International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardOct 7, 20212020001777 (P.T.A.B. Oct. 7, 2021) Copy Citation 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. 15/045,937 02/17/2016 James S. Cox SVL920150142US1 7719 45725 7590 10/07/2021 Walder Intellectual Property Law PC 445 Crestover Circle Richardson, TX 75080 EXAMINER PATEL, JAY M ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 10/07/2021 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 JAMES S. COX, ANTHONY J. DIGIORGIO, RUSSELL G. OLSEN, WILLIAM R. PATTERSON, and JAMES A. SEXTON ____________ Appeal 2020-001777 Application 15/045,937 Technology Center 3600 ____________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and NINA L. MEDLOCK, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-001777 Application 15/045,937 2 STATEMENT OF THE CASE1 James S. Cox, Anthony J. DiGiorgio, Russell G. Olsen, William R. Patterson, and James A. Sexton (Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1–9, 11–18, and 20–22, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a way of generating and executing complex clinical protocols on a patient registry. Specification para. 1. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method, in a data processing system comprising a processor and a memory, for evaluating a patient registry and performing actions based on results of the evaluation, comprising: [1] receiving, by a demographics and medical data analysis engine and a lifestyle data analysis engine executing in the data processing system, from a resources database, 1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal Br.,” filed September 10, 2019) and Reply Brief (“Reply Br.,” filed January 6, 2020), and the Examiner’s Answer (“Ans.,” mailed November 15, 2019), and Final Action (“Final Act.,” mailed April 15, 2019). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as International Business Machines Corporation (Appeal Br. 2). Appeal 2020-001777 Application 15/045,937 3 a multi-level cascading set of rule data structures for evaluating attributes of the patient registry; [2] applying, by the demographics and medical data analysis engine and a lifestyle data analysis engine executing in the data processing system, the multi-level cascading set of rule data structures to the patient registry; [3] determining, by a personalized care plan monitor engine executing in the data processing system, based on the application of the multi-level cascading set of rule data structures by the demographics and medical data analysis engine and a lifestyle data analysis engine, for each rule data structure in the multi-level cascading set of rule data structures, whether a criteria of the rule data structure is met by the attributes of the patient registry; and [4] performing, by the personalized care plan monitor engine executing in the data processing system, for each rule data structure whose criteria is met by the attributes of the patient registry, a corresponding patient care action triggered by the criteria of the rule data structure being met, wherein: [4.1] the multi-level cascading set of rule data structures comprise at least one demographic rule data structure whose criteria are based on demographic information for a patient in the attributes of the patient registry, at least one medical code rule data structure whose criteria are Appeal 2020-001777 Application 15/045,937 4 based on medical codes present in patient information for the patient in the attributes of the patient registry, and at least one lifestyle rule data structure whose criteria are based on lifestyle information for the patient in the attributes of the patient registry, [4.2] criteria of one rule data structure in the multi-level cascading set of rule structures triggers application of a subsequent rule data structure in the multi-level cascading set of rule structures, until a final rule data structure in a chain of rule data structures of the multi- level cascading set of rule structures is triggered, and [4.3] the patient care action for the final rule data structure comprises transmitting at least one electronic communication between the data processing system and a patient communication device, to elicit compliance of a patient with a personalized patient care plan associated with the patient. Claims 1–9, 11–18, and 20–22 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ISSUES The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of results desired. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Appeal 2020-001777 Application 15/045,937 5 Facts Related to Claim Construction 01. The disclosure contains no lexicographic definition of “data structure.” 02. The originally filed disclosure does not contain the phrase “rule data structure.” Instead it described “rule structures.” Facts Related to Appellant’s Disclosure 03. The method comprises receiving, by the data processing system, a multi-level cascading set of rule structures for evaluating attributes of the patient registry. Spec. para. 4. 04. Figure 8 is an example diagram of an example hierarchical set of rules in accordance with one illustrative embodiment. As shown in Figure 8, a nested hierarchical arrangement is provided comprising rules 810-830. The triggering of a rule 810, for example, causes a subsequent rule 820 to be evaluated to determine if it is triggered, which in turn causes a subsequent rule 830 to be evaluated. Each rule’s criteria may be evaluated against patient information in a patient registry and/or obtained from other lifestyle and third party information sources. In the example shown in Figure 8, the rules utilize the AND, OR, and AND NOT format previously mentioned above with the corresponding example criteria being shown in the corresponding boxes of the rule 810-830. Spec. para. 144. Appeal 2020-001777 Application 15/045,937 6 ANALYSIS Claim Construction Initially we construe the claim term “rule data structure.” The Specification does not define this term, and does not even recite it as such. Instead the Specification uses the term “rule structure.” The Specification does not define this term either, and specifically does not describe what is meant by a structure in this context. All of the references to “rule structures” are in paragraph 4, aside from a single reference in paragraph 166 simply using the term as “in addition to the rule structures previously described above.” Paragraph 4 describes such rules structures as “cascading.” It goes on to state that “the method comprises determining, by the data processing system, for each rule structure in the multi-level cascading set of rule structures.” The Appeal Brief directs us to Figure 8 and Specification paragraphs 144–146 as support. Appeal Br. 2. These pages and figure refer to a hierarchical set of rules. In fact, Figure 8 shows a hierarchical set of criteria data followed by data describing a result of meeting such criteria. Such a set of hierarchical set of criteria tests is common in computer programming and is referred to conventionally as nested decisions.3 Thus, we construe the term “rule data structure” to mean a particular nested set of decision rules, without any further limitation as to how they are structured other than the particular sequence in which they are nested. 3 See, e.g., Severance, Decision Structures, Slide 11, University of Michigan, 2009 at https://open.umich.edu/sites/default/files/downloads/Severance- SI502-W09-Week4-ZelleCh7.pdf. Last downloaded Sept. 24, 2021. Appeal 2020-001777 Application 15/045,937 7 STEP 14 Claim 1, as a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it is directed to a judicial exception without significantly more. STEP 2 The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us? To answer that question, . . . 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 patent- eligible application. [The Court] 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.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea). Then, if the claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or 4 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Appeal 2020-001777 Application 15/045,937 8 whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg. at 54. If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 At a high level, and for our preliminary analysis, we note that method claim 1 recites receiving and applying data, determining whether criteria are met, and performing some action. Applying data and performing some action with data are data processing. Determining whether criteria are met is analyzing data. Thus, claim 1 recites receiving, processing, and analyzing data. None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. From this we see that claim 1 does not recite the judicial exceptions of either natural phenomena or laws of nature. Under Supreme Court precedent, claims directed purely to an abstract idea are patent ineligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include (1) mathematical concepts,5 (2) certain methods of organizing 5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Appeal 2020-001777 Application 15/045,937 9 human activity,6 and (3) mental processes.7 Among those certain methods of organizing human activity listed in the Revised Guidance are managing personal behavior or relationships or interactions between people. Like those concepts, claim 1 recites the concept of managing patient care actions. Specifically, claim 1 recites operations that would ordinarily take place in advising one to use rules data to select the action to take based on criteria. The advice to use rules data to select the action to take based on criteria involves performing a corresponding patient care action, which is a managerial act, and determining whether a criterion is met, which is an act ordinarily performed in the stream of medical management. For example, claim 1 recites “performing . . . a corresponding patient care action,” which is an activity that would take place whenever one is managing patient care. Similarly, claim 1 recites “determining . . . whether a criteria . . . is met,” which is also characteristic of medical management. The Examiner determines the claims to be directed to methods to evaluate a patient registry and perform actions based on the results of the evaluation. Final Act. 2. Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). 6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed. Cir. 2018). 7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Appeal 2020-001777 Application 15/045,937 10 The preamble to claim 1 recites that it is a method for evaluating a patient registry and performing actions based on results of the evaluation. The steps in claim 1 result in managing patient care actions by using rules data to select the action to take based on criteria absent any technological mechanism other than a conventional computer for doing so. As to the specific limitations, limitation 1 recites receiving data. Limitations 2–4 recite generic and conventional processing and analyzing of medical data, which advise one to apply generic functions to get to these results. The limitations thus recite advice for using rules data to select the action to take based on criteria. To advocate using rules data to select the action to take based on criteria is conceptual advice for results desired and not technological operations. The Specification at paragraph 1 describes the invention as relating to generating and executing complex clinical protocols on a patient registry. Thus, all this intrinsic evidence shows that claim 1 recites managing patient care actions. This is consistent with the Examiner’s determination. This in turn is an example of managing personal behavior or relationships or interactions between people as a certain method of organizing human activity because managing patient care actions is managing relationships between medical personnel and patients. The concept of managing patient care actions by using rules data to select the action to take based on criteria is one idea for guiding such management. The steps recited in claim 1 are part of how this might conceptually be premised. Appeal 2020-001777 Application 15/045,937 11 Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1338 (Fed. Cir. 2013) (generating rule-based tasks for processing an insurance claim); Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of receiving, processing, and analyzing data mimic human thought processes of observation, evaluation, judgment, and opinion, 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); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data reception, processing, and analysis and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). As such, claim 1 recites receiving, processing, and analyzing data, and not a technological implementation or application of that idea. From this we conclude that at least to this degree, claim 1 recites managing patient care actions by using rules data to select the action to take based on criteria, which is managing personal behavior or relationships or interactions between people, one of certain methods of organizing human activity identified in the Revised Guidance, and, thus, an abstract idea. Appeal 2020-001777 Application 15/045,937 12 STEP 2A Prong 2 The next issue is whether claim 1 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept i.e., integrated into a practical application.8 At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, “all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. “[A]pplication[s]” of such concepts “ ‘to a new and useful end,’ ” we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted). Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, devoid of implementation details. Step 1 is a pure data gathering step. Limitations describing the nature of the data do not alter this. Steps 2–4 recite generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. As we construe the term “rule data structure” above to mean a particular nested set of decision rules, without any further limitation as to how they are structured other than the particular sequence in which they are nested, this 8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). Appeal 2020-001777 Application 15/045,937 13 does not present a practical application, but instead presents a generic and conventional computer programming practice. All purported inventive aspects reside in how the data are interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Appellant’s claim 1 simply recites the concept of managing patient care actions by using rules data to select the action to take based on criteria as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and does not recite any particular implementation. Claim 1 does not, for example, purport to improve the functioning of the computer itself. Nor, does it effect an improvement in any other technology or technical field. The Specification only spells out different generic equipment9 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of managing patient care actions by using rules data to select the action to take based on criteria under different scenarios. It does not describe any particular improvement in the manner a computer functions. Instead, claim 1 at issue amounts to nothing significantly more than an instruction to apply managing patient care actions by using rules data to select the action to take based on criteria using some unspecified, generic 9 The Specification describes a client computer that contains a processor, memory, operating system, storage, network interface, input device, and output device. Spec. para. 89. Appeal 2020-001777 Application 15/045,937 14 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. None of the limitations reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other 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. We conclude that claim 1 is directed to achieving the result of managing patient care actions by advising one to use rules data to select the action to take based on criteria, as distinguished from a technological improvement for achieving or applying that result. This amounts to managing personal behavior or relationships or interactions between people, which fall within certain methods of organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application. STEP 2B The next issue is whether claim 1 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. Appeal 2020-001777 Application 15/045,937 15 The introduction of a computer into the claims does not generally alter the analysis at Mayo step two. the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223–24 (citations omitted). “[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 for receiving, processing, and analyzing data amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms Appeal 2020-001777 Application 15/045,937 16 ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). None of these activities is used in some unconventional manner nor does any produce some unexpected result. Appellant does not contend it invented any of these activities. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., 898 F.3d at 1168. Considered as an ordered combination, the computer components of Appellant’s claim 1 add nothing that is not already present when the steps are considered separately. The sequence of data reception- processing- analysis is equally generic and conventional. See Ultramercial, 772 F.3d at 715 (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) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. We conclude that claim 1 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception. Appeal 2020-001777 Application 15/045,937 17 REMAINING CLAIMS Claim 1 is representative. The remaining method claims merely describe process parameters. We conclude that the method claims at issue are directed to a patent-ineligible concept itself, and not to the practical application of that concept. As to the structural claims, 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. As a corollary, the claims are not directed to any particular machine. LEGAL CONCLUSION From these determinations we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this we conclude the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the managing personal behavior or relationships or interactions between people of managing patient care actions by advising one to use rules data to select the action to take based on criteria, without significantly more. APPELLANT’S ARGUMENTS As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s determinations and analysis from Final Action 2–4 and Answer 3–10 and reach similar legal conclusions. We now turn to the Reply Brief. Appeal 2020-001777 Application 15/045,937 18 We are not persuaded by Appellant’s argument of the technological nature of the claimed invention. A key point of the claimed invention is to provide a computer tool that performs patient care actions specifically based on a particular computer mechanism that includes the application of a specific multi-level cascading set of rule data structures specifically to [ ] attributes of patients in a patient registry . . . . That is, the claimed computing tool applies a specific set of computing rules to perform the patient care actions claimed. Moreover, the final rule data structure in a chain of rule data structures specifically causes a patient care action that comprises transmitting at least one electronic communication between the data processing system and a patient communication device. Reply Br. 2. Technological nature is too ambiguous a term to be determinative. Merely placing a claim in a technological context cannot confer eligibility. The Supreme Court and this court have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract. Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). Similarly, providing a computer tool during the steps is insufficient to confer eligibility. “When claims like the Asserted Claims are directed to an abstract idea and merely require generic computer implementation, they do not move into section 101 eligibility territory.” Smart Sys. Innovations, 873 F.3d at 1374 (citations and internal quotations omitted). the claimed steps for calculating the P&L values— “identifying a long or short position taken by a user” and “computing by the computing device a plurality of values” representing “a profit or loss if the long or short position is closed at a price level”—is nothing more than “mere automation of manual processes using Appeal 2020-001777 Application 15/045,937 19 generic computers,” which “does not constitute a patentable improvement in computer technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (citations omitted). Finally, applying specific rules for patient care actions is an activity required for medical practice. The entire medical industry is based on this. Prior to computers this was necessarily performed by humans. It is improper to say this is necessarily a computer activity. To the extent Appellant refers to electronic data processing, again, technological context cannot confer eligibility. We are not persuaded by Appellant’s argument that the data processing system itself must be specifically configured to include a demographics and medical data analysis engine, a lifestyle data analysis engine, and a personalized care plan monitor engine, each of which are executing in the data processing system and are configured to perform the computer operations attributed to them in the claim. This specifically configures the data processing system to perform this specific ordered combination of operations that are claimed in the present claims, which are not generic operations performed by generic computing elements. Reply Br. 3–4. A demographics and medical data analysis engine, a lifestyle data analysis engine, and a personalized care plan monitor engine are not structurally defined or described. Instead they are functional labels for parts of a computer program. To say they are executing in the data processing system and are configured to perform the computer operations attributed to them in the claim is no more than to say they are comprised of computer code executing in a generic computer. To say this specifically configures the data processing system to perform this specific ordered combination of Appeal 2020-001777 Application 15/045,937 20 operations that are claimed in the present claims is to say that a computer program is a sequence of instructions, which every computer program is. We show that these are generic operations performed by generic computing elements above. We are not persuaded by Appellant’s argument that the claim recites a specific ordered combination of computer operations. Reply Br. 4. The combination is specific only in the sense it is specified using words. The steps are ordered in that they are drafted in some sequence. The problem for Appellant is that this combination of receiving, processing, and analyzing data is routine and conventional, as shown above under Step 2B. We are not persuaded by Appellant’s argument that the invention is specifically directed to an improved computer tool that itself improves the way in which patient information is processed by a data processing system to perform patient care actions which includes transmitting an electronic communication between the data processing system and a patient communication device. None of the operations recited in the claim are recited as being performed by a human being. While the claim does recite that the communication that is transmitted is one that is to elicit compliance of a patient with a personalized patient care plan associated with the patient, this is intended to reference the content of the electronic communication, i.e. the content of the electronic communication is designed to elicit compliance. Whether or not the patient actually complies with a personalized patient care plan associated with the patient is outside the scope of the claim. That is, the claim is directed to what the data processing system is doing in order to determine what patient care actions to perform and ultimately to transmit an electronic communication between the data processing system and a patient. What the patient does as a result of this communication is not the focus of the claimed invention. Appeal 2020-001777 Application 15/045,937 21 Reply Br. 5. First, the argument conflates prongs 1 and 2 of Step 2A. Prong 1 looks to whether the claim recites a step that is part of one of the three abstract ideas key concepts from Supreme Court cases showing that the claim as a whole is directed to that concept. We show above that claim 1 does. It is prong 2 that tests whether there is a practical application in how this is applied, and this is what Appellant’s argument addresses. And we show above that there is no practical application recited by the claim. The problem with the argument as to practical application is that it presents no evidence that any technological implementation details are recited. All steps are generic receiving, processing, and analyzing data. At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea. Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). Simply automating steps so no humans perform them is insufficient to confer eligibility. “When claims like the Asserted Claims are directed to an abstract idea and merely require generic computer implementation, they do not move into section 101 eligibility territory.” Smart Sys. Innovations, 873 F.3d at 1374 (citations and internal quotations omitted). the claimed steps for calculating the P&L values— “identifying a long or short position taken by a user” and “computing by the computing device a plurality of values” representing “a profit or loss if the long or short position is closed at a price level”—is nothing more than “mere automation of manual processes using generic computers,” which “does not constitute a patentable improvement in computer technology.” Appeal 2020-001777 Application 15/045,937 22 Trading Techs., 921 F.3d at 1384 (citations omitted). We are not persuaded by Appellant’s argument that [t]he only reference to a human anywhere in the claim is the label of “patient” being processed and this is because the invention is specifically directed to an improved computer tool that itself improves the way in which patient information is processed by a data processing system to perform patient care actions which includes transmitting an electronic communication between the data processing system and a patient communication device. None of the operations recited in the claim are recited as being performed by a human being. Reply Br. 5. This is no more than to say a computer program directs information flow and uses decision criteria to direct that flow. This is conventional programming flow. We are not persuaded by Appellant’s argument that “the Examiner is not examining what the claims actually recite, but rather the generalization and simplification of the claims that the Examiner wishes to use to characterize the claims and what the claimed invention could allegedly be applied to in the imaginings of Examiner’s mind.” Reply Br. 6. The above analysis is at both the individual limitation and whole claim levels, and does not oversimplify or generalize. We are not persuaded by Appellant’s argument that “the Examiner is required to identify which elements of the claims recite an alleged abstract idea (first prong) and then evaluate the remaining elements to determine if they recite a practical application of the alleged abstract idea (second prong).” Reply Br. 7. The analysis above under Step 2A does this. We are not persuaded by Appellant’s argument that the claims are not directed to a method of organizing human activity. Reply Br. 8. The analysis in Step 2A, Prong 1 above responds to this argument. Appeal 2020-001777 Application 15/045,937 23 We are not persuaded by Appellant’s argument that BSG is inapplicable to Guidelines Step 2A. Reply Br. 9, citing BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018). “Whether labeled as a fundamental, long-prevalent practice or a well-established method of organizing activity, this qualifies as an abstract idea.” BSG, 899 F.3d at 1286. We are not persuaded by Appellant’s argument that if a doctor were to review patient information in a patient registry, the doctor would simply use the doctor’s own knowledge and intuition to determine how to deal with the patient’s current condition. The doctor would not go through a process of retrieving a multi-level cascading set of rules data structures from a resources database (where this multi-level cascading set of rules data structures has the specific configuration as set forth in the wherein clauses of the present independent claims), apply the multi-level cascading set of rules data structures to a patient registry, determine which criteria of rules data structures in the multi-level cascading set of rules data structures are satisfied and trigger corresponding patient care actions, or transmit an electronic communication from a data processing system to a patient communication device as a patient care action for a final rule data structure in a chain of rule data structures in the multi-level cascading set of rules data structures. Reply Br. 13. Appellant argues only that a doctor is not a computer. The claim recites generic operations that generally go through the diagnostic steps a doctor performs mentally. The argument shows only that in programming this, computer programs and equipment are needed. Again, placing the operations in a computer context does not confer eligibility. See Affinity Labs above. We are not persuaded by Appellant’s argument that [t]he multi-level cascading set of rules data structures are not intended to be executed or applied by a human being in any way, Appeal 2020-001777 Application 15/045,937 24 as is clear from the lack of any recitation of a human being performing the claimed operations either in the claims themselves or in any of the embodiments described in the present specification. Reply Br. 15. Appellant overlooks the entire medical system that relies on tiered sets of diagnostic and prescriptive rules to diagnose and treat medical problems. Applying rules in the form of knowledge is what humans do in practicing medicine. Computer emulation of this activity is just that, emulation. Appellant also attempts to analogize the claims to those involved in McRO. Reply Br. 15. In McRO, the court held that, although the processes were previously performed by humans, “the traditional process and newly claimed method . . . produced . . . results in fundamentally different ways.” FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from those in McRO). In McRO, “[i]t is the incorporation of the claimed rules not the use of the computer, that improved the existing technology process,” because the prior process performed by humans “was driven by subjective determinations rather than specific, limited mathematical rules.” 837 F.3d at 1314 (internal quotation marks, citation, and alterations omitted). In contrast, the claims of the instant application merely implement an old practice of using decision criteria in making decisions in a new environment. Appellant has not argued that the claimed processes of selecting results apply rules of selection in a manner technologically different from those which humans used, albeit with less efficiency, before the invention was claimed. Merely pigeon holing the objects of decision making in tiers to aid decision making is both old and itself abstract. Appeal 2020-001777 Application 15/045,937 25 The claims in McRO were not directed to an abstract idea, but instead were directed to “a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type.” We explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” The claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers. FairWarning, 839 F.3d at 1094 (internal citations omitted). We are not persuaded by Appellant’s argument that the lack of any prior art rejection in the Final Office Action is illustrative of the fact that the claims recite an inventive concept and an inventive configuration of the claimed data processing system, otherwise surely if the claims merely recited a well- understood, routine, and conventional configuration then the Examiner would have found prior art to demonstrate this well- understood, routine, and conventional nature. The Examiner has not, and at no time has presented any evidence that what is actually claimed is in any way well-understood, routine, or conventional. Reply Br. 17. Appellant is actually presenting two arguments. The first goes to novelty. But this cannot confer eligibility. While the claims may not have been anticipated or obvious because the prior art did not disclose “determining . . . whether each received content identifier matches a characteristic” or “outputting . . . an indication of the characteristic of the data file,” that does not suggest that the idea of “determining” and “outputting” is not abstract, much less that its implementation is not routine and conventional. Indeed, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Appeal 2020-001777 Application 15/045,937 26 Intellectual Ventures I, 838 F.3d at 1315 (emphasis omitted). As to the second issue of whether what is actually claimed is in any way well- understood, routine, or conventional, we support this determination under Step 2B above. Appellant next argues that the present claims are patent eligible because they are similar to claim 1 of the USPTO’s Example 42 in the “Subject Matter Eligibility Examples: Abstract Ideas,” published January 7, 2019 (“2019 Eligibility Examples”). Reply Br. 18–21. More particularly, Appellant argues that the invention “seeks to process patient information in a patient registry in a specific manner, perform patient care actions triggered by criteria of the processing of the patient information, and transmit an electronic communication from a data processing system to a patient communication device based on this processing.” Reply Br. 19. The difficulty with Appellant’s argument is that exemplary claim 1 of Example 42 was deemed patent eligible because it provided a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user. See 2019 Eligibility Examples, 18–19. Thus, exemplary claim 1 of Example 42 addressed technological difficulties related to incompatible computer formats, disparate geographic locations, and the untimely sharing of information. See id. at 17. As discussed above, Appellant has neither identified nor demonstrated that the present claims provide such a specific improvement over prior art systems. Identifying and performing some patient care action is not a technological operation as converting disparate data structure formats meaningful only to a computer arguably might be. Appeal 2020-001777 Application 15/045,937 27 Appellant argues that the asserted claims are akin to the claims found patent eligible in Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299 (Fed. Cir. 2018). Reply Br. 20–21. In Finjan, the Court held that claims to a “behavior-based virus scan” were a specific improvement in computer functionality and hence not directed to an abstract idea. 879 F.3d at 1304. The claimed technique of scanning enabled “more flexible and nuanced virus filtering” and detection of potentially dangerous code. Id. This was done by “scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a ‘security profile.’” Id. at 1303. The security profile included the information about potentially hostile operations produced by a “behavior-based” virus scan, as distinguished from traditional, “code-matching” virus scans that are limited to recognizing the presence of previously-identified viruses, typically by comparing the code in a downloadable to a database of known suspicious code. Id. at 1304. This behavior-based scan was a new type of file that when attached to a downloadable allowed the computer to do more to protect itself than in the past. The instant claims present no such new type of processing to create a file that improves computer performance. Instead, the claims are conventional data processing of medical rule and patient data. They may improve the accuracy of the data, but this is not an improvement to the computer. CONCLUSIONS OF LAW The rejection of claims 1–9, 11–18, and 20–22 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. Appeal 2020-001777 Application 15/045,937 28 CONCLUSION The rejection of claims 1–9, 11–18, and 20–22 is affirmed. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 11–18, 20–22 101 Eligibility 1–9, 11–18, 20–22 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) (2011). AFFIRMED Copy with citationCopy as parenthetical citation