International Business Machines Corporation

Patent Trials and Appeals Board

Jun 29, 2021

2021000944 (P.T.A.B. Jun. 29, 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.
15/283,893 10/03/2016 Corville O. Allen SVL920160096US1 2364
45725 7590 06/29/2021
Walder Intellectual Property Law PC
445 Crestover Circle
Richardson, TX 75080
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
06/29/2021 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 CORVILLE O. ALLEN, ROBERTO DELIMA, and
AYSU EZEN CAN
____________

Appeal 2021-000944
Application 15/283,893
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection1 of claims 1–6, 8–14, 16–19, and 21–23. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies International Business
Machines Corporation as the real party in interest. Appeal Br. 2.
1 All references to the Final Office Action refer to the Final Office Action
mailed on March 16, 2020.
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant states the invention relates to “verification of clinical
hypothetical statements based on dynamic cluster analysis.” Spec. ¶ 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method, in a data processing system comprising at
least one processor and at least one memory, the at least one
memory comprising instructions which are executed by the at
least one processor and configure the processor to implement a
medical treatment recommendation system which operates to
perform the method, comprising:
receiving, by the medical treatment recommendation
system, a first patient electronic medical record (EMR)
corresponding to a first patient;
analyzing, by the medical treatment recommendation
system, the first patient EMR to identify a span of content in the
first patient EMR that is a candidate hypothetical statement
within the patient EMR;
verifying, by the medical treatment recommendation
system, whether or not the candidate hypothetical statement is
an actual hypothetical statement based on an analysis of a
corpus of other content, wherein verifying whether or not the
candidate hypothetical statement is an actual hypothetical
statement based on an analysis of a corpus of other content
comprises:
generating a measure of second patients whose
corresponding second patient EMRs have clinical notes
with matching clinical attributes;
comparing the measure of second patients to at
least one threshold;
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determining that the candidate hypothetical
statement is an actual hypothetical statement in response
to the measure of second patients being less than the at
least one threshold; and
determining that a candidate hypothetical
condition associated with the candidate hypothetical
statement is a confirmed condition in response to the
measure of second patients being equal to or greater than
the at least one threshold;
controlling, by the medical treatment recommendation
system, an operation of the medical treatment recommendation
system with regard to the span of content based on results of the
verifying, wherein the controlling causes the medical treatment
recommendation system to ignore the span of content in
response to the results of the verifying indicating the candidate
hypothetical statement to be an actual hypothetical statement;
generating, by the medical treatment recommendation
system, a treatment recommendation based on the operation of
the medical treatment recommendation system with regard to
the span of content; and
outputting, by the medical treatment recommendation
system, the treatment recommendation for use in treating the
first patient.

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THE REJECTION2
The Examiner relies upon the following as evidence of
unpatentability:
Claims 1–6, 8–14, 16–19, and 21–23 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception
without significantly more.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 11–13 in the
Final Office Action and on pages 3–8 in the Examiner’s Answer, concerning
only the 35 U.S.C. § 101 rejection.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–6, 8–14, 16–19, and 21–23
under 35 U.S.C. § 101.
The Appellant argues independent claims 1, 9 and 17 as a group.
Appeal Br. 6. We select claim 1 as the representative claim for this group,
and so the remaining independent claims stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv) (2015). Appellant separately argues dependent
claims 2-4, 10-12, 21, 22 (Appeal Br. 11), 5, 6, 13, 14, 18, 19 (Id.), and 8,
16, 23 (Id. at 12), which we in turn address separately below.

2 The Examiner withdraws the 35 U.S.C. § 103(a) Rejections in the Final
Action dated March 16, 2020.
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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. Pty. Ltd. 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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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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.”
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 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
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).3 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51;4 see also October
2019 Update at 1.
Under the 2019 Revised 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior
to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should
not be relied upon.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
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Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a

practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. at 53; see also MPEP §§ 2106.04–2106.05.
The Specification states:
Clinical decision rules have been developed for a number
of medical disorders, and cornputer systems have been
developed to help practitioners and patients apply these rules.
The Acute Cardiac lschemia Time-Insensitive Predictive
Instrument (ACI-TIPI) takes clinical and ECG features as input
and produces probability of acute cardiac ischemia as output to
assist with triage of patients with chest pain or other symptoms
suggestive of acute cardiac ischemia. ACI-TIPI is incorporated
into many commercial heart monitors/defibrillators. The
Case\Valker system uses a four-item questionnaire to diagnose
major depressive disorder. The PKC Advisor provides guidance
on 98 patient problems such as abdominal pain and vomiting.
Spec. ¶ 5.
The preamble of claim 1 states it is for, “implement[ing] a medical
treatment recommendation system which operates to perform the method,
comprising.”
Claim 1 recites in pertinent part (emphasis added):
receiving, by the medical treatment recommendation system, a
first patient …medical record (EMR) corresponding io a first
patient;
analyzing, …, the first patient EMR to
identify a span of content in the first patient EMR that is a
candidate hypothetical statement within the patient EMR;
verifying, …, whether or not the candidate hypothetical statement
is an actual hypothetical statement based on an analysis of a
corpus of other content, wherein verifying whether or not the
candidate hypothetical statement is an actual hypothetical
statement based on an analysis of a corpus of other content
comprises:
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generating a measure of second patients whose corresponding
second patient EMRs have clinical notes with matching clinical
attributes;
comparing the measure of second patients to at least one
threshold;
determining that the candidate hypothetical statement is an actual
hypothetical statement in response to the measure of second
patients being less than the at least one threshold; and
determining that a candidate hypothetical condition associated
with the candidate hypothetical statement is a confirmed
condition in response to the measure of second patients being
equal to or greater than the at least one threshold;
controlling, …, an operation of the medical treatment
recommendation system with regard to the span of content based
on results of the verifying, wherein the controlling causes…
ignor[ing] the span of content in response to the results of the
verifying indicating the candidate hypothetical statement to be
an actual hypothetical statement;
generating, …, a treatment recommendation …with regard to the
span of content; and
outputting, …, the treatment recommendation for use in treating
the first patient.

The Examiner found claim 1 “cover[s] certain methods of Mental
Processes. If a claim limitation, under its broadest reasonable interpretation,
covers concepts performed in the human mind, including an observation,
evaluation, judgment or opinion, then it falls within the ‘Mental Processes’
grouping of abstract ideas.” (Final Act. 4).
Accordingly, all this intrinsic evidence shows that claim 1 recites a
way of determining a treatment recommendation that distinguishes facts
from hypotheticals so as to base recommendations on evidence rather than
plans. The italicized verbs in the abbreviated version of claim 1 above are
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steps of a cognitive thought process pursuing a resolution, in this case a
treatment recommendation, similar to those steps found ineligible in
SmartGene, Inc. v. Advanced Biological Labs., 555 F. App’x 950, 955 (Fed.
Cir. 2014) (“every step is a familiar part of the conscious process that
doctors can and do perform in their heads.”) Mental processes are ones of
certain methods of organizing human activity that are judicial exceptions.
Guidance, 84 Fed. Reg. at 52. This finding is consistent with the Examiner’s
determination.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires a “medical treatment recommendation system.”6 This
component is described in the Specification at a high level of generality. See
Spec. ¶¶ 55–58, Figs. 1, 2. We fail to see how the generic recitations of the
most basic computer component(s) and/or of a system so integrates the
judicial exception as to “impose[] a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53.
Thus, we find that claim 1 recites the judicial exception of a mental
process.

