Namal Nawana et al.

Patent Trials and Appeals Board

Oct 17, 2019

13803763 - (D) (P.T.A.B. Oct. 17, 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.
13/803,763 03/14/2013 Namal Nawana 47061-006001-
DEP6600USNP
1332
124542 7590 10/17/2019
Mintz Levin/DePuy Synthes Spine
One Financial Center
Boston, MA 02111
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/17/2019 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 NAMAL NAWANA, WILLIAM C. HORTON,
WILLIAM J. FRASIER, MICHAEL O’NEIL, ROBERT E. SOMMERICH,
JENNIFER DIPIETRO, and MATTHEW PARSONS
____________

Appeal 2018-002546
Application 13/803,763
Technology Center 3600
____________

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

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4–7, 18, 20–22, 31–33, 35, 36, 46, 48, 49, and 108–
116. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to systems and
methods for surgical and interventional planning, support, post-operative
follow-up, and functional recovery tracking” and, more particularly, to
“planning, supporting, and reviewing surgeries that involve medical devices,
e.g., medical implants and instruments” (Spec. ¶ 2).
Claims 1, 18, 22, 31, and 46 are the independent claims on appeal.
Claims 1 and 31, reproduced below with bracketed notations added, are
illustrative of the claimed subject matter:
1. A medical system, comprising:
a processor configured to:
[(a)] receive treatment plan data regarding a
plurality of patients, the treatment plan data including a
plurality of plans of medical treatment, each one of the
plans uniquely corresponding to one of the patients, each

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief
(“Appeal Br.,” filed June 1, 2017) and Reply Brief (“Reply Br.,” filed
November 24, 2017), and the Examiner’s Answer (“Ans.,” mailed
November 16, 2017) and Non-Final Office Action (“Non-Final Act.,”
mailed January 27, 2017). Appellant identifies the real party in interest as
Depuy Synthes Products, Inc. of Raynham, Massachusetts. Appeal Br. 1.
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one of the plans having associated therewith at least one
medical diagnosis in common with all of the plans;
[(b)] receive compliance data automatically
collected by a sensor regarding compliance of each of the
patients with their corresponding one of the plans;
[(c)] determine effectiveness of each of the plans,
wherein determining the effectiveness includes
determining, based at least in part on the compliance data,
an extent of each patient’s compliance with their
corresponding one of the plans and associating higher
levels of compliance with plan effectiveness and
associating lower levels of compliance with plan
ineffectiveness;
[(d)] determine a suggested plan of medical
treatment for a patient based on the determined
effectiveness, the patient having the at least one medical
diagnosis, and wherein determining the suggested plan
includes choosing at least a one of the plans having a
highest level of compliance; and provide the suggested
plan to a user.
31. A medical system, comprising:
a processor configured to:
[(a)] receive plan data regarding a virtual
performance of a surgical procedure on a patient;
[(b)] receive performance data regarding an actual
performance of the surgical procedure on the patient, the
performance data being received in real time during the
actual performance of the surgical procedure, and the
virtual performance of the surgical procedure having been
performed prior to the actual performance of the surgical
procedure;
[(c)] determine deviation between the plan data
and the performance data;
[(d)] if the plan data is determined to deviate from
the performance data outside a predetermined degree of
tolerance, provide a warning to a user, the warning
including an indication of the determined variance, receive
subsequent performance data in real time during the actual
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performance of the surgical procedure and determine
deviation between the plan data and the subsequently
received performance data; and
[(e)] if the plan data is determined to deviate from
the performance data within the predetermined degree of
tolerance, receive subsequent performance data in real
time during the actual performance of the surgical
procedure and determine deviation between the plan data
and the subsequently received performance data.
REJECTION
Claims 1, 4–7, 18, 20–22, 31–33, 35, 36, 46, 48, 49, and 108–116 are
rejected under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
ANALYSIS
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
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ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “comparing received compliance
data with stored data to determine plan effectiveness, and suggesting a plan,”
which the Examiner concluded is an abstract idea similar to other concepts
that the courts have held abstract (Non-Final Act. 3–13). The Examiner also
determined that the claims do not include additional elements that are
sufficient to amount to significantly more than the abstract idea itself (id.).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that is considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
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applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2
Independent Claim 1 and Dependent Claims 4–7, 108, 109, 112, and 115
Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded, as an initial matter, that the Examiner
overgeneralized claim 1 as directed to “comparing received compliance data
with stored data to determine plan effectiveness, and suggesting a plan”
(Appeal Br. 15–16; see also Reply Br. 12–13). The Examiner’s
characterization of claim 1 is, in our view, fully consistent with the
Specification, including the claim language. That the claim includes more
words than the phrase the Examiner used to articulate the abstract idea, and
that the Examiner, thus, articulates the abstract idea at a higher level of
abstraction than would Appellant is an insufficient basis to persuasively
argue that the claim language has been mischaracterized or that the
Examiner has failed to consider the claim as a whole. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can
generally be described at different levels of abstraction. As the Board has
done, the claimed abstract idea could be described as generating menus on a
computer, or generating a second menu from a first menu and sending the
second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.”).
We also do not agree with Appellant that the Examiner erred in
determining that claim 1 is directed to an abstract idea (Appeal Br. 6–16).
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
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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 claims 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 the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is entitled “SYSTEMS AND METHODS FOR
SURGICAL AND INTERVENTIONAL PLANNING, SUPPORT, POST-
OPERATIVE FOLLOW-UP, AND, FUNCTIONAL RECOVERY
TRACKING,” and states that the invention relates, in particular, “to
planning, supporting, and reviewing surgeries that involve medical devices,
e.g., medical implants and instruments” (Spec. ¶ 2). The Specification
describes, in the “Background” section, that a traditional model for planning
surgeries (that involve medical devices) includes several phases — a
wellness and prevention phase, which typically involves a patient
monitoring his or her own health and having periodic check-ups with a
physician; a diagnosis phase in which the physician determines that the
patient has a health problem; and a treatment phase in which the physician
determines a treatment plan to address the diagnosis (id. ¶¶ 3–4). The
treatment plan typically begins with a conservative, non-surgical treatment
involving one or more therapies, e.g., diet modification, exercise,
medication, rest, limb elevation, limb mobilization, physical therapy,
chiropractic care, etc.; however, if the conservative, non-surgical treatment
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fails to adequately address the diagnosis, the physician typically modifies the
treatment plan to include a less conservative treatment, e.g., a surgical
procedure (id. ¶ 5).
The Specification describes that planning a surgical procedure
typically involves the coordination of numerous hospital resources, and that
a traditional model for supporting and managing surgeries includes (1) a
surgical planning phase in which a surgeon or a staff member contacts the
hospital at which the surgery is to be performed to schedule appropriate
resources, e.g., operating rooms, equipment, support staff; (2) an inventory
planning phase in which a representative of a medical device company
orders the necessary medical devices; (3) an intra-operative support phase
during which the representative selects and executes any required pre-
surgery training on any new devices or instruments; (4) a post-surgery
logistics phase during which the representative ensures that consumed
inventory is replenished and reusable devices sterilized and prepared for
subsequent use; and (5) a charge capture or billing phrase (id. ¶ 6).
According to the Specification, there are a number of inefficiencies
associated with the existing models (id. ¶¶ 13–18). Therefore, “there
remains a need for improved systems and methods for surgical and
interventional planning, support, post-operative follow-up, and functional
recovery tracking” (id. ¶ 19).
The claimed invention is ostensibly intended to address this need by
providing a system including a processor configured to receive treatment
plan data regarding a plurality of patients (id. ¶ 21). The treatment plan data
include a plan of medical treatment corresponding to each of the patients,
with each plan having at least one medical diagnosis in common with the
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other plans (id.). The processor also is configured to determine the
effectiveness of each of the plans, to identify a suggested plan of medical
treatment for a patient based on the determined effectiveness, and to provide
the suggested plan to a user.
Consistent with this disclosure, claim 1 recites a system comprising a
processor configured to: (1) receive treatment plan data regarding a plurality
of patients and compliance data regarding compliance of each of the patients
with his or her treatment plan, i.e., “receive treatment plan data regarding a
plurality of patients, the treatment plan data including a plurality of plans of
medical treatment, each one of the plans uniquely corresponding to one of
the patients, each one of the plans having associated therewith at least one
medical diagnosis in common with all of the plans” and “receive compliance
data automatically collected by a sensor regarding compliance of each of the
patients with their corresponding one of the plans” (steps (a) and (b));
(2) determine the effectiveness of each of the treatment plans based on the
compliance data, i.e.,
determine effectiveness of each of the plans, wherein
determining the effectiveness includes determining, based at
least in part on the compliance data, an extent of each patient’s
compliance with their corresponding one of the plans and
associating higher levels of compliance with plan effectiveness
and associating lower levels of compliance with plan
ineffectiveness
(step (c)); and (3) select the treatment plan having the highest compliance
level and provide the selected plan to a user, i.e.,
determine a suggested plan of medical treatment for a patient
based on the determined effectiveness, the patient having the at
least one medical diagnosis, and wherein determining the
suggested plan includes choosing at least a one of the plans
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having a highest level of compliance; and provide the suggested
plan to a user
(step (d)). In other words, claim 1 recites (1) receiving information (i.e.,
treatment plan data and compliance data); (2) analyzing the information (i.e.,
determining the effectiveness of each treatment plan based on the
compliance data); and (3) reporting the results of the collection and analysis
(i.e., selecting the treatment plan having the highest compliance level and
providing the selected plan to a user).
The Federal Circuit has held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include the concepts
of collecting data, analyzing the data, and reporting the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (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 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“As many cases make clear, even if a process of collecting
and analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases)).
The Federal Circuit also held in SmartGene, where the claim did no more
than call for a computing device with basic functionality, that comparing
new and stored information and using rules to identify options is an abstract
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idea. SmartGene, Inc. v. Advanced Biological Labs, S.A., 555 F. App’x 950,
955 (Fed. Cir. 2014).
It also is significant here that although claim 1 recites the use of “a
processor,” the underlying processes recited in the claim are all acts that
could be performed by a human, e.g., mentally or manually, using pen and
paper, without the use of a computer or any other machine. For example, a
person could receive treatment plan data and compliance data orally or in
document form, and a person mentally, or using pen and paper, could
identify the treatment plan having the highest compliance level, and could
provide the identified plan to a user via oral or written communication (see,
e.g., Spec. ¶ 37 (describing that treatment plan data includes a plan of
medical treatment, including at least one medical diagnosis); id. ¶ 159
(describing that the treatment compliance module can be configured to
accept manual entry of compliance data by a user)). Simply put, claim 1
recites a mental process, i.e., a concept performed in the human mind,
including an evaluation or judgment, and, therefore, an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52. See also CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (holding that
method steps that can be performed in the human mind, or by a human using
a pen and paper, are unpatentable mental processes).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The only additional element recited in claim 1, beyond the abstract
idea, is the claimed “processor” — an element that, as the Examiner
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observes (Non-Final Act. 4–5), is described in the Specification at a high
level of generality, i.e., as a generic computer component (see, e.g., Spec.
¶ 104 (describing that the processor “can include any type of microprocessor
or central processing unit (CPU), including programmable general-purpose
or special-purpose microprocessors and/or any one of a variety of
proprietary or commercially available single or multi-processor systems”)).
We find no indication in the Specification, nor does Appellant direct us to
any indication, that the operations recited in claim 1 require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, invoke any assertedly 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 ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.3 Indeed, although Appellant notes that Step 2A of a proper § 101

3 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
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analysis should consider whether a claim is directed to an improvement in
computer-related technology (Appeal Br. 15), we do not find, and Appellant
does not direct us to anything in the Specification that attributes an
improvement in computer-related technology to the claimed invention, as
recited in claim 1.
Appellant ostensibly maintains that claim 1 is not directed to an
abstract idea because “[c]laim 1 . . . cannot be ‘performed without a
computer’ at least because claim 1 plainly requires ‘a processor’” (Appeal
Br. 9; see also Reply Br. 11). Yet, to the extent Appellant maintains that
claim 1 is patent eligible because the claim recites the use of a computer, we
note that a substantially similar argument was expressly rejected by the
Court in Alice. The claims in Alice recited elements that only existed in or
utilized computers: “As stipulated, the claimed method requires the use of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions; in other words, ‘[t]he computer is itself the
intermediary.”’ Alice Corp., 573 U.S. at 224. Yet, even with these
elements, the claims in Alice were held patent ineligible. See id. at 223 (“the
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention”).
The computer implementation here is purely conventional and
performs basic functions, i.e., receiving and processing information.
Appellant does not adequately explain how or why the claimed steps are
such that they cannot be performed manually or such that they are not
routine and conventional functions of a generic computer.

application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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Appellant also ostensibly maintains that claim 1 is not directed to an
abstract idea because, like the claims in McRO, Inc. v. Bandai Namco
Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), “claim 1 . . . recite[s]
a ‘specific way of achieving a desired outcome or end result’” (Appeal
Br. 15; see also Reply Br. 14). That argument is not persuasive at least
because the Federal Circuit premised its determination that the claims in
McRO were patent eligible, not merely on the specificity of the claimed
animation scheme, but on the fact that the claims, when considered as a
whole, were directed to a technological improvement over existing, manual
3-D animation techniques and used limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice. McRO, 837 F.3d at 1316. We are not persuaded that
claim 1 involves a comparable technological improvement as opposed to an
improvement in a business practice, i.e., identifying an optimal treatment
plan.
Finally, we are not persuaded of Examiner error by Appellant’s
argument that claim 1 poses no risk of preemption (Appeal Br. 11–14; see
also Reply Br. 8, 11). There is no dispute that the Supreme Court has
described “the concern that drives [the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption.” Alice Corp., 573 U.S.
at 216. Yet, as Appellant, in fact, acknowledges (see Reply Br. 11–12),
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
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Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id. Contrary to Appellant’s
assertion, we are not persuaded here that “claim 1’s lack of preemption does
support a finding of subject matter eligibility in light of the other factors
discussed indicating eligibility” (Reply Br. 12).
We conclude, for the reasons set forth above, that claim 1 recites a
mental process, i.e., an abstract idea, and that the processor recited in the
claim is no more than a generic computer component used as a tool to
perform the abstract idea of determining a suggested plan of medical
treatment for a patient based on determined effectiveness, and providing the
suggested plan to a user. As such, it does not integrate the recited abstract
idea into a practical application. See Alice Corp., 573 U.S. at 223–24
(“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
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amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant argues that even if claim 1 is directed to an abstract idea,
the elements of claim 1, both individually and as an ordered combination,
transform the nature of the claim into a patent-eligible application (Appeal
Br. 18). Appellant points to the Federal Circuit’s holding, in BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016), that an inventive concept can be found in the non-
conventional and non-generic arrangement of known conventional pieces
(id.; see also id. at 22). And Appellant summarily asserts that “[a]s in
BASCOM, even if the claim 1 is assumed, for purposes of argument only, to
be directed to an abstract idea, the ‘non-conventional and non-generic’
arrangement of the elements of the claim amount[s] to ‘significantly more’
that [sic] an abstract idea” (id. at 22). But, Appellant does not identify the
allegedly “non-conventional and non-generic” arrangement of elements.
Nor does Appellant otherwise adequately explain in what way BASCOM
impacts the patent eligibility of claim 1.
Appellant summarily asserts, for example, that similar to BASCOM,
“claim 1 . . . involves a technology-based solution” that “overcomes one or
more existing problems with medical systems that were available as of the
time of the current invention” (id.). But, Appellant neither identifies the
“technology-based solution” that claim 1 allegedly involves nor identifies
any technical problems with existing medical systems that the claimed
invention allegedly overcomes. It clearly appears from the Specification that
the focus of the claimed invention is on identifying a medical treatment plan
for a patient by determining the effectiveness of each of a plurality of
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treatment plans based on compliance data and choosing the plan with the
highest level of compliance — a process that the Examiner determined, and
we agree, does not involve a technical solution to a technical problem
(Ans. 7).
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 is patent eligible, i.e., that “the elements of
the claim are not well-understood, routine, and conventional and are not a
generic arrangement of known, conventional pieces,” because the features of
claim 1 are not present in the prior art (Appeal Br. 19; see also Reply
Br. 15–16). Neither a finding of novelty nor a non-obviousness
determination automatically leads to the conclusion that the claimed subject
matter is patent eligible. Although the second step in the Mayo/Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18 (citation
omitted). “Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘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 within the § 101 categories of possibly patentable subject
matter.”).
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We also do not agree with Appellant that there is any parallel between
claim 1 and the claims at issue in DDR Holdings (Appeal Br. 20–21; see
also Reply Br. 16–17). There, the Federal Circuit determined that, although
the claims involved conventional computers and the Internet, the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after “clicking” on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to patent-
eligible subject matter because they claimed a solution “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks,” and that the claimed invention did not
simply use computers to serve a conventional business purpose. Id. Rather,
there was a change to the routine, conventional functioning of Internet
hyperlink protocol. Id.
We are not persuaded that determining a plan of medical treatment for
a patient based on an effectiveness determination is a problem particular to,
or arising in the realm of computer networks and/or the Internet. And,
although Appellant argues that “[l]ike the claims in DDR Holdings, present
claim 1 does not generically recite ‘use a computer’ but instead requires
specific functionality using a specific approach,” i.e., the combination of
steps (a) through (d) (Appeal Br. 20–21), we do not find, and Appellant does
not identify, any modification to the routine and conventional functioning of
computer technology analogous to the situation in DDR Holdings. At best,
the claimed invention uses a generic computer component operating in its
normal, routine, and conventional capacity to perform an abstract business
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practice (i.e., selecting a treatment plan for a patient based on an
effectiveness determination).
We also are not persuaded for much the same reasons outlined above
that claim 1 is analogous to claim 2 in Example 21 of the USPTO’s
“July 2015 Update Appendix 1: Examples”4 (Appeal Br. 21). Exemplary
claim 2 was deemed patent eligible because it addressed an Internet‐centric

4 Exemplary claim 2, which appears at pages 2–3 of Appendix 1 of the
July 2015 Update (available at https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-app1.pdf), reads:
2. A method of distributing stock quotes over a network to a remote
subscriber computer, the method comprising:
providing a stock viewer application to a subscriber for installation on
the remote subscriber computer;
receiving stock quotes at a transmission server sent from a data source
over the Internet, the transmission server comprising a microprocessor
and a memory that stores the remote subscriber’s preferences for
information format, destination address, specified stock price values, and
transmission schedule, wherein the microprocessor
filters the received stock quotes by comparing the received stock
quotes to the specified stock price values;
generates a stock quote alert from the filtered stock quotes that
contains a stock name, stock price and a universal resource locator
(URL), which specifies the location of the data source;
formats the stock quote alert into data blocks according to said
information format; and
transmits the formatted stock quote alert over a wireless
communication channel to a wireless device associated with a
subscriber based upon the destination address and transmission
schedule,
wherein the alert activates the stock viewer application to cause the
stock quote alert to display on the remote subscriber computer and to
enable connection via the URL to the data source over the Internet when
the wireless device is locally connected to the remote subscriber computer
and the remote subscriber computer comes online.
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challenge, i.e., alerting a subscriber with time sensitive information when the
subscriber’s computer is offline.
Appellant argues that claim 1, like claim 2, “recites an ordered
combination of features,” including (1) receiving treatment plan data
regarding a plurality of patients where the treatment plan data includes a
plurality of plans of medical treatment and receiving compliance data
automatically collected by a sensor regarding compliance of each of the
patients with their corresponding one of the plans, (2) determining
effectiveness of each of the plans based at least in part on the compliance
data, (3) determining a suggested plan of medical treatment for a patient
based on the determined effectiveness, and (4) providing the suggested plan
to a user, and that these features provide “significantly more” than the
alleged abstract idea (id.). But, as described above, we are not persuaded
that determining a plan of medical treatment for a patient based on an
effectiveness determination is a challenge, as in claim 2, particular to the
Internet. And the purported solution here of, at best, a generic computer
component performing generic computer functions, is not necessarily rooted
in computer technology.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 1, and dependent claims 37–44, which are not
argued separately except with reference to their dependence from claim 1
(id. at 23).
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Independent Claims 18, 22, and 46 and Dependent Claims 20, 21, 48, 49,
113, 114, and 116
Appellant argues that the Examiner erred in rejecting independent
claims 18, 22, and 46 with reference to Appellant’s arguments with respect
to claim 1 (Appeal Br. 23–26, 27–28) — arguments that we found
unpersuasive of Examiner error. Therefore, we sustain the Examiner’s
rejection under 35 U.S.C. § 101 of independent claims 18 and 22, and
claims 20, 21, 48, 49, 113, 114, and 116, which depend therefrom, for the
same reasons set forth above with respect to claim 1.
Independent Claim 31 and Dependent Claims 32, 33, 35, 36, 110, and 111
Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
Turning to independent claim 31, we are persuaded that the Examiner
mischaracterized independent claim 31 as directed to the same abstract idea
identified with respect to claims 1 and 18, and that the Examiner, therefore,
failed to set forth a proper analysis of claim 31 under 35 U.S.C. § 101
(Appeal Br. 26–27). That notwithstanding, we conclude, for the reasons
outlined below, that claim 31 is directed to a patent ineligible abstract idea.
Describing the embodiment set forth in claim 31, the Specification
discloses that a medical system includes a processor configured to receive
plan data regarding a virtual performance of a surgical procedure on a
patient and performance data (in real time) regarding an actual performance
of the surgical procedure on the patient (Spec. ¶ 25). The processor also is
configured to determine if the plan data vary from the performance data and,
if so, the processor is configured to provide a warning, including the
determined variation, to a user and to repeat the determining for subsequent
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performance data received in real time with the actual performance of the
surgical procedure (id.).
The Specification describes that feedback regarding the surgical
procedure is provided throughout actual performance of the surgical
procedure, as measured against the plan data, e.g., a simulated or pre-
programmed procedure (id. ¶ 233). This feedback, thus, allows the surgeon
and/or other medical personnel involved with the surgical procedure to
continually validate and confirm that the steps being taken in the surgery are
consistent with the plan and/or with convention; should the actual procedure
deviate from the model within a predetermined degree of tolerance, an alert,
e.g., a visual, auditory, and/or motion signal, is triggered indicating the
deviation (id.).
Consistent with this disclosure, claim 31 recites a medical system
comprising a processor configured to: (1) receive plan data regarding a
virtual performance of a surgical procedure on a patient and performance
data regarding an actual performance of the surgical procedure on the
patient, i.e.,
receive plan data regarding a virtual performance of a surgical
procedure on a patient; [and]
receive performance data regarding an actual performance of the
surgical procedure on the patient, the performance data being
received in real time during the actual performance of the
surgical procedure, and the virtual performance of the surgical
procedure having been performed prior to the actual performance
of the surgical procedure
(steps (a) and (b)); (2) determine whether the plan data vary from the
performance data, i.e., “determine deviation between the plan data and the
performance data” (step (c)); (3) if the plan data vary from the performance
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data by more than a predetermined amount, issue a warning to a user, and
repeat the determining step for subsequent performance data received in real
time during the actual performance of the surgical procedure, i.e.,
if the plan data is determined to deviate from the performance
data outside a predetermined degree of tolerance, provide a
warning to a user, the warning including an indication of the
determined variance, receive subsequent performance data in
real time during the actual performance of the surgical procedure
and determine deviation between the plan data and the
subsequently received performance data
(step (d)); and (4) if the plan data vary from the performance data by less
than the predetermined amount, repeat the determining step for subsequent
performance data received in real time during the actual performance of the
surgical procedure, i.e.,
if the plan data is determined to deviate from the performance
data within the predetermined degree of tolerance, receive
subsequent performance data in real time during the actual
performance of the surgical procedure and determine deviation
between the plan data and the subsequently received
performance data.
(step (e)).
These limitations, given their broadest reasonable interpretation, recite
a method for tracking the progress of a surgical procedure by (1) receiving
information (i.e., plan data regarding a virtual performance of a surgical
procedure on a patient and performance data regarding an actual
performance of the surgical procedure on the patient); (2) analyzing the
information (i.e., determining whether the plan data deviates from the
performance data by more than a predetermined degree of tolerance); and
(3) reporting the results of the collection and analysis (i.e., issuing a warning
to a user, including an indication of the determined variance, if the plan data
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deviates from the performance data by more than the predetermined degree
of tolerance). Considered in light of the Specification, this method can be
fairly characterized as managing personal behavior or relationships or
interactions between people (including teaching and following rules or
instructions), which is a method of organizing human activity and, therefore,
an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Having concluded that claim 31 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The only additional element recited in claim 31, beyond the abstract
idea, is the claimed “processor.” And, that element, as mentioned above, is
described in the Specification at a high level of generality, i.e., as a generic
computer component (see, e.g., Spec. ¶ 104).
We find no indication in the Specification that the operations recited
in claim 31 require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, invoke any assertedly
inventive programming, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.
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Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 31 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 31 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56. We conclude that it does not.
As described above, the only element recited in claim 31, beyond the
abstract idea, is the claimed processor, i.e., a generic computer, which
performs generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry. This is
not enough for patent eligibility. See DDR Holdings, 773 F.3d at 1256
(“And after Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
Claims 32, 33, 35, 36, 110, and 111 depend directly or indirectly from
independent claim 31, and add nothing significantly more to the patent-
ineligible concept recited in claim 31. Therefore, we sustain the Examiner’s
rejection of claims 31–33, 35, 36, 110, and 111 under 35 U.S.C. § 101.
Because our rationale differs from that set forth by the Examiner, we
denominate our affirmance of this rejection as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed New
Ground
1, 4–7, 18,
20–22, 31–
33, 35, 36,
46, 48, 49,
108–116
101 Eligibility 1, 4–7, 18,
20–22, 31–
33, 35, 36,
46, 48, 49,
108–116
31–33, 35,
36, 110,
111
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the Examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
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misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.

AFFIRMED; 37 C.F.R. § 41.50(b)