International Business Machines Corporation

Patent Trials and Appeals Board

Oct 7, 2021

2020001762 (P.T.A.B. Oct. 7, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/045,944 02/17/2016 James S. Cox SVL920150165US1 6254
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 and RAMAN SRINIVASAN
____________

Appeal 2020-001762
Application 15/045,944
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
James S. Cox and Raman Srinivasan (Appellant2) seek review under
35 U.S.C. § 134(a) of a final rejection of claims 1–4, 7–14, and 17–24, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).

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 7, 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).

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The Appellant invented a way of performing cognitive mapping and
validation of medical codes across medical systems. 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 mapping local medical codes to
standardized medical codes, comprising:
[1] receiving,
by a patient registry engine of the data processing
system,
patient information from a source,
wherein the patient information comprises at least one
local medical code that is local to the source and is not
standardized across multiple sources of patient
information;
[2] in response to receiving the patient information from the
source,
analyzing,
by a medical code mapping engine of the
data processing system,
the patient information
to identify an instance of a local medical
code, of the at least one local medical code,
within the patient information,
and
performing a lookup operation,
in a medical code mapping rules repository,
of the instance of the local medical code
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to determine whether a medical code
mapping rule exists for the instance of the
local medical code;
[3] in response to the lookup operation identifying a medical
code mapping rule existing for the instance of the local medical
code,
retrieving,
by a validation engine of the data processing
system,
a timestamp
associated with the medical code mapping
rule,
and
comparing the timestamp to a current time
to determine whether the medical code mapping
rule has expired;
[4] in response to a medical code mapping rule not existing in
the medical code mapping rules repository for the instance of
the local medical code, or the comparison of the timestamp to
the current time indicating that the medical code mapping rule
has expired:
[4.1] performing,
by natural language processing logic of a
cognitive computing system of the data
processing system,
cognitive natural language processing on a context
of the at least one local medical code
to determine a meaning of the at least one local
medical code;
[4.2] selecting,
by selection logic of the cognitive
computing system of the data processing
system,
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a standardized medical code from a plurality of
standardized medical codes
based on the determined meaning of the at least
one local medical code,
wherein the plurality of standardized medical
codes are common to a plurality of sources of
patient information;
and
[4.3] generating,
by a medical code mapping rule generation
engine of the data processing system,
a mapping data structure
that maps the at least one local medical code
to the selected standardized medical code;
and
[5] processing,
by the data processing system,
the patient information from the source based on one of
the medical code mapping rule in response to the
medical code mapping rule existing for the
instance of the local medical code
or
the mapping data structure in response to the
medical code mapping rule not existing for the
instance of the local medical code
or
the comparison of the timestamp to the current
time indicating that the medical code mapping rule
has expired.

Claims 1–4, 7–14, and 17–24 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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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.
Facts Related to Appellant’s Disclosure
01. The cognitive system 416 comprises logic for performing
cognitive operations on natural language and structured patient
information as well as corpus 460 documentation to facilitate
determining the meaning of local medical codes in patient
information. In one illustrative embodiment, the cognitive
system 416 is the IBM WatsonTM cognitive system available from
International Business Machines Corporation of Armonk, New
York. The cognitive system 416 ingests natural language content,
extracts key features from the natural language content, annotates
the natural language content based on the extracted key features,
and uses the ingested natural language content to perform
cognitive operations such as processing natural language
questions and selecting answers to return in response to the natural
language questions, performing natural language searches of
content and selecting results to be returned, or the like. With
regard to the illustrative embodiments, the cognitive system 416 is
configured to analyze the natural language content of patient
information to extract key features. These key features are then
used as a basis for processing one or more queries against the
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corpus 460 to identify evidential natural language passages
corresponding to these key features. The key features of these
natural language passages are then used as a basis of correlation
with natural language and/or structured descriptions of
standardized medical codes in the standardized medical code
database 490. Based on the correlation, measures of confidence
that the local medical code in the patient information correlates
with various ones of the standardized medical codes 490. The
confidence measures are then used to select a standardized
medical code or codes for mapping to the local medical code in
the patient information. If the confidence measure is sufficiently
high, then the mapping may be done automatically. If the
confidence measure is not sufficiently high, then the
alert/notification engine 414 may be used to solicit SME 480
feedback as to whether the candidate standardized medical code(s)
actually do correspond to the local medical code. Spec. para. 72.
02. Any known or later developed natural language processing and
cognitive system type of analysis may be performed as part of the
operation for identifying key features of the patient information
and/or corpus 460. Spec. para. 74.
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ANALYSIS
STEP 13
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

3 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”).
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whether the claims at issue are directed to the recited judicial exception, or
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 analyzing data, looking up data, retrieving and
comparing data, determining the meaning of and selecting data, generating
data that maps data, and processing data. Looking up data is receiving and
analyzing data. Retrieving data is receiving data. Comparing, determining,
and selecting data are analyzing data. Thus, claim 1 recites receiving,
analyzing, generating, and processing 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. At best, some limitations
recite generic names for conventional data processing modules, absent any
implementation details.
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
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extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,4 (2) certain methods of organizing
human activity,5 and (3) mental processes6. 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 medical information
communication. Specifically, claim 1 recites operations that would
ordinarily take place in advising one to process patient information based on
properly interpreted medical codes. The advice to process patient
information based on properly interpreted medical codes involves processing
patient information, which is a medical information communication act, and
selecting a standardized medical code, which is an act ordinarily performed
in the stream of medical information. For example, claim 1 recites
“processing . . . patient information,” which is an activity that would take
place whenever one is processing medical information. Similarly, claim 1
recites “selecting . . . a standardized medical code,” which is also
characteristic of managing medical information communication.

4 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
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 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).
6 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).
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The Examiner determines the claims to be directed to mapping local
medical codes to standardized medical codes in medical records. Final
Act. 2. The preamble to claim 1 recites that it is a method for mapping local
medical codes to standardized medical codes. The steps in claim 1 result in
managing medical information communication by processing patient
information based on properly interpreted medical codes absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitation 1 recites receiving data.
Limitations 2–5 recite generic and conventional analyzing, generating, and
processing of patient and medical information data, which advise one to
apply generic functions to get to these results. The limitations thus recite
advice for processing patient information based on properly interpreted
medical codes. To advocate processing patient information based on
properly interpreted medical codes is conceptual advice for results desired
and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
performing cognitive mapping and validation of medical codes across
medical systems. Data mapping and validating are conventional data
housekeeping functions. Adding the descriptor “cognitive” to mapping in
itself means little more than finding a proper mapping. Many rudimentary
data retrievals fall within this scope. Thus, all this intrinsic evidence shows
that claim 1 recites managing medical information communication. 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 medical information
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communication is managing medical personnel behavior. The concept of
managing medical information communication by processing patient
information based on properly interpreted medical codes is one idea for
conveying appropriate medical information among medical personnel. The
steps recited in claim 1 are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014)( collecting data, recognizing certain data within the
collected data set, and storing that recognized data in a memory).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
generating, and processing 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, analysis,
generation, and processing 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, analyzing,
generating, and processing data, and not a technological implementation or
application of that idea.
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From this we conclude that at least to this degree, claim 1 recites
managing medical information communication by processing patient
information based on properly interpreted medical codes, 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.
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.7
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. Step 5 is

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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insignificant post solution activity, such as storing, transmitting, or
processing the results. 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. 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.
We next look at limitation 4, which superficially appears to recite
some technological subject matter. It turns out limitation 4 recites no more
than conventional generic software modules that perform the functions they
are designed to do in the manner so designed. The recited “natural language
processing logic of a cognitive computing system” is a functional
description of logic somehow processing natural language data. A cognitive
computing system is a generic conventional software module, evidenced by
Appellant’s admission that such was available off the shelf from IBM, and
further evidenced by the omission of underlying technological
implementation details for such a system in the Specification. In particular,
Appellant does not indicate it invented such a system. The claim only uses
such a system in its customary manner to analyze natural language data. As
the Specification describes, such a system ingests natural language content,
extracts key features from the natural language content, annotates the natural
language content based on the extracted key features, and uses the ingested
natural language content to perform cognitive operations such as processing
natural language questions and selecting answers to return in response to the
natural language questions, performing natural language searches of content
and selecting results to be returned, or the like. These are all well-known
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functional descriptions of a cognitive system, and none recites technological
details.
Limitation 4 also recites selection logic, but this is logic that performs
selection, which is among the most primitive and conventional of computer
operations.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing medical information communication by processing patient
information based on properly interpreted medical codes 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 do 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 37 pages of Specification only spell out
different generic equipment8 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of managing medical information communication by
processing patient information based on properly interpreted medical codes
under different scenarios. They do 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 medical
information communication by processing patient information based on

8 The Specification describes a server and client device that each generally
includes a processor connected via a bus to a memory, a network interface
device, a storage, an input device, and an output device. Spec. para. 47 and
52.
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properly interpreted medical codes using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
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 medical information communication by advising one to process
patient information based on properly interpreted medical codes, 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.
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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, analyzing, generating, and processing 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
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‘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.
We next look at limitation 4, which superficially appears to recite
some technological function. It turns out limitation 4 recites no more than
conventional generic software modules that perform the functions they are
designed to do in the manner so designed.
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., Inc. v. InvestPic LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018).
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-analysis-
generation-processing is equally generic and conventional. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(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,
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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.
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 medical information communication by advising one to process
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patient information based on properly interpreted medical codes, without
significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–5 and Answer 3–10 and
reach similar legal conclusions. We now turn to the Reply Brief.
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 determines the proper medical codes and
thereby avoid any human interaction. Moreover, “processing” patient
records is not a human activity, but rather a computer activity.” 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 Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016). Similarly, providing a computer tool and avoiding human
interaction during the steps are 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, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1374 (Fed. Cir. 2017) (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
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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.”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019)
(citations omitted).
Finally, processing patient records is an activity required for medical
practice. Prior to computers, this was necessarily performed by humans. It
is improper to say this is not a human 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 “this claim does
not merely recite the oversimplification and generalization.” Reply Br. 3.
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 claim is directed to an improved computer tool specifically
designed to determine a standardized medical code to which to
map a local medical code present in patient information and
specifically by performing a particular set of computer
operations comprising a lookup operation in a medical code
mapping rules repository of an instance of the local medical code
to determine whether a medical code mapping rule exists for the
instance of the local medical code. Then, if it is determined that
a medical code mapping rule exists for that instance based on the
results of this lookup operation, the timestamp associating with
the medical code mapping rule is retrieved and compared to a
current time to determine whether the medical code mapping rule
has expired.
Reply Br. 3–4. This argument is conclusory and self-referential in that it
contends the claim is directed to itself. The argument presents no evidence
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that any technological implementation details are recited. All steps are
generic receiving, analyzing, generating, and processing 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 Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
We are not persuaded by Appellant’s argument that the claim
alters the way in which the patient information is processed and
thus, alters the way that the data processing system functions.
That is, new mapping rules are created specifically based on
natural language processing of the context around the local
medical code instance in the patient information to determine
what the meaning of the local medical code instance is.
Reply Br. 4. 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. Again, the recitation of natural language
processing is simply a call for a conventional generic software module to
perform its ordinary function in its conventional manner.
We are not persuaded by Appellant’s argument that the claims are not
directed to a method of organizing human activity. Reply Br. 4. The
analysis in Step 2A Prong 1 above responds to this argument.
We are not persuaded by Appellant’s argument that the claim recites a
specific ordered combination of computer operations. Reply Br. 5. 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
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Appellant is that this combination of receiving, analyzing, generating, and
processing data is routine and conventional, as shown above under Step 2B.
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).” The analysis above under Step 2A does this.
We are not persuaded by Appellant’s argument that “a human being
does not perform cognitive natural language processing.” Reply Br. 7.
Appellant overlooks the entire primary education system that teaches in the
first eight grades how to perform cognitive natural language processing so as
to read and write. Cognitive natural language processing is what humans do
in reading and writing. Computer emulation of this activity is just that,
emulation.
We are not persuaded by Appellant’s argument that BSG is
inapplicable to Guidelines Step 2A. Reply Br. 8, 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 “Appellants
specifically claim the natural language processing as part of the claimed
invention and as a basis for the other operations recited in the claims. Thus,
one cannot simply remove the natural language processing from the
claim.” Reply Br. 9. It is not a question of removing a component such as
natural language processing from a claim. That would be improper. Rather
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the issue is whether such a component is deserving of patentable weight in
evaluating eligibility. As we determined above, simply reciting such a
conventional and generic function is no more than calling out the conceptual
idea of using the function in its conventional manner. This is insufficient to
confer eligibility. See Affinity Labs of Texas, LLC v. Amazon.com Inc.
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. 13–14. More particularly,
Appellant argues that independent claim 1 “seeks to take information
presented in a non-standard format, i.e. the local medical code, and convert
that information to a standardized format, i.e. the standardized medical
code.” Reply Br. 14.
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.
Interpreting the meaning of a code is not a technological operation as
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converting disparate data structure formats meaningful only to a computer
arguably might be.
Appellant argues that the asserted claims are akin to the claims
found patent eligible in Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d
1299 (Fed. Cir. 2018). Reply Br. 15–17. 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 code and patient data. They may
improve the accuracy of the data, but this is not an improvement to the
computer.
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CONCLUSIONS OF LAW
The rejection of claims 1–4, 7–14, and 17–24 under 35 U.S.C. § 101
as directed to a judicial exception without significantly more is proper.
CONCLUSION
The rejection of claims 1–4, 7–14, and 17–24 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–4, 7–14,
17–24
101 Eligibility 1–4, 7–14,
17–24

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