Ex Parte MansourDownload PDFPatent Trial and Appeal BoardAug 27, 201813621087 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/621,087 09/15/2012 141363 7590 08/29/2018 LOZA & LOZA, LLP/Allscripts Peter Zura, Esq. 305 N. Second Avenue #127 Upland, CA 91786-6064 FIRST NAMED INVENTOR Richard P. Mansour 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. ALLS-1037CON 2242 EXAMINER KANAAN, MAROUN P ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): docketing@lozaip.com peter@lozaip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD P. MANSOUR Appeal2017-002046 Application 13/621,087 Technology Center 3600 Before BRADLEY W. BAUMEISTER, KARA L. SZPONDOWSKI, and MICHAEL M. BARRY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge MICHAEL M. BARRY. Opinion Dissenting filed by Administrative Patent Judge BRADLEY W. BAUMEISTER. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 29--31, 34--40, and 49--58, which are all the pending claims. 2 We have jurisdiction under 35 U.S.C. § 6(b ). 1 Appellant identifies Allscripts Healthcare Solutions, Inc. as the real party in interest. App. Br. 3. 2 Claims 32, 33, and 41--48 were pending at the time of the final rejection. See Final Act. 2. Appellant states in the Appeal Brief (App. Br. 3 (referring to the substitute Appeal Brief, filed Feb. 11, 2016)) that claims 32, 33, and Appeal2017-002046 Application 13/621,087 We REVERSE. Introduction Appellant describes the invention as relating "to methods and systems for creating medical documentation regarding a patient." Spec. ,r 4. Appellant explains the invention as meeting "a long-felt need in the art for a method for creating medical documentation more quickly than traditional text-based approaches" by providing a "visual, symbolic approach to creating documents," which Appellant refers to as "visual charting." Spec. In visual charting, complex medical concepts are presented on a user interface display as symbols which are selected by the physician as part of a medical documentation creation process. The symbols are, in essence, synonyms for a textual description of the complex medical concept. By means of selection of symbols, and in preferred embodiments a sequence of such symbols, the visual charting method preserves the complexity and nuance in the content of a medical document that text-based approaches provide, while substantially reducing the amount of time it takes the practitioner to create the documentation .... . . . Visual charting further improves the ability to efficiently chart on small platforms such as Smart Phones, Pocket PCs, iPhones, iPads and similar devices. Additionally, the visual charting methods provides the ability to chart (i.e., create documentation) without a keyboard, i.e., without entering any text at all. Id. ,I,I 13-14. 41--48 are cancelled. App. Br. 3. In the Answer, the Examiner states that claims 29-31, 34--40, and 49-58 are subject to a new ground of rejection, thereby implicitly acknowledging the cancellation of claims 32, 33, and 41- 48. Ans. 2. 2 Appeal2017-002046 Application 13/621,087 Claim 29 is representative of the claims on appeal: 29. A method of specifying and saving medical information pertaining to a patient in an electronic medical record in a medical healthcare computer system in which patient medical records are stored and updated, comprising the steps of: (a) first, (i) presenting on a touch sensitive display of a handheld wireless computing device, for view by a user, a first anatomical image representing at least a portion of a human body; (ii) receiving, on the handheld wireless computing device, first user input corresponding to touching by the user on the display of a first area of the first anatomical image representing a selection by the user of a first body part of the first anatomical image presented on the display; (iii) determining, based on the received first user input corresponding to selection by the user of a first body part of the first anatomical image, a first set of pictorial images associated with the selected first body part that are each symbolic of a different value associated with the first body part, wherein a combination of (A) the first body part of the first anatomical image of the human body selected by the user, and (B) one of the pictorial images of the first set of pictorial images symbolic of different values associated with the body part, uniquely represents a predefined textual description of medical information; (iv) responsive to receiving the first user input, presenting on the display of the handheld wireless computing device, for view by the user, (i) a text descriptor corresponding to the first body part, and 3 Appeal2017-002046 Application 13/621,087 (ii) the determined first set of pictorial images, (v) receiving, on the handheld wireless computing device, second user input corresponding to touching by the user on the display of an area representing a selection by the user of one of the presented pictorial images in the first set of pictorial images, whereby a first predefined textual description of medical information is specified by the user pertaining to the patient without typing by the user; and (b) presenting, on the display of the handheld wireless computing device, for view by the user, the first predefined textual description of medical information; (c) thereafter, (i) receiving, on the handheld wireless computing device, third user input corresponding to touching by the user on the display of a second area of the first anatomical image representing a selection by the user of a second body part of the first anatomical image presented on the display; (ii) determining, based on the received third user input corresponding to selection by the user of a second body part of the first anatomical image, a second set of pictorial images associated with the selected second body part that are each symbolic of a different value associated with the second body part, the second set of pictorial images being different than the first set of pictorial images, wherein a combination of (A) the second body part of the first anatomical image of the human body selected by the user, and (B) one of the pictorial images of the second set of pictorial images symbolic of different values associated with the body part, uniquely represents a predefined textual description of medical information; 4 Appeal2017-002046 Application 13/621,087 (iii) responsive to receiving the third user input, presenting on the display of the handheld wireless computing device, for view by the user, the determined second set of pictorial images; (v) receiving, on the handheld wireless computing device, user input corresponding to touching by the user on the display of an area representing a selection by the user of one of the presented pictorial images in the second set of pictorial images, whereby a second predefined textual description of medical information is specified by the user pertaining to the patient without typing by the user; and ( d) presenting, on the display of the handheld wireless computing device, for view by the user, the second predefined textual description of medical information; ( e) electronically communicating, from the handheld wireless computing device, to a server in the medical healthcare computer system in which patient medical records are stored and updated for storing in association with an electronic medical record of the patient, (i) data associated with the first and second user input as a first key-value pair corresponding to the first predefined textual description, and (ii) data associated with the second and third user input as a second key-value pair corresponding to the second predefined textual description. App. Br. 25-28 (Claims App'x) (formatting adjusted). The 35 USC§ 101 Rejections All pending claims stand rejected under 3 5 U.S. C. § 1 01 as "directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea" (see Final Act. 2) and "because the claimed invention is directed to a judicial exception (i.e., a law of nature, a 5 Appeal2017-002046 Application 13/621,087 natural phenomenon, or an abstract idea) without significantly more" (see Ans. 2-7 (issuing a New Grounds of Rejection (NGR) under§ 101 for all pending claims while maintaining the rejection from the Final Action)). Specifically, in the Final Office Action, the Examiner determines all pending claims are "directed to the abstract idea of saving medical information," without reciting other meaningful limitations. Final Act. 2 ( emphasis omitted). In the NGR, the Examiner further determines the claims are directed to the abstract idea of presenting options to a physician based on entered data, in order to accomplish specifying and saving steps ... [ and] do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea. Ans. 2. ANALYSIS 3,4 We use a two-step framework for determining whether claimed subject matter is judicially excepted from patent eligibility under 35 U.S.C. § 101. In the first step, we "determine whether the claims at issue are directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355. If so, then 3 Appellant argues all claims based on claim 29. See App. Br. 15, 22-23. Our analysis, accordingly, focuses on claim 29. 4 In the Reply Brief, Appellant makes an argument based on Alexander Murray v. The Schooner Charming Betsy, 6 U.S. 64 (1804). Reply Br. 6-9 (referring to "the Charming Betsy [canon] of statutory construction"). Our decision is based on the relevant law as set forth in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), and related cases; we decline to opine on Appellant's Charming Betsy argument. 6 Appeal2017-002046 Application 13/621,087 in the second step, we "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)). Alice Step One Appellant challenges the Examiner's determination in the Final Rejection that claim 29 is "directed to the abstract idea of saving medical information" (Final Act. 2) (emphasis omitted). App. Br. 21-22. Appellant does not challenge the Examiner's determination in the NGR in the Answer that claim 29 is "directed to the abstract idea of presenting options to a physician based on entered data, in order to accomplish specifying and saving steps" (Ans. 2). Reply Br. 2---6. For the first step of the Alice analysis, we agree with the Examiner's uncontested determination in the NGR of the abstract idea to which claim 29 is directed. Alice Step Two In the Final Rejection, the entirety of the Examiner's analysis under Alice's second prong is: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional element( s) or combination of element( s) in the claim(s) in conjunction with the abstract idea per se amount( s) to no more than mere instructions to implement the idea on a computer, and/or the recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Final Act. 3. 7 Appeal2017-002046 Application 13/621,087 Appellant argues "that this determination was not made based on any evidence." App. Br. 19; see also id. at 17-18 (contending claim 29 recites specific meaningful limitations beyond the identified abstract idea). In the Answer's NGR, the Examiner determines "[t]he claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea." Ans. 2. The Examiner characterizes functionality recited in claim 29 as analogous to that in Cybeifone5 and SmartGene. 6 Ans. 3. The Examiner also cites to Appellant's Specification statements that the invention (a) can be implemented "using a computing device (for example, a desktop workstation, smart phone, tablet computer, or the like) having a display" (Spec. ,r 15) and (b) results in "storing the medical document in a computer system," such as in a database (Spec. ,r 20) as evidence that "[g]eneric computer components recited as performing generic computer functions that are well-understood, routine, and conventional activities amount to no more than implementing the abstract idea with a computerized system" and "[ t ]hus, taken alone, the additional elements do not amount to 5 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x 988 (Fed. Cir. 2014). Cyberfone supports the proposition that limitations for simply "using categories to organize, store, and transmit information" are abstract and do not render an otherwise abstract claim patentable. Id. at 992. 6 SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014). SmartGene supports the proposition that merely "comparing new and stored information and using rules to identify ... options" does not save an otherwise abstract claim. Id. at 955. 8 Appeal2017-002046 Application 13/621,087 significantly more than the above-identified judicial exception (specifying and saving medical information pertaining to a patient)." Ans. 3--4. The Examiner further determines that "[l]ooking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.[7J There is no indication that the combination of elements improves the functioning of a computer or improves any other technology." Ans. 4. The Examiner concludes claim 29 "does not amount to significantly more than the underlying abstract idea of using categories to organize, store, and transmit information as seen in Cyberfone" because "[t]here is no indication that the combination of elements improves the functioning of a computer or improves any other technology" and "[t]heir collective functions merely provide conventional computer implementation." Ans. 4. Appellant responds that the Examiner errs in the NGR because claim 29 recites a combination of limitations that provide unconventional functionality, which constitutes significantly more than the abstract idea identified by the Examiner. See Reply Br. 2--4. In contrast with Cyberfone and SmartGene, Appellant contends the limitations of claim 29 are akin to those in the claim at issue in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Reply Br. 4---6. We agree with Appellant that the Examiner's analysis fails to provide a sufficient fact- or evidence-based explanation for how the recited claim limitations constitute routine instructions to implement the identified abstract idea on a computer. See Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) ("The question of whether a claim element or 7 The Examiner cites no evidence for this proposition. 9 Appeal2017-002046 Application 13/621,087 combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact."). Regardless of whether any given individual limitation recited in claim 29 fairly may be interpreted as a well-understood and conventional activity, as the Federal Circuit explained in BASCOM, the "inventive concept" inquiry in step two of the Alice analysis "requires more than recognizing that each claim element, by itself, was known in the art," and "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." BASCOM, 827 F.3d at 1350. Unlike the broad claim limitations at issue in Cyberfone for organizing, storing, and transmitting information (see 558 F. App'x at 990) or those in SmartGene for comparing information and using rules (see 555 F. App'x at 951-52), the method of claim 29 recites a combination of specific, functionally interrelated user interface limitations that conclude with transmitting and storing related data as "key-value pairs." Appellant describes in the Specification a purportedly inventive user interface and processing system to address identified deficiencies in the prior art for medical documentation systems. See, e.g., Spec. ,r,r 13-25, 60, 70. The Examiner provides conclusory analysis that does not address the ostensibly inventive improvements described in the Specification. See Berkheimer, 881 F.3d at 1369 (explaining that when a specification describes a purportedly inventive feature, it is necessary to analyze the claims to "determine whether they capture these improvements"). On this record, we agree with Appellant that the Examiner errs by failing to provide sufficient support for the determination that claim 29 's combination of limitations recites only well-known and conventional 10 Appeal2017-002046 Application 13/621,087 technology under the second prong of Alice. 8 Berkheimer, 881 F.3d at 1368; BASCOM, 827 F.3d at 1350. Conclusion Accordingly, we do not sustain the Examiner's 35 U.S.C. § 101 rejections of claim 29. We, likewise, do not sustain the § 101 rejections of claims 30, 31, 34--40, and 49--58. DECISION For the above reasons, we reverse the 35 U.S.C. § 101 rejections of claims 29--31, 34--40, and 49--58. REVERSED 8 We note the sentence to which this footnote applies unambiguously summarizes our decision. Respectfully, the Dissent mistakenly characterizes our decision as engaging in de nova fact finding as a basis for reversing the Examiner. See Dissenting Opinion 7-8. To the contrary, we decline to engage in the de nova fact-finding necessary to determine whether the combined (and facially significantly interrelated) limitations of claim 29 amount to significantly more than the abstract idea( s) to which the claim is directed. 11 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD P. MANSOUR Appeal2017-002046 Application 13/621,087 Technology Center 3600 Before BRADLEY W. BAUMEISTER, KARA L. SZPONDOWSKI, and MICHAEL M. BARRY, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge, dissenting. I would affirm the Examiner's determination that the claims are directed to patent-ineligible subject matter. Appellant presents unpersuasive arguments to demonstrate that the Examiner's new ground of rejection, as modified in the Examiner's Answer, was erroneous. And contrary to the Majority's determination, the Examiner established a prima facie case of patent ineligibility, which Appellant does not sufficiently rebut. I. As noted by the Majority, the Examiner determines that the claims "are directed to the abstract idea of presenting options to a physician based on entered data, in order to accomplish specifying and saving steps," and the Examiner further determines that the claims "do not include additional elements that are sufficient to amount to significantly more than the judicial Appeal2017-002046 Application 13/621,087 exception." Ans. 2, cited in Maj. Op. 6. Appellant presents various arguments in relation to this rejection, but none are persuasive. Appellant first argues that in spite of being directed to an abstract idea, claim 29 is not directed to patent-ineligible subject matter because the claim does not risk monopolizing the concept so as to preclude patent eligibility. Reply Br. 2--4. This argument is unpersuasive because preemption is not dispositive of patent eligibility. To be sure, the Supreme Court has described "the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption." See Alice Corp., 134 S. Ct. at 2354. However, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. As our reviewing court has explained: "The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability" and "[ f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). Although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Appellant next argues that [the] functionality [ recited in claim 29] is not conventional functionality that can be immediately dismissed. The Examiner appears to recognize that the claims contain more than conventional functionality, as the Examiner has withdrawn the previous Section 103 rejections of the claims and has indicated the novelty and non-obviousness of the claimed inventions. Reply Br. 4. 2 Appeal2017-002046 Application 13/621,087 This argument also is unpersuasive. "The 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. Appellant argues that "even assuming arguendo that claimed functionality can be implemented utilizing conventional computer technologies, the functionality [that] is provided can still represent an inventive concept." Reply Br. 4 (emphasis added). Appellant cites BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) for the proposition that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." Reply Br. 5. Appellant urges that the BASCOM court held "that the claimed 'specific method of filtering Internet content cannot be said, as a matter of law, to have been conventional or generic."' Id. Appellant also cites to additional authority for the proposition "that significantly more [ than an abstract idea] 'may be found in the non- conventional and non-generic arrangement of known, conventional elements."' Id. ( citing, e.g., Memorandum to Patent Examining Corps from Robert W. Bahr at 3, dated Nov. 2, 2016). This legal proposition is accurate, but the proposition's veracity is not persuasive of Examiner error. Appellant does not apply this legal principle to the present case. That is, Appellant does not present substantive arguments or evidence as to what particular combination of elements in 3 Appeal2017-002046 Application 13/621,087 claim 29 allegedly produces a non-conventional and non-generic arrangement of known, conventional elements. Appellant merely sets forth the following unsupported conclusion: Overall, Appellant respectfully submits that it is very clear that the claims include additional features that ensure that the claim is not a drafting effort designed to monopolize the identified abstract idea of "presenting options to a physician based on entered data, in order to accomplish specifying and saving steps". Appellant further respectfully submits that, as the claims pose no risk of pre-empting the abstract idea identified in the Examiner's Answer, the Examiner has failed to make out a prima facie case that the claims do not remain eligible for the monopoly granted under our patent laws. Id. at 5---6. In the Appeal Brief, Appellant also argues an additional reason for why the Examiner erred in determining that claim 29 's additional elements beyond the abstract idea "amount[] to no more than mere instructions to implement the idea on a computer, and/or the recitation of generic computer structure [that] serves to perform generic computer functions that are well- understood, routine, and conventional activities previously known to the pertinent industry." App. Br. 19. Specifically, Appellant argues that the Examiner's "determination was not made based on any evidence, and instead merely represents the Examiner's opinion." Id. This argument is unpersuasive because the new ground of rejection set forth in the Examiner's Answer subsequently cured any purported deficiency of the original rejection, as presented in the Final Action, thereby mooting this issue. In the Examiner's Answer, the Examiner finds that Appellant's Specification affirmatively supports the conclusion that the additionally recited elements, considered alone and in combination, do not add 4 Appeal2017-002046 Application 13/621,087 significantly more to claim 29. Specifically, the Examiner cites paragraphs 15 and 20 of Appellant's Specification to support the conclusion that the claimed elements entail generic computer components and, therefore, "taken alone, the additional elements do not amount to significantly more than the identified judicial exception." Ans. 3--4. The Examiner also addresses the additional elements as an ordered combination: Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication [in Appellant's Specification] that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implantation. Id. at 4 ( emphasis added). That is, the Examiner relies upon the combination of two facts to reach the conclusion that the additional elements, considered as an ordered combination, are well-understood, routine, and conventional computer components that do not add significantly more to the abstract idea: ( 1) each of the individual elements is conventional; and (2) Appellant's Specification is silent as to any technological improvement resulting from the components being arranged in an ordered combination. This combination of findings is sufficient to satisfy Berkheimer 's requirement that the Office provide a factual basis to support the legal conclusion that something was well- understood, routine, and conventional to a skilled artisan at the time the application was filed. Berkheimer, 881 F.3d at 1369. The Examiner's findings also are consistent with the Office's subsequently issued guidance to the Examining Corps on applying 5 Appeal2017-002046 Application 13/621,087 Berkheimer. "A finding that an element is well-understood, routine, or conventional cannot be based only on the fact that the specification is silent with respect to describing such element." US PTO Memorandum "Changes in Examination Procedure pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3--4, dated April 19, 2018 (available at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer- 20180419.PDF) (emphasis added) ("the Berkheimer memo"). That is, the Berkheimer memo prohibits basing a legal conclusion that something is well-understood, routine, or conventional solely on a specification's silence. The Berkheimer memo in no way, though, prohibits an examiner from using a specification's silence as one of plural facts to support this legal conclusion. It should be underscored that an examiner need only establish a prima facie showing that additional elements, considered alone and as an ordered combination, were well-understood, routine, and conventional. But such a prima facie showing is not irrebuttable. An applicant still has the ability to provide evidence as to why additional elements, as claimed, were not well known, routine, or conventional, either individually or as an ordered combination. An examiner then would then have to reconsider all of the evidence as a whole, including the rebuttal arguments and evidence presented by the applicant. In the present case, Appellant provides no persuasive rebuttal evidence. See generally Reply Br. As such, Appellant has not rebutted the Examiner's prima facie showing of patent ineligibility. 6 Appeal2017-002046 Application 13/621,087 The Majority, however, agrees with Appellant's conclusion that "claim 29 recites a combination of limitations that provide unconventional functionality, which constitutes significantly more than the abstract idea identified by the Examiner." Maj. Op. 9 (citing Reply Br. 2--4). More specifically, the Majority reaches this conclusion by finding, sua sponte, the method of claim 29 recites a combination of specific, functionally interrelated user interface limitations that conclude with transmitting and storing related data as "key-value pairs." Appellant describes in the Specification a purportedly inventive user interface and processing system to address identified deficiencies in the prior art for medical documentation systems. See, e.g., Spec. ,r,r 13-25, 60, 70. The Examiner provides conclusory analysis that does not address the ostensibly inventive improvements described in the Specification. Maj. Op. 10. I do not agree with the Majority's approach to addressing the issue. As a threshold matter, it is not clear what particular combination of "specific, functionally interrelated user interface limitations" the Majority relies upon in reaching its conclusion because the Majority omits this detail. See id. Nor does the Majority sufficiently explain what it is about the elements' functional interrelationships that causes the claims to recite significantly more than an abstract idea. Regardless, the mere fact that the Specification drafter may baldly allege that the system is inventive and that it addresses identified deficiencies in the prior art is an insufficient basis to conclude that the invention is, in fact, directed to significantly more than an abstract idea. The deficiencies alleged by the drafter could just as likely be deficiencies in the underlying abstract idea. More importantly, though, Appellant does not argue that the claimed key-value pairs or any particular combination of the functionally interrelated 7 Appeal2017-002046 Application 13/621,087 user interface limitations is what constitutes significantly more than the abstract idea. See App. Br. 21-22; see also Reply Br. 2---6. Appellant does not point to any of those passages of the Specification that the Majority finds to disclose inventive improvements. See id. In determining that claim 29 recites significantly more than an abstract idea, the Majority engaged in its own de nova fact finding and then faulted the Examiner for failing to provide sufficient evidence that the passages the Majority newly relies upon were conventional. Although the Board has the authority to engage in de nova fact finding on appeal, I would not exercise that authority in the present case. The Board reviews the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). In my view, the Examiner has established a prima facie case that the claims are directed to patent ineligible subject matter. And for the reasons explained above, Appellant does not provide persuasive evidence in the Reply Brief to rebut the Examiner's findings and conclusions regarding the additional elements, either individually or as an ordered combination. See generally Reply Br. Accordingly, I would affirm the Examiner's rejection. 9 9 Like the Majority, I decline to address Appellant's arguments regarding Charming Betsy and the canons of statutory construction as they relate to interpreting 35 U.S.C. § 101. The Board does not have the authority to supplant the Supreme Court's interpretation of§ 101, as expressed in cases such as Mayo and Alice, with interpretations patent judges potentially may prefer. 8 Appeal2017-002046 Application 13/621,087 II. Should there be further prosecution on the merits, the task of determining whether the claims recite significantly more than an abstract idea would be better facilitated by first further defining more precisely what the underlying abstract idea entails. The following analysis provides such a definition. The Examiner finds, and I agree, that the abstract idea to which the present claims are directed can be characterized broadly as recordkeeping or "the concept of saving information." See Ans. 3; see also MPEP § 2106.04(a)(2) Examples of Concepts The Courts Have Identified As Abstract Ideas-and more specifically, see MPEP § 2106.04(a)(2)(II)(D) CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY, methods that include Concepts relating to tracking or organizing information ( discussing cases where the courts have found activities such as collecting, organizing, indexing, cataloging, storing, and displaying data to constitute abstract ideas). More specifically, the method of independent claim 29 entails a combination of different recordkeeping activities----e.g., image-assisted recordkeeping, template-assisted recordkeeping, and index-assisted recordkeeping. The lack of specificity by which the Examiner characterizes the present invention is immaterial, though, because the level of abstraction at which an examiner describes the invention does not change the accuracy of the examiner's determination. Apple v. Ameranth Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction."). Turning to an analysis of the various abstract ideas being claimed, the 9 Appeal2017-002046 Application 13/621,087 abstract idea of image-assisted recordkeeping corresponds to the claimed recitation of using anatomical images to represent the body parts of interest that so that the user can manipulate the image. The courts have found image-assisted recordkeeping constitutes a patent-ineligible abstract idea. See Move, Inc. v. Real Estate Alliance Ltd., 221 F. Supp. 3d 1149, 1159 (C.D. Cal. 2016). In Move, Patent Owner claimed a method for collecting and organizing information about available real estate properties and displaying this information on a digital map that can be manipulated by the user. Id. at 1154. In granting summary judgement that the claims were invalid under 35 U.S.C § 101 as being directed to patent-ineligible subject matter (id. at 1165), the court reasoned "if the essential features of the claim can be implemented within the human mind or with pen and paper, the claim is directed to an abstract idea." Id. at 1159 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011)). Moreover, it was common practice in the pre-Internet world to maintain patient records and other paper business documents that included pictorial visual aids for marking or annotating with a pen. For example, dentists have long used pens and pencils to mark on paper images of teeth sets to indicate which teeth were chipped, decayed, filled, or removed. Orthopedists have long used paper patient questionnaires depicting images of various human body parts so that patients could circle or check the particular body parts that were injured or causing pain. Auto-mechanics have long provided paper forms depicting plan views of cars so that the customer service representative could use a pen to circle on the picture, for example, which tire had a nail or slow leak. 10 Appeal2017-002046 Application 13/621,087 These examples all satisfy the test for abstract ideas under Alice's step one regardless of whether these practices actually ever were carried out. It is sufficient for a determination under step one that these acts are capable of being carried out solely in the mind or with the assistance of pen and paper. CyberSource, 654 F.3d at 1372-73; Move, 221 F. Supp. 3d at 1159. Berkheimer 's requirement of providing facts or evidence only relates to step two of the Alice analysis: Our decisions in Berkheimer and Aatrix are narrow: to the extent it is at issue in the case, whether a claim element or combination is well-understood, routine, and conventional is a question of fact. This inquiry falls under step two in the § 101 framework, in which we "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent eligible application." Berkheimer, 890 F.3d at 1374 (Moore, J., concurring) (emphasis added) ( citations omitted). The abstract idea of template-assisted recordkeeping corresponds, for example, to claim 29 's recitations of retrieving and displaying predefined textual descriptions of medical information. Like image-assisted recordkeeping, using template-assisted recordkeeping also was commonly practiced prior to the advent of the Internet. For example, librarians have long transcribed reference information for library patrons by relying upon pre-printed catalog cards containing bibliography information including, e.g., authors' names, book titles, and dates of publication. Prior to being issued computers, patent examiners referenced index cards containing handwritten templates of commonly relied-upon legal doctrines and case citations so that the examiners did not need to re-create the wording every time they set forth a given legal principle in their rejections. Orators have 11 Appeal2017-002046 Application 13/621,087 long relied upon notecards for delivering the information in the form of speeches. Telephone users have long relied upon information printed on Rolodex® index cards for dialing phone numbers. The courts have found template-assisted recordkeeping constitutes a patent-ineligible abstract idea. Move, 221 F. Supp. 3d at 1159 ("[I]f the essential features of the claim can be implemented within the human mind or with pen and paper, the claim is directed to an abstract idea."). The abstract idea of index-assisted recordkeeping corresponds to, for example, claim 29's recitation of "a first set of pictorial images associated with [a] selected first body part" ( claim limitation ( a )(iii)) and the recitation that the pictorial images "uniquely represent[] a predefined textual description of medical information" ( claim limitation (a)(iii)(B)). The courts have found that using an index or table of contents in recordkeeping constitutes a patent-ineligible abstract idea. See Intellectual Ventures I LLC v Erie Indemnity Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017) (holding that "the claimed creation of an index used to search and retrieve information stored in a database" constitutes a patent-ineligible abstract idea). Furthermore, the fact that claim 29 recites the combination of all three abstract ideas of image-assisted recordkeeping, template-assisted recordkeeping, and index-assisted recordkeeping does not add "significantly more" to the abstract nature of claim 29. Setting forth the combination of all of these abstract ideas just makes claim 29 directed to a more complex abstract idea. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea ... does not render the claim non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (patent-ineligible 12 Appeal2017-002046 Application 13/621,087 claims were directed to a combination of abstract ideas). Restated, patent eligibility is not merely a function of claim length. 13 Copy with citationCopy as parenthetical citation