International Business Machines Corporation

Patent Trials and Appeals Board

Jun 30, 2020

2020000074 (P.T.A.B. Jun. 30, 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.
15/045,475 02/17/2016 Jonathan M. Harmon SVL920150152US1 1026
45725 7590 06/30/2020
Walder Intellectual Property Law PC
445 Crestover Circle
Richardson, TX 75080
EXAMINER
GO, JOHN P
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
06/30/2020 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 JONATHAN M. HARMON,
ATUL KUMAR, RUSSELL G. OLSEN, and MATT T. WESTFALL
Appeal 2020-000074
Application 15/045,475
Technology Center 3600
Before MICHAEL J. STRAUSS, MICHAEL J. ENGLE, and
SCOTT RAEVSKY, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6, 8–16, and 18–20, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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
Corp. as the real party in interest. Appeal Br. 2.
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Application 15/045,475

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TECHNOLOGY
The application relates to analyzing a patient’s electronic medical
records (EMRs). Spec. Abstract. Medical services provided to a patient are
recorded in the patient’s records using a medical code, such as a particular
diabetes treatment being recorded with the code “L5000.” See id. ¶¶ 18–19.
If a medical provider “continues to treat the patient the following year” and
repeats the same medical code (“L5000”), the Specification refers to this as
“re-coding.” Id. ¶ 19. Some conditions, such as type 2 diabetes, are “an
ongoing medical malady that will persist from one year to the next” and
“need to be re-coded from time to time by the doctor” (e.g., regular doctor
visits to evaluate the patient’s diabetes). Id. ¶ 22. However, Medicare and
other insurance providers may have guidelines stating that doctors will only
be paid once per calendar year for treatment of a patient with type 2
diabetes. Id. Thus, “a patient that has been previously coded as having
type 2 diabetes should be checked for re-coding every calendar year,” but
such re-coding should not be done more than once per year. Id. The
claimed invention therefore provides a notification if, for example, a
patient’s records show that the patient received diabetes treatment two years
ago but has not received diabetes treatment within the past year.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
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1. A method, in a data processing system comprising at least one
processor and a memory comprising instructions which, when
executed by the at least one processor, causes the at least one
processor to implement a medical code re-coding system, the
method comprising:
analyzing, by a patient EMRs analysis engine of the
medical code re-coding system, a patient medical record
corresponding to a patient, to identify at least one previous
occurrence of a medical code associated with a medical malady
of the patient in the patient medical record that has not been re-
coded in a current time period of the patient medical record;
applying, by a re-coding rules engine of the medical code
re-coding system, at least one medical code re-coding rule
corresponding to the at least one previous occurrence of the
medical code to the patient medical record, wherein applying at
least one medical code re-coding rule corresponding to the at
least one previous occurrence of the medical code to the patient
medical record comprises:
determining, by the re-coding rules engine, whether
the medical code is present in one or more entries in the
patient medical record within a specified time period prior
to the current time period; and
determining, by the re-coding rules engine, that the
medical code is a candidate for re-coding in a current time
period in response to the medical code not being present
in any of the entries in the patient medical record within
the specified time period;
determining, by the re-coding rules engine, based on
results of the application of the at least one medical code re-
coding rule, whether the medical code is a candidate for re-
coding in the current time period; and
outputting, by a re-coding alert/notification engine of the
medical code re-coding system, a notification of the medical
code being a candidate for re-coding in the current time period in
response to the determination indicating that the medical code is
a candidate for re-coding in the current time period.
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REFERENCES
The Examiner relies on the following prior art references:
Ghouri US 2016/0357910 A1 Dec. 8, 2016
Levine US 2003/0225597 A1 Dec. 4, 2003
Sporleder US 2015/0254407 A1 Sept. 10, 2015
REJECTIONS
Claims 1–6, 8–16, and 18–20 stand rejected under 35 U.S.C. § 101 as
directed to an abstract idea without significantly more. Final Act. 2.
Claims 1–3, 5, 6, 8–13, 15, 16, and 18–20 stand rejected under 35
U.S.C. § 103 as obvious over Sporleder and Ghouri. Final Act. 7.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103 as obvious over
Sporleder, Ghouri, and Levine. Final Act. 18.
ISSUES
1. Did the Examiner err in concluding that claim 1 is directed to
ineligible subject matter without significantly more?
2. Did the Examiner err in finding the combination of Ghouri and
Sporleder teaches or suggests the limitations of claim 1 italicized above?
ANALYSIS
§ 101
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
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Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law,
based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). A
court must be cognizant that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas” (Mayo, 566 U.S. at 71), and “describing the claims at . . . a high level
of abstraction and untethered from the language of the claims all but ensures
that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “we evaluate the
focus of the claimed advance over the prior art to determine if the character
of the claim as a whole, considered in light of the specification, is directed to
excluded subject matter.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1092 (Fed. Cir. 2019) (quotation omitted). “The inquiry often is
whether the claims are directed to ‘a specific means or method’ for
improving technology or whether they are simply directed to an abstract
end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed.
Cir. 2017).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
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patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Supreme Court has “described step two of this analysis as a
search for an ‘inventive concept’—i.e., an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible concept itself.” Id. at
217–18 (quotation omitted). However, “[t]he abstract idea itself cannot
supply the inventive concept, no matter how groundbreaking the advance.”
Trading Techs., 921 F.3d at 1093 (quotation omitted). Moreover, “features
that are not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice
analysis.” Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355,
1363 (Fed. Cir. 2019).
In 2019, the U.S. Patent & Trademark Office published revised
guidance on the application of § 101. USPTO, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”);
USPTO, October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“Oct. Update”). Under that guidance, we look to
the following steps to determine whether the claim recites the following
items:
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USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A, Prong 1
A judicial exception, such as a law of nature or
any of the following groupings of abstract
ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental
economic practice; or
3) Mental processes, such as an observation
or evaluation performed in the human
mind
2106.04
2A, Prong 2 Any additional limitations that integrate the judicial exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were
not “well-understood, routine, conventional”
2106.05(d)
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101 and no further analysis is
necessary. Id. at 54. Similarly, under the Guidance, “if the claim as a whole
integrates the recited judicial exception into a practical application of that
exception,” then no further analysis is necessary. Id. at 53, 54.
Step 2A, Prong 1
Claim 1 recites in part the following:
1. A method . . . to implement a medical code re-coding system,
the method comprising:
analyzing, by a patient [medical records] analysis engine
of the medical code re-coding system, a patient medical record
corresponding to a patient, to identify at least one previous
occurrence of a medical code associated with a medical malady
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of the patient in the patient medical record that has not been re-
coded in a current time period of the patient medical record;
applying, by a re-coding rules engine of the medical code
re-coding system, at least one medical code re-coding rule
corresponding to the at least one previous occurrence of the
medical code to the patient medical record, wherein applying at
least one medical code re-coding rule corresponding to the at
least one previous occurrence of the medical code to the patient
medical record comprises:
determining, by the re-coding rules engine, whether
the medical code is present in one or more entries in the
patient medical record within a specified time period prior
to the current time period; and
determining, by the re-coding rules engine, that the
medical code is a candidate for re-coding in a current time
period in response to the medical code not being present
in any of the entries in the patient medical record within
the specified time period;
determining, by the re-coding rules engine, based on
results of the application of the at least one medical code re-
coding rule, whether the medical code is a candidate for re-
coding in the current time period . . . .
Thus, claim 1 recites “determining” whether a patient is due for a particular
service based on “analyzing” whether the patient has received the service in
the past (e.g., two years ago) but has not received the service in the most
recent time period (e.g., the past year). Under the broadest reasonable
interpretation, such “analyzing” and “determining” are mental processes that
can be performed entirely in the human mind. See Guidance 52 & nn.14–15.
For example, a person determining that she is due for a dental cleaning
because she got a cleaning two years ago but not in the past year is
performing the same basic process entirely in the human mind.
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We agree with the Examiner’s analogy of claim 1 to Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) because the
claim collects data (i.e., a patient medical record) and analyzes it (i.e.,
identifying a medical code that occurs in the past but not the most recent
past). Ans. 5. Here, as in Electric Power, “[t]hough lengthy and numerous,
the claims do not go beyond requiring the collection, analysis, and display of
available information in a particular field, stating those functions in general
terms, without limiting them to technical means for performing the functions
that are arguably an advance over conventional computer and network
technology.” Elec. Power, 830 F.3d at 1351. As the Federal Circuit
explained in that case, “merely selecting information, by content or source,
for collection, analysis, and display does nothing significant to differentiate
a process from ordinary mental processes, whose implicit exclusion from
§ 101 undergirds the information-based category of abstract ideas.” Id. at
1355. Thus, the Federal Circuit has held that “the ‘realm of abstract ideas’
includes ‘collecting information, including when limited to particular
content’”; “‘analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [which are] essentially
mental processes’”; “‘merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation) . . . as an ancillary part of such collection
and analysis’”; and “a combination of these abstract-idea categories.”
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (quoting Elec. Power, 830 F.3d at 1353). The claim here is such a
combination.
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Appellant argues that “to be classified as an organized human activity,
the claims must be able to be wholly and reasonably performed within the
human mind.” Reply Br. 15. Appellant’s argument conflates “mental
processes” and “certain methods of organizing human activity,” which the
Guidance treats as two separate groupings. Guidance 52. Moreover, the
Federal Circuit and Guidance agree that a claim need not be performed
wholly in the human mind to recite a mental process. E.g., 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.”). Instead, any non-mental
steps or components are analyzed as “additional elements” beyond the
abstract idea.
Thus, claim 1 recites an abstract idea under step 2A, prong 1 of the
Guidance.
Step 2A, Prong 2
Beyond the abstract idea, claim 1 recites “outputting, by a re-coding
alert/notification engine of the medical code re-coding system, a notification
of the medical code being a candidate for re-coding in the current time
period in response to the determination indicating that the medical code is a
candidate for re-coding in the current time period.” Yet a “notification” of
the result of the mental process is no different than the “display” of such a
result that the Federal Circuit has repeatedly held insufficient for eligibility.
E.g., Elec. Power, 830 F.3d at 1355 (“the claims’ invocation of computers,
networks, and displays does not transform the claimed subject matter into
patent-eligible applications” (emphasis added)); see also Ans. 5. Nothing
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about the “notification” provides a technological solution, solves a
technological problem, or otherwise improves the technology. At best, the
“notification” constitutes insignificant post-solution activity that merely
provides the result of the abstract mental process. See MPEP § 2106.05(g).
Claim 1 also recites that the medical records are “EMRs,” i.e.,
electronic medical records. Similarly, the preamble of claim 1 also recites
that the method is “in a data processing system comprising at least one
processor and a memory comprising instructions which, when executed by
the at least one processor, causes the at least one processor” to implement a
medical code re-coding system. Although the “re-coding system” is referred
to in the body of the claim, none of the “processor”; “memory”;
“instructions”; or “data processing system” are referred to again in the body
of the claim, nor are they required to breathe life into the claims, and
Appellant does not argue such preamble terms are limiting. Regardless,
even if these preamble recitations were limiting, the Supreme Court is clear
that “the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at
222–23. Similarly, the Federal Circuit has “repeatedly held that such
invocations of computers . . . that are not even arguably inventive are
insufficient to pass the test of an inventive concept in the application of an
abstract idea.” Elec. Power, 830 F.3d at 1355 (quotation omitted).
The Specification further confirms that any “electronic” or computer
components here are generic, not an improvement. E.g., Spec. ¶¶ 33
(“These computer readable program instructions may be provided to a
processor of a general purpose computer”), 44 (discussing exemplary
general purpose computers).
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The other claimed “engines” are part of the abstract idea and hence
not an additional element beyond the abstract idea. BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”). Yet even if we were to
consider these “engine[]” limitations under prong 2 rather than prong 1, the
Specification describes the “engine” as a black box software application
running on a generic server. See Spec. ¶¶ 48 (“the memory 106 of the server
102 includes a medical code re-coding engine application 110 configured to
provide a plurality of services to users via the network 130”), 50 (“although
depicted together in server 102 in Figure 1, the services and functions of the
medical code re-coding engine application 110 may be housed in separate
physical servers, or separate virtual servers within the same server”). The
preamble discussed above similarly suggests that these black box engines
are merely “instructions” on a “processor.” And as discussed above, the
function of that black box can be performed entirely in the human mind.
Thus, at best, the “engine” merely automates an otherwise mental process
without stating any technological improvement to the process. “The mere
fact that the inventor applied coined labels to conventional structures does
not make the underlying concept inventive.” Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Although we treat the “medical code” aspect of claim 1 as part of the
abstract idea under prong 1, particularly given that neither the claim nor the
rest of the Specification specify any particular format for the code, even if
we were to consider such limitations under prong 2, we agree with the
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Examiner (Ans. 8) that “merely limiting the field of use of the abstract idea
to a particular environment does not render the claims any less abstract.”
Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1373
(Fed. Cir. 2017) (quotation omitted); see also Alice, 573 U.S. at 223
(“limiting the use of an abstract idea to a particular technological
environment” cannot transform a patent-ineligible abstract idea into a patent-
eligible invention (quotation omitted)); MPEP § 2106.05(h).
The Examiner correctly points out that Appellant argues the claims
are a technical improvement “without explaining what improvements, aside
from the economic improvements of properly compensating healthcare
providers, are achieved.” Ans. 4 (citing Appeal Br. 10). Merely reciting the
entirety of the claim fails to specifically identify what aspect, if any,
Appellant believes is a technological improvement.
Thus, claim 1 does not integrate the abstract idea into a practical
application under step 2A, prong 2 of the Guidance.
Step 2B
Appellant also argues that there is no evidence that the additional
limitations were well-understood, routine, and conventional. Appeal Br. 30
(citing Berkheimer v. HP Inc., 881 F.3d 1360, 1363 (Fed. Cir. 2018);
Memorandum fr. Robert W. Bahr to Patent Examining Corps, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19,
2018)). However, the Specification itself explains that “[t]hese computer
readable program instructions may be provided to a processor of a general
purpose computer.” Spec. ¶ 33. Similarly, the server running the engine
application is described as having a generic processor (whether one or more)
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with generic memory (e.g., “DRAM”) running “any operating system.” Id.
¶ 44; see also id. ¶¶ 53 (providing examples of broad categories of IBM
servers), 50 (“The modules performing their respective functions for the
medical code re-coding engine application 110 may be housed in the same
server, on different servers, or any combination thereof.”). The Supreme
Court and Federal Circuit are clear that such generic computer components
were well-understood, routine, and conventional, whether alone or in
combination. Alice, 573 U.S. at 225.
Thus, claim 1 fails to recite significantly more than the abstract idea.
Dependent Claims
For the dependent claims, Appellant asserts that those claims “recite
additional features that clearly demonstrate the statutory nature of the
claimed invention as a whole.” Appeal Br. 31. However, Appellant fails to
identify any specific limitation in any dependent claim or substantively
explain why it recites sufficiently more than the abstract idea of the
independent claims. Berkheimer itself stated that “[c]ourts may treat a claim
as representative in certain situations, such as if the patentee does not present
any meaningful argument for the distinctive significance of any claim
limitations not found in the representative claim.” Berkheimer, 881 F.3d at
1365. Thus, we treat claim 1 as representative.
Conclusion on § 101
Accordingly, we sustain the Examiner’s § 101 rejection of claim 1,
and claims 2–6, 8–16, and 18–20, which Appellant argues are patentable for
similar reasons. See Appeal Br. 31; 37 C.F.R. § 41.37(c)(1)(iv).
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§ 103
Appellant contends that the combination of Sporleder and Ghouri fails
to teach or suggest the “applying” step’s “determining” sub-steps, italicized
in claim 1 above. The “determining” sub-steps in turn rely on the prior
“analyzing” step.
For the “analyzing” step, claim 1 recites “analyzing . . . a patient
medical record . . . to identify at least one previous occurrence of a medical
code associated with a medical malady . . . that has not been re-coded in a
current time period of the patient medical record.”
The Examiner relies on Sporleder for this limitation. Ans. 7–8 (citing
Sporleder Fig. 2).
Sporleder discloses that some medical code systems “may include a
suffix that identifies the encounter level, such as by distinguishing the initial
encounter from a subsequent encounter for the same condition.” Sporleder
¶ 4. Sporleder uses this distinction in determining what code should be used
for a subsequent encounter. In particular, Sporleder discloses to
“[d]etermine whether the diagnosis code from the prior encounter is
associated with an initial encounter.” Id. at Fig. 2 (emphasis added). If the
prior encounter code is not associated with an initial encounter, then
Sporleder discloses to “[p]roceed without modification of the diagnosis
code.” Id. However, if the prior encounter code is associated with an initial
encounter, then Sporleder discloses to “[d]etermine whether the diagnosis
code should be modified to be associated with a subsequent encounter.” Id.
(emphasis added). Put another way, Sporleder teaches that if the prior
encounter code was already for a subsequent encounter, then the next
encounter can just repeat the same code, but if the prior encounter code was
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for an initial encounter, then the next encounter should modify the code to
be for a subsequent encounter.
For the “determining” sub-steps, claim 1 further recites “determining
. . . that the medical code is a candidate for re-coding in a current time period
in response to the medical code not being present in any of the entries in the
patient medical record within the specified time period [prior to the current
time period].” Independent claims 11 and 20 recite commensurate
limitations.
The Examiner finds that “Sporleder does not expressly disclose” this
limitation and instead relies on Ghouri. Final Act. 9 (citing Ghouri ¶¶ 26–
41, Figs. 3, 5A, 5B, 6). Ghouri relates to “analyzing the potential for gaps in
patient care and promptly providing alerts to patients and/or care providers
that a gap in care may arise or may have arisen so that actions can be taken
before a negative result occurs.” Ghouri ¶ 2. The Examiner finds that
“Ghouri teaches analyzing a patient record to determine whether the patient
has received treatment, for example via the presence of an insurance and/or
diagnostic code, within a specified period of time.” Ans. 8 (citing Ghouri
¶¶ 26–41, Figs. 3, 5A, 5B, 6). Based on that finding, the Examiner
determines that “[i]t would have been obvious to modify the system [of]
Sporleder to incorporate displaying of the candidate codes in response to the
time-based evaluation as taught by Ghouri in order to verify that the
treatment protocol for a patient is in conformance with standards for a
diagnosis.” Id. (citing Ghouri ¶ 35).
Ghouri discloses that “if data on a particular patient indicates a history
of high blood pressure, the system of the present invention may be used to
alert the patient periodically to the need to have their blood pressure
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checked.” Ghouri ¶ 31. Thus, based on the “recommended treatment
protocol,” Ghouri determines the need for “follow-up visit(s)” and a “date
by which such activity(ies) should occur.” Id. ¶ 33. “Once the notice date
arrives, an early warning gap in care alert is generated . . . .” Id. “The
system may continue to check for whether any follow-up actions have not
yet been completed” and “[i]f records indicate the patient has not completed
the follow-up action a gap in care alert may be generated.” Id. ¶ 34.
Appellant argues that “Ghouri’s gap in care system is notifying the
user of the need to take action and thus, since there is no current treatment
being provided to the user, there would be no need to apply” the present
application’s claimed invention. Appeal Br. 35–36. Further, Appellant
argues “Ghouri is merely making the patient aware that the patient needs to
take action and is not making the doctor or medical professional aware of
the patient’s failure to take action.” Id. at 36.
However, Appellant’s argument is not commensurate with claim 1,
which does not specify who must receive the alert. Appellant’s argument
also does not accurately characterize Ghouri, which discloses “promptly
providing alerts to patients and/or care providers.” Ghouri ¶ 2 (emphasis
added); see also id. ¶¶ 44 (“deliver the alerts direct to patient devices . . . or
to other entities . . . (e.g., a health care provider device)”), 31. And
Appellant’s argument does not sufficiently address the Examiner’s rejection,
which instead relies on Sporleder for the output or alert notifying the doctor.
Ans. 9.
Appellant’s argument also does not accurately characterize the art or
the Examiner’s rejection with respect to timing (e.g., Appellant arguing that
in Ghouri no subsequent treatment has been scheduled yet). Ghouri teaches
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that the check can occur after treatment has already occurred: “The system
may continue to check for whether any follow-up actions have not yet been
completed. . . . If the patient records show that the patient completed the
follow-up action, at [step] 58 [in Figure 5B], the action is noted as being
completed in the patient record.” Ghouri ¶ 34. Moreover, the Examiner is
applying Ghouri to Sporleder, and Sporleder discloses checking codes
“during the subsequent encounter.” Sporleder ¶ 33.
Thus, we are not persuaded that the Examiner erred in concluding that
it would have been obvious to add Ghouri’s check for a gap in care to
Sporleder’s check for a prior code during a subsequent encounter. Notifying
a doctor of an existing gap in care during a subsequent encounter gives the
doctor the opportunity to remedy the gap in care and better conform with
any recommended treatment protocols. See Ans. 8 (“It would have been
obvious to modify the system o[f] Sporleder to incorporate displaying of the
candidate codes in response to the time-based evaluation as taught by Ghouri
in order to verify that the treatment protocol for a patient is in conformance
with standards for diagnosis.”).
For the dependent claims, Appellant argues that Levine fails to cure
the deficiencies of Sporleder and Ghouri but does not provide any further
substantive argument. See Appeal Br. 39. We are not persuaded that
Sporleder and Ghouri are deficient for the reasons discussed above, or that
Levine fails to teach or suggest the dependent claim limitations based on this
conclusory argument.
Accordingly, we sustain the Examiner’s § 103 rejections of
independent claims 1, 11, and 20, and their dependent claims 2–6, 8–10, 12–
16, 18, and 19. See 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2020-000074
Application 15/045,475

19
DECISION
The following table summarizes the outcome of each rejection:
Claims
Rejected Statute Basis Affirmed Reversed
1–6, 8–16, 18–
20
§ 101 Eligibility 1–6, 8–16, 18–
20

1–3, 5, 6, 8–13,
15, 16, 18–20
§ 103 Sporleder, Ghouri 1–3, 5, 6, 8–13,
15, 16, 18–20

4, 14 § 103 Sporleder,
Ghouri, Levine
4, 14
OVERALL 1–6, 8–16, 18–20

TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED