HAMILTON, RYAN et al.

Patent Trials and Appeals Board

Mar 27, 2020

14048377 - (D) (P.T.A.B. Mar. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/048,377 10/08/2013 RYAN HAMILTON 27098.196079 2813
46169 7590 03/27/2020
SHOOK, HARDY & BACON L.L.P.
(CERNER CORPORATION)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
AUGUSTINE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
BPARKERSON@SHB.COM
IPDocket@shb.com
docket.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RYAN HAMILTON, BHARAT SUTARIYA, TEHSIN SYED,
and MEGAN QUICK
____________________

Appeal 2018-008194
Application 14/048,377
Technology Center 3600
____________________

Before DAVID M. KOHUT, BETH Z. SHAW, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Cerner Innovation, Inc. as the real party in interest. Appeal Br. 3.
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Application 14/048,377

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STATEMENT OF THE CASE
Introduction
Appellant identifies that the present application is related to
Application No. 14/048,349 (Appeal No. 2018-006331, currently pending)
and Application No. 14/048,365 (Appeal No. 2018-000645, decision mailed
March 27, 2019). Appeal Br. 3.
Appellant’s disclosed and claimed invention generally relates to
“organizational management of population health.” Spec. ¶ 4. More
particularly, Appellants describe the managing population health techniques
includes building and maintaining data stores related to healthcare
organizations, healthcare providers, and information concerning contractual
provisions between healthcare organizations and payers. Spec. ¶¶ 4–5.
According to the Specification, a contract between a payer and a healthcare
organization may include certain financial or clinical objectives (e.g.,
keeping readmission rates below a specified threshold). Spec. ¶ 48. In a
disclosed embodiment, clinical objectives (i.e., quality measure contract
objectives) may be extracted from a contract and performance to the
objective may be determined using relevant patient data. See Spec. ¶¶ 90–
93.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. One or more non-transitory computer-readable media
having computer-executable instructions embodied thereon that,
when executed, perform a method of enabling a healthcare
organization to manage financial and clinical objectives between
payers, providers, and patients, the method comprising:
via a compiler for customizing a program template:
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identifying, using organizational data associated
with a healthcare organization, the quality measure
contract objectives contained in one or more digitized
contracts between the healthcare organization and one or
more of its payers, each quality measure contract objective
including specifications that specify:
(i) a quality measure to be met,
(ii) a number of patients in a scorable patient
group against which the quality measure is to be
measured, and
(iii) a percentage of the patients in the
scorable patient group that are required meet the
quality measure before an incentive is provided;
customizing the program template based on at least
one of the quality measure contract objectives to generate
a healthcare organization-specific program, wherein
customizing includes:
building the specifications of the at least one quality
measure contract objective into the program template,
wherein the specifications are used to determine whether
the at least one quality measure contract objective is met;
via a program engine for executing the healthcare
organization-specific program:
generate objective-specific patient population data
for the healthcare organization;
creating a plurality of scorable patient groups using
the objective-specific patient population data;
for each scorable patient group in the objective-
specific patient population data:
based on longitudinal patient population
records of patients in the each scorable patient
group, identifying patient data related to the
respective quality measure of the healthcare
organization-specific program;
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using the specifications of the respective
quality measure, determining a percentage of
patients in the each scorable patient group whose
patient data meets the respective quality measure,
wherein:
(1) when the percentage of patients in
the each scorable patient group whose patient
data meets the respective quality measure is
equal to or exceeds the respective quality
measure contract objective, determining an
incentive for at least the healthcare
organization, and
(2) when the percentage of patients in
the each scorable patient group whose patient
data meets the respective quality measure is
less than the respective quality measure
contract objective, automatically determining
one or more recommendations to increase a
likelihood of the healthcare organization
meeting the respective quality measure
contract objective.

The Examiner’s Rejection
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–14.

ANALYSIS2
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 7–19; Reply

2 Throughout this Decision, we have considered the Appeal Brief, filed
February 1, 2018 (“Appeal Br.”); the Reply Brief, filed August 13, 2018
(“Reply Br.”); the Examiner’s Answer, mailed July 27, 2018 (“Ans.”); and
the Final Office Action, mailed September 21, 2017 (“Final Act.”), from
which this Appeal is taken.
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Br. 2–11. In particular, Appellant argues the Examiner overgeneralizes the
claims and that the claims recite specific steps, rooted in computer
technology, to accomplish a desired result that improves a computer-related
technology (e.g., allows “computer performance of a function not previously
performable by a computer”). Appeal Br. 9–18. In addition, Appellant
challenges the Examiner’s findings that the claims recite computer functions
that are well-understood, routine, and conventional. Reply Br. 7–10.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office has published revised guidance
for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically
with respect to applying the Alice framework. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office
Guidance”). If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look
at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed.
Cir. 2016). Per Office Guidance, this first inquiry has two prongs of
analysis (i) does the claim recite a judicial exception (e.g., an abstract idea),
and (ii) if so, is the judicial exception integrated into a practical application.
84 Fed. Reg. at 54. Under the Office Guidance, if the judicial exception is
integrated into a practical application, see infra, the claim passes muster
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under § 101. 84 Fed. Reg. at 54–55. If the claim is directed to a judicial
exception (i.e., recites a judicial exception and does not integrate the
exception into a practical application), the next step is to determine whether
any element, or combination of elements, amounts to significantly more than
the judicial exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea because
they recite mental processes. If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (holding that the incidental use of a “computer” or “computer readable
medium” does not make a claim otherwise directed to a process that “can be
performed in the human mind, or by a human using a pen and paper” patent
eligible); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71 (2012) (explaining mental processes are not patentable); 84 Fed. Reg. at
52–53 nn.14–15.
More specifically, Appellant’s claims are directed to using a template
to determine whether collected patient data meets identified contract
objectives. This is consistent with how Appellant describes the claimed
embodiment. See Spec. ¶¶ 90–96, Fig. 11; see also Appeal Br. 9 (describing
claim 1 as providing the ability to evaluate provider and/or patient data to
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determine whether quality measure contract objectives are being met).
Using a template to determine whether collected patient data meets
identified contract objectives is an evaluation that can be performed by a
human, mentally or with pen and paper.
Consistent with our Office Guidance and case law, we conclude that
using a template to determine whether collected patient data meets identified
contract objectives is a mental process and, thus, an abstract idea. See 84
Fed. Reg. at 52; see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (concluding that “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category”); CyberSource, 654 F.3d at 1371–72 (concluding claims directed
to “detecting credit card fraud based on information relating [to] past
transactions” can be performed in the human mind and were drawn to a
patent-ineligible mental process); FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (concluding claims directed to
“collecting and analyzing information to detect misuse and notifying a user
when misuse is detected” to be mental processes within the abstract-idea
category).
Claim 1 is reproduced below and includes the following claim
limitations that recite using a template to determine whether collected
patient data meets identified contract objectives, emphasized in italics:
1. One or more non-transitory computer-readable media
having computer-executable instructions embodied thereon that,
when executed, perform a method of enabling a healthcare
organization to manage financial and clinical objectives between
payers, providers, and patients, the method comprising:
via a compiler for customizing a program template:
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identifying, using organizational data associated
with a healthcare organization, the quality measure
contract objectives contained in one or more digitized
contracts between the healthcare organization and one or
more of its payers, each quality measure contract objective
including specifications that specify:
(i) a quality measure to be met,
(ii) a number of patients in a scorable patient
group against which the quality measure is to be
measured, and
(iii) a percentage of the patients in the
scorable patient group that are required meet the
quality measure before an incentive is provided;
customizing the program template based on at least
one of the quality measure contract objectives to generate
a healthcare organization-specific program, wherein
customizing includes:
building the specifications of the at least one quality
measure contract objective into the program template,
wherein the specifications are used to determine whether
the at least one quality measure contract objective is met;
via a program engine for executing the healthcare
organization-specific program:
generate objective-specific patient population data
for the healthcare organization;
creating a plurality of scorable patient groups using
the objective-specific patient population data;
for each scorable patient group in the objective-
specific patient population data:
based on longitudinal patient population
records of patients in the each scorable patient
group, identifying patient data related to the
respective quality measure of the healthcare
organization-specific program;
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using the specifications of the respective
quality measure, determining a percentage of
patients in the each scorable patient group whose
patient data meets the respective quality measure,
wherein:
(1) when the percentage of patients in
the each scorable patient group whose patient
data meets the respective quality measure is
equal to or exceeds the respective quality
measure contract objective, determining an
incentive for at least the healthcare
organization, and
(2) when the percentage of patients in
the each scorable patient group whose patient
data meets the respective quality measure is
less than the respective quality measure
contract objective, automatically determining
one or more recommendations to increase a
likelihood of the healthcare organization
meeting the respective quality measure
contract objective.
More particularly, the concept of using a template to determine
whether collected patient data meets identified contract objectives comprises
(i) identifying the contract objectives to be met (i.e., the claimed step of
identifying the quality measure contract objectives in one or more digitized
contracts); (ii) identifying patient data relevant to the identified contract
objectives to be met (i.e., the claimed step of identifying patient data related
to the respective quality measure); and (iii) creating a template to determine
(evaluate) whether the identified contract objectives are being met (i.e., the
claimed steps of customizing a program template based on the quality
measure contract objectives to determine whether the quality measure
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contract objects are being met and determining a percentage of patients in a
scorable group whose patient data meets the quality measure).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent
Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55.
Rather, the additional limitations merely provide additional detail
regarding (i) the type of data (i.e., what the quality measure contract
objective specifications specify), (ii) an environment in which the abstract
idea is performed (i.e., a healthcare organization), and (iii) the gathering of
patient data on which the analysis is performed (i.e., creating a plurality of
scorable patient groups using objective-specific patient population data).
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Moreover, based on the results of how collected patient data compares
to the identified contract objectives, the additional limitations recite either
presenting an incentive if the contract objectives are met, or presenting
recommendations for improvement (i.e., to increase the likelihood of
meeting the contract objectives) if the contract objectives are not met. These
are the types of extra-solution activities (i.e., in addition to the judicial
exception) the courts have determined to be insufficient to transform
judicially excepted subject matter into a patent-eligible application. See
MPEP § 2106.05(g); see also Bilski v. Kappos, 561 U.S. 593, 612 (2010)
(holding the use of well-known techniques to establish inputs to the abstract
idea as extra-solution activity that fails to make the underlying concept
patent eligible); Elec. Power, 830 F.3d at 1355 (explaining that “selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental
processes”); Elec. Power, 830 F.3d at 1354 (recognizing “that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and
analysis”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F.
Supp. 2d 1054, 1066 (E.D. Mo. 2011) aff’d, 687 F.3d 1266 (Fed. Cir. 2012)
(explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”).
Contrary to Appellant’s assertions (see, e.g., Appeal Br. 9–10, 15–16),
the claims do not recite a new functionality in computer capabilities or
address a problem necessarily rooted in computer technology to overcome a
problem arising in the realm of computer networks. Instead, as the
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Examiner notes (see Ans. 4–5), the claims merely use computers and
computer devices that operate in their normal, expected manner. See also
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir.
2014). Additionally, as the court in Enfish explained, “the first step in the
Alice inquiry . . . asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities . . . or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016). As discussed above, the focus of the pending claims is on using
a template to determine whether collected patient data meets identified
contract objectives and the recited computing elements are invoked merely
as a tool. See Enfish, 822 F.3d at 1335–36. Further, we note that using a
computer to perform tasks more quickly or efficiently does not confer patent
eligibility on an otherwise ineligible abstract idea. See, e.g., Bancorp Servs.,
LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed.
Cir. 2012) (“[T]he fact that the required calculations could be performed
more efficiently via a computer does not materially alter the patent eligibility
of the claimed subject matter.”).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 77–
79). As stated in the Office Guidance, many of the considerations to
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determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply append well-understood, routine, conventional activities at a
high level of generality. 84 Fed. Reg. at 56. “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer v. HP, Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018).
Here, Appellant’s claims do not recite specific limitations (alone or
when considered as an ordered combination) that are not well-understood,
routine, and conventional. For example, when describing the control server
and remote computers of a computing environment for practicing the
claimed invention (see, e.g., Fig. 1), Appellants describe the components at a
high level of generality and note the components are “well-known
computing systems” such as personal computers or laptop devices. Spec.
¶ 31; see also Spec. ¶¶ 35–38. As the Examiner finds, our reviewing court
has recognized that receiving, processing (i.e., transforming), and storing
data; and receiving or transmitting data over a network are well-understood,
routine and conventional activities. Final Act. 4–5; Ans. 3–4. Consistent
with the Berkheimer Memorandum,3 we agree with the Examiner’s findings

3 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
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that the claims merely recite generic computer components (e.g., a
computing device comprising a processor and memory) performing generic
computing functions that are well-understood, routine, and conventional
(e.g., receiving and transmitting data, processing data, and presenting the
results of the data processing). See Mortgage Grader, Inc. v. First Choice
Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic
computer components, such as an “interface,” “network,” and “database,”
fail to satisfy the inventive concept requirement); Alice, 573 U.S. at 226
(“Nearly every computer will include a ‘communications controller’ and a
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
For the reasons discussed supra, we sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 101. Appellant relies on similar
arguments regarding the Examiner’s rejection of independent claims 13 and
18. See Appeal Br. 17–19. For similar reasons, we sustain the Examiner’s
rejection of these claims. Further, we sustain the Examiner’s rejection of
claims 2–12, 14–17, 19, and 20, which depend directly or indirectly

Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF). Support for a finding that an element was well-understood,
routine, or conventional may be shown by citation to one or more court
decisions noting the well-understood, routine, conventional nature of the
element(s). See Berkheimer Memorandum 3–4.
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therefrom and were not argued separately with particularity. See Appeal Br.
17–19; see also 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 101.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED