Lasse TOIMELA et al.

Patent Trials and Appeals Board

Mar 31, 2021

2020004484 (P.T.A.B. Mar. 31, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/249,669 09/30/2011 Lasse TOIMELA VAR-11-001 2461
78145 7590 03/31/2021
Murabito, Hao & Barnes LLP (Varian)
111 North Market Street
Suite 700
San Jose, CA 95113
EXAMINER
COBANOGLU, DILEK B
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/31/2021 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):
Officeaction@mhbpatents.com
ipdocket@varian.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LASSE TOIMELA, JANNE NORD,
and COREY ZANKOWSKI

Appeal 2020-004484
Application 13/249,669
Technology Center 3600
____________

Before ANTON W. FETTING, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s Final decision to reject claims 1, 2, 4–11, 13, 14, 16–22, and
25–28, which are all of the pending claims.1 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 Varian Medical Systems International
AG as the real party in interest. Appeal Br. 1.
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CLAIMED INVENTION
Appellant’s claimed invention relates to “the field of radiation therapy
treatment plan development and optimization.” Spec. ¶ 1.
Claims 1 and 13 are the independent claims on appeal. Claim 1,
reproduced below, with modified formatting and bracketed notations, is
illustrative of the claimed subject matter.
1. A computer system comprising:
[a] a memory having computer-readable and computer-
executable instructions embodied therein for executing a
treatment planning system;
[b] the computer system operable to execute the
treatment planning system and perform a method for improving
a radiation therapy treatment plan for a patient, the method
comprising:
[c] accessing a patient record for the patient, the patient
record comprising a three-dimensional reconstruction of the
patient’s anatomy generated by combining two-dimensional
image slices;
[d] generating, by executing a dose distribution mapping
module of the treatment planning system, a three-dimensional
second dose distribution map based on a first dose distribution
map of the radiation treatment plan, the three dimensional
reconstruction from the patient record, and a selected treatment
type, the second dose distribution map included in an optimized
version of the radiation therapy treatment plan;
[e] the treatment planning system comprising an
optimization system, wherein the optimization system receives
inputs, maps the inputs into parameters and into operations to
be performed during optimization, identifies a parameter that, if
changed, affects a value of a first metric associated with the
optimized radiation therapy treatment plan, determines an
alternative treatment step for the optimized first radiation
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therapy treatment plan that will change the parameter and
improve the value of the first metric relative to an average value
for the first metric that is determined using patient records in a
database, receives a decision on the alternative treatment step,
and includes the decision in a rule set stored in the memory and
used by the optimization system to generate radiation therapy
treatment plans.
Appeal Br. 16–17 (Claim App.).

REJECTIONS
Claims 1, 2, 4–11, 13, 14, 16–22, and 25–28 stand rejected under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
Claims 1, 2, 4–11, 13, 14, 16–22, 27, and 28 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Krishnan (US 7,844,560 B2;
iss. Nov. 30, 2010), Robar (US 6,668,073; iss. Dec. 23, 2003), and Bertram
(WO 2011/048515 A2; pub. April 28, 2011).
Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krishnan, Robar, Bertram, and Fröhlich (US 6,719,683
B2; iss. April 13, 2004).
Claims 1, 2, 4–11, 13, 14, 16–22, and 25–28 are rejected on the
ground of non-statutory obviousness-type double patenting over claims 1–30
of Zankowski (US 8,774,358 B2; iss. July 8, 2014) in view of Gizewski (US
2008/0161661 A1; pub. July 3, 2008).

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ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1, 2, 4–11, 13, 14, 16–22, and 25–28 as a
group. Appeal Br. 12–14; Reply Br. 1–2. We select independent claim 1 as
representative. The remaining claims stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. 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).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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.”).
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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.
252, 267–68 (1853))); 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
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, 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 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. 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.”), 191 (citing Benson
and Flook) (citation omitted).
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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 (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.
USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance, 84 Fed. Reg.”),
incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE
§§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out
agency policy with respect to the USPTO’s interpretation of the subject
matter eligibility requirements of 35 U.S.C. [§] 101 in view of decisions by
the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.2
Although “[a]ll USPTO personnel are, as a matter of internal agency

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance, 84
Fed. Reg. 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.pdf).
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management, expected to follow the guidance,” the Guidance “does not
create any right or benefit, substantive or procedural, enforceable by any
party against the USPTO.” Id. The Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. at 50.
Under the USPTO Guidance and October 2019 Update, we first look
to whether the claim recites: (1) any judicial exceptions, including laws of
nature, natural phenomena, and products of nature (see MPEP
§§ 2106.04(II)(A)(1), 2106.04(b)) (“Step 2A, Prong One”); and (2)
additional elements that integrate the judicial exception into a practical
application (see id. §§ 2106.04(II)(A)(2), 2106.04(d)) (“Step 2A, Prong
Two”).3
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, (Fed. Cir. 2016)).

3 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, as the term is used in USPTO Guidance. See Guidance
— Section III(A)(2), 84 Fed. Reg. 54–55; MPEP § 2106.04(d).
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Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” 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 judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. 56.

Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO Guidance, the Examiner determines that exemplary
independent claim 1 recites broadly “an abstract idea of ‘generating a
treatment plan.’” Final Act. 6. More particularly, the Examiner states that
independent claim 1
recite[s] “generating a second dose distribution map based on a
first dose distribution map of the radiation treatment plan, the
three dimensional reconstruction from the patient record, and a
selected treatment type[], determining an alternate treatment
step . . . and generating treatment plans,” which is a mental
process (which can be done in the human mind or by human
using pen and paper). For instance, a medical professional can
determine a second dose distribution map based on the data.

Id. The Examiner further states that claim 1 “recite[s] ‘receiving a decision
on the alternative step and including the decision in a rule set’, which is [sic]
certain methods of organizing human activity.” Id. Under Prong Two of the
USPTO Guidance, the Examiner determines that the identified judicial
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exception is not integrated into a practical application “because the claim
is directed to an abstract idea with additional generic computer elements,
such as ‘accessing a patient record, receiving inputs, mapping inputs
into parameters and operations and identifying a parameter that if
changed . . . and generating a three-dimensional first dose distribution
map.’” Id. at 7.
In response, Appellant asserts that the Examiner improperly
characterizes the claims as being directed to an abstract idea. Appeal Br. 12;
Reply Br. 1. Instead, Appellant argues that “the claims recite a treatment
planning system implemented with a computer system.” Appeal Br. 12
(“[T]he claims recite a three-dimensional (3D) reconstruction of the patient’s
anatomy generated by combining two-dimensional (2D) image slices, where
the 3D reconstruction is used by the treatment planning system to generate a
3D dose distribution map.”). Appellant also argues that the claims are patent
eligible because they provide “a solution to the challenges in improving
radiation therapy and radiation therapy treatment planning.” Reply Br. 2.
Under the first step of the Mayo/Alice framework and Step 2A of the
USPTO Guidance, we first determine to what claim 1 is directed, i.e.,
whether claim 1 recites an abstract idea and if so, whether claim 1 is directed
to that abstract idea. The Federal Circuit has explained that “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.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the
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claim is on a specific improvement in relevant technology or on a process
that itself qualifies as an “abstract idea” for which computers are invoked
merely as a tool. See id. at 1335–36. Here, it is clear from the Specification,
including the claim language, that claim 1 focuses on an abstract idea, and
not on any improvement to technology and/or a technical field.

Reciting a Judicial Exception
In making this determination, we note that the Specification is titled
“SEMANTIC RADIATION TREATMENT PLAN OPTIMIZATION
GUIDANCE,” and states that the disclosure relates “to the field of radiation
therapy treatment plan development and optimization.” Spec. ¶ 1.
According to the Specification,
Oncology and Radiotherapy technology continues to evolve,
accelerating the expansion of the envelope of possible treatments
and best practices associated with those possible treatments. At
the same time, the complexity of clinical decisions is increasing
non-linearly, resulting in a rapidly widening gap between actual
practice and best practices, especially in emerging markets.
Id. ¶ 2. The Specification acknowledges that it was known in art to use
three-dimensional reconstructions of a patient’s anatomy (see, e.g., id.
¶¶ 3–4) in order to create improved radiation therapy treatment plans that
target “precise areas of the body” with “an optimal radiation field
directionality and count.” Id. ¶¶ 5–6. However, the Specification identifies
that “this is an iterative trial and error process and can be time consuming.”
Id. ¶ 6. To address this drawback, the present invention provides “improved
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methods for realizing and communicating improved results using emerging
technological innovations.” Id. ¶ 7.
Consistent with this disclosure, independent claim 1 recites “[a]
computer system” comprising “memory” and “computer-executable
instructions . . . for executing a treatment planning system” (limitation [a])
and “a method for improving a radiation therapy treatment plan for a
patient” (limitation [b]). The system includes operations for “accessing a
patient record for the patient” (limitation [c]) and “generating . . . a three-
dimensional second dose distribution map” which is “included in an
optimized version of the radiation therapy treatment plan,” and “based on a
first dose distribution map[],the patient record, and a selected treatment
type” (limitation [d]). Additionally, “the treatment planning system
compris[es] an optimization system,” that receives information, i.e.,
“receives inputs, maps the inputs into parameters and into operations to be
performed during optimization,” parses information, i.e., “identifies a
parameter that, if changed, affects a value of a first metric associated with
the optimized radiation therapy treatment plan,” analyzes information, i.e.,
“determines an alternative treatment step for the optimized first radiation
therapy treatment plan that will change the parameter and improve the value
of the first metric relative to an average value for the first metric that is
determined using patient records in a database,” receives additional
information, i.e., “receives a decision on the alternative treatment step,” and
outputs information, i.e., “includes the decision in a rule set stored in the
memory and used by the optimization system to generate radiation therapy
treatment plans” (limitation [e]). Appeal Br. 16–17 (Claim App.).
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When considered collectively and under the broadest reasonable
interpretation, we agree with the Examiner that independent claim 1, as
summarized above, recites broadly a system for “generating a treatment
plan,” which may be characterized in the form of a mental process, i.e., “[a]
concept[] performed in the human mind (including an observation,
evaluation, judgment, opinion).” Final Act. 6; Guidance, 84 Fed. Reg. 52;
MPEP § 2106.04(a)(2)(III).4 As such, we are unpersuaded by Appellant’s
assertion that because “the claimed treatment planning system [is]
implemented with a computer system and/or the claimed 3D reconstruction,”
the Examiner mischaracterized independent claim 1 as an abstract idea
comprising “[m]ental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).” And, as
discussed more fully below with respect to Prong Two, simply reciting a
“treatment planning system implemented with a computer system” and “3D
reconstruction” of the patient’s anatomy does not change the result that the
claim recites an abstract idea. At best, the specific physical elements
“limit[] the invention to a technological environment for which to apply the
underlying abstract concept.” Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (“Capital One Fin.”).

4 We also agree with the Examiner that claim 1 may be characterized as
falling under the category of “[c]ertain methods of organizing human
activity” and more specifically “managing personal behavior or relationships
or interactions between people (including . . . following rules or
instructions).” Guidance, 84 Fed. Reg. 52; MPEP § 2106.04(a)(2)(II).
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Generating a treatment plan is similar to the concepts found abstract
in University of Florida Research Foundation, Inc. v. General Electric Co.,
916 F.3d 1363, 1366–68 (Fed. Cir. 2019) (Claim for standardizing data to be
conveyed to a bedside device for graphical display was directed to the
abstract idea of “collecting, analyzing, manipulating, and displaying data.”),
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d at
1339–40 (Claim for manipulating XML documents by organizing,
identifying, mapping, defining, and modifying data was directed to the
abstract idea of “collecting, displaying, and manipulating data.”), and
Electric Power Group, LLC v. Alstom S.A., 830 F.3d at 1351–54 (Claim for
detecting events by receiving, detecting, analyzing, displaying,
accumulating, and updating data, and deriving a composite indicator from
that data was directed to the abstract idea of “collecting information,
analyzing it, and displaying certain results of the collection and analysis.”).
Having concluded that claim 1 recites a judicial exception under the
Guidance, Step 2A, Prong One, we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application.
Integration into a Practical Application
We look to whether the claim “appl[ies], rel[ies] on, or use[s] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception,” i.e., “integrates a judicial exception
into a practical application.” Guidance, 84 Fed. Reg. 54; MPEP
§ 2106.04(d). Here, the only additional elements recited in claim 1, i.e.,
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elements beyond the abstract idea, are the “memory” and “computer system”
— elements that, as the Examiner observes (see Final Act. 13–14), are
recited with a “high-level of generality (such as a generic processor
performing generic computer function of generating a treatment plan based
on received information and transmission of data) such that it amounts no
more than mere instructions to apply the exception using a generic computer
component.” Ans. 4. And, to the extent Appellant suggests that the addition
of a “a three-dimensional (3D) reconstruction of the patient’s anatomy
generated by combining two-dimensional (2D) image slices, where the 3D
reconstruction is used by the treatment planning system to generate a 3D
dose distribution map” may impose a meaningful limit on the identified
judicial exception (Appeal Br. 12–14), we cannot agree. Here, as discussed
above, we note that the Specification acknowledges that it was known in art
to use three-dimensional reconstructions of a patient’s anatomy (see, e.g.,
Spec. ¶¶ 3–4) in order to create improved radiation therapy treatment plans
that target “precise areas of the body” with “an optimal radiation field
directionality and count.” Id. ¶¶ 5–6.
As is clear from the Specification, there is no indication that the
processes recited in 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 Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
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ineligible claim patent-eligible.”). Independent claim 1, unlike the claims
found non-abstract in prior cases, uses generic computer technology to
access, analyze, and present information for the purpose of “generating a
treatment plan” (Final Act. 6), and does not recite an improvement to a
particular computer technology. Cf. McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (Finding claims not
abstract because they “focused on a specific asserted improvement in
computer animation.”). We also find no indication in the Specification that
the claimed invention as recited in claim 1 effects a transformation or
reduction of a particular article to a different state or thing.
Appellant argues that independent claim 1 “improves another
technology” by “provid[ing] a solution to the challenges in improving
radiation therapy and radiation therapy treatment planning.” Reply Br. 2
(citing Spec. ¶¶ 17, 28). More particularly, Appellant argues that through
“the use of a knowledge base incorporating patient records and statistical
models” the claimed invention “offer[s] treatment alternatives to achieve
improved clinical intents for users and clinician.” Id. (citing Spec. ¶¶ 17,
28).
However, the focus of independent claim 1 is not on any technological
advancement to the way computers operate, but rather on the
implementation of the abstract idea, “for which computers are invoked
merely as a tool.” See Enfish, 822 F.3d at 1336. Here, the claimed process
of accessing patient information and then generating an improved or
alternative (i.e., second) treatment plan based on a series of steps for
receiving information, parsing information, analyzing information, receiving
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additional information, and outputting information is recited without any
technological details on how the steps are performed technologically other
than using a conventional computer in its ordinary capacity to perform data
analysis. See, e.g., Spec. ¶ 30 (“With prior patient records and statistical
models in a knowledge base 102, the Optimizer 218 has the ability to mine
the ‘data’ found in the knowledge base 102 and generate statistics, or
analyze different metrics and look for distributions in those metrics.”). Any
improvement in “radiation therapy and radiation therapy treatment planning”
(Reply Br. 2) is not a technical or technological improvement; but rather a
business improvement. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (Holding that claims are directed to “the
abstract idea of offer-based price optimization.”); Enfish, 822 F.3d at 1336
(Focusing on whether the claim is “an improvement to [the] computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity.”). See also Bridge & Post, Inc. v. Verizon
Commc’ns, Inc., 778 F. App’x 882, 893 (Fed. Cir. 2019) (“The ability to run
a more efficient advertising campaign, even if novel, and even if aided by
conventional computers, is an advance ‘entirely in the realm of abstract
ideas,’ which we have repeatedly held to be ineligible.”).
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claim 1 do not integrate the judicial exception
into a practical application, as the term is used in USPTO Guidance, and we
are not persuaded of error in the Examiner’s determination that claim 1 is
directed to an abstract idea.
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Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework and USTPO Guidance
Step 2B, we “[e]valuat[e] additional elements to determine whether they
amount to an inventive concept [which] requires considering them both
individually and in combination to ensure that they amount to significantly
more than the judicial exception itself.” MPEP § 2106.05(I). Here, the
Examiner determines
[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements only “accessing a patient record,
receiving inputs, mapping inputs into parameters and operations
and identifying a parameter that if changed . . .”are well-
understood, routine, conventional computer functions as
recognized by the court decisions listed in MPEP § 2106.05(d).

Final Act. 7. See also Elec. Power, 830 F.3d at 1355 (gathering, sending,
monitoring, analyzing, selecting, and presenting information does not
transform the abstract process into a patent-eligible invention); OIP Techs,
788 F.3d at 1363 (Claims reciting, inter alia, sending messages over a
network, gathering statistics, using a computerized system to automatically
determine an estimated outcome, and presenting offers to potential
customers found to merely recite “‘well-understood, routine conventional
activit[ies],’ either by requiring conventional computer activities or routine
data-gathering steps.”) (alteration in original).
Appellant does not specifically address the Examiner’s determination.
Instead, Appellant argues that “the claimed features and their ordered
combination (considered as a whole) comprise unconventional operations
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that meaningfully confine the claims to that particular useful application and
that limit the application of the judicial exception, so that the claims do not
monopolize the exception.” Reply Br. 2. However, other than asserting that
the claims “comprise unconventional operations,” Appellant provides no
further argument, such as how the elements are arranged in a non-generic or
unconventional manner such that it is a technical improvement over prior art
ways of “generating a treatment plan.” See BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 2, 4–11,
13, 14, 16–22, and 25–28, which fall with independent claim 1.
Obviousness
We are not persuaded of error by Appellant’s argument that the
combination of Krishnan, Robar, and Bertram fails to disclose or suggest
limitation [e], as recited by independent claim 1, and similarly recited by
independent claim 13. Appeal Br. 8–11. Instead, we agree with the
Examiner that the combination of Krishnan, Robar, and Bertram discloses
the argued limitation. See Final Act. 8–9 (citing Krishnan, 1:54–2:15,
2:33–40, 6:51–62, 7:17–21, 11:41–58, 13:40–44, 13:56–14:11), 16–17;
Ans. 3–4.
Krishnan is directed to a radiation treatment planning system that uses
patient specific information in addition to generic models from clinical trials
or other sources in order to predict appropriate radiation doses for individual
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patients. Krishnan, 1:13–21, 3:4–16. More particularly, Krishnan discloses
a method
for automated treatment planning with individual specific
consideration. Patient specific values are applied to a prognostic
model. A probability of survival is output from the prognostic
model in response to the applying. A first dose is input, as a
function of the probability of survival, to an inverse treatment
planning system. A radiation treatment plan is output from the
inverse treatment planning system in response to the first dose.
Id. at 2:33–40. Krishnan describes that “[t]he dosage and tolerance are
output to an inverse treatment planning system (ITPS). The ITPS and
prognosis model or dose distributions determined by the prognosis model
may be used iteratively to optimize an achievable treatment plan.” Id. at
4:1–5. According to Krishnan,
[d]ifferent variable’s relationship with outcome for a given
treatment may be modeled. For example, portions of the
prognosis model may provide outcome for a given dose as a
function of the input variables. Different or the same modeling
may be used. Any variable may be used, but statistically
significant variables are preferred. Where available or desired,
additional univariate relationships are modeled for a given
treatment.
Id. at 6:4–11. Krishnan identifies that “[t]he model creation acts may be
repeated for different dosages, types of treatment, and/or complications. An
array of models may be provided in the prognosis model in order to explore
the possible outcomes associated with different options for a same patient.”
Id. at 7:17–21, 8:38–39 (“The prognosis model provides two or more
outcomes associated with two or more possible dose.”).
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Krishnan also describes that “feedback” is used to “aid[]
determination of a different dose.” Id. at 10:37–39, Fig. 2 (elements 216,
220). More particularly, Krishnan discloses that
[t]he dose distributions are used to determine other
possible dosages that may be achievable. If these dosages are
not within the [S]pecifications desired, the values can be sent
back to the model, and the predicted survivability and
complication probabilities, and consequently the predicted
outcome (longevity, side effects, etc.) are computed for the real
or achievable doses.

Id. at 10:45–51. Krishnan further discloses that “[t]he selected dosages are
input to an inverse treatment planning system for establishing radiation
treatment parameters.” Id., Abstract.
Appellant acknowledges that Krishnan discloses
a computer system and the functions it performs; deriving a
data-driven model, including mining or processing a database
of patient information to model values’ relationships to
outcome; repeating model creation acts for different dosages,
treatment types, and/or complications; and an array of models
that explore possible outcomes associated with different options
for a patient.
Appeal Br. 9 (citing Krishnan, 13:56–14:11, 6:51–62, 7:17–21). However,
Appellant argues that even if Krishnan “could be read as receiving a
decision on an alternative treatment step,” Krishnan fails to disclose or
suggest “including the decision in a rule set, specifically a rule set used by
an optimization system to generate radiation treatment plans.” Id. at 9. We
disagree.
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Instead, we agree with the Examiner that Krishnan discloses
“receiving a decision on an alternative treatment step” and then “including
the decision in a rule set . . . used by an optimization system to generate
radiation treatment plans.” Ans. 3–4. In this regard, we agree with the
Examiner that “Krishnan’s ‘creation of a model for treatment’ is considered
as ‘the decision on a rule set.”’ Id. at 4; cf. Spec. ¶ 32 (“The optimization
system 218 can utilize the initial parameters set by the clinician, and based
on those parameters and statistical models in the knowledge base can
produce the initial treatment plan result.”). We also note that Krishnan
describes providing feedback to aid determination of different doses.
Krishnan, 10:37–39. Krishnan further describes that “feedback may be
provided even where the treatment plan satisfies the tumor dose and the
normal tissue tolerance” (id. at 10:52–53), and if “[i]f these dosages are not
within the specifications desired, the values can be sent back to the model.”
Id. at 10:46–51; cf. Spec. ¶ 58 (“[T]he Optimizer 218 receives feedback
from the clinician/user in clinically meaningful human understandable
language, why a particular improvement alternative was not selected.”).
Thus, we agree with the Examiner that Krishnan discloses the argued
limitation. Ans. 4
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 1 and 13. We also sustain the rejections of dependent
claims 2, 4–11, 14, 16–22, and 25–28 because Appellant has not argued the
separate patentability of these claims.
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Non-statutory Obvious-type Double Patenting
The Examiner rejected claims 1, 2, 4–11, 13, 14, 16–22, and 25–28 on
the ground of non-statutory obviousness-type double patenting over claims
1–30 of Zankowski in view of Gizewski. Final Act. 2–6. Appellant does
not challenge the Examiner’s double patenting rejection. See generally
Appeal Br.; Reply Br. Therefore, the double patenting rejection is
summarily sustained.

CONCLUSION
In summary:

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Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–11, 13,
14, 16–22,
25–28
101 Eligibility 1, 2, 4–11,
13, 14,
16–22, 25–28

1, 2, 4–11, 13,
14, 16–22, 27,
28
103(a) Krishnan, Robar,
Bertram
1, 2, 4–11,
13, 14,
16–22, 27, 28

25, 26 103(a) Krishnan, Robar,
Bertram, Frohlich
25, 26
1, 2, 4–11, 13,
14, 16–22,
25–28
Obviousness-type
Double Patenting
1, 2, 4–11,
13, 14, 16–
22, 25–28

Overall
Outcome
1, 2, 4–11,
13, 14,
16–22, 25–28

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED