SMITH & NEPHEW, INC.Download PDFPatent Trials and Appeals BoardOct 14, 20212021002384 (P.T.A.B. Oct. 14, 2021) Copy Citation 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. 14/891,540 11/16/2015 Gene E. Austin 8178SN4245 1456 96878 7590 10/14/2021 Smith & Nephew, Inc. - KDB 1450 Brooks Road Memphis, TN 38116 EXAMINER REYES, REGINALD R ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 10/14/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@kdbfirm.com mbotnaru@kdbfirm.com smith-nephew_pair@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GENE E. AUSTIN and JOHN R. MASON ____________ Appeal 2021-002384 Application 14/891,540 Technology Center 3600 ____________ Before JAMES P. CALVE, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 7, 10–15, 17, and 19–22. An oral hearing was held September 30, 2021. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 September 24, 2020) and Reply Brief (“Reply Br.,” filed February 18, 2021), the Examiner’s Answer (“Ans.,” mailed January 14, 2021) and Final Office Action (“Final Act.,” mailed April 3, 2020). Appellant identifies Smith & Nephew, Inc. as the real party in interest (Appeal Br. 3). Appeal 2021-002384 Application 14/891,540 2 CLAIMED INVENTION The Specification states, “[e]mbodiments of the invention are directed to methods and devices for providing instructions to treat and for treating patients through the use of medical devices” (Spec. Abstr.). Claim 7, reproduced below with bracketed notations added, is the sole independent claim on appeal, and representative of the claimed subject matter: 7. A method of dynamically providing processor- executable instructions to transform a bone alignment device, the method comprising: [(a)] communicating a set of processor-executable instructions, the instructions comprising a prescription for the bone alignment device to be accomplished over a predetermined period of time, to a patient device to achieve alignment of one or more bones by adjustment, based on the instructions, of the bone alignment device coupled to a patient, the patient device being selected from one of a smartphone, a tablet computer, and a handheld cellular device; [(b)] receiving patient information from the patient device after communication of the instructions to the patient device, the patient information being inputted into the patient’s device by the patient, the patient information including at least one of a notification that one or more adjustments, indicated by the instructions, have been made to the bone alignment device and an indication that one or more adjustments, indicated by the instructions, have not been made to the bone alignment device; [(c)] analyzing the patient information received from the patient device; [(d)] determining whether to revise the set of processor- executable instructions based on the analysis of the patient information received from the patient device; Appeal 2021-002384 Application 14/891,540 3 [(e)] calculating, based on the determination, a revised set of processor-executable instructions to be accomplished to achieve alignment of the one or more bones by adjustment of the bone alignment device coupled to the patient based on the patient information received, wherein the calculating step comprises determining an adjustment of a distraction rate of the prescription, and based on the determination of the adjustment, changing the distraction rate of the prescription; and [(f)] communicating the revised set of processor- executable instructions to the patient device to enable transformation of the bone alignment device in accordance with the revised set of processor-executable instructions. REJECTION Claims 7, 10–15, 17, and 19–22 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS Appellant argues the pending claims as a group (Appeal Br. 4–18). We select independent claim 7 as representative. The remaining claims stand or fall with claim 7. See 37 C.F.R. § 41.37(c)(1)(iv). Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” 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 Appeal 2021-002384 Application 14/891,540 4 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 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). The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, 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 (Jan. 7, 2019) (the “2019 Revised Guidance”).2 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 [are] 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. 2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-002384 Application 14/891,540 5 The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, 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 determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of the exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, 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 to monopolize the judicial exception. 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. Id. If the claim is determined to be directed to a judicial exception under revised Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or a combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56. Here, in rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that independent claim 7 recites receiving patient information, analyzing the information received, and revising a set of instructions, i.e., a method of organizing human activity, and, therefore, an Appeal 2021-002384 Application 14/891,540 6 abstract idea (Final Act. 4–5). The Examiner also determined that the additional elements recited in claim 7 do not integrate the recited abstract idea into a practical application (id. at 6–7); that the additional elements are not sufficient to amount to significantly more than the abstract idea itself (id. at 7–9); and that dependent claims 10–15, 17, and 19–22 are patent ineligible for substantially the same reasons (id. at 16). Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A) We are not persuaded by Appellant’s argument that the Examiner erred in determining that claim 7 is directed to an abstract idea (Appeal Br. 6–9). The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the 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 claim 7 focuses on an abstract idea, and not on an improvement to technology and/or a technical field. The Specification is titled “APPARATUS AND METHOD FOR ADMINISTERING A MEDICAL DEVICE PRESCRIPTION,” and discloses that some embodiments of the invention are “particularly configured to treat musculoskeletal conditions by providing for alignment of bones by use of bone alignment devices in accordance with instructions provided through a prescription” (Spec. Abstr.). “Other embodiments may Appeal 2021-002384 Application 14/891,540 7 be capable of facilitating or providing revised prescriptions in response to treatment conditions” and “[e]mbodiments may also provide effective ways of communicating prescription and compliance information between patients and health care providers” (id.). Consistent with this disclosure, claim 7 recites a method of dynamically providing processor-executable instructions to transform a bone alignment device comprising: (1) communicating instructions to a patient device to achieve alignment of one or more bones by adjusting, based on the instructions, a bone alignment device coupled to the patient, i.e., communicating a set of processor-executable instructions, the instructions comprising a prescription for the bone alignment device to be accomplished over a predetermined period of time, to a patient device to achieve alignment of one or more bones by adjustment, based on the instructions, of the bone alignment device coupled to a patient, the patient device being selected from one of a smartphone, a tablet computer, and a handheld cellular device (step (a)); (2) receiving information from the patient device regarding one or more adjustments made to the bone alignment device, i.e., receiving patient information from the patient device after communication of the instructions to the patient device, the patient information being inputted into the patient’s device by the patient, the patient information including at least one of a notification that one or more adjustments, indicated by the instructions, have been made to the bone alignment device and an indication that one or more adjustments, indicated by the instructions, have not been made to the bone alignment device (step (b)); (3) determining whether to revise the instructions based on an analysis of the information received from the patient device, i.e., “analyzing the patient information received from the patient device” and “determining whether to revise the set of processor-executable instructions based on the Appeal 2021-002384 Application 14/891,540 8 analysis of the patient information received from the patient device” (steps (c) and (d)); and (4) creating, based on the results of the analysis, a revised set of instructions, and communicating the revised set of instructions to the patient device, i.e., calculating, based on the determination, a revised set of processor-executable instructions to be accomplished to achieve alignment of the one or more bones by adjustment of the bone alignment device coupled to the patient based on the patient information received, wherein the calculating step comprises determining an adjustment of a distraction rate of the prescription, and based on the determination of the adjustment, changing the distraction rate of the prescription; and communicating the revised set of processor-executable instructions to the patient device to enable transformation of the bone alignment device in accordance with the revised set of processor-executable instructions (steps (e) and (f)). Appellant charges that the Examiner “misused the broad classification of ‘organizing human activity’ to reject the claims without any analysis or other arguments” and that “claim 7 does not merely recite long known and understood operations or actions carried out by humans” (Appeal Br. 7–8). Yet, by Appellant’s own admission, claim 7 describes receiving patient information (raw data) related to adjustments made to the bone healing mechanism, analyzing the patient information, determining whether to revise processor executable instructions based on the analysis, calculating a revised set of processor executable instructions, and communicating the revised set of processor executable instructions to a patient device (id. at 7) — processes that, as disclosed in the Specification, involve managing human behavior or relationships or interactions between people, including following Appeal 2021-002384 Application 14/891,540 9 rules or instructions,3 which is one of “[c]ertain methods of organizing human activity,” and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Responding to the Examiner’s Answer, Appellant argues, in the Reply Brief, that “construing the claims to be related to managing human behavior is illogical and incorrect” because “human behavior does not include executing processor-executable instructions and neither are humans or their behaviors analogous to bone alignment devices or prescriptions for bone alignment devices” (Reply Br. 5). Appellant asserts that “at a very high level of abstraction, the claims are describing interactions between 3 See, e.g., Spec. ¶ 27 (“Following communication of a prescription to a patient device, actions may be accomplished on the bone alignment device . . . . Actions may be taken by a patient to whom the bone alignment device is coupled, by an HCP [health care provider], or by any other designee capable of performing the actions. Actions may be performed manually or may be executed automatically on a time schedule or in response to some other initiating activity.” (Emphasis added)); ¶ 28 (“In some embodiments, receiving information from the patient device . . . includes receiving information input into the patient device . . . by the patient to whom the bone device is coupled. . . . Receiving information may also include receiving an indication that one or more adjustments have not been made to the bone alignment device . . . in accordance with a set of instructions.” (Emphasis added)); ¶ 31 (“Depending on the reason a prescription change is being requested, an HCP may be able to revise a prescription and provide the revised prescription to a patient device based on information received through the patient device and without physically examining the patient.” (Emphasis added)); ¶ 35 (“The decision to calculate a revised prescription may be based on one or both of information received from the patient device and the discretion of a treating HCP.” (Emphasis added)); ¶ 37 (“A patient or any capable person . . . could . . . make the adjustments to the bone alignment device in accordance with the revised prescription.”). Appeal 2021-002384 Application 14/891,540 10 computing devices related to a bone alignment device and prescriptions for a bone alignment device” (id.). Yet, the only claimed “interactions between computing devices” are the exchange of information, i.e., “a set of processor-executable instructions . . . comprising a prescription,” “patient information,” and “a revised set of processor-executable instructions,” transmitted over a network. And, the Federal Circuit has held that abstract ideas include receiving and sending information over a network. See, e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network — with no further specification — is not even arguably inventive.”). We also are not persuaded of Examiner error to the extent Appellant maintains that any alleged abstract idea is integrated into a practical application (Appeal Br. 8–9). The 2019 Revised Guidance references MPEP, Ninth Edition (rev. Jan. 2018) (available at https://www.uspto.gov/web/offices/ pac/mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in non-exhaustively listing considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, “[the] additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field.” Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra- Appeal 2021-002384 Application 14/891,540 11 solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id. Ostensibly relying on the Federal Circuit’s decision in Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) and the court’s discussion of that decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), Appellant maintains here that “claim 7 describes a particular method of utilizing raw data (patient information) to avoid complications inherent to conventional methods” (e.g., significant deviations from a prescription for bone healing that can arise from reliance on remote patients to accurately perform adjustments to a bone alignment device), and that the claim is not directed to an abstract idea because, “[i]mprovements that eliminate complications inherent in conventional methods fall outside the 101 exception” (Appeal Br. 8–9; see also Reply Br. 8–10). Appellant asserts that claim 7 “describe[s] new computer functionality to monitor the progress of the bone healing of the patient to determine deviations from the prescription” that require adjusting the distraction rate for bone healing, and “new computer functionality to communicate revised instructions to the patient device to effect the change in the distraction rate” (Appeal Br. 8–9). But, we are not persuaded that claim 7, thus, provides a technological improvement analogous to the use, in Thales, of a particular configuration of inertial sensors to more accurately and efficiently measure the relative position and orientation of an object on a moving platform. Appeal 2021-002384 Application 14/891,540 12 In Thales, the claims recited a method for determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame. Thales, 850 F.3d at 1345–46. The patent disclosure recognized that conventional solutions for tracking inertial motion of an object on a moving platform were flawed in that both object- and platform- based inertial sensors measured motion relative to the earth, and the error- correcting sensors on the tracked object measured position relative to the moving platform such that attempting to fuse this data produced inconsistent position information when the moving platform accelerated or turned. Id. at 1345. The inertial sensors disclosed in the ‘159 patent at issue (U.S. Patent No. 6,474,159) do not use the conventional approach of measuring inertial changes with respect to the earth. Thales, 850 F.3d at 1345. Instead, the platform inertial sensors directly measure the gravitational field in the platform frame, and the object inertial sensors then calculate position information relative to the frame of the moving platform. Id. In reaching its eligibility determination, the Federal Circuit noted that “[t]he ‘159 patent claims provide a method that eliminates many ‘complications’ inherent in previous solutions for determining position and orientation of an object on a moving platform” through the “unconventional utilization of inertial sensors as specified by the ‘159 patent”; that this combination of sensor placement and calculation based on a different reference frame mitigates errors by eliminating inertial calculations relative to the earth; and that the system is also beneficially self-contained in that it requires no external information about the orientation or position of the Appeal 2021-002384 Application 14/891,540 13 platform. Thales, 850 F.3d at 1348. The court, thus, concluded that rather than being directed to the abstract idea of using “mathematical equations for determining the relative position of a moving object to a moving reference frame,” the claims are directed to systems and methods that use an unconventional arrangement of sensors to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame. Id. at 1348–49. No comparable situation is presented here. And, to the extent Appellant contends that the claimed invention is directed to improvements in computer capabilities (Appeal Br. 8–9), there is no persuasive evidence of record to substantiate such a contention. Monitoring the progress of the bone healing of a patient, as called for in claim 7, to detect deviations from a prescription and other patient information that require revising the prescription, and communicating the revised prescription to the patient device, may well improve a treatment process, i.e., to the extent it facilitates the discovery of mistaken patient adjustments to the bone alignment device and, thus, eliminates the complications that can arise from relying on remote patients to accurately adjust a bone alignment device. But, we are not persuaded that it achieves an improved technological result, as in Thales, or that it otherwise involves an improvement in computer capabilities. Appellant asserts that “the claims at issue are not directed to managing behavior of humans but instead to solving problems associated with the technological devices in the system, namely the bone alignment device” (Reply Br. 10). Yet, it could not be clearer from the Specification (including the claim language) that claim 7 is not concerned with solving Appeal 2021-002384 Application 14/891,540 14 “problems” related to the functionality of the bone alignment device itself. Instead, and contrary to Appellant’s assertion, the claim is concerned with solving problems related to mistaken adjustments to the bone alignment device made by a patient, i.e., managing human behavior. Finally, Appellant misapprehends the controlling precedent to the extent Appellant maintains that claim 7 is not directed to an abstract idea, and is patent eligible, because it allegedly is novel and/or non-obvious in view of the prior art (Appeal Br. 8–9 (asserting that “claim 7 recites novel and unique method steps for generating a prescription for a bone healing mechanism,” and pointing to, what Appellant characterizes as, “the examiner’s inability to find support for 35 U.S.C. 102 and 103 rejections of the current claims”)). “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.”). We conclude, for the reasons outlined above, that claim 7 recites a method of organizing human activity, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea, i.e., “a patient device . . . being selected from one of a smartphone, a tablet computer, and a handheld cellular device” and “a bone alignment device,” are no more than generic components used as tools to perform the recited Appeal 2021-002384 Application 14/891,540 15 abstract idea (see, e.g., Spec. ¶ 20 (describing that “a bone alignment device may be any device capable of coupling to two or more bones or pieces of bone and moving or aligning the bones or pieces of bone relative to one another”), ¶ 21 (describing that “a patient device may be a smartphone, a tablet computer, or any other type of electronic device capable of providing one or both of input and output of information”)). As such, they do not integrate the 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 7 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 7 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 7 includes additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. Appeal 2021-002384 Application 14/891,540 16 Appellant’s argument, as best understood, is that the elements of claim 7, when considered as a whole, amount to significantly more than an abstract idea, and that the Examiner erred by failing to account for all the limitations in claim 7 and in dependent claims 10–15, 17, and 19–22 (Appeal Br. 10–18). Appellant’s argument is not persuasive at least because the relevant inquiry is not whether the claimed invention as a whole supplies an inventive concept. See, e.g., BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[T]he relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine.”). Instead, the question under step two of the Mayo/Alice framework (i.e., step 2B) is whether the claim includes additional elements, i.e., elements other than the abstract idea itself, that “‘transform the nature of the claim’ into a patent- eligible application.” Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). See also Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (citation omitted) (emphasis added)). The only additional elements recited in claim 7, beyond the abstract idea, are “a patient device . . . being selected from one of a smartphone, a tablet computer, and a handheld cellular device” and “a bone alignment device,” i.e., generic computer components (see, e.g., Spec. ¶¶ 20, 21). Appellant cannot reasonably maintain that these components are not well- understood, routine, or conventional, where, as here, there is nothing in the Appeal 2021-002384 Application 14/891,540 17 Specification to indicate that the operations recited in claim 7 require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving, processing, and transmitting information. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (internal citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well- understood, routine and conventional database structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 7 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 7, and claims 10–15, 17, and 19–22, which fall with claim 7.4 4 Appellant argues for the first time in its Reply Brief that “the Examiner’s treatment of all dependent claims as a single group fails to raise a prima facie rejection in that the Examiner has not examined each dependent claim as a whole” (Reply Br. 14–15). That argument is untimely, and is waived here in the absence of any showing of good cause why the argument could not have been timely presented in Appellant’s Appeal Brief. See In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first Appeal 2021-002384 Application 14/891,540 18 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7, 10–15, 17, 19–22 101 Eligibility 7, 10–15, 17, 19–22 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED raised in the brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the Principal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). However, even if the argument were not waived, it is not persuasive of Examiner error. There is no dispute that examiners are to evaluate the patent eligibility of each claim individually. But, consideration of each claim individually does not require a separate written analysis for each individual claim. Moreover, we agree with the Examiner that the dependent claims are directed to the same abstract idea as the independent claims, albeit at differing levels of specificity (Final Act. 8–9). Cf. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that when all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.”). Copy with citationCopy as parenthetical citation