Jun Hua et al.

Patent Trials and Appeals Board

Nov 19, 2019

12638847 - (D) (P.T.A.B. Nov. 19, 2019)

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.
12/638,847 12/15/2009 Jun Hua 35006-673001US 5789
76615 7590 11/19/2019
Mintz Levin/Fair Isaac
Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
EXAMINER
LE, LINH GIANG
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/19/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUN HUA, HUI ZHU, CATHERINE V. ORATE-POTT,
DAVID SHELLENBERGER,
DEONADAYALAN NARAYANASWAMY, and
NIRANJAN A. SHETTY
____________

Appeal 2019-000048
Application 12/638,847
Technology Center 3600
____________

Before JOSEPH L. DIXON, JUSTIN BUSCH, and CATHERINE SHIANG,
Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, 4, 6–8, 10–15, and 19–24, which are all the claims
pending and rejected in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Fair Isaac Corporation as the real party in interest.
Appeal Br. 2.

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STATEMENT OF THE CASE
Introduction
The present invention relates to “techniques for predicting medication
adherence.” Spec. ¶ 2.
In one aspect, data characterizing an individual is received.
Thereafter, one or more variables are extracted from the data so
that a likelihood of the individual adhering to a treatment
regimen can be determined using a predictive model populated
with the extracted variables. The predictive model is trained on
historical treatment regimen adherence data empirically derived
from a plurality of subjects. Thereafter, data characterizing the
determined likelihood of adherence can be promoted.

Spec. ¶ 4. Claim 1 is exemplary:
1. A computer-implemented method comprising:
receiving, using one or more processors, data
characterizing an individual;
extracting, using one or more processors and by
identifying one or more treatment adherence patterns in the
data, one or more extracted variables from the data, the one or
more extracted variables comprising a combination formed by
combining a plurality of variables selected from a purchase
behavior of the individual, an income of the individual, a credit
risk of the individual, and a geographic region of the individual,
the one or more processors performing the combining of the
plurality of variables when the formed combination yields an
improved correlation of the combination with a treatment
regimen relative to a correlation of any single variable of the
plurality of variables with the treatment regimen;
determining, using one or more processors and using a
predictive model populated with the extracted variables, a
likelihood of the individual adhering to the treatment regimen,
the predictive model being trained on historical treatment
regimen adherence data empirically derived from a plurality of
subjects, the predictive model being at least one of a neural
network model and a support vector machine model, the
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historical treatment regimen adherence data being temporarily
stored in a database operably coupled to the one or more
processors;
generating, using one or more processors, a treatment
score indicative of the likelihood of adherence to the treatment
regimen by the individual, the treatment score lying within a
range of treatment scores of a plurality of ranges of treatment
scores;
automatically generating, using one or more processors
and based on the treatment score, a set of messages specific to
the range of treatment scores that includes the generated
treatment score to provide sequential guidance to the individual
to increase the likelihood of adherence to the treatment regimen
by the individual, each message of the set of messages
specifying at least one action that the individual should perform
to adhere to the treatment regimen, each range of treatment
scores being associated with a separate set of one or more
messages; and
automatically transmitting, using one or more processors,
the set of messages sequentially to a computing device
associated with the individual and initiating the computing
device to display each message of the set of messages to the
individual via a graphical user interface.

Rejection2

Claims 1, 3, 4, 6–8, 10–15, and 19–24 are rejected under 35 U.S.C.
§ 101 because they are directed to patent-ineligible subject matter. Final
Act. 2–8.

2 Throughout this opinion, we refer to the (1) Final Office Action dated
October 18, 2017 (“Final Act.”); (2) Appeal Brief dated April 18, 2018
(“Appeal Br.”); (3) Examiner’s Answer dated August 1, 2018 (“Ans.”); and
(4) Reply Brief dated October 1, 2018 (“Reply Br.”).
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ANALYSIS3
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. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
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
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

3 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
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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 187; 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
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
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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 (citation 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. (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.
In January 2019, the United States Patent and Trademark Office
published revised guidance on the application of § 101. USPTO, 2019
REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”).4 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
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th ed. rev.
08.2017 2018) (Step 2A, Prong 2).
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 The Guidance was updated in October 2019.
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(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.
Turning to Step 2A, Prong 1 of the Guidance, claim 1 (with
emphases) recites:
1. A computer-implemented method comprising:
receiving, using one or more processors, data
characterizing an individual;
extracting, using one or more processors and by
identifying one or more treatment adherence patterns in the
data, one or more extracted variables from the data, the one or
more extracted variables comprising a combination formed by
combining a plurality of variables selected from a purchase
behavior of the individual, an income of the individual, a credit
risk of the individual, and a geographic region of the
individual, the one or more processors performing the
combining of the plurality of variables when the formed
combination yields an improved correlation of the combination
with a treatment regimen relative to a correlation of any single
variable of the plurality of variables with the treatment
regimen;
determining, using one or more processors and using a
predictive model populated with the extracted variables, a
likelihood of the individual adhering to the treatment regimen,
the predictive model being trained on historical treatment
regimen adherence data empirically derived from a plurality of
subjects, the predictive model being at least one of a neural
network model and a support vector machine model, the
historical treatment regimen adherence data being temporarily
stored in a database operably coupled to the one or more
processors;
generating, using one or more processors, a treatment
score indicative of the likelihood of adherence to the treatment
regimen by the individual, the treatment score lying within a
range of treatment scores of a plurality of ranges of treatment
scores;
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automatically generating, using one or more processors
and based on the treatment score, a set of messages specific to
the range of treatment scores that includes the generated
treatment score to provide sequential guidance to the individual
to increase the likelihood of adherence to the treatment regimen
by the individual, each message of the set of messages
specifying at least one action that the individual should perform
to adhere to the treatment regimen, each range of treatment
scores being associated with a separate set of one or more
messages; and
automatically transmitting, using one or more processors,
the set of messages sequentially to a computing device
associated with the individual and initiating the computing
device to display each message of the set of messages to the
individual via a graphical user interface.

Because all of the italicized functions can be performed by a human
using a pen and paper, they are like the mental processes in CyberSource
and Synopsys. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011) (“All of claim 3’s method steps can be
performed in the human mind, or by a human using a pen and paper. . . .
Such a method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under § 101.”); Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“[W]e
continue to ‘treat[ ] analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.’”) (citation omitted).
For example, a person can “receiv[e] . . . data characterizing an
individual” on paper. Further,
extracting . . . by identifying one or more treatment adherence
patterns in the data, one or more extracted variables from the
data, the one or more extracted variables comprising a
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combination formed by combining a plurality of variables
selected from a purchase behavior of the individual, an income
of the individual, a credit risk of the individual, and a
geographic region of the individual, . . . performing the
combining of the plurality of variables when the formed
combination yields an improved correlation of the combination
with a treatment regimen relative to a correlation of any single
variable of the plurality of variables with the treatment regimen

extracts data and combines variables when a certain condition is met, and a
person can perform that data analysis by using a pen and paper. Likewise,
“determining . . . using a predictive model populated with the extracted
variables, a likelihood of the individual adhering to the treatment regimen,
the predictive model being trained on historical treatment regimen adherence
data empirically derived from a plurality of subjects” determines likelihood
of adherence using a predictive model, and a person can perform that data
prediction analysis using a pen and paper. In particular, a person can train a
predictive model, such as a formula, based on historical data by inserting the
historical data into the predictive model and obtaining the results using a pen
and paper. And a person can populate the predictive model, such as a
formula, by inserting the variables into the predictive model using a pen and
paper.
Further, a person can use paper to “temporarily store[]” “the historical
treatment regimen adherence data” and discard the information afterwards.
In addition, “generating . . . a treatment score indicative of the likelihood of
adherence to the treatment regimen by the individual, the treatment score
lying within a range of treatment scores of a plurality of ranges of treatment
scores” generates a treatment score within a range of scores, and a person
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can analyze the data to derive that score by using a pen and paper. Further,
claim 1 requires

generating, . . . based on the treatment score, a set of messages
specific to the range of treatment scores that includes the
generated treatment score to provide sequential guidance to the
individual to increase the likelihood of adherence to the
treatment regimen by the individual, each message of the set of
messages specifying at least one action that the individual
should perform to adhere to the treatment regimen, each range
of treatment scores being associated with a separate set of one
or more messages,

and a person can generate a set of messages and write the messages using a
pen and paper.
Our determination is supported by the Specification, which describes
the need for analyzing data to predict adherences to medical treatments and
treatment regimes, and the resulting method for performing such data
analysis. See, e.g., Spec. ¶¶ 3–10.
Appellant argues:
Claim 1 includes, among other things, the following features:
• populating a predictive model with variables;
• using the predictive model to determine a likelihood of the
individual adhering to the treatment regimen;
• training the predictive model on historical treatment regimen
adherence data . . . .

It is respectfully submitted that these features cannot lie within
the human mind, and therefore are not mental steps.

Appeal Br. 16; see also Reply Br. 8.
Appellant’s arguments are unpersuasive, as Appellant has not
explained why a person cannot perform such steps using a pen and paper.
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To the contrary and as discussed above, a person can perform all of those
steps using a pen and paper. As a result, we conclude claim 1 recites mental
processes, and thus an abstract idea. See Guidance, Step 2A, Prong 1
(Groupings of Abstract Ideas).
Turning to Step 2A, Prong 2 of the Guidance, contrary to Appellant’s
assertions (Appeal Br. 16–22; Reply Br. 6–17), claim 1 does not recite
additional elements that integrate the judicial exception into a practical
application. Appellant’s argument that “combining at least two variables
when the treatment regimen yields an improved correlation with (that is, has
more interdependence with) the combined variable than with each of the at
least two variables - this function is an improvement” and “as a result of the
improved correlation, the predictive model can generate a more accurate
value of the likelihood of the individual adhering to the treatment regimen”
(Appeal Br. 18; see also Reply Br. 9, 12, 16) is unpersuasive because as
discussed above, that limitation recites a mental process, as a person can
perform that data analysis using a pen and paper. See Synopsys, 839 F.3d at
1151 (“a claim for a new abstract idea is still an abstract idea”); Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“under
the Mayo/Alice framework, a claim directed to a newly discovered law of
nature (or natural phenomenon or abstract idea) cannot rely on the novelty of
that discovery for the inventive concept necessary for patent eligibility”)
(citations omitted).
Further, the Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by . . . adding []insignificant post
solution activity.’” Bilski, 561 U.S. at 610–611 (citation omitted). The
limitation “automatically transmitting, using one or more processors, the set
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of messages sequentially to a computing device associated with the
individual and initiating the computing device to display each message of
the set of messages to the individual via a graphical user interface” merely
transmits the resulting information from mental processes to a known
computing device and displays such information on a known graphic user
interface of the known computing device. Therefore, we conclude the
limitation “adds insignificant extra-solution activity to” the mental processes
and does not “transform an unpatentable principle into a patentable process.”
See Flook, 437 U.S. at 590 (“the presence of specific ‘post-solution’
activity—the adjustment of the alarm limit to the figure computed according
to the formula” does not “transform an unpatentable principle into a
patentable process”); Guidance, 84 Fed. Reg. at 55.
Appellant cites Core Wireless Licensing S.A.R.L. v. LG Electronics,
Inc., 880 F.3d 1356 (Fed. Cir. 2018) (Reply Br. 11–12, 16–17), but does not
persuasively argue why that case is on point. In Core Wireless, the Court
determines:
The asserted claims in this case are directed to an improved
user interface for computing devices . . . . Claim 1 of the ’476
patent requires “an application summary that can be reached
directly from the menu,” specifying a particular manner by
which the summary window must be accessed. The claim
further requires the application summary window list a limited
set of data, “each of the data in the list being selectable to
launch the respective application and enable the selected data to
be seen within the respective application.” This claim limitation
restrains the type of data that can be displayed in the summary
window. Finally, the claim recites that the summary window “is
displayed while the one or more applications are in an un-
launched state,” a requirement that the device applications exist
in a particular state. These limitations disclose a specific
manner of displaying a limited set of information to the user,
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rather than using conventional user interface methods to
display a generic index on a computer. Like the improved
systems claimed in Enfish, Thales, Visual Memory, and Finjan,
these claims recite a specific improvement over prior systems,
resulting in an improved user interface for electronic devices.

The specification confirms that these claims disclose an
improved user interface for electronic devices, particularly
those with small screens. It teaches that the prior art interfaces
had many deficits relating to the efficient functioning of the
computer, requiring a user “to scroll around and switch views
many times to find the right data/functionality.” ’020 patent at
1:47–49. Because small screens “tend to need data and
functionality divided into many layers or views,” id. at 1:29–30,
prior art interfaces required users to drill down through many
layers to get to desired data or functionality. Id. at 1:29–37.
That process could “seem slow, complex and difficult to learn,
particularly to novice users.” Id. at 1:45–46.

Core Wireless Licensing, 880 F.3d at 1362–63 (emphases added).
Unlike the claims of Core Wireless, claim 1 does not address the
problem of “prior art interfaces . . . deficits relating to the efficient
functioning of the computer, requiring a user ‘to scroll around and switch
views many times to find the right data/functionality’” or similar problems.
Id. at 1363. Nor is claim 1 “directed to an improved user interface for
computing devices” or similar improvements. Id. at 1362. In particular,
Appellant’s argument about the “improved correlation” (Appeal Br. 18;
Reply Br. 9, 12, 16) is unpersuasive: as discussed above, that process is a
mental process and thus constitutes an abstract idea. And Appellant’s
assertion that “temporary” storage of data constitutes a computer
improvement (Appeal Br. 18, 20; Reply Br. 9, 12, 16) is unpersuasive, as
Appellant does not provide sufficient objective evidence to support the
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assertion. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“attorney
argument [is] not the kind of factual evidence that is required to rebut a
prima facie case of obviousness”); Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977) (“Argument of counsel cannot take the place of evidence
lacking in the record.”). Therefore, Core Wireless is inapplicable here.
Appellant argues this case is different from Electric Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) because:
claim 1 teaches:
• technical means of one or more processors, a predictive
model, a computing device, and a graphical user interface;
and
• functions that are arguably an advance over conventional
computer technology, including:
o combining at least two variables when the treatment
regimen yields an improved correlation with (that is,
has more interdependence with) the combined
variable than with each of the at least two variables -
this function is an improvement over conventional
computer technology because as a result of the
improved correlation, the predictive model can
generate a more accurate value of the likelihood of
the individual adhering to the treatment regimen; and
o the storage of the historical treatment regimen
adherence data being temporary — this is an
improvement over conventional computer technology
because as a result of the temporariness, memory
space is conserved, which in turn increases the speed
of computing the likelihood of the individual
adhering to the treatment regimen.

Appeal Br. 18; see also Reply Br. 8–9.
Appellant’s arguments are unpersuasive, as Appellant has not
persuasively explained why the claim becomes patent eligible by reciting
known computer components and devices (processors, a computing device,
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and a graphical user interface), and a predictive model that a person can
implement using a pen and paper. Further, as discussed above, Appellant’s
arguments about “improved correlation” and “temporary” storage of data
(Appeal Br. 18; Reply Br. 9) are unpersuasive, as Appellant has not shown
such features are indeed “improvement[s]” of “computer technology”
(Appeal Br. 18).
Appellant also argues this case is different from FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) because:
FairWarning claim 1 does not identify the tool that performs
the steps recited in claim 1, and therefore it can be inferred that
the above-noted features are performed by a human mind and
that claim 1 recites an idea of itself. For example, nowhere does
that claim 1 recite that the steps recited therein are activated by
one or more processors, much less claim 1 identifying the tool
on which the claimed notification is presented. The Federal
Circuit points this deficiency and expressly notes it as a reason
for claim 1 being patent-eligible, as noted in the following:
“And we have found that ‘merely presenting the results of
abstract processes of collecting and analyzing information,
without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection
and analysis.’”

In contrast to the above-noted claim in FairWarning, pending
claim 1 expressly identifies one or more processors, a predictive
model, a computing device, and a graphical user interface as the
particular tools for executing the subject matter recited in
pending claim 1. Therefore, claim 1 is distinct from the
representative claim (reproduced above) in FairWarning, and as
per the rationale in FairWarning pending claim 1 is not an idea
of itself.
Appeal Br. 19 (footnote omitted); see also Reply Br. 10.
Appellant mischaracterizes FairWarning, because the
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FairWarning court determined “the claims require the use of a
computer”:
FairWarning’s claims merely implement an old practice in a
new environment. . . . Although FairWarning’s claims require
the use of a computer, it is this incorporation of a computer, not
the claimed rule, that purportedly “improve[s] [the] existing
technological process” by allowing the automation of further
tasks.
FairWarning IP, 839 F.3d at 1094–95 (emphasis added).
Similar to the claims of FairWarning, claim 1 is “not directed to an
improvement in the way computers operate” and “the focus of the claims is
not on . . . an improvement in computers as tools, but on certain
independently abstract ideas that use computers[, processors, and a graphic
user interface5] as tools.” FairWarning, 839 F.3d at 1095.
As a result, we conclude claim 1 does not recite additional elements
that integrate the judicial exception into a practical application. See
Guidance, Step 2A, Prong 2.
Turning to Step 2B of the Guidance, Appellant does not persuasively
argue any specific limitation is not well-understood, routine, or conventional
in the field. Nor does Appellant persuasively argue the Examiner erred in
that aspect. In particular, Appellant’s argument about the absence of any
prior art rejection (Reply Br. 13, 17) is unpersuasive, because prior art
rejections are determined under 35 U.S.C. § 102 and § 103, which are a
different statutory requirements. As the Supreme Court emphasizes: “[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

5 As discussed above, a person can implement “a predictive model” using a
pen and paper.
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within the § 101 categories of possibly patentable subject matter.” Diehr,
450 U.S. at 188–89 (emphasis added). Our reviewing court further guides
that “[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd.
v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).
As a result, Appellant has not persuaded us the Examiner erred with respect
to the Guidance’s Step 2B analysis. See Guidance, Step 2B.6
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101.
For similar reasons, we affirm the Examiner’s rejection of claims 3, 4,
6–8, 10–15, and 19–24, as Appellant does not advance separate substantive
arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1, 3, 4, 6–8, 10–
15, and 19–24 under 35 U.S.C. § 101.
In summary:

6 Each of the terms “neural network” model and “support vector machine”
model only appears in the Specification once, and the Specification does not
further describe such terms. See Spec. ¶ 37 (“[t]he underlying predictive
model can use a variety of predictive technologies, including, for example,
neural networks, support vector machines, and the like”). Appellant does
not argue the claimed “neural network” and “support vector machine”
models were not well-understood, routine, or conventional in the field.
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 4, 6–8, 10–
15, 19–24
101 Subject Matter
Eligibility
1, 3, 4,
6–8, 10–
15, 19–
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)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED