Ex Parte Stut et al

Patent Trials and Appeals Board

Jun 25, 2019

14368670 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/368,670 06/25/2014 Wilhelmus Johannes Joseph Stut
24737 7590 06/27/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P02253WOUS 1008
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/27/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte WILHELMUS JOHANNES JOSEPH STUT,
MARIANA NIKOLOV A-SIMONS, and RONY CALO
Appeal2018-003162
Application 14/368,670
Technology Center 3600
Before JOSEPH L. DIXON, JAMES R. HUGHES, and JASON M. REPKO,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-003162
Application 14/368,670
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
9-13 and 21-30. Claims 1-8 and 14--20 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
The claims are directed to a method and system for ordering self-care
behaviors. Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. A system, comprising:
a processor;
a memory;
an extraction module
receiving a desired outcome for a patient having a
condition,
retrieving information relating to a plurality of self-
care behaviors, the information including an effect of each
of the self-care behaviors on the condition and the desired
outcome, and
generating, from the information, a population-
specific ordered list of the self-care behaviors; and
a combination module
receiving a self-care behavior assessment for the
patient and
generating, from the self-care behavior assessment
and the population-specific ordered list, a patient-specific
ordered list of the self-care behaviors.
REFERENCES
No prior art has been relied upon by the Examiner in rejecting the
claims on appeal.
2
Appeal2018-003162
Application 14/368,670
REJECTION
The Examiner made the following rejection:
Claims 9-13 and 21-30 stand rejected under 35 U.S.C. § 101 because
the claimed invention is not directed to patent eligible subject matter.
ANALYSIS
35 U.S.C. § 101
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "' [L Jaws of nature, natural phenomena, and abstract
ideas'" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 218-19 ("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
3
Appeal2018-003162
Application 14/368,670
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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding ... rubber products" (Diehr, 450 U.S. at 191); "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))).
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 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., 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-
4
Appeal2018-003162
Application 14/368,670
eligible application." Alice, 573 U.S. at 221 (internal quotation marks
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) ("Revised Guidance"). Under that
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) ("Prong One"); and
(2) additional elements that integrate the judicial exception into a
practical application ("Prong Two") (see MPEP § 2106.05(a}-(c), (e}-
(h)) (9th ed. 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.
5
Appeal2018-003162
Application 14/368,670
Claims 9-30: Ineligible Subject Matter
Appellants present arguments to claims 9-30 as a group. (App Br. 6-
23.) Because Appellants have not presented separate arguments for
patentability, we select independent claim 9 as the representative claim for
the group and will address Appellants' arguments thereto. (Id.) Thus, we
address in detail the appeal of the § 101 rejection of independent claim 9
with which the§ 101 rejection of claims 10-30 stand or fall. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2017); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 9 recites "[a] system."
Appellants do not argue the Examiner erred in concluding claim 1 falls
within the four statutory categories of patentable subject matter. (App. Br.
11.) We agree with the Examiner's conclusion because claim 9 falls within
the machine category.
Revised Guidance Step 2A(i) ("Prong One'')
Under Step 2A(i) of the Revised Guidance, we determine whether the
claims recite any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
6
Appeal2018-003162
Application 14/368,670
activity such as a fundamental economic practice, or mental processes). See
Revised Guidance.
The Examiner maintains that independent claim 9 recites
"[i]nformation processing [which] is a fundamental building block of human
ingenuity. As such it is an abstract idea." (Final Act. 3.)
We refine the Examiner's determination of the abstract idea to
identify that claim 9 recites the following limitations in the system,
compnsmg:
a processor;
a memory;
an extraction module
receiving a desired outcome for a patient having a
condition,
retrieving information relating to a plurality of self-care
behaviors, the information including an effect of each of the self-
care behaviors on the condition and the desired outcome, and
generating, from the information, a population-specific
ordered list of the self-care behaviors; and
a combination module
receiving a self-care behavior assessment for the patient
and
generating, from the self-care behavior assessment and the
population-specific ordered list, a patient-specific ordered list of the
self-care behaviors.
App. Br. 18 (App'x A Claims) (emphasis added). These emphasized
limitations, under their broadest reasonable interpretation, recite a method of
providing schedule related information to external entities. We additionally
note the claim provides no details of the system, processor or modules.
We find the step of receiving a desired outcome for a patient having a
condition is extra-solution activity which is received from a user and the
retrieving information relating to a plurality of self-care behaviors is merely
7
Appeal2018-003162
Application 14/368,670
a retrieval of stored information which is preliminary data-gathering which
is also extra-solution activity. Moreover, the step of receiving a self-care
behavior assessment for the patient also comes from stored, surveyed, or any
other means to obtain information from the patient. 1
We find the italicized language of independent claim 1 sets forth a
system generating, from the self-care behavior assessment and the
population-specific ordered list, a patient-specific ordered list of the self-
care behaviors. The claimed invention retrieves additional information and
uses the information to generate patient-specific ordered list of the self-care
behaviors. 2
Accordingly, we conclude claim 9 recites a system for managing
personal behavior or relationships or interactions between people, which is
one of the certain methods of human activities identified in the Revised
Guidance, and thus, an abstract idea. Revised Guidance 52. (See Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344--45 (concluding that
"[ s ]tanding alone, the act of providing someone an additional set of
information without disrupting the ongoing provision of an initial set of
1 "In step 140, the patient's self-care behavior assessments are obtained for
combination with the population-specific list generated in step 130. The
patient's behavior assessments may indicate, for example, the patient's
dietary habits, level of physical activity, or any other patient behavior that
may have an impact on clinical outcomes. The assessments may be obtained
by surveys, by observation by medical professionals, or using any other
means known in the art." (Spec. 5:15-20.)
2 "Last, in step 150, the patient's self-care behavior assessments from step
140 and the population-specific ordered list from step 130 are combined to
produce a patient-specific ordered list. This list may then be used to guide
the subsequent instruction of the patient in the most important self-care
behavior for achieving the desired outcome that was provided in step 110."
(Spec. 5:20-24.)
8
Appeal2018-003162
Application 14/368,670
information is an abstract idea," observing that the district court "pointed to
the nontechnical human activity of passing a note to a person who is in the
middle of a meeting or conversation as further illustrating the basic,
longstanding practice that is the focus of the [patent ineligible] claimed
invention."))
Claim 9 recites various limitations consistent with this
characterization, and the Specification further supports this characterization:
Patients suffering from chronic health conditions are
typically instructed to adopt or change various self-care
behaviors in order to improve clinical outcomes, such as
reducing the chance of hospital admissions, improving health
and quality of life, and reducing mortality. There may be a
variety of self-care behaviors that correspond to any given
condition. In order to improve the likelihood of compliance, a
patient may be provided with instructions relating to a limited
subset of the self-care behaviors relating to the patient's
condition, rather than all such behaviors. However, due to the
large amount of data that may be considered, it can be a time
consuming task for medical professionals to determine the
appropriate subset for a given patient.
(Spec. 1: 4--11.)
The Specification further discloses a generic "processor" and
"memory" with little detail regarding the interface between the stored
information and the entities accessing and using the calendar information.
(Spec. 1: 20, 3:17, 7:4--15.)
From this high level of description in the Specification, we find
Appellants' Specification merely identifies a generic computer processor
and memory that performs the function of generating, from the self-care
behavior assessment and the population-specific ordered list, a patient-
specific ordered list of the self-care behaviors without any substantive
details thereof.
9
Appeal2018-003162
Application 14/368,670
Under the Revised Guidance, judicial exceptions include certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). We find the Examiner has shown the claimed invention
is recites certain methods of organizing human activity as described in the
Revised Guidance. Moreover, we find the Examiner's analysis based on the
Examiner's statement of the abstract idea supports the Examiner's
conclusion of a lack of patent-eligible subject matter.
Appellants argue the rejection does not properly consider the
additional limitations in independent claims 21 and 26 with regards to the
features of ( 1) the determination of "respective sources of the self-care
behaviors information and, for each of the sources, [the determination of] a
weight of the respective source, and (2) the generation of a population-
specific ordered list of the self-care behaviors based on (i) the source
weights and (ii) the self-care behaviors information such that self-care
behaviors are ranked in the population-specific ordered list based on the
source weights. ["] (App. Br. 7). Appellants further argue that had the
Examiner properly analyzed the claims and compared the claimed invention
with respect to Thales Visionix Inc., v. United States, 850 F.3d 1343, 1345
(Fed. Cir. 2017) then as "the Thales court found during its Alice step one
analysis that the claims as a whole are not directed to the abstract idea but
instead directed to providing an improvement to another technology or
technical field." (App Br. 10). Appellants further contend that the
"examiner does not provide any evidence that at least a non-computer-
implemented version of a computer-implemented process required by the
claims was a well-understood, routine, conventional activity." (App Br. 11 ).
10
Appeal2018-003162
Application 14/368,670
We find Appellants' arguments unavailing because the Examiner
further addressed the Thales case and provided a discussion of conventional
activities that are well-understood in the health care industry. (Ans. 5, 8).
Additionally, Appellants have not identified how the claimed invention is
similar to the Thales claims, and Appellants merely argue the lack of a
showing by the Examiner with regards to the well-understood, routine,
conventional activity in the Reply Brief. (Reply Br. 5---6). We find
Appellants' general argument that the claimed invention has a "reduction in
overall computing resource usage and faster computation time for a
computer system generating a patient-specific list from at least a population-
specific list" to be unsupported by the express language of independent
claim 9. (Reply Br. 6).
The claims do not recite an advance in hardware or software that
causes a processor itself or a memory itself to operate faster or more
efficiently. Instead, the claims use a processor and a memory in their
ordinary capacities to perform basic calculation, storage, and transmission
functions. As a result, on the record before us, representative independent
claim 9 recites certain methods of organizing human activity such as a
commercial or legal interactions and managing personal behavior and, thus,
recites an abstract idea.
Revised Guidance Step 2A(ii) ("Prong Two'')
Under the Revised Guidance, if a claim recites a judicial exception, in
Step 2A(ii) we determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether
there are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
11
Appeal2018-003162
Application 14/368,670
in combination to determine whether they integrate the exception into a
practical application. If the recited judicial exception is integrated into a
practical application, the claim is not directed to the judicial exception.
We find the steps of "receiving a desired outcome for a patient having
a condition," "retrieving information relating to a plurality of self-care
behaviors, the information including an effect of each of the self-care
behaviors on the condition and the desired outcome," and "receiving a self-
care behavior assessment for the patient" to be insignificant extra-solution
activity. The court also guides that data gathering is a classic example of
insignificant extra-solution activity. This step simply gathers data for other
method steps and is, thus, insignificant extra-solution activity. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) ("We have held that mere ' [ data-gathering] step[ s] cannot make an
otherwise nonstatutory claim statutory'" (alterations in original) ( quoting In
re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)); see also Revised Guidance,
84 Fed. Reg. at 55 (Identifying "add[ing] insignificant extra-solution activity
to the" abstract idea as an example of when an abstract idea has not been
integrated into a practical application.).
We find that Appellants did not dispute any additional limitations in
the claimed invention with respect to the abstract idea for independent claim
9. (See generally App. Br. 13-17; Reply Br. 3-7), and the Examiner made
specific findings and conclusions in the Examiner's Answer with regards to
these additional elements as they relate to Step 2B of the Alice analysis.
(See generally Ans. 4--5).
Considering the claim as a whole, interaction of all the steps using the
available data at an unspecified location with a "processor" and "memory"
does not apply or use the abstract idea in a meaningful way such that the
12
Appeal2018-003162
Application 14/368,670
claim as a whole is more than a drafting effort designed to monopolize the
exception. Thus, we determine that the abstract idea is not integrated into a
practical application.
As a result, on the record before us, the invention as recited in
representative independent claim 9 is directed to certain methods of
organizing human activity such as managing personal behavior and, thus, is
directed to an abstract idea.
Appellants contend "claimed generation of a population-specific
ordered list allows the claimed computer system to more efficiently generate
the patient-specific ordered list, as compared to prior list-generating
mechanisms" and there is a "reduction in overall computing resource usage
and faster computation time for a computer system generating a patient-
specific list from at least a population-specific list" (Reply Br. 6), Appellants
have not identified now the invention as claimed achieves these proffered
advantages to integrate the abstract idea into a practical application.
Additionally, we find that the claimed invention does not provide an
output of the list to indicate the results to the patient. Alternatively, if the
"generating" step is the output of a display, it does not further limit the
abstract idea and merely provides insignificant extra-solution. See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
( explaining that "relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible"
( citing Alice, 573 U.S. at 224 ("use of a computer to create electronic
records, track multiple transactions, and issue simultaneous instructions" is
not an inventive concept)).
Therefore, Appellants' general argument to the disclosed invention is
not commensurate in scope with the express language of representative
13
Appeal2018-003162
Application 14/368,670
independent claim 1 and is unpersuasive of the "claimed" invention being a
practical application. Appellants' argument fails because it is not
commensurate with the scope of the claim. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because
... they are not based on limitations appearing in the claims."); In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("[The] proffered facts ... are not
commensurate with the claim scope and are therefore unpersuasive.").
Appellants further contend "another telling sign of weakness of the
Section 101 rejection, the Examiner failed in the Answer to address
Appellant's foregoing Section 101 deficiency arguments that the Examiner's
complete lack of evidence-that at least a non-computer-implemented version
of the claimed invention was a well-understood, routine, conventional
activity disclosed in a prior art reference or system" (Reply Br. 6).
Additionally, Appellants contend that the Examiner has failed to identify the
features in the dependent claims under the section 101 analysis. (Reply Br.
7). Although the Examiner has not specifically addressed each of the
dependent claims, Appellants have not provided any specific argument
thereto. From our review of the dependent claims, we note that:
dependent claim 10 merely states three categories of data or
information which does not limit the abstract idea or apply the
abstract idea;
dependent claim 11 merely identifies that the "population-
specific ordered list" corresponds to the "condition" which again
merely limits the information content;
dependent claim 12 merely limits the claimed "outcome" or
information about a goal of the patient; and
dependent claim 13 merely adds "a database for storing the
information," but does not further limit the claimed "system" or limit
the "processes" performed by the "modules."
14
Appeal2018-003162
Application 14/368,670
As a result, Appellants' arguments regarding the dependent claims is
unavailing (dependent claims 22-25 and 27-30 contain similar limitations to
claims 9-13).
Finally, Appellants argue that under Enfish, LLC v. Microsoft Corp. 3
that Appellants' claimed subject matter should be patent eligible as
improvements in computer technology and "the claimed solution may reduce
redundant processes and, thus, decrease the amount of computational
resources and execution time used in a computer-assisted clinical decision
support system." (App. Br. 21-22; see generally Reply Br. 5---6).
We disagree with Appellants and find that Appellants' claimed
invention does not improve the technology involved, but uses technology to
pick from a larger list to form a smaller list. The claimed invention at most
uses existing technology to assist the doctors or patients to make more
informed decisions. We find the technology of the claimed invention would
be no different than providing a less information which may be more
relevant to the patient without specifically detailing the specific process of
achieving the less information.
As a result, we find the claimed invention to be directed to use of
available information in the same manner as certain methods of organizing
human activity such as managing personal behavior.
Revised Guidance Step 2B
Under the Revised Guidance, 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 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016)
15
Appeal2018-003162
Application 14/368,670
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, [and] conventional" in the field (see MPEP
§ 2106.0S(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.
Here, the Examiner maintains "[t]he additional elements amount to no
more than generic computer components that serve to merely link the
abstract idea to a particular technological environment (i.e. processors, etc.)
performing routine and conventional activities that are well-understood in
the healthcare industry (i.e. receiving data, retrieving data, generating data,
etc.)." (Final Act. 5.)
Appellants contend that "[t]he rejection relies on a bare assertion that
the functions are generic and the ordered combination does not add
significantly more to the alleged abstract idea." (App. Br. 19; see generally
Reply Br. 8-10). Appellants further contend "[t]here must be some analysis
addressing the ordered combination, beyond a conclusory, bare assertion that
the claims as an ordered combination do not provide eligibility." (App. Br.
20). Unfortunately, the claimed invention recites no additional limitations to
be evaluated beyond the bare recitations of a "memory" and a "processor"
and therefore there is nothing more for the Examiner to have evaluated.
We find that Appellants provide no specific argument for eligibility
with regard to any "specific limitation" or "activity" beyond the judicial
exception that is not "well-understood, routine, and conventional" in the
field. (See generally App. Br. 18-23; Reply Br. 8-12.) Additionally,
Appellants contend that
16
Appeal2018-003162
Application 14/368,670
in the instant case, there is no evidence that at least a non-
computer-implemented version of the claimed solution was a
well-understood, routine, conventional activity disclosed in a
single prior art reference or system. It is this claimed solution
( which had not been done before) that improves upon pre-
existing clinical decision support systems ( as discussed above),
and this claimed solution, which has not been done before, "is
unlike Flook, Bilski, and Alice, where the claimed computer-
automated process and the prior method were carried out in the
same way."
(Reply Br. 12.) We disagree with Appellants and find that the Specification
discloses the basic process of providing a list of population-specific and
patient-specific lists to patients. (See Spec. 1: 4--11 and supra.) While the
claimed limitations recite "ordered list" the claim recites no limitations
regarding the process of generating either the "patient-specific" aspect of the
underlying process or the "ordered list" aspect of the underlying process. 4
Additionally, the scope of the parameters in the underlying process are not
recited and the claim language may be as broad as two items on the list for
generic "conditions" and "outcomes" such as taking two aspirins and
drinking more water for a headache.
As shown above, the Specification provides a high-level description
of the functions being performed by no more than generic computer
hardware, and Appellants have not provided specific arguments for subject
matter eligibility. As a result, we find Appellants' general arguments not
show error in the Examiner's conclusion of a lack of patent eligible subject
matter of representative independent claim 9.
4 Additionally, in any further prosecution on the merits, the Examiner should
evaluate the claimed "module" limitations and determine the corresponding
support for the algorithms for the ordering and generation of the lists.
17
Appeal2018-003162
Application 14/368,670
As a result, we sustain the Examiner's conclusion of a lack of patent-
eligible subject matter of representative independent claim 9, and
independent claims 21 and 26 and their dependent claims not argued
separately.
CONCLUSION
The Examiner did not err in rejecting claims 9-13 and 21-30 based
upon a lack of patent eligible subject matter under 35 U.S.C. § 101.
DECISION
For the above reasons, we sustain the Examiner's patent eligibility
rejection of claims 9-13 and 21-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
18