Karen Jaffe et al.

Patent Trials and Appeals Board

Jun 26, 2020

12961832 - (D) (P.T.A.B. Jun. 26, 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.
12/961,832 12/07/2010 Karen JAFFE OID-2010-036-01 9859
51444 7590 06/26/2020
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
EXAMINER
SHANKER, JULIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
DDay@KragLaw.com
MPusti@KragLaw.com
PTOMail@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KAREN JAFFE and MICHAEL BRAUN-BOGHOS
____________________

Appeal 2018-006568
Application 12/961,832
Technology Center 3600
____________________

Before ELENI MANTIS MERCADER, JOHN P. PINKERTON, and
CARL L. SILVERMAN, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 8, and 29–32, which are all of the claims
pending in the application. Claims 2–7 and 9–28 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Oracle International Corporation as the
real party in interest. Appeal Br. 2.
Appeal 2018-006568
Application 12/961,832

2
STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
follows:
Systems, methods, and other embodiments associated with
providing an alert when alert criteria is met by monitored AE
[(adverse event)] data analysis output. An alert criteria is
specified that corresponds to desired results of at least two
different instances of AE data analysis. The alert criteria is
assessed on at least one data source. A case series that meets the
alert criteria is output.

Abstract.2
The Specification states that “reports of adverse reactions to drugs
(typically called adverse events (AEs)) are received by reporting systems”
from healthcare professionals, such as pharmacists and physicians. Spec.
¶ 1. Data summarizing the AEs is stored in large databases and analyzed to
detect “signals,” which are defined as “reported information on a possible
causal relationship between an AE and a drug that was previously unknown
or incompletely documented.” Id. “In general, two types of analysis are
performed on the data to detect signals: quantitative and qualitative.” Id. at
2. In that regard, the Specification explains that:
Quantitative analysis involves statistically analyzing the AE data
to identify AE types that occur more often than other AE types
in the data. Quantitative analysis can be performed automatically

2 Our Decision refers to the Final Office Action mailed Dec. 30, 2016
(“Final Act.”); the Appeal Brief filed June 12, 2017 (“Appeal Br.”); the
Reply Brief filed June 6, 2018 (“Reply Br.”); the Examiner’s Answer mailed
Apr. 6, 2018 (“Ans.”); and the original Specification filed Dec. 7, 2010
(“Spec.”).

Appeal 2018-006568
Application 12/961,832

3
to determine unknown risks. Qualitative analysis involves testing
a hypothesis that specifies a particular AE type by analyzing AE
data contained within AE reports and other information sources
to confirm the hypothesis. Qualitative analysis is aimed at
testing data for a predefined risk.

Id.
Claims 1, 8, and 31 are independent. Claim 1 is representative of the
subject matter on appeal and is reproduced below (with paragraph lettering
added):
1. A non-transitory computer-readable medium storing
instructions that, when executed by one or more processors of a
computing device, cause the computing device to at least:
(a) provide an interface, via the one or more processors,
by which a user specifies an alert criteria, where the alert criteria
corresponds to desired results of at least two different instances
of quantitative analysis and qualitative analysis of adverse event
data, where the adverse event data corresponds to information
associated with an adverse reaction to a drug;
(b) receive, by way of an Internet connection, data mining
results from one or more data sources;
(c) compare via the one or more processors, the data
mining results to the alert criteria to determine when the data
mining results meet the alert criteria;
(d) upon determining that the alert criteria is met, request,
by way of the Internet connection, cases included in the data
mining results, where each case includes details about an adverse
event associated with the case;
(e) subsequent to the request, receive, by way of the
Internet connection, data describing the cases; and
(f) in response to receiving the data describing the cases,
generate an electronic alert to a remote computer, via the one or
more processors, to notify an analyst to review the cases at least
in part by outputting, through the interface, a case series that
includes the data describing the cases.
Appeal 2018-006568
Application 12/961,832

