Roy Jared. Mauldin et al.

Patent Trials and Appeals Board

Sep 27, 2019

14224725 - (D) (P.T.A.B. Sep. 27, 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.
14/224,725 03/25/2014 Roy Jared Mauldin 08148.0036 4227
26359 7590 09/27/2019
Maynard Cooper & Gale, PC (Birmingham)
1901 Sixth Avenue North
2400 Regions/Harbert Plaza
BIRMINGHAM, AL 35203-2618
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
JThomas@maynardcooper.com
ipdocket@maynardcooper.com
tebbert@maynardcooper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROY JARED MAULDIN, BRIAN J. KIRBY, and
JOHN B. JONES JR.
____________

Appeal 2018-008723
Application 14/224,725
Technology Center 3600
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–13, which are all the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify Integrated Medical Systems International, Inc. as the
real party in interest. App. Br. 3.
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Introduction
The Specification provides that “[i]n the field of medical equipment
. . . , regular maintenance and repair is important to provide a continuing
high degree of reliability and operability,” but “repairing medical
instruments due to improper use or accident is time consuming and costly.”
Spec. ¶ 2−3. According to Appellants, “[b]etter care of the instruments can
help to minimize or reduce these costs, but many organizations often lack an
astute awareness of how to efficiently manage and improve maintenance and
care of medical instruments.” Id. ¶ 3. Therefore, Appellants’ invention
addresses these problems by disclosing “systems and methods for analyzing
repair histories of medical devices in order to efficiently identify device care
deficiencies that, if addressed, can help to reduce future repair costs.” Id. ¶ 8.
Claims 1 and 6 are independent; claim 6 is representative:
6. A method for identifying deficiencies in medical
device care, comprising:
tracking, via at least one interface, repairs of a plurality
of medical devices maintained by a healthcare provider;
storing device repair data in memory based on the
tracking, the device repair data indicating a repair history for
the plurality of medical devices, wherein the device repair data
includes, for each of a plurality of the repairs, a first op code
indicative of whether the respective repair was preventable and
a second op code indicative of a type of repair performed on a
medical device;
comparing the device repair data to industry repair data
indicative of a plurality of industry-based statistics about repair
histories for medical devices;
automatically identifying a deficiency in medical device
care based on the comparing and the first and second op codes;
automatically providing a device care recommendation
based on the identified deficiency; and
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displaying, via an output interface, an indication of the
device care recommendation.
App. Br. 26–27 (Claims App’x).
The Pending Rejections
1. The Examiner rejected claims 1–13 under 35 U.S.C. § 101 as
directed to a patent-ineligible judicial exception. Final Act. 3–12; see also
Ans. 3–5.
2. The Examiner rejected claims 1–13 under 35 U.S.C. § 103 as
being unpatentable over Summers (US 2005/0065842 A1; Mar. 24, 2005).
Final Act. 14–24; see also Ans. 5–9.
3. The Examiner rejected claims 1–13 under 35 U.S.C. § 103 as
being unpatentable over Summers and either Applicant Admitted Prior Art
(“AAPA”) or Hoffman et al. (US 2006/0258955 A1; Nov. 16, 2006)
(“Hoffman”). Final Act. 24–29.
ANALYSIS
A. The § 101 rejection
Appellants argue the Examiner erred in the § 101 rejection of
independent claims 1 and 6, which recite similar limitations, and present no
separate arguments for dependent claims 2–5 and 7–13 (which, accordingly,
stand or fall with their respective parent independent claims). App. Br. 4–7;
37 C.F.R. § 41.37(c)(1)(iv). For our analysis, we select independent claim 6
as representative.
§ 101 General Legal Framework and the USPTO Guidance
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 35 U.S.C. § 101 to include
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implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). Concepts determined to be abstract ideas, and, thus, patent
ineligible, include certain methods of organizing human activity, such as
fundamental 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” in Diamond v.
Diehr, 450 U.S. 175, 191 (1981).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (internal citation
omitted). “A claim that recites an abstract idea must include ‘additional
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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 requiring generic computer implementation fails
to transform that abstract idea into a patent-eligible invention.” Id. at 212.
In early 2019, the PTO published revised guidance on the application
of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50–57 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look,
in step one of the Alice/Mayo analysis, to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“prong one”); and
(2) additional elements that integrate the judicial exception
into a practical application (“prong two”) (see MPEP
§ 2106.05(a)–(c), (e)–(h)).2
See Guidance, 84 Fed. Reg. at 53–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim adds “significantly more” under step two of the
Alice/Mayo analysis, i.e., whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or simply appends well-understood,
routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial
exception.
See Guidance, 84 Fed. Reg. at 56.

2 All references to the MPEP are to the 9th ed., Rev. 08.2017 (Jan. 2018).
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Alice/Mayo Step One, Guidance Step 2A, Prong One
(Do the Claims Recite a Patent-Ineligible Concept?)
Under the first prong of step 2A of the Guidance, we determine
whether the independent claims recites a patent-ineligible concept.
Claim 6 recites a method for identifying deficiencies that tracks
repairs; stores repair data based on the tracking, the repair data indicating
repair history and including information indicative of whether the repair was
preventable and the type of repair performed; compares the repair data to
industry repair data indicative of repair statistics and histories; identifies a
deficiency based on the comparing and the repair data information; provides
a care recommendation based on the identified deficiency; and displays an
indication of the care recommendation.3
Under its broadest reasonable interpretation, claim 6 describes a
method of tracking repair data for an item and comparing it to historical
repair data for the item in order to identify a deficiency in care for the item,

3 To determine whether the claims recite a judicial exception, our analysis
under prong one of the Guidance sets aside high-level technological
limitations in the claims such as “at least one interface,” “a plurality of
medical devices,” “memory,” “automatically,” “an output interface,” and
“logic” (claim 1). We consider such limitations in our analysis under prong
two of the Guidance (for determining whether a claim that recites a judicial
exception is directed to that exception, or whether instead it integrates the
exception into a practical application) and under step two of the Alice/Mayo
framework (for determining whether a claim that is directed to a judicial
exception recites significantly more than that exception). Although at this
stage of our analysis we put aside these high-level technological limitations,
we remain mindful that we must not express the basic concept of the claim
in a way that is “untethered from the language of the claims.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Our analysis that
follows assesses what the claims otherwise recite at the same level of
generality or abstraction expressed in the claims. Id.
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providing an item care recommendation, and displaying an indication of the
recommendation. This is a concept relating to the collection, comparison,
analysis, identification, and display of data, which a person can perform
mentally or with only pen and paper. Thus, claim 6 describes a method for
implementing a mental process that courts have found constitutes an abstract
idea. Guidance, 84 Fed. Reg. at 52 (describing mental processes as
“concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)”), see also id. at 52 n.14 (citing, e.g., Versata
Dev. Grp. 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
paper or in a person’s mind.”)). For example, claim 6 is similar to those at
issue in SmartGene, where the Federal Circuit determined that “the claim at
issue here involves a mental process excluded from section 101: the mental
steps of comparing new and stored information and using rules to identify
medical options.” SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F.
App’x 950, 955 (Fed. Cir. 2014).4
Accordingly, we agree with the Examiner’s characterization of the
claims as reciting “the collection, analysis, and display of data, which is
considered an abstract idea.” Ans. 3; see also Final Act. 8 (determining that
claim 6 recites the concept of “identifying conditions (deficiencies) in a

4 See also 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).
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device caring activity (maintenance/repair),” which may be characterized
as “an idea of itself”).
Appellants argue the Examiner erred by “fail[ing] to ‘consider[] the
claims in their entirety to ascertain their character as a whole is directed to
excluded subject matter” but instead “only look[ing] to the first few words
of the claimed limitations” (App. Br. 10) and not the “steps that go beyond
manipulation or generation of information” (id. at 12).5 We do not agree.
The Examiner has identified and considered the underlying steps of claim 6
as a basis for describing and explaining the recited abstract ideas. See, e.g.,
Final Act. 8–9; Ans. 3. For example, when describing claim 6 as reciting the
abstract concept of collecting, analyzing, and displaying data, the Examiner
identifies and considers the underlying claim steps by explaining that:
[t]he scope of the current claim is ‘identifying conditions (i.e.
deficiencies) in a medical device care based on repair histories’
by collecting information of a device, analyzing collected
information by comparing the collected information to a
standard (industry-based statistics) to identify a deviation from
the standard and generate a result, provide a recommendation
based on the analysis result.
Ans. 3.6 Contrary to Appellants’ assertions, the Examiner’s approach is
consistent with Supreme Court and Federal Circuit precedent, which support
reasonably synthesizing the claim language when identifying a recited

5 See also id. (“The Examiner has attempted to distill the claim down to a
‘simple’ concept, assigned this concept to be the abstract idea, and has
selectively removed large portions of claim language to fit the claims to this
identified concept.”).
6 See also Final Act. 9 (describing claim 6 as reciting the abstract concept of
manipulating existing information to generate additional information and
mapping the elements of this concept to the associated limitations of claim
6).
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abstract idea. See, e.g., Bilski, 561 U.S. at 611 (“Claims 1 and 4 in
[P]etitioners’ application explain the basic concept of hedging, or protecting
against risk. . . . The concept of hedging, described in claim 1 and reduced to
a mathematical formula in claim 4, is an unpatentable abstract idea, just like
the algorithms at issue in Benson and Flook.”).7 We note that those claim
elements not addressed while identifying the recited abstract idea have been
addressed as additional limitations in Step 2A, Prong Two or Step 2B of the
§ 101 analysis.
Guidance Step 2A, Prong One Conclusion
Thus, in accordance with the Guidance, claim 6 recites abstract ideas
that fall within the mathematical concepts and mental processes groupings.
See Guidance, 84 Fed. Reg. at 52. Because claim 6 recites a judicial
exception (i.e., an abstract idea), we next proceed to the Guidance step 2A
prong two to consider whether each of the claims integrates its recited
judicial exception into a practical application. See Guidance, 84 Fed. Reg. at
54. Before proceeding, we note that any differences between the abstract
ideas the Examiner has identified and the abstract ideas we identify for claim

7 See also Alice, 573 U.S. at 219 (laying out the recited steps of the claimed
method of exchanging financial obligations between two parties using a
third-party intermediary to mitigate settlement risk and concluding that “[o]n
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.”); Smart
Sys. Innovations, 873 F.3d at 1371 n.8 (concluding that the district court did
not err in determining that claims covered the abstract concept of paying for
a subway or bus ride with a credit card: “[t]he District Court here, as we
have instructed, looked to the language of the claims to discern the character
of the patent.”).

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6 do not give rise to a reversible error—they do not amount to a change in
the thrust of the rejection.
Alice/Mayo Step One, Guidance Step 2A, Prong Two
(Do the Claims Integrate the Abstract Idea into a Practical Application?)
To determine whether the judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
practical application. Guidance, 84 Fed. Reg. at 54–55 (emphasis added);
see also MPEP § 2106.05(a)–(c), (e)–(h).
Claim 6 recites the computer-related terms of “at least one interface,”
“a plurality of medical devices,” “memory,” “automatically,” and “an output
interface.”8 Claim 6 combines these technology-related limitations (shown
in italics) with the limitations reciting the judicial exception as follows9:
6. A method for identifying deficiencies in medical
device care, comprising:
tracking, via at least one interface, repairs of a plurality
of medical devices maintained by a healthcare provider;
storing device repair data in memory based on the
tracking, the device repair data indicating a repair history for
the plurality of medical devices, wherein the device repair data
includes, for each of a plurality of the repairs, a first op code
indicative of whether the respective repair was preventable and
a second op code indicative of a type of repair performed on a
medical device;

8 Similarly, independent claim 1 recites computer-related terms of “at least
one interface,” a “memory,” “a plurality of medical devices,” and “logic.”
9 Independent claim 1 similarly combines its technological limitations with
its abstract idea limitations.
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comparing the device repair data to industry repair data
indicative of a plurality of industry-based statistics about repair
histories for medical devices;
automatically identifying a deficiency in medical device
care based on the comparing and the first and second op codes;
automatically providing a device care recommendation
based on the identified deficiency; and
displaying, via an output interface, an indication of the
device care recommendation.
Although these computer-related recitations add a certain level of
specificity to the claim, they do not constitute an improvement to “the
functioning of the computer itself” or “any other technology or technical
field;” rather, they constitute use of generic components for automating
otherwise routine human activities. See MPEP § 2106.05(a) (quoting Alice,
573 U.S. at 225). Neither do these computer limitations qualify as applying
the judicial exception with “a particular machine,” because these
components provide their conventional functions and require no more than
general-purpose computer equipment. See MPEP § 2106.05(b); see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,716-17 (Fed. Cir. 2014); TLI
Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir.
2016) (explaining that mere recitation of concrete or tangible components is
not an inventive concept). “In order for the addition of a machine to impose
a meaningful limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than function solely
as an obvious mechanism for permitting a solution to be achieved more
quickly.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed.
Cir. 2010).
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Similarly, we are not persuaded that claim 6 effects a particular
transformation of the recited articles, which are simply used for their
ordinary purposes, or that it adds any other meaningful (technological)
limitations, i.e., limitations beyond simply “linking the use” of the abstract
idea to generic technology. See MPEP § 2106.05 (c), (e)–(f), (g)–(h) (Use of
well-known limitations beyond the judicially excepted matter constitutes
“insignificant extra-solution activity” (g) and claim limitations “merely
indicating a field of use or technological environment in which to apply a
judicial exception do not amount to significantly more” (h).).
More specifically, we do not agree with Appellants’ contentions that
“both the individual elements of the claims and their combination improve
upon how the technology —here, medical devices—fundamentally
functions” (App. Br. 16) or that the “invention is directed to the
implementation of a solution to a technological problem, specifically, a
computer-related solution to improve efficient maintenance and care of
medical instruments to ‘provide a continuing degree of reliability and
operability’ of medical devices . . . and minimize or reduce costs in such
maintenance” (id. at 14, citing Spec. ¶¶ 2–3).
The focus of the claims is on a process for identifying deficiencies in
care and providing a recommendation for care using a computer and
software as tools, not on an improvement in the computer or software itself
as a tool. See Revised Guidance, 84 Fed. Reg. at 55 (explaining that courts
have identified “merely us[ing] a computer as a tool to perform an abstract
idea” as insufficient to integrate the judicial exception into a practical
application); Elec. Power Grp., 830 F.3d at 1354. Further, the claim’s
application to medical devices merely indicates the field of use or
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technological environment in which to apply the recited abstract idea and
does not amount to significantly more. See Revised Guidance, 84 Fed. Reg.
at 55, 55 n.32. In fact, as currently claimed, Appellants’ repair analysis and
recommendation algorithm could be applied not only to medical devices but
to many other technological environments or fields of use, such as vehicles,
construction equipment, home systems, appliances, and software, just to
name a few.
Appellants also argue to no avail that claim 6, similar to the claims in
Core Wireless,10 “results in an improved display with delimitations on the
type of data to be displayed, in this case a display providing a device care
recommendation that solves the medical device care problem described in
the Specification.” App. Br. 13–14. In Core Wireless, the court concluded
the claims were not directed to an abstract idea, but rather were “directed to
an improved user interface for computing devices.” Core Wireless, 880 F.3d
at 1362. The court noted that “[a]lthough the generic idea of summarizing
information certainly existed prior to the invention, . . . these claims recite a
specific improvement over prior systems.” Core Wireless, 880 F.3d at 1362–
63. Here, although claim 6 recites “at least one interface” and “an output
interface,”11 Appellants do not identify anything in the claims or the
Specification to indicate that these interfaces amount to an improvement
over conventional interfaces. To the contrary, the Specification describes the
claimed interfaces in merely generic or conventional terms. See, e.g., Fig. 1

10 Core Wireless S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363 (Fed. Cir.
2018).
11 Claims 12 and 13 further recite that “the at least one interface comprises a
user interface or a network interface,” but this does not change our analysis.
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(items 33, 39, 42, 73), Spec. ¶ 12 (“local interface 33 . . . can include at least
one bus. Furthermore, an input interface 36, for example, a keyboard or a
mouse, can be used to input data from a user of the system 10, and an output
interface 39, for example, a printer, monitor, liquid crystal display (LCD), or
other display apparatus, can be used to output data to the user. Further, a
network interface 42, such as at least one modem, may be used to exchange
data with a network 102 (FIG. 3).”).
We are not persuaded by Appellants’ assertion that the claims are
patent-eligible because they recite “particular information . . . not merely
preexisting, but . . . ‘received’ . . . and ‘tracked’ . . . by an interface that can
be either a user interface or network interface (Claims 12 and 13)” in order
to make recommendations, display data, and transmit data. App. Br. 11.
Receiving and tracking data, and subsequently providing and displaying
results, are the type of extra-solution activity (i.e., in addition to the judicial
exception) the courts have determined insufficient to transform judicially
excepted subject matter into a patent-eligible application. See MPEP
§ 2106.05(g); 84 Fed. Reg. at 55, 55 n.31; see, e.g., Bancorp Servs, 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 1266 (Fed. Cir. 2012) (explaining that “storing, retrieving,
and providing data . . . are inconsequential data gathering and insignificant
post solution activity”).12 And, as discussed above, the claim’s use of
interfaces is, at best, generic and conventional.

12 See also Bilski, 561 U.S. at 612 (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Elec. Power Grp.,
830 F.3d at 1355 (explaining that “selecting information, by content or
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Appellants further argue that claim 6’s analysis “does much more than
merely ‘generate additional information’ . . . ; rather, [it] improves efficiency
of maintenance and care of medical instruments and minimizes and reduces
costs in such maintenance . . . not only by ‘identifying a deficiency in
medical device care’ but also ‘providing a device care recommendation
based on the identified deficiency.’” App. Br. 11 (citing Spec. ¶¶ 2–3).13
Here, Appellants reference, among other things, the claim’s storing and
comparing of particular op codes so as to identify a deficiency and provide a
recommendation. Id. at 10–11, 13.
Although these limitations certainly narrow the scope of claim 6,
limiting an abstract idea to a particular field of use does not convert an
otherwise ineligible concept into an inventive one. See Guidance, 84 Fed.
Reg. at 55, id. nn. 31–32. Moreover, that the claimed method may perform a
specific set of rules does not necessarily render the claim non-abstract. See,
e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(determining for a specific method of advertising and content distribution,
that “each of [the] eleven steps merely instructs the practitioner to
implement the abstract idea with routine, conventional activities,” and that
although “some of the eleven steps were not previously employed in this

