any general purpose computer without special
programming"). In short, each step does no more than require a generic
computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (generate a
request, detect, determine and generate a result based on data) and storing is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract); Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a certain method of organizing
human activity using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225-26.
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We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. App. Br. 8-12, Reply Br 2-8. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue:
the present invention provides a new and useful method for
establishing communication functionality between computers.
More specifically, the present invention uses a healthcare
provider bot to provide 'a first communication functionality
between the computer and the healthcare provider's computer'
(supported by paragraph [0027] of the present [S]pecification);
and a healthcare authorizer bot to provide "a second
communication functionality between the computer and the
healthcare authorizer's computer (also supported by paragraph
[0027] of the present [S]pecification).
This results in a 'particular way to achieve a desired
outcome' of improving the functionality of a network that
connects the computer to the healthcare provider's computer
and the healthcare authorizer's computer, and thus is more than
'collecting and analyzing information' or any other
nonstatutory human activity or abstract idea.
Appeal Br. 10.
We disagree with Appellants because "the claims here do [ not do]
more than simply instruct the practitioner to implement the abstract idea [ of
"fulfilling terms and rules of a contract between a healthcare provider and a
healthcare authorizer"] on a generic computer." Alice, 573 U.S. at 225.
When claims like the asserted claims are "directed to an abstract idea and
merely requir[ e] generic computer implementation, they do[ ] not move into
section 101 eligibility territory." Smart Sys. Innovations, LLC v. Chicago
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Transit Authority, 873 F.3d 1364, 1376 (Fed. Cir. 2017) (citations and
internal quotations omitted). Although such a generic computer must be
programmed, the claims do not recite the programming, but only the results
to be obtained by any and all means.
At that level of generality, the claims do no more than describe
a desired function or outcome, without providing any limiting
detail that confines the claim to a particular solution to an
identified problem. The purely functional nature of the claim
confirms that it is directed to an abstract idea, not to a concrete
embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
Also, Appellants offer insufficient evidence as to why reference to "a
first communication functionality between the computer and the healthcare
provider's computer" (Appeal Br. 10) is meaningful beyond the face of the
claims itself other than being the way that data are carried within the
network. See also Id. 10-12. There is no further discussion in the
Specification of the particular technology for performing this claimed step.
See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016); see also Enfzsh, 822 F.3d at 1336 (focusing on whether the
claim is "an improvement to computer functionality itself, not on economic
or other tasks for which a computer is used in its ordinary capacity.")
Appellants next argue:
the present invention is necessarily rooted in computer
technology, thus further making it statutory under 35 U.S.C. [§]
101. That is, the present invention is inextricably intertwined
with the computer technology of communications between
computers. Specifically, bots directly control the network
communication functionality between the computer ( e.g., the
contract facilitating computer 202 shown in FIG. 2 (i.e., the
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computer 102 shown in FIG. 1) of the present [S]pecification)
and the healthcare provider's computer (e.g., the first party's
computer 152) and the healthcare authorizer's computer (e.g.,
the second party's computer 154), and thus the presently
claimed invention is "necessary rooted in computer
technology". (See also Example 1 from the January 27, 2015
Examples of statutory claims, in which the USPTO declares
that a concept that is 'inextricably tied to computer technology
and distinct from the types of concepts found by the courts to
be abstract' is statutory under 35 U.S.C. § 101.)
Appeal Br. 11-12.
We disagree with Appellants. That the language also includes a
general reference to the use of "the healthcare provider bot ... executed on
the healthcare provider's computer used by the healthcare provider," and
"the healthcare authorizer bot ... executed on a healthcare authorizer's
computer," does not make the corresponding generic recitations of the
claimed basic computer components and/or of a system so effective as to
integrate the judicial exception in a way that "imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." Guidance, 84 Fed. Reg. at
53. Absent evidence to the contrary, we view the "healthcare provider bot"
and "health care authorizer bot" to be only an indication of the environment
in which the abstract idea is practiced.
MPEP [§] 2106.05(h) concem[s] generally linking use ofa
judicial exception to a particular technological environment or
field of use, including a discussion of the exemplars provided
herein, which are based on Bilski, 561 U.S. at 612, and Flook,
437 U.S. at 588-90. Thus, the mere application of an abstract
method of organizing human activity in a particular field is not
sufficient to integrate the judicial exception into a practical
application.
Guidance, 84 Fed. Reg. at 55 n.32; see also Alice, 573 U.S. at 223.
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In addition, although using a "bot" to communicate with a server is in
some sense technological, its use in operating system functionality can be
said to be so notoriously settled that merely invoking it is no more than
abstract conceptual advice to use well known technology for its intended
purpose. See In re TL! Commc 'ns LLC Pat. Litig., 823 F.3d 607, 612-13
(Fed. Cir. 2016) (Using a generic telephone for its intended purpose was a
well-established "basic concept" sufficient to fall under Alice step 1.).
Appellants argue:
There is no question that the claimed features found in the
present independent claims are not well-known, are not routine,
and are not conventional, as confirmed in the September 28,
2016 Decision on Appeal from the PT AB, which held that the
presently claimed invention is novel based on its reversal of the
102 rejections of elements found in the present claims. Thus,
the present patent application claims features that further
amount to 'significantly more than the judicial exception (Step
2B of Mayo), and is statutory.[']
Appeal Br. 12.
The question in step two of the Alice framework is not whether an
additional feature is novel, but whether the implementation of the abstract
idea involves "more than performance of 'well-understood, routine, [and]
conventional activities previously known to the industry."' Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d
1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 573 U.S. at 225). Again,
Appellants offer insufficient evidence as to why reference to of "the
healthcare provider bot [being] executed on the healthcare provider's
computer used by the healthcare provider," and "the healthcare authorizer
bot [being] executed on a healthcare authorizer's computer," is meaningful
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beyond the face of the claims itself other than being the way that data are
carried within the network. See Appeal Br. 8-12.
To the extent Appellants are arguing that the additional elements
constitute an inventive concept, such features cannot constitute the
"inventive concept." Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir.
2018) (Moore, J., concurring) ("It is clear from Mayo that the 'inventive
concept' cannot be the abstract idea itself, and Berkheimer . .. leave[s]
untouched the numerous cases from this court which have held claims
ineligible because the only alleged 'inventive concept' is the abstract idea.");
see also BSG Tech. LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) ("It has been clear since Alice that a claimed invention's use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention 'significantly more' than that ineligible concept.").
Finally, "[t]he '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." Diehr, 450 U.S. at 188-89.
For the reasons identified above, we determine there are no
deficiencies in the Examiner's prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner's § 101 rejection
of claims 1, 2, 5-11, 13-16, and 18.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 2, 5-11,
13-16, and 18 under 35 U.S.C. § 101.
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DECISION
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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