6 Although the preamble of claim 1 recites “data processing system
comprising at least one processor and at least one memory, the at least one
memory comprising instuctions which are executed by the at least one
processor and configure the processor to implement,” it is stated in the context
of intended use, i.e., “to implement.” Intended use recitations are typically
found in the preamble of claims, and the weight given to them largely depends
on how the recitation is subsequently used in the body of the claim. Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 1306 (Fed. Cir.
1999). Since the body of the claim does not incorporate the terms “data
processing system,” “at least one processor,” and “at least one memory,” we
do not count them as device limitations of claim 1.
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That the claims do not preempt all forms of the abstraction or may be
limited to medical treatment recommendations, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“And that the claims do not preempt all price optimization
or may be limited to price optimization in the e-commerce setting do not
make them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step, the Examiner found the following: “the claimed
additional elements, identified above, are not sufficient to amount to
significantly more than the judicial exception because they are generic
components that are configured to perform well-understood, routine, and
conventional activities previously known to the industry.” Final Act. 6.
We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. In short, each step does no more
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than require a generic computer to perform generic computer functions. The
claims do not, for example, purport to improve the functioning of the
computer itself. The Specification spells out different generic equipment
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
information access under different scenarios. See, e.g., Spec. ¶¶ 55–58,
Fig. 1. Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (receiving,
analyzing, identifying, verifying, generating, comparing, determining,
determining, controlling, ignor[ing], generating, outputting) and storing is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract); Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
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As to the structural claims (17–23), they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] . . . against” interpreting § 101 “in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’”
Alice, 573 U.S. at 226 (quoting Mayo, 566 U.S. at 72). As a corollary, the
claims are not directed to any particular machine.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101 (Appeal Br. 6–13; Reply Br. 2–8). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Citing, inter alia, to Research Corp. Technologies, Inc. v. Microsoft
Corp, 627 F.3d 859, 868 (Fed. Cir. 2010), Appellant argues, “The Office
Action does not establish that a human mind can perform the claimed steps
as a practical matter.” (Appeal Br. 6).
We disagree with Appellant because we have made the requisite
findings in our Alice Step 1 analysis above as to why a human mind can
perform the claimed steps as a practical matter. Appellant here has not
produced evidence showing that the claimed computations cannot be made
by human interaction using a pen and paper. We note as early as Parker v.
Flook, the Supreme Court held that calculations, while “primarily useful for
computerized calculations producing automatic adjustments in alarm
settings,” “can [still] be made by pencil and paper calculations.” Parker,
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437 U.S. at 586. As such, the Court did not deem the alleged primacy of
computer implementation to be persuasive in its 35 U.S.C. § 101 analysis.
In Research Corp., the court noted that the Specification of the patent
at issue explained in detail: ‘“In the present invention ... dot profiles are built
‘on top of the profiles from lower gray levels, such that a single valued
2–dimensional function, that is, the cumulative array or blue noise mask, can
be constructed.’” Research Corp., 627 F.3d at 871-872. As is clear from
Research Corp., the technology covered by the claims was to produce “a
blue noise binary pattern appropriate for a gray level.” Id. at 872. This is an
improvement to computer digital technology at the level of pixel function.
Nothing in the claims before us constitutes an improvement on this level.
The question is whether the claims as a whole “focus on a specific
means or method that improves the relevant technology” or are “directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, claim 1 as a whole is
focused on determining a treatment recommendation that distinguishes
between hypothetical statements, and not a particular way of programming
or designing the software or a computer circuit. In other words, nothing in
claim 1 purports to improve computer functioning or “effect an
improvement in any other technology or technical field.” Alice, 134 S.Ct. at
2359.
Appellants argues,
because the claims recite controlling an operation of the medical
treatment recommendation system with regard to the span of
content based on results of the verifying, wherein the controlling
causes the medical treatment recommendation system to ignore
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the span of content in response to the results of the verifying
indicating the candidate hypothetical statement to be an actual
hypothetical statement. That is, the claims improve the
functioning of the medical treatment recommendation system by
ignoring a span of content that is identified as an actual
hypothetical statement.
(Appeal Br. 7)
Here, the alleged improvement lies in the abstract idea itself, not to
any technological improvement. See BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1287–88 (Fed. Cir. 2018). Even if the advance over the prior
art is to “ignore the span of content in response to the results of the verifying
indicating the candidate hypothetical statement to be an actual hypothetical
statement” (Appeal Br. 7), that purported advance is an abstract idea itself,
i.e., content evaluation, a practice similar to collecting and analyzing data in
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167–1168 (Fed. Cir.
2018), using conventional technology.
We also disagree with Appellant (Appeal Br. 9–11) that under the
holding in Enfish our decision would be different. We are unpersuaded that
the claims here are directed to an improvement in computer technology like
that of claim 17 in Enfish and therefore are patent eligible. In Enfish, the
invention at issue was directed at a new type of logical model for a computer
database: a self-referential table that allowed the computer to store many
different types of data in a single table and index that data by column and
row information. Enfish, 822 F.3d at 1330–32. In finding the claims “not
directed to an abstract idea,” but “to a specific improvement to the way
computers operate,” the Federal Circuit noted that “the claims are not simply
directed to any form of storing tabular data, but instead are specifically
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directed to a self-referential table for a computer database.” Enfish, 822
F.3d at 1336–37.
We find nothing in the claims before us arising to this level of
technical improvement in the claimed, “medical treatment recommendation
system,” which rises to the level of technical proficiency as found in Enfish.
Appellant argues, “the claims recite a technological solution to a
technological problem by allowing the medical treatment recommendation
system to distinguish facts from hypotheticals to base recommendations on
evidence rather than plans.” Appeal Br. 15. But, nothing in the claims
recite how distinguishing between hypotheticals is effected. Claim 1 simply
recites functional results to be achieved by any means. See, e.g., Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776
F.3d 1343, 1347 (Fed. Cir. 2014). Instead, we find the claims on appeal are
focused on a medical treatment recommendation a “task[] for which a
computer is used in its ordinary capacity.” Enfish, 822 F.3d at 1336.
Concerning claims 2-4, 10-12, 21, and 22, Appellant argues,
A human mind would instinctively know if a statement is
hypothetical or not. It would not be practical for a human to
perform cluster analysis in order to determine whether a
statement is hypothetical when the human mind would intuit that
information without performing cluster analysis.
Appeal Br. 11.

Similarly, concerning claims 5, 6, 13, 14, 18, and 19, Appellant
argues,
A human mind would instinctively know if a statement is
hypothetical or not. It would not be practical for a human to
perform natural language processing and generate a parse tree in
order to determine whether a statement is hypothetical when the
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human mind would intuit that information without generating
parse trees.
Id. at 12.
Similarly, concerning claims 8, 16, and 23, Appellant argues,
It would not be practical for a human to generate a statistical
aggregate verification value based on a first, second, and third
number in order to determine whether a statement is hypothetical
when the human mind would intuit that information without
generating a statistical aggregate verification value.
Id.
We disagree with Appellant that the test in these instances is whether
it would be “practical for a human to perform” the designated function.
Rather, the test to be applied is whether these concepts could be performed
in the human mind as mental processes, perhaps with paper and pencil,
where the data interpretation is perceptible only in the human mind. See In
re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016).
Yes, we find in the affirmative.
We also affirm the rejections of dependent claims 9 and 17 because
Appellant has not challenged such with any reasonable specificity (see In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
For the reasons identified above, we sustain the Examiner’s § 101
rejection of claims 1–6, 8–14, 16–19, and 21–23.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–6, 8–14,
16–19, and 21–23 under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Appeal 2021-000944
Application 15/283,893

19

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–
14, 16–
19, 21–23
101

Eligibility 1–6,
8–14,
16–19,
21–23

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