source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes”).
13 See also App. Br. 15 (“The claimed solution results in a ‘technical
improvement over [the] prior art,’ namely . . . improving efficiency of
maintenance and care of medical instruments and minimizing and reducing
costs in such maintenance . . . . The subject matter recited in the claims
addresses a specific and discrete technical methodology for reaching this
improvement.”); see also id. at 16 (stating that “the Office Action overlooks
that the steps are not conventional, well-understood, or routine”).
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art,” that was “not enough—standing alone—to confer patent eligibility
upon the claims at issue.”); accord Netflix, Inc. v. Rovi Corp., 114 F. Supp.
3d 927, 942 (N.D. Cal. 2015), aff’d, 670 F. App’x 704 (Fed. Cir. 2016).
Contrary to Appellants’ assertions, the Final Office Action did not overlook
these limitations; rather, it considered them and determined that they were
either part of the abstract idea itself or additional limitations that did not
amount to significantly more than the abstract idea. See, e.g., Final Act. 7–
11.
In sum, we find no evidence that the recited combination of computer
elements is unconventional or non-generic because it is merely performing
the functions of tracking, storing, comparing, identifying, providing, and
displaying data in a normal and routine way, as any other generic and
conventional computing system would do.
Guidance Step 2A, Prong Two Conclusion
Because claim 6 recites a judicial exception and does not integrate it
into a practical application, we next proceed under the Guidance to
Alice/Mayo step two, to consider whether the claim recites significantly
more than its recited exception. Guidance, 84 Fed. Reg. at 54.
Alice/Mayo Step Two; Guidance Step 2B
In step two of the Alice/Mayo analysis, we consider whether there are
additional limitations that, individually or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As stated in the
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
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been integrated into a practical application. Guidance, 84 Fed. Reg. at 56.
Thus, at this point of our analysis, we determine if the independent claims
add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field; or whether, in
addition to the recited judicial exception, they recite only well-understood,
routine, conventional activities at a high level of generality. Id.
Here, claim 6 does not recite specific limitations (or a combination of
limitations) that are beyond what was well-understood, routine, and
conventional. The Examiner determines, and we agree, that the additional
technological limitations recited in claim 6 constitute the use of technology
that was well-known to those of ordinary skill prior to the invention. Final
Act. 9–12. As the Examiner determines, and Appellants do not effectively
rebut, Appellants’ Specification discloses the claimed technological features
only at a generic level, using such technology for routine, well understood,
and conventional purposes. See Final Act. 10 (citing Spec. ¶ 12); see also
Figs. 1, 3; Spec. ¶¶ 9, 11, 13. There is no evidence of any specific technical
improvements or advances for the technological components recited in claim
6.
Appellants contend “[c]laims 1 and 6 do not preempt any type of data
analysis for medical device repair or seek to broadly cover a fundamental
economic practice, but rather, ‘carve out a specific location’ to address a
problem in medical device repair.” App. Br. 17. This argument is not
persuasive.
[T]he proper focus is not preemption per se, for some measure
of preemption is intrinsic in the statutory right granted with
every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
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the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294.
Thus, broad claims do not necessarily raise § 101 preemption
concerns, and seemingly narrower claims are not necessarily
exempt.
CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1281 (Fed. Cir. 2013); see
also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (“While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility.”). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379.
Conclusion
Appellants do not persuade us of reversible error in the § 101 rejection
of independent claim 6. For similar reasons, Appellants have not persuaded
us of reversible error in the § 101 rejection of independent claim 1, which
recites similar limitations, and the § 101 rejection of dependent claims 2–5
and 7–13, which Appellants do not argue separately with particularity.
B. The § 103 rejections
For the reasons stated below, Appellants persuade us that the
Examiner erred in finding Summers teaches “a first op code indicative of
whether the respective repair was preventable” and “automatically
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identifying a deficiency in medical device care based on . . . the first and
second op codes,” as recited in claim 6.
In rejecting claim 6 under 35 U.S.C. § 103 over Summers, the
Examiner finds that Summers teaches “a first op code indicative of whether
the respective repair was preventable” with its disclosure of a
“‘prevention-driven environment’ that is shared on a continuous basis
with a high quality feedback process within the organization and across
entities involved with owner/operators, manufacturer and supplier.” Final
Act. 17 (citing Summers ¶¶ 18–19). The Examiner explains that,
[a]s taught in ¶¶ [0018], if a critical safety-related problem is
detected in one organization, however, this problem is not
“shared” on a continuous basis to other organizations, and the
“same” critical safety-related problem occurs in a 2nd
organization a week later, the repair to the problem in the 2nd
organization should be shown/listed as “preventable” repair. In
other word [sic], if the same problem was informed to the 2nd
organization in proper time and corrective action was taken to
solve the problem before it occurs a week later, the repair could
have been prevented.
Final Act. 17; see also id. at 18–19 (citing Summers Figs. 5, 7B). The
Examiner also finds that Summers teaches an “op code” with its disclosure
of measurement category impact codes such as severity, safety, reliability,
quality, cycle time, and cost codes, each of which may be scaled from 1 to 5,
5 being most severe. Ans. 6–7 (citing Summers Figs. 6, 7B), see also id. at 8
(citing Summers ¶ 115).
Appellants argue that the “prevention-driven environment” of
Summers does not teach an “op code indicative of whether the respective
repair was preventable,” but instead “is merely indicative of Summers’ focus
on sharing data between multiple servers to prevent future issues.” Reply Br.
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4 (citing Summers ¶¶ 14, 18). Appellants also dispute the Examiner’s
citation of Summers’ measurement category impact codes as teaching this
limitation because “[n]one of the codes shown in Figs. 6 or 7B are described
as indicating a ‘level of preventability,’ or whether or not a repair is
preventable.” Id. at 5 (citing Summers Figs. 6, 7B). Appellants explain that
“sharing of a code indicating ‘level of severity/safety/reliability,’ i.e., an
indicator of the impact a problem is creating, is not by itself a designation of
whether that problem was preventable.” Id. at 5–6.14 Appellants’ arguments
are persuasive.
The Specification describes “a first op code indicative of whether the
respective repair was preventable” as follows:
A preventable status field 63 stores an op code that is selected
by the technician or other user to indicate whether the problem
indicated by the field 62 is preventable . . . . One op code
indicates that the problem is preventable (e.g., can be prevented
by exercising certain care or maintenance). Another code
indicates that the problem is not preventable (e.g., cannot be
prevented by exercising care or maintenance).
Spec. ¶ 16, see also id. ¶ 8 (“observation codes (also referred to as ‘OP
codes’)”). The Specification also describes preventable status field 63 as a
field for an entry of device repair data indicative of a repair performed on a
particular device. See id. ¶ 14, Fig. 2. Accordingly, we understand “a first op
code indicative of whether the respective repair was preventable” as being
an observation (“OP”) code indicating that the problem to be repaired is (or

14 See also id. (submitting that even if the sharing such a code across
organizations “‘would allow the received organization to make change to its
maintenance practice so that the respective repair can be made ‘preventable’
by inspecting the device earlier or changing the device earlier,’” this still
would not satisfy the disputed limitation).
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is not) preventable (i.e., whether or not it can be prevented by exercising
certain care or maintenance).
Summers discloses a system and method for coordinating product
inspection, repair, and product maintenance. Summers, Abstract. In a
disclosed embodiment, Summers’ invention includes:
1. An industry-wide Standard Maintenance Baseline and
frequency-of-occurrence database . . . under continuous
improvement . . . to identify and prioritize problems by
category/type for safety, reliability, severity, cost and cycle
time; . . . 2. A process by which Maintenance Providers,
Strategic Suppliers and Manufacturers/OEMs jointly conduct
root cause analysis and develop prevention-driven, best-in-class
repair processes to reoccurring problems; and . . . 3. A
technology-driven method to standardize data definition and
improve the accuracy and productivity of the process of data
collection, retrieval, analysis and use.
Summers, ¶¶ 43–45.
As cited by the Examiner, paragraph 18 of Summers describes the
problem that Summers’ invention aims at solving—i.e., the lack of data
sharing across organizations—and provides an example in which critical
safety problems are detected and corrected in one organization, but another
organization may be unaware of the problem, which may result in unsafe or
accident-prone conditions. Summer ¶ 18. Paragraph 19 of Summers
discloses that “[t]o have a high quality, safe and productive maintenance
process there must be . . . efficient change control process that creates a
continuous improvement, prevention-driven environment that is shared on a
continuous basis” across organizations. Id. at 19. These paragraphs describe
a “prevention-driven” environment, in which a first organization may
receive information shared by a second organization about a problem such
that, if the problem is addressed by the first organization through
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maintenance or repair, the first organization may be able to prevent an
accident or incident from occurring. But these disclosures do not teach or
suggest an OP code indicating that the problem to be repaired is (or is not)
preventable.
Also cited by the Examiner, Figures 6 and 7B of Summers describe
the use of measurement category impact codes to define a problem, the
impact codes including severity, safety, reliability, quality, cycle time, and
cost codes, each of which may be scaled from 1 to 5, 5 being most severe.
Summers Figs. 6, 7B, see also id. ¶¶ 112, 114, 115. Although these
measurement category impact codes may be “op codes” indicating the
severity of different aspects of the problem or repair, the Examiner has not
persuasively shown—nor do we determine—that they indicate the problem
to be repaired was preventable or unpreventable.
In view of the foregoing, Appellants persuade us the Examiner erred
in finding Summers teaches “a first op code indicative of whether the
respective repair was preventable,” as recited. As a corollary, we also are
persuaded the Examiner erred in finding Summers teaches “automatically
identifying a deficiency in medical device care” based in part on the first op
code. For emphasis, we highlight the following additional reasons why the
Examiner erred in finding Summers teaches “automatically identifying a
deficiency in medical device care based on . . . the first and second op
codes.”
In addressing this limitation, the Examiner cites Summers’ disclosure
that “[p]roblems found with the maintenance repair and inspection
process, the availability to use frequency-of-occurrence data and the
development of certified best-in-class repair processes that are shared across
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organizations will be beneficial to all involved organizations.” Final Act. 21
(citing Summers ¶ 40). The Examiner explains that Summer’s disclosure of
“sharing ‘repair data’ such as ‘severity code’, ‘safety code’ or ‘reliability
code’ to various organization would allow the received organization to make
change [sic] to its maintenance practice so that the respective repair can be
made ‘preventable’ by inspecting the device earlier or changing the device
earlier.” Ans. 7. The Examiner further explains that in view of Summers’
disclosure of identifying and defining a new problem by category type,
component, and subcomponent codes (including the measurement category
impact codes), “the inclusion of the ‘new or second code indicative of a type
of problem found or repair indication’ in the device care recommendation
for providing a complete and updated repair recommendation would have
been obvious.” Id. at 8 (citing Summers ¶ 115).
Appellants argue that the cited disclosures of Summers do not teach or
suggest the limitation at issue, but instead merely disclose “‘certified best-in-
class repair processes’ that are ‘shared across organizations[,]’ ‘user
information’ that includes ‘deviation from industry standard information,’”
and “a ‘non-routine repairs process’ in which a screen will indicate whether
a root cause analysis exists.” App. Br. 22 (citing Summers ¶¶ 40, 121).
Appellants further submit that the Examiner’s Answer provides no rationale
or explanation to support the assertion that “a new or second code indicative
of a type of problem” would have been obvious in view of paragraphs 115
and 121 of Summers, which Appellants argue “do not disclose or suggest
such an outcome.” Reply Br. 6–7 (citing Summers ¶¶ 115, 121).
Appellants’ arguments are persuasive. Even if Summers’
measurement category impact codes would allow the receiving organization
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to change its maintenance practices and make a repair preventable, this does
not persuasively show that a deficiency has been identified based in part on
the measurement category impact code or that the measurement category
impact code indicates that the problem to be repaired is preventable or not
preventable. We also agree with Appellants that the Examiner has not
provided sufficient evidence to support the assertion that “a new or second
code indicative of a type of problem” would have been obvious. The
Examiner’s assertion amounts to no more than a conclusory statement that
lacks sufficient factual basis. “[T]he [PTO] must make the necessary
findings and have an adequate ‘evidentiary basis for its findings’” and must
articulate logical and rational reasons supporting its decisions. In re
NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Ex parte
Poisson, Appeal No. 2012-011084, at *5 (PTAB Feb. 27, 2015) (“[A]bsent
supporting evidence in the record — of which there is none, the Examiner’s
opinion is an inadequate finding of fact on which to base the . . . analysis.”).
Nor has the Examiner persuasively shown how Summers teaches or suggests
identifying a deficiency based on its measurement category impact code and
this allegedly obvious “new or second code indicative of a type of problem.”
Therefore, we do not sustain the Examiner’s 35 U.S.C. § 103 rejection
of claim 6 over Summers. We likewise do not sustain the § 103 rejection
over Summers of independent claim 1, which includes commensurate
limitations for which the Examiner relies upon the same erroneous findings
(see App. Br. 25 (Claims App’x); Final Act. 14–22; Ans. 5–8). We also do
not sustain the § 103 rejection over Summers of dependent claims 2–5 and
7–13, which include similar deficiencies. For the reasons stated above, we
also decline to sustain the Examiner’s § 103 rejection over Summers and
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AAPA or Hoffman of claims 1–13, for which the Examiner relies upon the
same erroneous findings to reject the disputed limitations as those in the
§ 103 rejection over Summers.
DECISION
We affirm the 35 U.S.C. § 101 rejection of claims 1–13.
We reverse the 35 U.S.C. § 103 rejections of claims 1–13.
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).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED