International Business Machines Corporation

Patent Trials and Appeals Board

Jun 28, 2021

2020006301 (P.T.A.B. Jun. 28, 2021)

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.
15/166,999 05/27/2016 Kuntal Dey IN920160070US1
(790.286)
1149
89885 7590 06/28/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
MONTICELLO, WILLIAM THOMAS
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
06/28/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KUNTAL DEY
____________

Appeal 2020-006301
Application 15/166,999
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation. (Appeal Br. 3).
Appeal 2020-006301
Application 15/166,999
2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to medical patient billing
using a temporary identity (Spec., Title). Claim 1, reproduced below with
the italics added, is representative of the subject matter on appeal.

1. A method, comprising:
utilizing at least one processor to execute computer code
that performs the steps of:
obtaining biometric information from a plurality of
patients, wherein the biometric information comprises an image
of each of the plurality of patients;
obtaining at least one medical document associated with
each of the plurality of patients and extracting information
associated with at least one billing event from the at least one
medical document, wherein a billing event comprises
information in the at least one medical document associated
with an event that will be billed for;
assigning a temporary identity to each of the plurality of
patients;
creating a billing session for each of the temporary
identities, wherein the billing session comprises at least a subset
of the at least one medical document and the biometric
information for the respective patient, wherein the creating a
billing session comprises adding the at least one billing event to
the billing session;
storing, in a database, the billing sessions and a
timestamp for each of the billing sessions;
mapping and associating each of the temporary identities
to an actual patient identity, wherein the mapping comprises
comparing at least one of: the biometric information and the at
least one medical document to a database of actual patient
identities and identifying an actual patient identity having
information matching the at least one of: the biometric
information and the at least one medical document;
obtaining new biometric information from a particular
patient, wherein the new biometric information comprises an
image of the particular patient;
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identifying the temporary identity assigned to the
particular patient by identifying, from the database, the
temporary identity having biometric information that matches
the new biometric information; and
retrieving, from the database, the billing session of the
particular patient.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name References Date
Ronen US 5,905,736 May 18, 1999
Burdick US 2007/0129969 A1 June 7, 2007
Reiner US 2007/0258626 A1 Nov. 8, 2007
Thistle US 2008/0200145 A1 Aug. 21, 2008
Davies US 2008/0212847 A1 Sept. 4, 2008
McLaughlin US 2009/0024416 A1 Jan. 22, 2009
Breazeale, Jr. US 2009/0048865 A1 Feb. 19, 2009
Essin US 7,802,183 B1 Sept. 21, 2010
Green, Jr. US 2011/0301982 A1 Dec. 8, 2011
McNeal US 2012/0109829 A1 May 3, 2012
Hwang US 2015/0073817 A1 Mar. 12, 2015
Lozano US 2017/0235909 A1 Aug. 17, 2017
Wurst US 10,204,704 B1 Feb. 12, 2019

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The following rejections are before us for review:
1. Claims 1–20 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1, 7, 8, 10, 12, 13, 18, and 19 are rejected under 35
U.S.C. § 103 as unpatentable over Davies, Ronen, Hwang, McNeal, Lozano,
Breazeale, McLaughlin, Reiner, and Wurst.
3. Claims 2, 5, 6, 14, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Davies, Ronen, Hwang, McNeal, Essin, Lozano,
Breazeale, McLaughlin, Reiner, and Wurst.
4. Claims 3, 4, 15, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Davies, Ronen, Hwang, McNeal, Essin, Burdick, Lozano,
Breazeale, McLaughlin, Reiner, and Wurst.
5. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
Davies, Ronen, Hwang, McNeal, Thistle, Lozano, Breazeale, McLaughlin,
Reiner, and Wurst.
6. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable
over Davies, Ronen, Hwang, McNeal, Green, Lozano, Breazeale,
McLaughlin, Reiner, and Wurst.
7. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over Davies, Ronen, Hwang, Essin, Lozano, Breazeale, McLaughlin, Reiner,
and Wurst.

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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 31–40; Reply Br. 29,
30). The Appellant also argues that the claim integrates any judicial
exception into a “practical application” (Appeal Br. 40–42; Reply Br. 30–
33). The Appellant argues further that the claim is “significantly more” than
the alleged abstract idea (Appeal Br. 42–45; Reply Br. 33–35).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2–5; Ans. 3–6).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 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.”
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Id. (internal citation omitted) (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.”).
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
If the claim is “directed to” an abstract idea, we turn 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
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at the title states that the invention relates to
medical patient billing using a temporary identity. Here, the Examiner has
determined that the claim relates to obtaining, assigning, creating, storing,
mapping, identifying, and retrieving information and sets forth a series of
mental steps and is a mental process or alternatively a method of organizing
human activities (Ans. 3, 4). We substantially agree with the Examiner. We
determine that the claim sets forth the subject matter in italics above which
describes the concept of [1] “obtaining biometric information from a
plurality of patients”; [2] “obtaining at least one medical document
associated with each of the plurality of patients and extracting information
associated with at least one billing event”; [3] “assigning a temporary
identity to each of the plurality of patients”; [4] “creating a billing session
for each of the temporary identities”; [5] “storing… the billing sessions and
a timestamp for each of the billing sessions”; [6] “mapping and associating
each of the temporary identities to an actual patient identity”; [7] “obtaining
new biometric information from a particular patient”; [8] “identifying the
temporary identity assigned to the particular patient by identifying . . . the
temporary identity having biometric information that matches the new
biometric information”; and “retrieving . . . the billing session of the
particular patient”, which sets forth a method of obtaining and mapping
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patient information and creating a temporary identity for a patient billing
session which is a certain method of organizing human activities in being a
fundamental economic practice; or a mental process, i.e. a judicial
exception. Courts have found claims directed to collecting, recognizing, and
storing data in a computer memory to be directed to an abstract idea.
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343 (Fed. Cir. 2014); see Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing
it, and displaying results from certain results of the collection and analysis
was held to be an abstract idea. A method, like the claimed method, “a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.” See
Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014).
The Appellant at page 35 of the Appeal Brief has also cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claim is not abstract but the claims in that case were not similar in scope to
those here and were in contrast directed to a self-referential data table.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
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For example, in the claim, the additional elements beyond the abstract
idea is the recited “processor”. The Specification however describes using
generic computer components (Spec., para. 40). The claimed limitations of
“obtaining”, “assigning”, “creating”, “storing”, “mapping”, “identifying”,
and “retrieving” as recited “do not purport to improve the functioning of the
computer itself,” do not improve the technology of the technical field, and
do not require a “particular machine.” Rather, the recited functions are
performed using generic computer components. Further, the claim as a
whole fails to effect any particular transformation of an article to a different
state. The recited steps in the claim fail to provide meaningful limits to the
judicial exception. In this case, the claim merely uses the claimed computer
elements as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
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the art and they are recited at a high level of generality. The Specification at
paragraphs 40–44 for example describes using conventional computer
components such as a processor, memory, and networks in a conventional
manner. The claim specifically includes recitations for a processor to
implement the method but the functions performed are all used in a manner
that is well-understood, routine, and conventional in the field. Here, the
claimed generic computer components which are used to implement the
claimed method are well understood, routine, or conventional in the field.
The Specification at paragraph 40 discloses that the method can be
implemented with a general purpose computer. Here, the claim has not been
shown to be “significantly more” than the abstract idea.
For these above reasons the rejection of claim 1 is sustained.

Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of claim 1 is improper because
the combination of references lacks articulated reasoning with rational
underpinnings to support a legal conclusion of obviousness (Appeal Br. 46–
52, Reply Br. 35–43.
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 7–17; Ans. 6–8).
We agree with the Appellant. The rejection of record of claim 1 under
35 U.S.C. § 103 relies on the combination of the Davies, Ronen, Hwang,
McNeal, Lozano, Breazeale, McLaughlin, Reiner, and Wurst references
(Final Act. 7–17). In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the
Supreme Court at 418 noted that in an obviousness analysis that
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
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with some rational underpinning to support the legal conclusion of
obviousness.” Here, the cited combination of the nine references in the
rejection simply lacks articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness without impermissible
hindsight. Accordingly, the rejection of claim 1 is not sustained. Claims 7,
8, 10, 12, 13, 18, and 19 have been rejected on the same grounds and the
rejection of these claims is not sustained for the same reasons given above.
Independent claim 20 has been rejected under 35 U.S.C. § 103 as
unpatentable over Davies, Ronen, Hwang, Essin, Lozano, Breazeale,
McLaughlin, Reiner, and Wurst. Again here, the cited combination of the
nine references in the rejection simply lacks articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness without
impermissible hindsight. Accordingly, the rejection of claim 20 is not
sustained.
The remaining dependent claims 2–6, 9, 11, and 14–17 are rejected
under 35 U.S.C. § 103 and fail to correct the deficiency in the base rejection
and these rejections each also lack articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness without
impermissible hindsight. Accordingly, the rejection of claims 2–6, 9, 11,
and 14–17 is not sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–20 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
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We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1–20 under 35 U.S.C. § 103 in the rejections as listed in the
Rejections section above.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 7, 8,
10, 12,
13, 18, 19
Davies, Ronen,
Hwang, McNeal,
Lozano, Breazeale,
McLaughlin,
Reiner, Wurst
1, 7, 8, 10,
12, 13, 18,
19
2, 5, 6,
14, 17
Davies, Ronen,
Hwang, McNeal,
Essin, Lozano,
Breazeale,
McLaughlin,
Reiner, Wurst
2, 5, 6, 14,
17
3, 4, 15,
16
Davies, Ronen,
Hwang, McNeal,
Essin, Burdick,
Lozano, Breazeale,
McLaughlin,
Reiner, Wurst
3, 4, 15,
16
9 Davies, Ronen,
Hwang, McNeal,
Thistle, Lozano,
Breazeale,
McLaughlin,
Reiner, Wurst
9
11 Davies, Ronen,
Hwang, McNeal,
Green, Lozano,
Breazeale,
11
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McLaughlin,
Reiner, Wurst
20 Davies, Ronen,
Hwang, Essin,
Lozano, Breazeale,
McLaughlin,
Reiner, Wurst
20
Overall
Outcome
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED