Jean-Francois BEAULÉ

Patent Trials and Appeals Board

Jun 18, 2020

2019005763 (P.T.A.B. Jun. 18, 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.
13/270,971 10/11/2011 Jean-Francois BEAULÉ 054642/463434 5456
162076 7590 06/18/2020
ALSTON & BIRD LLP/UNITEDHEALTH GROUP INCORPORATED
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/18/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEAN-FRANCOIS BEAULE
____________________

Appeal 2019-0057631
Application 13/270,971
Technology Center 3600
____________________

Before ERIC S. FRAHM, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–4, 11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–60. Claims 5–10,

1 Throughout this Opinion, we refer to: (1) the Final Office Action mailed
June 13, 2018 (“Final Act.”); (2) the Supplemental Appeal Brief filed
February 5, 2019 (“Appeal Br.”); (3) the Examiner’s Answer mailed May
28, 2019 (“Ans.”); and (4) the Reply Brief filed July 25, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
Appeal 2019-005763
Application 13/270,971

2
16–21, 24–35, 37, 39, 42, 45–49 have been canceled (see Appeal Br. 32,
Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejection under 35 U.S.C. § 101, and reverse the
obviousness rejections under 35 U.S.C. § 103. Therefore, because we affirm
at least one rejection for each pending claim, we affirm.
Appellant’s Disclosed and Claimed Invention
Appellant’s invention, entitled “SYSTEMS AND METHOD FOR
DETERMINING AND MANAGING AN INDIVIDUAL AND
PORTABLE HEALTH SCORE” (Title), “relates to improving individual
health and wellness and more particularly relates to systems and methods for
determining and managing an individual and portable health score” (Spec.
¶ 2), and more specifically to “a unique health score that reflects the
combination of an individual's health status and the value of the individual’s
actions” (Spec. ¶ 3). With this in mind, Appellant’s claimed invention
concerns “[a] computer-implemented method for a portable health score”
(claim 1), and “[a] system for determining a portable health score” (claim
13).
Exemplary Claim
Independent claim 1 under appeal is exemplary. Claim 1, with
bracketed lettering, formatting, and emphases added to key portions of the
claim at issue, reads as follows:
1. A computer-implemented method for a portable health
score comprising:
[A] receiving, at a first device belonging to and operated
by a first entity comprising a processor and a data server,

identifies the real party in interest as UnitedHealth Group, Incorporated
(Appeal Br. 2).
Appeal 2019-005763
Application 13/270,971

3
healthcare data for a first user different from the first entity,
from one or more healthcare data sources different from the
first user and the first entity, wherein the first user is a
customer, and wherein the receiving of healthcare data further
comprises receiving electronic medical records from an
electronic medical record vendor entity via a communication
network;
[B] determining, with the first device, one or more
relevant health factors based on the individual healthcare data,
where the one or more relevant health factors comprise one or
more core health factors, one or more age-gender based health
factors, or one or more health condition based factors;
[C] determining, with the first device, a health score
based on the one or more relevant health factors;
[D] providing data specifying one or more qualified
actions that affect the health score and a health score change
associated with completion of each respective qualified action
from the one or more qualified actions, wherein the one or
more qualified actions comprise actions administered by a
qualified action provider and taken by the first user to improve
the first user's health;
[E] identifying a set of certified qualified action
providers, wherein the set of certified qualified action providers
comprise qualified action providers who administer qualified
actions that have been properly reviewed and vetted;
[F] receiving, by the first device, completion healthcare
data indicating that the user completed one or more qualified
actions from the one or more qualified actions that affect the
health score;
[G] determining an applicability of the one or more
qualified actions completed by the user in response to receiving
the completion healthcare data, wherein determining the
applicability of the one or more qualified actions includes
attempting to certify the one or more qualified actions by, for
each of the one or more qualified actions:
Appeal 2019-005763
Application 13/270,971

4
[G1] (a) identifying a qualified action provider
that provided the qualified action,
[G2] (b) determining whether the qualified
action provider is included in the set of certified qualified
action providers, and
[G3] (c) in an instance in which the qualified
action provider is included in the set of certified qualified
action providers, [G3a] determining whether the qualified
action provider verified that the first user successfully
completed the qualified action;
[H] determining that the user completed the one or more
qualified actions within a corresponding period of applicability;
[I] updating, by the first device, the health score based on
the one or more qualified actions completed by the user in
response to receiving the completion healthcare data;
[J] receiving, from a device of the first user, first user
data authorizing a second entity to access healthcare data from
the first device, and not authorizing a third entity to access
healthcare data from the first device, the second entity being
different from the first entity, and the third entity being
different from the first and second entities;
[K] receiving, from the second entity, a request for
healthcare data of the first user, and in response to the request
provide healthcare data including the updated health score to
the second entity;
[L] receiving, from the third entity, a request for
healthcare data of the first user, and in response to the request
not provide healthcare data to the third entity;
[M] causing generation of a reward based on the updated
health score; and
[N] causing the award to be provided to the user.
Appeal Br. 22–25, Claims Appendix (emphases, formatting, and bracketed
lettering/numbering added). Remaining independent claim 13 recites
Appeal 2019-005763
Application 13/270,971

5
commensurate limitations pertaining to “[a] system for determining a
portable health score” (claim 13) that substantially performs the method of
claim 1.
Examiner’s Rejections
(1) Claims 1–4, 11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–60 stand
rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter (an abstract idea), without significantly more. Final Act. 3–5;
Ans. 3–9.
(2) Claims 1, 2, 13, 14, 36, 38, 40, 41, 43, 44, 50, 51, and 53 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Rothman et al.
(US 8,403,847 B2; issued March 26, 2013) (hereinafter, “Rothman”),
Austrum et al. (US 2014/0372133 A1; published Dec. 18, 2014) (hereinafter,
“Austrum”), and Fotsch et al. (US 2005/0165627 A1; published July 28,
2005) (hereinafter, “Fotsch”). Final Act. 5–12.
(3) Claims 3, 4, 11, 15, 22, and 52 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rothman, Austrum, Fotsch, and
Balassanian (US 2012/0089413 A1; published April 12, 2012). Final Act.
12–15.
(4) Claims 12 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rothman, Austrum, Fotsch, and Olaniyan (US 8,392,207
B2; issued March 5, 2013). Final Act. 15–16.
Appellant’s Contentions
(1) With regard to the patent eligibility rejection, Appellant primarily
makes arguments regarding claim 1, relies on those arguments for the
eligibility of claims 2–4, 11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–60,
Appeal 2019-005763
Application 13/270,971

6
and generally contends the claims are not directed to an abstract idea (e.g.,
math concepts, methods of organizing human activity, mental processes),
but to improvements in computer function (see Appeal Br. 8–16; Reply Br.
2–3).
Therefore, based on Appellant’s patent eligibility arguments, and
because claims 1–4, 11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–60 contain
commensurate limitations, we select claim 1 as representative of claims 1–4,
11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–60 rejected under 35 U.S.C.
§ 101 for patent-ineligibility.
(2) With regard to the obviousness rejections of claims 1–4, 11–15,
22, 23, 36, 38, 40, 41, 43, 44, and 50–53, Appellant primarily argues the
merits of independent claims 1 and 13 (see Appeal Br. 16–20), and makes
similar arguments as to the patentability of remaining independent claim 13,
as well as all pending dependent claims (see Appeal Br. 20). Claims 1 and
13, as independent claims, recite commensurate limitations regarding a
method for determining a portable health score.
Principal Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 8–
20) and the Reply Brief (Reply Br. 2–4), the following two principal issues
are presented on appeal:
(1) Has Appellant shown the Examiner erred in rejecting
representative claim 1, as well as claims 2–4, 11–15, 22, 23, 36, 38, 40, 41,
43, 44, and 50–60 grouped therewith, under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter (i.e., a judicial exception such as
an abstract idea), without significantly more?
Appeal 2019-005763
Application 13/270,971

7
(2) Did the Examiner err in rejecting claims 1–4, 11–15, 22, 23, 36,
38, 40, 41, 43, 44, and 50–53 under 35 U.S.C. § 103(a) as being
unpatentable over the base combination of Rothman, Austrum, and Fotsch,
because the Examiner fails to show Austrum, and thus the combination,
teaches or suggests the disputed limitations E and G3a recited in claim 1,
and commensurately recited in claim 13?

ANALYSIS
Patent Eligibility Under 35 U.S.C. § 101
Section 101 of the Patent Act provides “[w]hoever 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. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
Appeal 2019-005763
Application 13/270,971

8
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
Appeal 2019-005763
Application 13/270,971

9
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”).3 Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, updating and clarifying the Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
Appeal 2019-005763
Application 13/270,971

10
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)) (9th Ed.,
Rev. 08.2017, 2018) (“Step 2A, Prong 2”).4
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception (“Step 2B”).
See Guidance, 84 Fed. Reg. at 54–56.
Even if the claim recites an abstract idea, the Federal Circuit explains
the “directed to” inquiry is not simply asking whether the claims involve a
patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether “their character as a
whole is directed to excluded subject matter.”

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. 54–55.
Appeal 2019-005763
Application 13/270,971

11
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Step 1
Under Step 1 of the patent-eligibility inquiry under § 101, we
determine whether a claim is directed to one of the four statutory categories
of invention, i.e., a process, machine, manufacture, or composition of matter.
Representative claim 1 recites “[a] computer-implemented method for
a portable health score” (preamble) including a series of steps for gathering
health care data (limitations A, F, J–L), determining a health score based on
health factors and the data (limitations B, C) to specify applicable actions to
be taken D, G–I) and provide a reward to users for taking certain actions
(limitations M, N). Therefore, claim 1, as a method claim reciting a process
having a series of steps, recites at least one of the enumerated categories
(e.g., process) of eligible subject matter in 35 U.S.C. § 101.
As a result, as to representative claim 1, we continue our analysis
under Step 2A, Prong 1 of the Guidance to determine whether claim 1
recites a judicial exception (a law of nature, natural phenomenon, or subject
matter within the enumerated groupings of abstract ideas above).

Appeal 2019-005763
Application 13/270,971

12
Step 2A, Prong 1
Although claim 1 recites a “computer-implemented method for a
portable health score” (see claim 1, preamble) including a series of steps for
gathering health care data (claim 1, limitations A, F, J–L), determining a
health score based on health factors and the data (claim 1, limitations B, C)
to specify applicable actions to be taken D, G–I) and provide a reward to
users for taking certain actions (claim 1, limitations M, N), the focus of
claim 1 is on performing the steps of a mental process, e.g., determining a
portable health score to determine a reward/award (see Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)). The mental process includes steps B–E
and G–I set forth in the body of claim 1. See, e.g., Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“analyzing
information by steps people [can] go through in their minds, or by
mathematical algorithms, without more [are] mental processes within the
abstract-idea category.”); Clarilogic v. Formfree Holdings, 681 F. App’x.
950, 954–55 (Fed. Cir. 2017) (gathering, analyzing, and outputting financial
data/assessment is an abstract idea that is patent ineligible); Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015) (targeted marketing is a form of “tailoring information based on
[provided] data,” which has been previously held by the Federal Circuit to
be an abstract idea, and a concept that is a “fundamental practice” that dates
back to newspaper advertisements); Morsa v. Facebook, Inc., 77 F. Supp. 3d
1007, 1014 (C.D. Cal. 2014) (finding that both “targeting advertisements to
certain consumers, and using a bidding system to determine when and how
advertisements will be displayed” are abstract ideas), aff’d per curiam, 622
F. App’x 915 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
Appeal 2019-005763
Application 13/270,971

13
709, 714 (Fed. Cir. 2014) (determining that using an advertisement as an
exchange or currency is an abstract idea).
Steps B–E and G–I alsoconstitute an organization of human activity,
such as determining one or more relevant health factors (claim 1, limitation
B), determining a health score (claim 1, limitation C) to provide data
specifying qualified actions to be taken (claim 1, limitation D) and identify a
set of certified qualified action providers (claim 1, limitation E) and
determine applicability of the qualified actions completed by the user
through certification (claim 1, limitation G), which is a business relation
between people or commercial transaction. As such, the claimed invention
recites a mental process, which is an abstract idea.
The Examiner determines, and we agree, that claim 1 recites certain
methods of organizing human activity and mental processes (see Final Act.
3; Ans. 4–5), such as “determining a portable health score for a patient using
core health factors, age/gender based factors, and health condition factors”
(Final Act. 3), “by managing interactions between a user, qualified actions,
and a qualified action provider” (Ans. 4).
Our reviewing court has also concluded that abstract ideas include the
concepts (i.e., mental processes) of collecting data, recognizing certain data
within the collected data set, and storing the data in memory. Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations, LLC v.
Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding
“claims directed to the collection, storage, and recognition of data are
directed to an abstract idea”). Moreover, our reviewing court has concluded
that acts of parsing, comparing, storing, and editing data are abstract ideas.
Appeal 2019-005763
Application 13/270,971

14
Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018). In addition,
the collection of information and analysis of information (e.g., recognizing
certain data within the dataset) are also abstract ideas. Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Similarly,
“collecting, displaying, and manipulating data” is an abstract idea.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1167 (Fed. Cir. 2018) (“merely presenting the results of abstract processes of
collecting and analyzing information . . . is abstract as an ancillary part of
such collection and analysis”) (quotations omitted).
In addition, our reviewing court has held that combining several
abstract ideas (e.g., like a mental process and a fundamental economic
activity as here) does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(“Adding one abstract idea . . . to another abstract idea . . . does not render
the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (patent-ineligible claims were
directed to a combination of abstract ideas).
In view of the foregoing, we conclude claim 1 recites determining a
health score to determine a reward to be issued, which is a mental process
and method of organizing human activity, such as a commercial interaction
and/or business relation between people. Because we conclude claim 1
recites an abstract idea and/or combination of abstract ideas, we proceed to
Step 2A, Prong 2 of the Guidance to determine whether claim 1 is “directed
to” the judicial exception, by determining whether additional elements of the
claim integrate the abstract idea into a practical application. Such additional
Appeal 2019-005763
Application 13/270,971

15
elements may reflect an improvement to a technology or technical field. See
Guidance, 84 Fed. Reg. at 55.
Step 2A, Prong 2 – Practical Application
Under Step 2A, Prong 2, we determine whether the recited judicial
exception is integrated into a practical application of that exception. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Appellant contends that claim 1 is not directed to an abstract idea, but
to “a particular inventive technology for calculating a health score” (Appeal
Br. 13) that constitutes “a unique approach for controlling access to
healthcare data associated with the health score” (Appeal Br. 13–14).
Appellant further contends that this unique approach provides “practical
application” such as “programmatically calculating and updating a health
score (reciting in detail many of the granular programmatic steps involved in
one specific procedure for calculating a health score based on calculation,
and in some cases, re-calculation, of intermediate scores) AND
programmatically controlling access to healthcare data associated with the
health score” (Reply Br. 3).
We disagree with Appellant (see Appeal Br. 13–14; Reply Br. 3) that
the focus of claim 1 is on a technical improvement (or practical application
of the abstract idea). “[M]erely selecting information, by content or source,
for collection [and] analysis . . . does nothing significant to differentiate a
process from ordinary mental processes.” Elec. Power, 830 F.3d at 1355.
Receiving and analyzing (or identifying data), by itself, does not transform
an otherwise-abstract process or system of information collection and
analysis. See id. Like the claims at issue in Electric Power, we find
Appeal 2019-005763
Application 13/270,971

16
Appellant’s claim 1 does not invoke “any assertedly inventive
programming” or an “arguably inventive set of components or methods.” Id.
The mere recitation of determining a portable health score to provide
rewards/awards in claim 1 does not embody an improvement in computer
capabilities as in Enfish. See 822 F.3d at 1336 (“[T]he plain focus of the
claims is on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity.”). Rather, the focus of claim 1 is on determining compliance with
certain qualified health actions to issue a reward. This is an improvement to
help the user and/or employer, but not the computer itself (or in the case of
claim 1, the memory and processor of the first device, and/or the
communications network, or device of the first user set forth in the claim).
Claim 1 does not recite a method that improves the speed or efficiency of the
communications network or computer systems, or otherwise improves any
of these elements.
To the extent that the claimed method performs fraud detection in
travel expense reimbursements faster or more accurately than other
computerized methods, that would not provide an improvement to the
computer itself. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015) (explaining that in order for a machine to add
significantly more, it must “play a significant part in permitting the claimed
method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly”)
(emphasis added); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1095 (2016) (“While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed increase comes
Appeal 2019-005763
Application 13/270,971

17
from the capabilities of a general-purpose computer, rather than the patented
method itself”); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter”).
The steps of (i) limitations A, F, and J through L are merely
conventional data gathering and analysis (see MPEP § 2106.05(g); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015);
Elec. Power, 830 F.3d at 1354); and (ii) limitation G is insignificant extra-
solution activity that does not meaningfully limit the claim (see MPEP
§ 2106.05(g)). As such, based on the record before us, we determine that the
claimed invention is not integrated into a practical application.
Merely adding a programmed computer to perform generic computer
functions does not automatically overcome an eligibility rejection. Alice,
573 U.S. at 223–24. Furthermore, the use of a general purpose computer to
apply an otherwise ineligible algorithm does not qualify as a particular
machine. See Ultramercial, 772 F.3d at 716–17; In re TLI Commc’ns LLC
v. AV Automotive, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (mere recitation
of concrete or tangible components is not an inventive concept); EON Corp.
IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015)
(noting that Alappat’s rationale that an otherwise ineligible algorithm or
software could be made patent-eligible by merely adding a generic computer
to the claim was superseded by the Supreme Court’s Bilski and Alice
decisions). In the instant case, using a computer to more accurately ensure
issuance of rewards for a health score based on qualified actions being taken
is nothing more than the abstract idea itself.
Appeal 2019-005763
Application 13/270,971

18
For the reasons discussed above, we conclude Appellant’s claim 1
(and claims 2–4, 11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–60 grouped
therewith) invokes generic computer components (computer systems,
memory, processor, communications network) merely as tools in which the
computer instructions apply the judicial exception and, thus, the abstract
idea is not integrated into a practical application. Because Appellant has not
persuaded us the Examiner’s determination that claim 1 recites an abstract
idea under Step 2A is in error, and claim 1 recites a judicial exception (i.e.,
the abstract idea of a method of organizing human activity and/or mental
process) that is not integrated into a practical application, in accordance with
the Guidance, we conclude claim 1 and claims 2–4, 11–15, 22, 23, 36, 38,
40, 41, 43, 44, and 50–60 grouped therewith, are directed to an abstract idea
under Step 2A, and the eligibility analysis with regard to claims 1–4, 11–15,
22, 23, 36, 38, 40, 41, 43, 44, and 50–60 proceeds to Step 2B.
Step 2B – Inventive Concept
Having determined claim 1 and claims 2–4, 11–15, 22, 23, 36, 38, 40,
41, 43, 44, and 50–60 grouped therewith are directed to an abstract idea that
is not integrated into a practical application, we now evaluate whether the
additional elements, whether examined alone or as an ordered combination,
add a specific limitation that is not well-understood, routine, or conventional
activity in the field, or simply append well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the abstract idea. See generally Guidance.
Here, claim 1 recites the additional elements of “a first device” having
“a processor and a data server” connected to “a communication network” for
communication to “an electronic medical record vendor entity” (claim 1,
Appeal 2019-005763
Application 13/270,971

19
limitation A), and “a device of the first user” (claim 1, limitation J).
Considering claim 1 as a whole, none of the additional elements applies or
uses the abstract idea in a meaningful way such that the claim as a whole is
more than a drafting effort designed to monopolize the exception.
Although Appellant contends the Examiner has not met the required
burden of showing the additional elements to be well-understood, routine,
and conventional (see Appeal Br. 14–16), we agree with the Examiner (Final
Act. 4; 6–8) that that burden has been met. At least paragraphs 128 through
146 and Figures 7–10 support the Examiner’s findings in this regard. In
addition, the Examiner determines, and we agree, that the only elements
beyond the abstract idea are generic computer components or combinations
of generic components used to perform generic computer functions (Final
Act. 4; Ans. 8)—a determination that is supported by Appellant’s Figures 7
through 10 and the accompanying descriptions found in the Specification
(see Spec. ¶¶ 128–146). Appellant’s Specification only shows (see Figs. 7–
10) and describes (see e.g., Spec. ¶¶ 128–146) well-understood, routine,
conventional computer components used for ensuring accurate
reimbursement of travel expenses (e.g., a computing device/system,
processor, memory, and communications network) that are in a general
purpose computing environment in a manner that indicates the components
and the functions they perform were well-known in the art. See Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
(explaining that “a patent need not teach, and preferably omits, what is well
known in the art”); see also USPTO, Memorandum on Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19,
Appeal 2019-005763
Application 13/270,971

20
2018), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF (explaining that a specification that
describes additional elements “in a manner that indicates that the additional
elements are sufficiently well-known that the specification does not need to
describe the particulars of such additional elements to satisfy 35 U.S.C.
§ 112(a)” can show that the elements are well understood, routine, and
conventional); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in
implementation details that it amounts to merely a generic component
(software, hardware, or firmware) that permits the performance of the
abstract idea, i.e., to retrieve the user-specific resources.”).
As a result, we are not persuaded that the travel reimbursement and
compliance determinations recited in claim 1 are anything beyond generic
computer functions. Considering the elements of claim 1 individually and as
an ordered combination, claim 1 does no more than simply instruct the
practitioner to implement the abstract idea on a generic computer, processor,
and/or user interface. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333–34
(Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible.”)
Additionally, as noted in MPEP § 2106.05(d)(II), the courts have
previously recognized that using computer processors and memories to
collect data and keep records, perform repetitive calculations, and/or
receive/send data are well‐understood, routine, and conventional functions
when they are claimed in a merely generic manner (e.g., at a high level of
generality) or as insignificant extra-solution activity (see MPEP
Appeal 2019-005763
Application 13/270,971

21
§ 2106.05(d)(II)(i)–(iv). See also Berkheimer, 881 F.3d at 1366 (acts of
parsing, comparing, storing, and editing data are abstract ideas); SAP Am.,
Inc. v. Investpic, LLC, 898 at 1167 (Fed. Cir. 2018) (“merely presenting the
results of abstract processes of collecting and analyzing information . . . is
abstract as an ancillary part of such collection and analysis”); Intellectual
Ventures I, 850 F.3d at 1340 (“collecting, displaying, and manipulating
data” is an abstract idea); Smart Sys., 873 F.3d at 1372 (concluding “claims
directed to the collection, storage, and recognition of data are directed to an
abstract idea.”).
As a result, Appellant has not persuaded us the Examiner erred with
respect to the Guidance’s Step 2B analysis. See Guidance, 84 Fed. Reg. at
Step 2B.
Summary
As explained above, under the USPTO’s Revised Patent Eligibility
Guidance, based on the record before us, and informed by our governing
case law concerning 35 U.S.C. § 101, Appellant has not sufficiently shown
the Examiner erred in rejecting representative claim 1, as well as claims 2–4,
11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–60 grouped therewith, as being
directed to patent-ineligible subject matter without significantly more, and
we sustain the rejection of claims 1–4, 11–15, 22, 23, 36, 38, 40, 41, 43, 44,
and 50–60 under 35 U.S.C. § 101.

Obviousness Under 35 U.S.C. § 103(a)
We have reviewed the Examiner’s obviousness rejections of claims 1–
4, 11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–53 (Final Act. 5–16), and
response to Appellant’s arguments in the Appeal Brief (Ans. 10–11), in light
Appeal 2019-005763
Application 13/270,971

22
of Appellant’s arguments in the Appeal Brief (Appeal Br. 16–20) that the
Examiner has erred. We agree with Appellant’s arguments that the
Examiner has erred. Our reasoning follows.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). Based on the plain and ordinary meaning of
“certified qualified action providers” as used in limitations E and G3a of
claim 1, and in remaining independent claim 8, and in light of Appellant’s
disclosures in paragraphs 113, 114, and 150 of the Specification concerning
review of qualified actions by qualified action providers “against well
established, certified health and wellness standards” (Spec. ¶ 113), and
further based on the explicit recitations in limitations E and G3a that the
certified qualified action providers are “qualified action providers who
administer qualified actions that have been properly reviewed and vetted”
(claim 1, limitation E) and “verif[y] that the first user successfully
completed the qualified action” (claim 1, limitation G3a), we cannot agree
with the Examiner (see Ans. 10–11) that the health plan specialists (Austrum
¶ 127), provider of in-person coaching (Austrum ¶ 129), health coach
Appeal 2019-005763
Application 13/270,971

23
(Austrum ¶ 153), or third-party health coach providers (Austrum ¶ 134) are
encompassed by the term “certified qualified action providers” (claims 1,
13) (emphasis added). Austrum is silent as to whether or not the coach or
third-party health coach is certified and capable of reviewing well
established, certified health and wellness standards in order to make
determinations about successful completion of qualified actions. One of
ordinary skill in the art would understand that such certification may have
life or death consequences for users.
We will not resort to speculation or assumptions to cure the
deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967). The Examiner has not provided a prima facie
case of obviousness on this record, and does not make any determination
concerning whether or not it would have been obvious to one of ordinary
skill in the wellness/medical art to limit providers to “certified qualified
action providers” that “have been properly reviewed and vetted” (claims 1,
13).
Based on the record before us, we find that the Examiner has not
properly established factual determinations and articulated reasoning with a
rational underpinning to support the legal conclusion of obviousness for
claims 1 and 13, resulting in a failure to establish a prima facie of
obviousness. As a result, based on the record before us, Appellant has
shown the Examiner erred in rejecting independent claims 1 and 13, and thus
claims 2–4, 11, 12, 14, 15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–53
depending respectively therefrom, under 35 U.S.C. § 103, and we cannot
sustain the Examiner’s obviousness rejections of claims 1–4, 11–15, 22, 23,
Appeal 2019-005763
Application 13/270,971

24
36, 38, 40, 41, 43, 44, and 50–60 over the base combination of Rothman,
Austrum, and Fotsch.

CONCLUSIONS
(1) As explained above, under the USPTO’s Revised Patent Eligibility
Guidance, based on the record before us, and informed by our governing
case law concerning 35 U.S.C. § 101, Appellant has not shown the Examiner
erred in rejecting representative claim 1, as well as claims 2–4, 11–15, 22,
23, 36, 38, 40, 41, 43, 44, and 50–60 grouped therewith, as being directed to
patent-ineligible subject matter without significantly more, and we sustain
the rejection of claims 1–4, 11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–60
under 35 U.S.C. § 101.
(2) In addition, Appellant has shown the Examiner erred in rejecting
claims 1–4, 11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–53 as being
unpatentable under 35 U.S.C. § 103. In view of the foregoing, we do not
sustain the obviousness rejections of claims 1–4, 11–15, 22, 23, 36, 38, 40,
41, 43, 44, and 50–53 as being obvious over the same base combination of
Rothman, Austrum, and Fotsch.
In summary, we affirm the Examiner’s decision to reject claims 1–4,
11–15, 22, 23, 36, 38, 40, 41, 43, 44, and 50–60, because at least one ground
of rejection has been affirmed for each claim. See 37 C.F.R. § 41.50(a)(1)
(“The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed”).

Appeal 2019-005763
Application 13/270,971

25
For all of the reasons above, we hold as follows:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 11–15,
22, 23, 36,
38, 40, 41,
43, 44, 50–
60
101 Eligibility 1–4, 11–15,
22, 23, 36, 38,
40, 41, 43, 44,
50–60

1, 2, 13, 14,
36, 38, 40,
41, 43, 44,
50, 51, 53
103(a) Rothman,
Austrum, Fotsch
1, 2, 13,
14, 36, 38,
40, 41, 43,
44, 50, 51,
53
3, 4, 11, 15,
22, 52
103(a) Rothman,
Austrum, Fotsch,
Balassanian
3, 4, 11,
15, 22, 52
12, 23 103(a) Rothman,
Austrum, Fotsch,
Olaniyan
12, 23
Overall
Outcome
1–4, 11–15,
22, 23, 36, 38,
40, 41, 43, 44,
50–60

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. §§ 41.50(f), 41.52(b) (2013).

AFFIRMED