4
Appeal Br. 18–19 (Claims App.).
Rejections on Appeal
Claims 1, 8, and 29–32 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–6.
Claims 1, 8, and 29–32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gogolak (US 2002/0165845 A1; published Nov. 7,
2002) and Karkanias et al. (US 2008/0208620 A1; published Aug. 28, 2008)
(“Karkanias”). Final Act. 6–13.
ANALYSIS
I. SECTION 101 REJECTION
A. Examiner’s Findings and Conclusions,
and Appellant’s Contentions
The Examiner finds that like the claims in Electric Power Group and
Fairwarning, the claims here “are directed to a combination of abstract-idea
categories, namely, the claims are directed to collecting and analyzing
information to signal adverse events and notify analysts about such adverse
events.” Final Act. 3–4. The Examiner also finds that “[t]he data collection
and analyzing concept described in the claim[s], like EPG, are mental steps
people regularly go through in their minds when searching data, namely,
setting search criteria, combing through data, refining the combed through
data by way of setting more criteria/filtering, and outputting the results.” Id.
at 4; Ans. 4. The Examiner further finds that the claims are “similar to the
idea of organizing information through mathematical correlations (data
mining algorithms).” Final Act. 4; Ans. 5. Moreover, the Examiner finds
that the structural elements recited in claims 1, 8, and 29–32, when taken in
combination with the functional elements of the claims, do not offer
significantly more than the abstract idea because the claims do not recite an
Appeal 2018-006568
Application 12/961,832

5
improvement to the functioning of any computer or to another technology or
technical field. Final Act. 5. In that regard, the Examiner finds that the
additional limitations recited in the claims are generic computer components
performing generic computer functions (e.g., receiving, processing, and
transmitting information). Id. In addition, the Examiner finds that the
dependent claims “are merely reciting further embellishment of the abstract
idea and do not amount to anything that is significantly more than the
abstract idea itself.” Id. at 6.
Appellant argues that the Examiner failed to identify an abstract idea
or concept and, therefore, the rejection under § 101 is improper. Appeal Br.
8. Appellant also argues that claim 1 is directed to “an invention that
implements a database system that processes data records.” Id. (citing Spec.
¶¶ 10–11). According to Appellant, the invention is inextricably tied to
computer technology and “requires computers to process data records in a
specifically defined process and this is certainly not abstract.” Id. Appellant
further argues that claim 1, as a whole, is significantly more than an abstract
idea because it “improves the existing technological processes for processing
data records for adverse events” by implementing alert criteria that
corresponds to “desired results of at least two different instances of
quantitative analysis and qualitative analysis of adverse event data that has
not been implemented before.” Id. at 9–10. In addition, Appellant argues
that claim 1 improves the technological process because it allows (1) “a case
series to be output through the interface to an analyst without the analyst
having to request the case series” and (2) “the evaluation of the alert criteria
to be performed by a computer connected via the Internet to the data
sources, thus providing improved interaction of the computer with the data
Appeal 2018-006568
Application 12/961,832

6
sources to provide improved Internet data mining with respect to adverse
reactions to drugs.” Id. at 10; see also Reply Br. 4–5. Moreover, Appellant
argues that “claim 1 does not preempt all techniques and thus is significantly
more than an abstract idea.” Appeal Br. 10–11. For these same reasons,
Appellant argues that claims 8 and 31 “are significantly more than an
abstract idea” and that all claims satisfy the requirements of § 101.” Id. at
11. In the Reply Brief, Appellant also argues that the rejection is improper
because the Examiner did not provide evidence that any of the claim
elements or functions are well-known or generic. Reply Br. 4 (citing
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)).
B. Applicable Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Technology, Inc. v. Int’l Trade
Commission, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 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.” Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208,
216 (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of [the] claim both individually and ‘as an ordered
Appeal 2018-006568
Application 12/961,832

7
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claim for an “inventive
concept,” “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, 573 U.S. at 217–18 (quoting
Mayo, 566 U.S. at 72–73).
In January 2019, the Patent Office issued guidance about this
framework. See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance” or “Revised Guidance,
84 Fed. Reg.”).3 Under the Revised Guidance, to decide whether a claim is
directed to an abstract idea, we evaluate whether the claim (1) recites one of
the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails
to integrate the recited abstract idea into a practical application (“Prong
Two”). See Revised Guidance, 84 Fed. Reg. 51, 54. If the claim is directed
to an abstract idea, as noted above, we then determine whether the claim has
an inventive concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the

3 See also USPTO, October 2019 Patent Eligibility Guidance Update (Oct.
17, 2019), https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
Appeal 2018-006568
Application 12/961,832

8
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Reg. 56.
With these principles in mind, we first analyze whether claim 1 is
directed to an abstract idea.4
C. Abstract Idea
1. USPTO Step 2A, Prong One
Beginning with Step 2A, Prong One, of the Revised Guidance, we
must determine “whether the claims at issue are directed to one of those
patent-ineligible concepts,” including the abstract ideas enumerated in the
Revised Guidance.5 Alice, 573 U.S. at 217. One of the subject matter
groupings identified as an abstract idea in the Revised Guidance is “mental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” See Revised Guidance, 84
Fed. Reg. 52, 53. The Revised Guidance explains that “mental processes”
include acts that people can perform in their minds or using pen and paper,
even if the claim recites that a generic computer component performs the
acts. See Revised Guidance, 84 Fed. Reg. 52 n.14 (“If a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.”).

4 Appellant argues claims 1, 8, and 29–32 as a group focusing on claim 1.
See Appeal Br. 7–11. Thus, we decide the appeal in regard to the § 101
rejection based on representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
5 The Revised Guidance refers to “Step One” as determining whether the
claimed subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: “process, machine, manufacture, or composition of
matter.” This step is not at issue in this case.
Appeal 2018-006568
Application 12/961,832

9
For our prong one analysis, we set aside, for consideration below, the
technological elements recited in claim 1: “non-transitory computer-
readable medium storing instructions,” “one or more processors,”
“computing device,” “interface,” “Internet connection,” and “remote
computer.” Apart from these elements, claim 1 focuses on collecting and
analyzing information to identify or “signal” adverse events, and then notify
an analyst to review cases about such adverse events, by performing the
following operations or functions: (a) “a user specifies an alert criteria . . .
[that] corresponds to desired results of at least two different instances of
quantitative analysis and qualitative analysis of adverse event data”; (b)
“receive . . . data mining results from one or more data sources”; (c)
“compare . . . the data mining results to the alert criteria to determine when
the data mining results meet the alert criteria”; (d) “upon determining that
the alert criteria is met, request . . . cases included in the data mining
results”; (e) “subsequent to the request, receive . . . data describing the
cases”; and (f) “in response to receiving the data describing the cases . . .
notify an analyst to review the cases at least in part by outputting . . . a case
series that includes the data describing the cases.”
Consistent with the Examiner’s findings, we determine that claim 1,
as a whole, focuses on the abstract idea of “mental processes.” See Ans.
4–5. For example, a person can “specify an alert criteria,” as described in
limitation (a), by making a mental judgment as to what different instances of
quantitative analysis and qualitative analysis of adverse event data to specify
and then identify those instances using pen and paper. A person can perform
the function of “receiving” data mining results, as recited in limitation (b),
by observing the results from one or more data sources. And, a person can
Appeal 2018-006568
Application 12/961,832

10
perform the function of “comparing” the data mining results to the alert
criteria, as recited in step (c), either mentally or by observing and evaluating
the alert criteria and the data mining results recorded on paper. We also
determine that the functions of “request . . . cases included in the data
mining results” and “receive data describing the cases,” as recited in
limitations (d) and (e), respectively, are insignificant extra-solution activity,
e.g., mere data-gathering. See Revised Guidance, 84 Fed. Reg. 55 n.31.6
We see no meaningful difference in claim 1 and claims in similar
cases that the Federal Circuit has found are directed to an abstract idea. See,
e.g., Electric Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (characterizing collecting information, analyzing information by
steps people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas); see also Content Extraction
and Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (“[C]ollecting data,[] recognizing certain data
within the collected data set, and . . . storing that recognized data in a
memory.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372, 1375–76 (Fed. Cir. 2011) (Holding that the incidental use of
“computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible, explaining that “purely
mental processes can be unpatentable, even when performed by a

6 Limitation (f) of claim 1 recites “generate an electronic alert . . . to notify
an analyst to review the cases.” We determine that limitation (f) constitutes
insignificant extra-solution activity, e.g., post-solution activity. See Revised
Guidance, 84 Fed. Reg. 55 n.31.
Appeal 2018-006568
Application 12/961,832

11
computer.”); and Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Can.,
771 F Supp.2d 1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d at 1266
(Explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity.”).
Appellant’s arguments relating to prong one are not persuasive. First,
contrary to Appellant’s argument that the Examiner failed to identify an
abstract idea, the Examiner finds that the claims are directed to a
“combination of abstract-idea categories”—namely, mental processes and
mathematical correlations (data mining algorithms). Final Act. 3–4; see also
Ans. 4–5. As discussed above, we agree with the Examiner that the claims
are directed to the abstract idea of mental processes. Second, we are not
persuaded by Appellant’s argument that the Examiner has not provided
evidence to prove that the claimed functions, which are performed, for
example, with processors, can be performed “in the mind” of people. Reply
Br. 2–3. There is no requirement in the Revised Guidance or otherwise that
the Examiner must provide evidence that the claimed functions can be
performed in the human mind or by pen and paper. A claim recites a mental
process when the claim encompasses acts people can perform using their
minds or pen and paper. See, e.g., CyberSource, 654 F.3d at 1372–73 (Fed.
Cir. 2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). And, this is true even if the claim recites that
a generic computer component performs the acts. See, e.g., Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
Appeal 2018-006568
Application 12/961,832

12
paper or in a person’s mind.”); see also Revised Guidance, 84 Fed. Reg. at
52 n.14 (“If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”).
Accordingly, we conclude that claim 1 focuses on identifying data or
cases involving a particular adverse reaction to a drug, and then notifying an
analyst to review the cases, by performing functions that can be performed
in the human mind or with paper and pen. Thus, we also conclude that the
focus of claim 1 is the abstract idea of mental processes.
2. USPTO Step 2A, Prong Two
Because we determine that claim 1 recites an abstract idea, we turn to
prong two of the first step of the Alice analysis and consider whether claim 1
integrates this abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. 51. In doing so, we consider whether there are any
additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.”7 Revised Guidance, 84 Fed. Reg. 54–55.
As stated above, the technological elements recited in claim 1 are
“non-transitory computer-readable medium storing instructions,” “one or

7 We acknowledge that some of these considerations may be properly
evaluated under step 2 of Alice (step 2B of the Revised Guidance, 84 Fed.
Reg.). Solely for purposes of maintaining consistent treatment within the
Office, we evaluate it under step 1 of Alice (step 2A, prong two, of the
Revised Guidance, 84 Fed. Reg.). See Revised Guidance, 84 Fed. Reg. 54–
55.
Appeal 2018-006568
Application 12/961,832

13
more processors,” “computing device,” “interface,” “Internet connection,”
and “remote computer.” These elements are recited at a high level of
generality in claim 1 without sufficient detail or specific implementation
structure to limit the abstract idea to a specific practical application. These
elements are also broadly described in the Specification. See, e.g., Spec.
¶ 25(“computer-readable medium is a non-transitory medium that stores
computer executable instructions that if executed by a machine (e.g.,
processor) cause the machine to perform a method . . .”); ¶ 32 (“computing
device may be a computer 600 that includes a processor 602, a memory 604,
and input/output ports 610 operably connected by a bus 608”); ¶ 36 (“the
processor 602 may be a variety of various processors including dual
microprocessor and other multi-processor architectures”); ¶¶ 37, 39
(“computer 600 may interact with input/output devices via the I/O interfaces
618 and the input/output ports 610”; ¶ 40 (“computer 600 . . . may be
connected to the network devices 620 via the I/O interfaces 618, and/or the
I/O ports 610. Through the network devices 620, the computer 600 may
interact with a network . . . [and] may be logically connected to remote
computers.”)
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the functions of claim 1 require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, invoke any asserted inventive programming, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Appeal 2018-006568
Application 12/961,832

14
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
As discussed supra, Appellant argues that the invention is inextricably
tied to computer technology and “requires computers to process data records
in a specifically defined process and this is certainly not abstract.” Appeal
Br. 8. Appellant also argues that claim 1, as a whole, is significantly more
than an abstract idea because it “improves the existing technological
processes for processing data records for adverse events” by implementing
alert criteria that corresponds to “desired results of at least two different
instances of quantitative analysis and qualitative analysis of adverse event
data that has not been implemented before.” Id. at 9–10. Appellant further
argues that claim 1 improves the technological process because it allows (1)
“a case series to be output through the interface to an analyst without the
analyst having to request the case series” and (2) “the evaluation of the alert
criteria to be performed by a computer connected via the Internet to the data
sources, thus providing improved interaction of the computer with the data
sources to provide improved Internet data mining with respect to adverse
reactions to drugs.” Id. at 10; see also Reply Br. 4–5.
We are not persuaded by Appellant’s arguments. First, we are not
persuaded by Appellant’s argument that the invention requires computers to
process data records and that evaluation of the alert criteria is performed by
a computer connected via the Internet to the data sources. As discussed
supra, “the recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible.” See, e.g., DDR Holdings, 773
F.3d at 1256. Second, Appellant’s argument that claim 1 “improves the
existing technological processes for processing data records for adverse
Appeal 2018-006568
Application 12/961,832

15
events” by (1) implementing alert criteria that corresponds to “desired
results of at least two different instances of quantitative analysis and
qualitative analysis of adverse event data that has not been implemented
before” and (2) by allowing “a case series to be output through the interface
to an analyst without the analyst having to request the case series,” is
insufficient to provide a practical application because this is nothing more
than the abstract idea itself. BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention “significantly more” than
that ineligible concept.”); see also Aatrix Software, Inc. v. Green Shades
Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (“[T]he ‘inventive
concept’ cannot be the abstract idea itself.”).
Accordingly, we conclude that the additional elements recited in claim
1 do not impose a meaningful limit on the abstract idea and integrate the
abstract idea into a practical application. See SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1169–70 (Fed. Cir. 2018); see also Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“In this
case, the claims are directed not to an improvement in cellular telephones
but simply to the use of cellular telephones as tools in the aid of a process
focused on an abstract idea. That is not enough to constitute patentable
subject matter.”); and Revised Guidance, 84 Fed. Reg. 55 (explaining that
courts have identified “merely us[ing] a computer as a tool to perform an
abstract idea” as an example of when a judicial exception may not have been
integrated into a practical application). Further, consistent with the
Examiner’s findings (see Final Act. 5–6; Ans. 6–8) and in view of
Appeal 2018-006568
Application 12/961,832

16
Appellant’s Specification (see, e.g., Spec. ¶¶ 25, 32, 36–41), we conclude
that claim 1 does not integrate the judicial exception into a practical
application, and thus is directed to the judicial exception itself. In particular,
we determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.

See MPEP § 2106.05(a)–(c), (e)–(h).
3. USPTO Step 2B — Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether any additional claim elements “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate whether the additional
claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, 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.”
Revised Guidance, 84 Fed. Reg. 56.
As stated supra, the Examiner finds that the structural elements
recited in claims 1, 8, and 29–32, when taken in combination with the
functional elements of the claims, do not offer significantly more than the
abstract idea because the claims do not recite an improvement to the
Appeal 2018-006568
Application 12/961,832

17
functioning of any computer or to another technology or technical field.
Final Act. 5; Ans. 6–8. In that regard, the Examiner finds that the additional
limitations recited in the claims are generic computer components
performing generic computer functions (e.g., receiving, processing, and
transmitting information). Final Act. 5; Ans. 6.
As discussed supra, Appellant argues that claim 1 improves the
existing technological processes for processing data records for adverse
events and, thus, recites significantly more than an abstract idea. Appeal Br.
9–10; Reply Br. 4–5 (citing Spec. ¶¶ 11–13). Appellant also argues that
“claim 1 does not preempt all techniques and thus is significantly more than
an abstract idea.” Appeal Br. 10–11. Appellant further argues that the
rejection is improper because the Examiner did not provide evidence that
any of the claim elements or functions are well-known or generic. Reply Br.
4 (citing Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)).
We are not persuaded by Appellant’s arguments. First, we are not
persuaded by Appellant’s argument that claim 1 recites a technique that
achieves an improvement to prior technological processes. Appeal Br. 9–10;
Reply Br. 4–5. As discussed supra, we have determined that claim 1 does
not recite an improvement to the functioning of a computer or an
improvement to another technology or technical field. Appellant has also
failed to demonstrate that claim 1 requires any specialized computer
hardware, other inventive computer components, i.e., a particular machine,
or that the claimed invention is performed using other than readily available
components. Further, as discussed above, we agree with the Examiner’s
finding that the additional limitations recited in the claims are generic
computer components performing generic computer functions (e.g.,
Appeal 2018-006568
Application 12/961,832

18
receiving, processing, and transmitting information). Final Act. 5; Ans. 6.
See, e.g., Alice, 573 U.S. at 225–26 (Holding that “implement[ing] the
abstract idea . . . on a generic computer” was not sufficient “to transform an
abstract idea into a patent-eligible invention.”).
Thus, even if we were to agree with Appellant that the recited
elements of claim 1 “achieve an improvement that previous systems could
not perform,” Appellant’s argument is not persuasive because any alleged
improvement lies in the abstract idea itself, not to any technological
improvement. See BSG, 899 F.3d at 1287–88. Such an improvement to the
recited abstract idea does not confer patent-eligibility. See Customedia
Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1363–65 (Fed. Cir. 2020)
(collecting cases); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716 (Fed. Cir. 2014) (determining that even though “some of the eleven
steps were not previously employed in this art,” that was “not enough—
standing alone—to confer patent eligibility upon the claims at issue.”).
Second, we are not persuaded by Appellant’s argument that, in view
of Berkheimer, the rejection is improper because the Examiner did not
provide evidence to prove that the claim elements or functions are well-
known or generic. Reply Br. 4. Here, the Examiner finds that the claims
recite a generic computer and generic computer components, such as a
processor, computer readable medium, interface, and Internet connection.
Final Act. 5; Ans. 6, 8. The Examiner also finds the Specification does not
demonstrate “that there is a software-based invention that improves
technological process,” as Appellant alleges. Ans. 7. In addition, we find
that the Specification indisputably shows the additional elements of claim 1
were well-understood, routine, and conventional at the time of filing because
Appeal 2018-006568
Application 12/961,832

19
they are described in a general manner without additional details that would
distinguish them from conventional components. See, e.g., Spec. ¶¶ 25, 32,
36–41; see also Berkheimer, 890 F.3d at 1371 (“Relying on the specification
alone may be appropriate where, as in Mayo, the specification admits . . . .”
[that the additional elements were well-understood, routine, and
conventional]). And, as discussed supra, we have determined that claim 1
does not recite a technological improvement to computers, computer
components or software. Accordingly, we agree with the Examiner’s
findings that the additional elements of claim 1 were well-understood,
routine, and conventional. See, e.g., Alice, 573 U.S. at 225–26 (holding that
“implement[ing] the abstract idea . . . on a generic computer” was not
sufficient “to transform an abstract idea into a patent-eligible invention”);
Mortg. Grader, Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314, 1324–
25 (Fed. Cir. 2016) (noting that components such an “interface,” “network,”
and “database” are generic computer components that do not satisfy the
inventive concept requirement); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”).
Third, we are not persuaded by Appellant’s argument that claim 1
does not preempt all techniques and, therefore, is significantly more. “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility . . . . Where a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.”
Appeal 2018-006568
Application 12/961,832

20
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
Thus, considering claim 1 as a whole, we determine that the additional
elements recited in claim 1 are readily available computing elements
performing their basic functions and do not provide “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field.” Revised Guidance, 84 Fed. Reg. 56.
Rather, these elements “simply append[] well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality.” Id. Accordingly, we find that claim 1 does not have an
inventive concept.
4. Opinion
Because we determine that claim 1 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of independent claims 8 and 31,
and dependent claims 29–30 and 32, which are not argued separately
substantively.
II. SECTION 103 REJECTION
The dispositive issue raised by Appellant’s arguments with respect to
the rejection of claims 1, 8, and 29–32 under § 103(a) is whether the
combination of Gogolak and Karkanias teaches or suggests the user specifies
an alert criteria, where “the alert criteria corresponds to desired results of at
Appeal 2018-006568
Application 12/961,832

21
least two different instances of quantitative analysis and qualitative analysis
of adverse event data,” as recited in limitation (a) of claim 1, and
commensurately recited in claims 8 and 31.8 See Appeal Br. 13–15; Reply
Br. 6.
The Examiner relies on Gogolak as teaching the “alert criteria
corresponds to desired results of at least two different instances of
quantitative analysis and qualitative analysis of adverse event data.” Final
Act. 7–8 (citing Gogolak Figs. 1, 3, 17; ¶¶ 26, 115, 173). In response to
Appellant’s arguments that Gogolak fails to teach the “alert criteria” of
limitation (a), the Examiner finds that Gogolak describes a QScan home
page (i.e., interface) to facilitate in selecting a data mining algorithm (i.e.,
proportional analysis) and “specification of criteria (i.e., query),
corresponding to desired results comprising both quantitative and qualitative
analysis.” Ans. 9 (citing Gogolak Figs. 1, 3, 17; ¶ 115). In particular, the
Examiner finds that from the home screen, a user can (1) select a drug to
study, (2) “recall a previously saved query (called a filter),” (3) review
previously submitted analyses, and (4) invoke certain data mining engines.
Id. (citing Gogolak Fig. 3).
On the record before us, we are persuaded by Appellant’s arguments
that the Examiner erred. First, Appellant argues, and we agree, that
paragraph 26 of Gogolak does not teach or suggest the “alert criteria” of
claim 1. Instead, as Appellant argues, and we agree, paragraph 26 teaches
that at least one data mining engine is “selected from the group consisting of

8 Appellant argues claims 1, 8, and 29–32 as a group focusing on claim 1.
See Appeal Br. 11–16. Thus, we decide the appeal in regard to the § 103(a)
rejection based on representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2018-006568
Application 12/961,832

22
(1) a proportional analysis engine . . ., (2) a comparator . . ., and (3) a
correlator . . . ,” which “is not what is claimed.” Appeal Br. 13. Second,
Appellant argues, and we agree, that paragraph 115 of Gogolak does not
teach or suggest specifying an alert criteria that “corresponds to desired
results of at least two different instances of quantitative analysis and
qualitative analysis of adverse event data.” Reply Br. 6. Instead, as
Appellant argues, and we agree, paragraph 115 of Gogolak “discusses a
home screen where a user can (1) select a drug, (2) recall a previous filter,
(3) review previously submitted analysis, or (4) invoke certain data mining
engines directly.” Again, this is not what is claimed in the “alert criteria”
limitation of claim 1.
On this record, we find the preponderance of the evidence establishes
that Gogolak does not teach or suggest “the alert criteria corresponds to
desired results of at least two different instances of quantitative analysis and
qualitative analysis of adverse event data.” The Examiner does not rely on
Karkanias to teach or suggest this limitation. Accordingly, for these reasons,
we do not sustain the Examiner’s rejection of claim 1 under § 103(a). For
the same reasons, we do not sustain the Examiner’s rejection of claims 8 and
31, as well as dependent claims 29–30 and 32.
DECISION
We affirm the Examiner’s rejection of claims 1, 8, and 29–32 under
35 U.S.C. § 101.
We reverse the Examiner’s rejection of claims 1, 8, and 29–32 under
35 U.S.C. § 103(a).
Appeal 2018-006568
Application 12/961,832

23
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).

SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8, 29–32 101 Eligibility 1, 8, 29–32
1, 8, 29–32 103(a) Gogolak,
Karkanias
1, 8, 29–32
Overall
outcome
1, 8, 29–32

No 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