International Business Machines Corporation

Patent Trials and Appeals Board

Dec 16, 2020

2020000991 (P.T.A.B. Dec. 16, 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.
14/870,456 09/30/2015 Atul Kumar SVL920150121US1 1338
45725 7590 12/16/2020
Walder Intellectual Property Law PC
445 Crestover Circle
Richardson, TX 75080
EXAMINER
LONG, FONYA M
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
12/16/2020 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 ATUL KUMAR, ADAM C. McCOY,
RUSSELL G. OLSEN and PATRICK L. WALTERS
___________

Appeal 2020-000991
Application 14/870,456
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., ADAM J. PYONIN and
NABEEL U. KHAN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 11–28 under
35 U.S.C. § 134(a). See Appeal Brief 4. Claims 11 and 20 are independent.

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed February 4, 2019), the
Reply Brief (filed November 20, 2019), the Final Action (mailed September
10, 2018) and the Answer (mailed September 27, 2019), for the respective
details.

2 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 Brief 2.
Appeal 2020-000991
Application 14/870,456
2

Claims 1–10 are cancelled. See Preliminary Amendment filed June 22,
2017. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
According to Appellant, the claimed subject matter is directed to
“mechanisms for creating and monitoring personalized health care plans
based on the users own specific medical and lifestyle conditions.”
Specification ¶ 1.
Claim 11 is reproduced below for reference (bracketed step lettering
added):
Representative Claim3
11. A computer program product comprising a computer
readable storage medium having a computer readable program
stored therein, wherein the computer readable program, when
executed on a computing device, causes the computing device to
implement a personalized patient care plan (PPCP) system which
operates to:
[a] obtain, via an information communication interface of
the PPCP system, demographic and medical information about
the patient;
[b] automatically generate, by a personalized care plan
creation/update engine of the PPCP system, an initial patient care
plan for the patient, comprising a sequence of goals for the
patient, based on an analysis of the obtained demographic and
medical information for the patient;
[c] obtain, via the information communication interface,
lifestyle information about the patient from a plurality of lifestyle
information source computing systems, wherein the lifestyle

3 Appellant “[t]ak[es] claim 11 as an example of independent claim 20 with
regard to similarly recited subject matter.” See Appeal Brief 6. Accordingly
we select independent claim 11 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
Appeal 2020-000991
Application 14/870,456
3

information characterizes a lifestyle of the patient with regard to
a way that the specific patient conducts their life on a daily basis;
[d] perform, by a lifestyle data analysis engine of the PPCP
system, lifestyle inference analysis of the lifestyle information
by applying one or more rules or algorithms to the lifestyle
information to generate lifestyle inference data characterizing at
least one qualitative characteristic of a lifestyle of the patient;
[e] automatically modify, by the personalized care plan
creation/update engine of the PPCP system, the initial patient
care plan, based on a set of one or more rules or algorithms
executed by the personalized care plan creation/update engine on
the lifestyle inference data and the initial patient care plan, to
comprise one or more patient actions specific to the patient based
on the lifestyle information, thereby generating a personalized
patient care plan; and
[f] output, by the PPCP system, the personalized patient
care plan to a patient computing device.

References
Name4 References Date
Mault US 2003/0130595 A1 July 10, 2003
Rock US 2014/0297301 A1 October 2, 2014

Rejections on Appeal5
Claims 11–28 stand rejected stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception to patent-eligible subject matter without
significantly more. Final Action 2–3.

4 All reference citations are to the first named inventor.

5 The 35 U.S.C. § 112(a) rejection of claims 11–28 was withdrawn by the
Examiner. See Answer 3.

Appeal 2020-000991
Application 14/870,456
4

Claims 11–28 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Rock and Mault. Final Action 4–9.

USPTO SECTION 101 GUIDANCE
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 (January 7, 2019)
(“2019 Revised Guidance”).6 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.”
2019 Revised Guidance, 84 Fed. Reg. at 51; see also October 2019 Update
at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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. 10.2019, June 2020)) (“Step 2A, Prong Two”).7

6 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.p
df).
7 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
Appeal 2020-000991
Application 14/870,456
5

2019 Revised Guidance 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

ANALYSIS
35 U.S.C. § 101 rejection
The Examiner determines claims 11–28 are patent ineligible under
35 U.S.C. § 101. See Final Action 2–3; see also Alice, 573 U.S. at 217
(describing the two–step framework “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the Revised Guidance.

determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55.
Appeal 2020-000991
Application 14/870,456
6

Step 2A—Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
The Examiner determines that claim 11’s limitations [a]–[f]:
[F]all in the abstract idea category of Certain Methods for
Organizing Human Activity, specifically, for managing personal
behavior or interactions between people. This is because those
limitations are directed to following rules and instructions in
order to create a healthcare plan, analyzing certain received data
and modifying the healthcare plan according to more rules or
algorithms.
Final Action 4; see 2019 Revised Guidance, Section I (Groupings of
Abstract Ideas).
Claim 11 recites implementing a PPCP system. Claim 11 further
recites obtaining the patient’s demographic/medical information and
automatically generating an initial care plan for the patient in limitations [a],
[b]. Claim 11 also recites obtaining a patient’s lifestyle information and
performing a lifestyle information analysis by applying rules or algorithms
in limitations [c], [d]. Claim 11 recites automatically modifying the initial
patient care plan based upon rules or algorithms thereby generating a
personalized patient care plan constructed upon patient actions specific to
lifestyle information in limitation [f]. Claim 11 further recites outputting the
personalized patient care plan to a patient’s computing device in limitation
[g].
These steps comprise “concepts performed in the human mind[8]

8 “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.” 2019 Revised Guidance, 84
Fed. Reg. at 52 n.14.
Appeal 2020-000991
Application 14/870,456
7

(including an observation, evaluation, judgment, opinion)”; thus, the claim
recites the abstract idea of “mental processes.” as well as, mathematical
relationships, mathematical formulas or equations, mathematical
calculations and thus, the claim recites the judicial exceptions of “concepts
performed in the human mind” and “[m]athematical concepts.” See 2019
Revised Guidance, Section I (Groupings of Abstract Ideas); see Final Action
10.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. 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.”); Mortg. Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding that computer-
implemented method for “anonymous loan shopping” was an abstract idea
because it could be “performed by humans without a computer”); Versata
Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person’s mind.”); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use
of “computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible); id. at 1376
(distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d
859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319 (Fed. Cir. 2010), as directed to inventions that “could not, as a practical
Appeal 2020-000991
Application 14/870,456
8

matter, be performed entirely in a human’s mind”).
Furthermore, our reviewing court has found claims to recite judicial
exceptions when they recited similar subject matter in regard to
mathematical concepts. See Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“The concept of hedging . . . reduced to a mathematical formula . . . is an
unpatentable abstract idea[.]”); Diamond v. Diehr, 450 U.S. 175, 191 (1981)
(“A mathematical formula as such is not accorded the protection of our
patent laws”) (citing Gottschalk v. Benson, 409 U.S. 63 (1972)); Parker v.
Flook, 437 U.S. 584, 594 (1978) (“[T]he discovery of [a mathematical
formula] cannot support a patent unless there is some other inventive
concept in its application.”); Benson, 409 U.S. at 71–72 (concluding that
permitting a patent on the claimed invention “would wholly pre-empt the
mathematical formula and in practical effect would be a patent on the
algorithm itself”); Mackay Radio & Telegraph Co. v. Radio Corp. of Am.,
306 U.S. 86, 94 (1939) (“[A] scientific truth, or the mathematical expression
of it, is not patentable invention[.]”); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of
mathematical calculations based on selected information” are directed to
abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758
F.3d 1344, 1350 (Fed. Cir. 2014) (holding that claims to “a process of
organizing information through mathematical correlations” are directed to an
abstract idea); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (identifying the concept of
“managing a stable value protected life insurance policy by performing
calculations and manipulating the results” as an abstract idea).
Therefore, we conclude the claims recite a judicial exception pursuant
to Step 2A, Prong One, of the 2019 Revised Guidance.
Appeal 2020-000991
Application 14/870,456
9

Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception.” 2019 Revised Guidance,
Section III(A)(2). We note that a “claim that integrates a judicial exception
into a practical application will apply, rely on, or use 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.” 2019 Revised Guidance, Section III(A)(2).
Appellant contends, “[t]he present claims improve the functionality of
a computing device by providing mechanisms to perform functions to not
only generate a patient care plan for the patient, but also modify that patient
care plan to improve it such that it is personalized to the lifestyle of the
particular patient.” Appeal Brief 8.
We do not find Appellant’s arguments persuasive because any alleged
improvement to the efficiency, speed, and accuracy of patient care, arise out
of the conventional advantages of using the claimed computing device as a
tool, and not a particular improvement to the computing device itself (see
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“[M]erely adding computer functionality to increase
the speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea”)); see 2019 Revised Guidance, 84 Fed. Reg. at 55;
see also Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed.
Cir. 2019) (“This invention makes the trader faster and more efficient, not
the computer. This is not a technical solution to a technical problem.”); see
also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir.
2016) (distinguishing between “claims are directed to an improvement to
Appeal 2020-000991
Application 14/870,456
10

computer functionality versus being directed to an abstract idea” or 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.”); see also Alice, 573
U.S. at 222 (“In holding that the process was patent ineligible, we rejected
the argument that ‘implement[ing] a principle in some specific fashion’ will
‘automatically fal[l] within the patentable subject matter of § 101.’”
(alterations in original) (quoting Flook, 437 U.S. at 593 )).
Further, as the Federal Circuit has explained, a “claim for a new
abstract idea is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming the technique
claimed was “[g]roundbreaking, innovative, or even brilliant,” that would
not be enough for the claimed abstract idea to be patent eligible. See Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Claim 11’s method does not recite any improvement to the claimed
computing device, instead the method only uses the computing device to
implement a patient care plan albeit a personalized one. See Appeal Brief 8
(“The present claims improve the functionality of a computing device by
providing mechanisms to perform functions to not only generate a patient
care plan for the patient, but also modify that patient care plan to improve it
such that it is personalized to the lifestyle of the particular patient.”)
(Emphasis added).
In McRO,9 the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over

9 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303 (Fed.
Cir. 2016).
Appeal 2020-000991
Application 14/870,456
11

the existing, manual 3-D animation techniques” through the “use[ of] limited
rules . . . specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1316.
Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators; and the rules are limiting because they define morph
weight sets as a function of phoneme sub-sequences. McRO, 837 F.3d at
1313 (internal citations omitted).
We find no evidence of record here that the present situation is like the
one in McRO where computers were unable to make certain subjective
determinations, i.e., regarding morph weight and phoneme timings, which
could only be made prior to the claimed invention by human animators. See
Specification ¶ 24. The Background section of the McRO ’576 patent
includes a description of the admitted prior art method and the shortcomings
associated with that prior method. See McRO, 837 F.3d at 1303–06. There
is no comparable discussion in Appellant’s Specification or elsewhere of
record, or other showing on the record before us that the presently claimed
invention improves technology.
Subsequently, we detect no additional element (or combination of
elements) recited in Appellants’ representative claim 11 that integrates the
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2). For example, Appellant’s claimed additional elements
(e.g., computing device; computer readable storage medium) do not: (1)
improve the functioning of a computer or other technology; (2) are not
applied with any particular machine (except for a generic computer); (3) do
not effect a transformation of a particular article to a different state; and (4)
Appeal 2020-000991
Application 14/870,456
12

are not applied in any meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h); see also 2019 Revised
Guidance, 84 Fed. Reg. at 55 nn.25, 27, 28, 29, 30, 31 and 32; see also
Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims”).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2).
Step 2B identified in the 2019 Revised Guidance
In Step 2B, we need to consider whether an additional or combination
of elements, “[a]dds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” or “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.”
2019 Revised Guidance, 84 Fed. Reg. at 56.
The 2019 Revised Guidance states:
In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity must
be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional
activity, see MPEP 2106.05(d), as modified by the USPTO
Berkheimer Memorandum.
Appeal 2020-000991
Application 14/870,456
13

2019 Revised Guidance, 84 Fed. Reg. at 56 n.36 (emphasis added).
The Berkheimer Memorandum10 Section III(A) states when
formulating rejections, “[i]n a step 2B analysis, an additional element (or
combination of elements) is not well-understood, routine or conventional
unless the examiner finds, and expressly supports a rejection in writing.”
Berkheimer Memorandum at 3. The Berkheimer Memorandum provides
four criteria for the Examiner to utilize to provide support in order for the
additional elements to be considered to be well–understood, routine, or
conventional.11
Appellant contends:
The Final Office Action has not satisfied any of these 4 ways of
establishing additional elements as being well-understood,
routine, or conventional and thus, has not presented a prima facie
case. The present claims recite an ordered combination of
elements that are substantially more than any alleged abstract
idea and the Final Office Action has failed to present a valid

10 USPTO Commissioner for Patents Memorandum dated April 19, 2018,
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)”
available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.

11 Berkheimer Memorandum at 3–4 (Section III(A)) (“1. A citation to an
express statement in the specification or to a statement made by an applicant
during prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s) . . . . 2. A citation to one or
more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting
the well-understood, routine, conventional nature of the additional
element(s). . . . 3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional element(s) . . . .
4. A statement that the examiner is taking official notice of the well-
understood, routine, conventional nature of the additional element(s).”).
Appeal 2020-000991
Application 14/870,456
14

position that the features of the claims are well-understood,
routine, or conventional.
Appeal Brief 15; see Berkheimer Memorandum at 3–4 (Section III(A)).
The Examiner determines, “[w]hen considered as an ordered
combination, the claim limitations are found to be directed to an abstract
idea, similar to the abstract concept of collecting data, analyzing it and
displaying certain results of the collection and analysis (Electric Power
Group).” Final Action 3. The Examiner finds:
[T]he claims recite additional limitations of obtaining data via a
communication interface and outputting the personalized patient
care plan to a patient computing device. Those limitations
pertain to data gathering and outputting which extra solution
activity are that does not integrate the abstract idea into a
practical application as those limitations do not impose limits on
practicing the abstract idea.
Answer 4.
The Examiner categorizes the disputed claim limitations as extra-
solution activity and does not find the limitations to be an unconventional
ordered combination that include an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56. Appellant does not challenge the Examiner’s
categorization. See generally Reply Brief. Nor do we find such analysis to
be in error. See Specification ¶ 58. Accordingly, we agree with the
Examiner’s determination that the additional elements add insignificant
extra-solution activity to the judicial exception. See MPEP § 2106.05(g).12

12 Another consideration when determining whether a claim
integrates the judicial exception into a practical application in
Step 2A Prong Two or recites significantly more in Step 2B is
whether the additional elements add more than insignificant
extra-solution activity to the judicial exception. The term “extra-
Appeal 2020-000991
Application 14/870,456
15

Further in BASCOM, our reviewing court found that while the claims
of the patent were directed to an abstract idea, the patentee alleged an
“inventive concept can be found in the ordered combination of the claim
limitations that transform the abstract idea of filtering content into a
particular, practical application of that abstract idea.” BASCOM Global
Internet Servs., Inc., v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir.
2016). In particular, the patent in BASCOM claimed “a technology-based
solution (not an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on the Internet
that overcomes existing problems with other Internet filtering systems.”
BASCOM, 827 F.3d at 1351.
Claim 11 is distinguishable, as it recites an abstract-idea-based
solution, that is, the implementation of a patient care plan personalized for
the patient who requires the care. See generally Specification. Therefore,
we are not persuaded that an ordered combination of limitations in
representative claim 11 provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56. Accordingly, we conclude claims 11–28 are
directed to concepts performed in the human mind such as observation,

solution activity” can be understood as activities incidental to the
primary process or product that are merely a nominal or
tangential addition to the claim. Extra-solution activity includes
both pre-solution and post-solution activity. An example of pre-
solution activity is a step of gathering data for use in a claimed
process, e.g., a step of obtaining information about credit card
transactions, which is recited as part of a claimed process of
analyzing and manipulating the gathered information by a series
of steps in order to detect whether the transactions were
fraudulent.
MPEP § 2106.05(g).
Appeal 2020-000991
Application 14/870,456
16

evaluation, judgment, and opinion, as well as, mathematical concepts such
as mathematical relationships, mathematical formulas or equations,
mathematical calculations as identified in the 2019 Revised Guidance, and
are directed to the judicial exception without significantly more. See 2019
Revised Guidance, 84 Fed. Reg. at 52.

35 U.S.C. § 103 rejection
Appellant argues that Rock fails to teach or suggest the operations of:
(1) obtain[ing], via the information communication interface,
lifestyle information about the patient from a plurality of lifestyle
information source computing systems, wherein the lifestyle
information characterizes a lifestyle of the patient with regard to
a way that the specific patient conducts their life on a daily basis;

(2) perform[ing], by a lifestyle data analysis engine of the PPCP
system, lifestyle inference analysis of the lifestyle information
by applying one or more rules or algorithms to the lifestyle
information to generate lifestyle inference data characterizing at
least one qualitative characteristic of a lifestyle of the patient; or

(3) automatically modify[ing], by the personalized care plan
creation/update engine of the PPCP system, the initial patient
care plan, based on a set of one or more rules or algorithms
executed by the personalized care plan creation/update engine on
the lifestyle inference data and the initial patient care plan, to
comprise one or more patient actions specific to the patient based
on the lifestyle information, thereby generating a personalized
patient care plan.

Appeal Brief 20 (“The Final Office Action alleges that Rock teaches
enumerated elements (1)-(3) above in paragraph [0257], [0285], Figure 3
element 321, and paragraphs [0329]-[0331].”); see claim 11; see also Reply
Brief 15–17).
Appeal 2020-000991
Application 14/870,456
17

The Examiner finds, “Rock explains that a PHP (Patient Healthcare
Plan) defines information needed (145), contains events for patient care to
be execute (146).” Answer 6 (emphasis added). Rock discloses:
A system and method integrating healthcare delivery to
patients using data bridges that connect healthcare
providers, patients, patient medical education, and patient
monitoring devices is disclosed. The system incorporates
a mobile user interface device (MUD) allowing user inputs
or detected events from a variety of medical
instrumentation devices (MID) to be controlled by a
healthcare web server computer (HWS) over a computer
communication network (CCN). Information retrieved
from the MID and transmitted by the MUD to the HWS is
then used by a patient healthcare monitor (PHM) process
to populate a medical records database (MRD). MRD
contents are then matched to patient healthcare plan (PHP)
event/time triggers (ETT) that drive information from a
provider content database (PCD) to the MUD through the
HWS over the CCN. Healthcare provider update/control
of the PHP/ETT/PCD allow integration of patient
educational materials with patient health status
monitoring.
Rock Abstract (emphasis added).
We agree with the Examiner’s determination that Rock discloses the
enumerated element 1 listed above. The Examiner finds in regard to the
enumerated elements 2 and 3, “[w]hile in Rock, lifestyle analysis is inferred
as lifestyle data affects user care plan, Examiner relies on Mault for a more
explicit recitation of a lifestyle analysis engine which perform the lifestyle
analysis and causes a modification to the patient care plan.” Answer 8
(emphasis added); see Appeal Brief 22. Appellant argues, “[n]owhere in
Mault is there any teaching of enumerated elements (2) and (3) above.”
Appeal Brief 22.
Mault discloses:
Appeal 2020-000991
Application 14/870,456
18

A system for assisting a person achieve a health related goal
comprises a local computer, adapted to receive a physiological
parameter or other health related data relating to a subject, and a
remote computer, in communication with the local computer
over a communications network, adapted to receive data from the
local computer, and further operable to provide biofeedback or
other feedback or assistance to the subject, wherein the subject is
assisted in achieving a health-related goal.

Mault Abstract (emphasis added).
The Examiner further determines that Mault discloses a more explicit
recitation of a lifestyle analysis:
Mault for instance recites software to analyze data received and
give feedback based on the analyzed data (¶ 43 “analyzing the
data using a software program running on the second computer,
and using the second computer to generate feedback relevant to
weight control (such as a diet plan, exercise plan, or weight
control program in the form of a web page) viewable by the
person over the communications network”). Mault further
elaborates on receiving different user lifestyle data in different
manners and from different sources in ¶ 68, 70, and ¶ 71 and 73
illustrate the different ways data is analyzed and then feedback
is provided (¶ 73).
Answer 9.
We do not find Appellant’s arguments persuasive of Examiner error
because we agree with the Examiner’s determination that the combination of
Rock and Mault discloses the claimed invention. We find the Examiner has
supported the obviousness determination by showing articulated reasoning
with sufficient rational underpinning to support the legal conclusion of
obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see Final Action 6 (“It
would have been obvious to one of ordinary skill in the art to add the
features of Mault to Rock with the motivation of assisting patients in
Appeal 2020-000991
Application 14/870,456
19

achieving health-related goals.”). Accordingly, we sustain the Examiner’s
obviousness rejection of claims 11, 17–20, and 26–28 not argued separately.
See Appeal Brief 24.

Claims 12 and 21
Appellant further argues that, in “regard to claims 12 and 21, the
alleged combination of teachings from Rock and Mault fails to teach that
automatically modifying the initial patient care plan to comprise one or more
patient actions specific to the patient based on the lifestyle inference data.”
Appeal Brief 24. Appellant argues the categories specified in the Final
Action, i.e., DISEASE and DIABETES, are just disease groups for purposes
of defining threshold/alerts and “are not lifestyle categories that categorize a
patient based on lifestyle inference data as recited in the present claims.”
Appeal Brief 24; see Final Action 6–7 (citing Rock ¶¶ 119, 251, 257, 284,
286).
Rock discloses in paragraph 251 (emphasis added):
As indicated, each major element of the PHP may be nested
with other elements or care plan groups as indicated in FIG.
21 (2100)-FIG. 24 (2400). This nesting capability permits
formalized procedures for specific care plan actions to be
defined and then applied to a given patient in a customized
manner. For example, care plans for heart disease and diabetes
may be formalized and standardized by healthcare administrative
staff and then applied as HEART DISEASE and
DIABETES care plan groups to the customized PHP for a
given patient.

We do not find Appellant’s argument persuasive of Examiner error.
Appellant has not presented a persuasive reason as to why the lifestyle
Appeal 2020-000991
Application 14/870,456
20

categories of the claimed invention are distinguishable from the lifestyle
categories teachings of Rock. See Specification ¶ 24.13

Claims 13 and 22
Claims 13 and 22 recite in the preamble, “automatically modifying the
initial patient care plan to comprise one or more patient actions specific to
the patient based on the lifestyle inference data.” Appellant contends, the
Final Action:
provides no specific teaching to actually schedule a patient
action to be performed by the patient based on existing schedule
information specified in the lifestyle information. While
[Rock’s] paragraph [0246] mentions activities that may be
scheduled according to daily activation time, day-of-week time
activation, etc., there is nothing in this that specifically teaches
to take an existing schedule specified in lifestyle information of
a patient and then schedule a patient action to be performed based
on this patient’s existing schedule information in lifestyle
information.

Appeal Brief 26; see Final Action 7.
The Examiner finds the claims recite optional language such as
“modifying the initial patient care plan to comprise one or more patient
actions” and “in response to analyzing the lifestyle information, at least one
of.” Final Action 7. Accordingly, the Examiner finds Rock discloses in
paragraph 136 one of the options recited in the claims, “directing a patient

13 The term “lifestyle information” refers to the data collected that
characterizes the lifestyle of the patient and may encompass various
temporal, spatial, environmental, and behavioral information/data about the
patient that together comprises a unique combination of information/data
that characterizes and represents the way in which that specific patient
conducts their life on a daily basis. Specification ¶ 24.
Appeal 2020-000991
Application 14/870,456
21

action to be performed at one or more specific locations associated with
locations specified in the lifestyle information.” Final Action 7; see MPEP
§ 2103.IC (“Language that suggests or makes a feature or step optional but
does not require that feature or step does not limit the scope of a claim under
the broadest reasonable claim interpretation.”).
Appellant argues, “nowhere in Rock is there any concept of any
lifestyle information that specifies locations, let alone using such
information to direct a patient action to be performed at one or more specific
locations as part of a process of modifying an initial patient care plan.”
Appeal Brief 26. The Examiner finds Rock discloses that, “[t]his allows the
PHP to independently direct patient monitoring and other activity without
the need for direct healthcare provider/hospital monitoring.” Final Action 7
(citing Rock ¶136 (emphasis added)). The Examiner further finds Mault
discloses:
selecting one or more foods to be consumed based on availability
of foods to the patient, food preferences of the patient, and
patient schedule information specified in the lifestyle
information, also seem Mault (¶ 71); or selecting a physical
activity to be part of the one or more patient actions in response
to analysis of the lifestyle information indicating availability of
facilities for performing the selected physical activity, also see
Mault (¶ 38).
Final Action 7.
Accordingly, we do not find Appellant’s argument persuasive of
Examiner error because we agree with the Examiner’s findings that the
combination of Rock and Mault teaches “directing a patient action to be
performed at one or more specific locations associated with locations
specified in the lifestyle information” as recited in claims 13 and 22.

Appeal 2020-000991
Application 14/870,456
22

Claims 14 and 23
Appellant contends:
Regarding claims 14 and 23, the alleged combination of
teachings from Rock and Mault fails to teach or render obvious
the feature that the lifestyle information comprises temporal
lifestyle information, and wherein the temporal lifestyle
information comprises a data structure defining a schedule of
events that the patient encounters on a routine basis and events
that the patient encounters on a non-routine basis.
Appeal Brief 27.
The Specification discloses in paragraph 25:
For example, with regard to temporal lifestyle
information, the lifestyle information may comprise one or more
data structures specifying one or more schedules of events that
the patient undergoes either on a routine basis or on a dynamic
basis, e.g., a baseline routine schedule that may be dynamically
updated as events occur or do not occur. The temporal lifestyle
information may comprise, for example, the time that the patient
wakes in the morning, when they have their meals, when they go
to work and return home, when they take their children to school,
when they shop for groceries, when they go to bed at night,
scheduled non-routine events, free time, scheduled flight, ferry,
train, or other ground transportation departure/arrival times,
and/or any other temporal information characteristic of the
patient’s daily life and other non-routine scheduled events.

The Examiner finds, “Rock teaches wherein the lifestyle information
comprises temporal lifestyle information, and wherein the temporal lifestyle
information comprises a data structure defining a schedule of events that the
patient encounters on a routine basis and events that the patient encounters
on a non-routine basis (Fig. 58).” Final Action 8. We agree with the
Examiner’s determination that Rock’s Figure 58 teaches temporal lifestyle
Appeal 2020-000991
Application 14/870,456
23

information as recited in the claims and defined by paragraph 25 of the
Specification.

Claims 15 and 24
Appellant contends, “[r]egarding claims 15 and 24, the alleged
combination of teachings from Rock and Mault does not teach or render
obvious the feature that lifestyle information comprises spatial lifestyle
information, and wherein the spatial lifestyle information comprises a data
structure identifying locations frequented by the patient.” Appeal Brief 27–
28. Claim 15 recites, “wherein the lifestyle information comprises spatial
lifestyle information, and wherein the spatial lifestyle information comprises
a data structure identifying locations frequented by the patient.” Rock’s
Figure 59 shows a data structure having two questions asking how often the
patient visits the dentist and the physician. We agree with the Examiner’s
determination that Rock’s Figure 59 teaches spatial lifestyle information as
recited in the claims. See Final Action 8.

Claims 16 and 25
Appellant contends:
the alleged combination of teachings from Rock and Mault does
not teach or render obvious the feature that the lifestyle
information comprises environmental lifestyle information, and
wherein the environmental lifestyle information comprises a data
structure indicating environmental quality and resource
availability in environments routinely encountered by the
patient, in which the patient is currently present, or in which the
patient is predicted to be present at a later time.
Appeal Brief 28.

Appeal 2020-000991
Application 14/870,456
24

The Specification discloses in paragraph 27:
With regard to environmental lifestyle information, this
information comprises one or more data structures with
indications of the environmental quality and resource availability
in the environments in which the patient is present, is predicted
to be present at a later time (such as based on the temporal and
spatial lifestyle information), or typically is present on a daily or
routine basis. For example, environmental lifestyle information
may include information about the patient’s home location, e.g.,
in a rural, urban, or suburban environment, has access to parks,
walking trails, etc. This environmental lifestyle information may
include information about the patient’s work location including
whether the patient works in an office setting with fluorescent
lights and relative quiet, in a manufacturing setting with heavy
machinery and loud noises, works with computers the majority
of the day, has his/her own office or is in a cubicle, the number
of co-workers the patient has that they interface with on a daily
basis, the types and/or identities of establishments around the
patient’s home/work for purposes of determining access to
resources (e.g., products and services), air quality, weather
conditions, elevation (for purposes of oxygen level
determination, for example), and the like.
The Examiner finds, “Rock teaches wherein the lifestyle information
comprises environmental lifestyle information, and wherein the
environmental lifestyle information comprises a data structure indicating
environmental quality and resource availability in environments routinely
encountered by the patient” in Figure 59. Final Action 8. We agree with the
Examiner’s determination that Rock’s Figure 59 teaches environmental
lifestyle information as recited in the claims and defined by paragraph 27 of
the Specification.

Appeal 2020-000991
Application 14/870,456
25

CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–28 101 Eligibility 11–28
11–28 103 Rock, Mault 11–28
Overall
Outcome
11–28

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED