Sumathi Paturu

Patent Trials and Appeals Board

Aug 31, 2020

2018008746 (P.T.A.B. Aug. 31, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/461,603 06/13/2003 Sumathi Paturu 6137
7590 08/31/2020
DR. SUMATHI PATURU, B.SC, MBBS, MD
401, 19TH STREET SOUTH, APT 308
BIRMINGHAM, AL 35233
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
08/31/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUMATHI PATURU
____________

Appeal 2018-008746
Application 10/461,6031
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
JAMES A. WORTH, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant2 seeks our review under 35 U.S.C. § 134 of the Examiner’s
Final Rejection of claims 51–56. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We reverse and enter a new ground of rejection.

1 Appellant identifies inventor Dr. Sumathi Paturu, B.SC, MBBS, MD, as
the real party in interest. Appeal Br. 5.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a).
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THE INVENTION
Appellant states that the Specification relates to “scheduling, filing
and tracking system for Papanicolaou (PAP) screening.” Spec. 1:6.
Claim 51, reproduced below, is representative of the subject matter on
appeal.
51. An invention comprising methods directed to a ‘tracking
System’ for uterine cervical cancer screening, involving
predominantly the Papanicolaou (PAP) Screening, said
‘tracking system’ primarily intended for a ‘periodic follow-up
recall’ of the ‘due-to-be screened’ average risk female
population of the ambulatory care clinics, said methods carried
out by means of a manually operable paper filing, subject to a
‘built-in’ tracking system of ‘unlimited time-line’, ‘calendar-
precision’, and of a ‘cyclical perpetual’ course, encompassing
the following means and or methods / function -
1. the filing is devised setting forth three sections: (a) the
‘Patient Index’ section comprising A-Z alphabetical divisions,
for indexing all the patients upon logging into the file; (b) the
‘PAP Screening Information’ section - wherein all the patients’
cancer screening records are filed in its 12 months divisions,
January-December, marked by similar ‘month tabs’; (c) the
‘Abnormal Reports’ section - devised for verbatim recordation
of abnormal cancer screening reports and the interventions,
needed of diligent patient surveillance,
2. a patient’s cancer screening data needed of said ‘periodic
follow-up recall’ is documented in a devised Papanicolaou
Screening Information Table’, the table in entirety conforming
to said patient’s cancer screening record in the PAP Screening
Information section, wherein it is filed into any of the twelve
months divisions, marked by month tabs, with years unmarked,
said month divisions confining to page numbers in the range of
1–31, in conformity with the dates of the said calendar months,
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3. the file’s scheduling, screening, and tracking of cancer
screenings are implemented by means and or methods /
functions encompassing the following -
(a) devising the file to be structured as a base substrate thereof,
incorporating the inventor-devised ‘Papanicolaou Screening
Information Table’, ‘Patient-Index’ table and the ‘Abnormal
Reports’ table, improvised in a ‘File Compilation’ section,
(b) the age-compatible female patients are logged into the file,
with or without the aid of the clinic’s cancer screening
registry, the logged-in patients’ names thereafter stricken-off
from the clinic’s comprehensive patient-list, precluding
duplication of a patient’s record in the filing.
(c) the file’s scheduling, screening and tracking the cancer
screening of the patients are implemented upon logging into
the file, subject to the devised processes / methods, of which
at least some are improvised about the time of the initial
filing, and at least some are continued through its
maintenance,
(d) said page numbers 1–31, in each of the 12 month divisions,
January-December of the ‘PAP Screening Information’
section are oriented to the days of a current calendar month,
(e) the page numbers 1–31 in the right upper corner of a
patient’s cancer screening record are marked to be
changeable / erasable,
(f) the 1–31 page numbers are subject to be the patients’ most
recent cancer screening dates, or the future ‘due-to-be
scheduled’ / due-to-be-screened’ dates, wherein the page
numbers are also marked by screened / due-to-be screened
years,
(g) the page number of a patient’s record is subject to changing
upon the patient’s appointment-date changing, while the
patient’s record moving to such date and month
corresponding part of the filing,
(h) said month tabs being un-marked by years, the ‘file-
operation’ is subject to a ‘cyclical perpetual course’, the
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patients’ records of the month divisions revisited every year,
for an ‘unlimited’ time-line ‘tracking’,
(i) with said un-limited time-line tracking, the 1–31 month
pages of January-December, are oriented to any current year
of file-operation,
(j) said patient-record in any month division though annually
encountered, is acted about the year the screening is due,
(k) within the ‘Papanicolaou Screening Information table’: ‘the
date of scheduling’, the ‘date Pap smear done’, and the
‘results notified’ dates - are mentioned in full, referring to
the event’s calendar time,
(l) the devised processes / methods direct the sole focus on the
current ‘month’ section of the filing, and within the said
month, on the current ‘date and year’ marked as the page
numbers, wherein the said month’s records, like calendar
pages, are ‘automated’ to be encountered about the daily-
operation of the file, as ‘self-reminders’, upon the due-dates
of scheduling / screening’ marked as page numbers
becoming current,
(m) said methods of the filing imposing that on any current
month, the patients’ records marked with the current date-
corresponding page numbers being the sole focus -
facilitating a ‘built-in’ day-to-day tracking of patient
appointments, white the due-years, near o remote, also
marked as the page numbers, effectuating a ‘built in’
‘longitudinal’ tracking that the file also implements itself,
(n) the methods impose similar ‘tracking’ for the routine
periodic follow-up of preventive screening, or for a variable
follow-up of acute / chronic disease care including post-
cancer surveillance, that in the latter, the testing interval
though uncharacteristically spaced, is yet tracked in the
usual manner, the future appointment date and year marked
as the page number imposing similar means of ‘tracking’,
(o) said ‘tracking’ method of the filing is ‘built-in’ by a devised
‘programmed’ scheme of calendar precision and regularity,
subject to the patients’ records marked with their ‘due
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appointment dates/ years’ as the page numbers, moving to
the month sections similar as their appointments, with an
‘unlimited’ ‘cyclical tracking’ ongoing to the time the ‘due
scheduling / screening’ becoming current, as marked by the
file’s day-to-day encountered page numbers,
(p) said ‘programming’ of the filing is subject to the devised
elements of the filing and additionally the devised methods
and the sequence of certain method-steps of the ‘tracking
system’ set forth as: (1) the erasable page numbers of the
January-December month divisions confining to 1–31; (2)
the page number of a patient’s record in a month division
being similar as the said patient’s most recently screened
date, or presently scheduled date of cancer screening; (3)
said page number accordingly changing upon a patient’s
subsequent scheduling; (4) the ‘goal-directed’ movement
devised for a patient’s record to a different date of a month
division similar as the ‘scheduled date’, effectuating said
patient’s record to be ‘encountered’ upon such date
becoming current; (5) the ‘time-corresponding’ dated pages
of a month imposing as the ‘sole focus’ on a current date
and year, facilitating a patient’s record to be ‘encountered’
upon the patient’s scheduled date becoming current; (6) such
‘encountered’ patients’ records on the due-to-be scheduled
due-to-be screened dates effectuating a near or remote
‘tracking’; (7) the annual revisiting of every month division
imposing a ‘perpetual’ and ‘cyclical’ course of the filing
about the calendar time-line,
(q) the filing encompassing as the means of a base substrate for
said function of ‘tracking’, is subject to said devised
processes / methods, to be ‘enabling’ such means.

THE REJECTION
The following rejection is before us for review:
Claims 51–56 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as being indefinite.
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ANALYSIS
35 U.S.C. § 112(b) REJECTION
We will not sustain the rejection under this section. In sum, the
Examiner finds the following points of indefiniteness concerning
independent claim 51:
i.) ‘“An invention comprising methods directed to’, but said phrase
renders the claim indefinite because it is unclear whether the limitation( s)
following the phrase are part of the claimed invention. It is not clear from
the phrase what the invention is.” (Final Act. 3–4).
ii.) It is thus unclear whether the measures are a part of the means, an
article of manufacture, or whether the measures are the steps of a method.
Therefore claim 51, and its dependents claims 52–58, are rejected under
35 U.S.C. § 112 second paragraph as it is unclear whether these claims
are directed to a system ( an article of manufacture) or and method (a
process). Final Act. 4.

iii.) [The recitation of] “model”/“methods”, “base substrates”, and a
“‘tracking system’” where “said methods carried out by means of
manually operable paper filings” renders the claims as to which statutory
class the claimed embodiment fall under, and hence, claim 51 is “‘[a]
single claim which claims both an apparatus and the method steps of
using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35
U.S.C. 112, second paragraph.” Id. at 4–5.

iv.) Claim 51 recites a “built in” tracking system, but it is not understood
how the claim works to schedule, screen, and track targeted patients.
What does “built in” mean? Here, an effect is being claimed, which is
neither a means nor a process step. Id. at 5.

v.) Claim 51 recites a “means of manually operable paper filings” and
thereafter recites logging into the file and then an “erasable page number
further changing” marks on patients’ pages of record. How does human
action constitute a means? Id.

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Concerning items i, ii, iii, and v above, Appellant asserts that the use
of “means” in claim 51 is not intended to invoke § 112 paragraph 6th
paragraph3 construction. Specifically, Appellant states: “A mechanical
function does not necessarily involve only the typical ‘machinery’. Any
function obligated to be implemented by ‘inanimate’, and not possibly
accomplished by the ‘animate’ human, is mechanically implemented.”
Reply Br. 31. Thus, we understand Appellant’s argument to be that the use
of the term “means” in claim 51 is describing a way of doing the recited
function, akin to prepositional phrase using the words “by means of ... ”,
rather than invoking 112 6th phraseology.
In addition, the language following the recitation of the term “means”
is so extensive as not to to invoke 35 U.S.C. § 112, sixth paragraph
construction. “[W]here a claim recites a function, but then goes on to
elaborate sufficient structure, material, or acts within the claim itself to
perform entirely the recited function, the claim is not in means-plus-function
format” even if the claim uses the term “means.” Sage Prods. v. Devon
Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997).
Concerning item iii above, Appellant states: “The term ‘built-in’
denotes something that is inherently there as the original ‘constitution’ or
‘essential character’ of the FILE, OR certain physical ‘constituents’ (such as
any of the 1–31 page numbers) incorporated by method steps for revocable
‘conformational change’ until such time the intended time-line ‘tracking’ is
achieved.” Reply Br. 35.
We agree with Appellant that Appellant is entitled to be his or her
own lexicographer of patent claim terms, in ex parte prosecution. In re

3 35 U.S.C. § 112(f) or Pre-AIA 35 U.S.C. § 112, Sixth Paragraph.
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Corr, 347 F.2d 578, 580 (CCPA 1965). Here we find Appellant uses a term
that is reasonably understood as an inherent feature of the claims.
Therefore, we will not sustain the rejection of independent claim 51 or
its dependents under 35 U.S.C. § 112(b).

35 U.S.C. § 101 REJECTION4
We enter a new ground of rejection under 35 U.S.C. § 101 for claims
51–56 pursuant to our authority under 37 C.F.R. § 41.50(b)
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. 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 id. 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)

4 Although the Examiner’s Answer does not list 35 U.S.C. § 101 as being an
appealed rejection, references made by both the Examiner and Appellant to
Bilski and Alice (Answer 3; Reply Br. 29, 30–32), indicate the issue of
patent eligibility was referenced by both parties. We enter a new ground of
rejection under 35 U.S.C. § 101 against the newly presented claims 51–56 to
formally address the patent elegibility issue.
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(“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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).5 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, 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

6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states: “This is a PAP smear scheduling, filing, and
tracking system written as an instructional manual, with the inclusion of a
‘file compilation’ section at the end of the text, that has tabs, file dividers,
and tables, to help construct the file, which otherwise would be difficult for a
busy practitioner, to initiate the filing.” Spec. 1:12–15.
Claim 51 recites in pertinent part:
a patient’s cancer screening data needed of said ‘periodic
follow-up recall’ is documented in a devised Papanicolaou
Screening Information Table’, the table in entirety conforming
to said patient’s cancer screening record in the PAP Screening
Information section, wherein it is filed into any of the twelve
months divisions, marked by month tabs, with years unmarked,
said month divisions confining to page numbers in the range of
1–31, in conformity with the dates of the said calendar
months,…
Accordingly, we find that claim 51 recites a “tracking” method for the
routine periodic follow-up of preventive screening, or for a variable follow-
up of acute/chronic disease care by marking the future appointment date and
year marked as the page number. For example, claim 51 recites,
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[(n)] ‘tracking’ for the routine periodic follow-up of preventive
screening, or for a variable follow-up of acute / chronic disease
care including post-cancer surveillance, that in the latter, the
testing interval though uncharacteristically spaced, is yet
tracked in the usual manner, the future appointment date and
year marked as the page number imposing similar means of
‘tracking’,
(o) said ‘tracking’ method of the filing is ‘built-in’ by a devised
‘programmed’ scheme of calendar precision and regularity,
subject to the patients’ records marked with their ‘due
appointment dates/ years’ as the page numbers, moving to the
month sections similar as their appointments, with an
‘unlimited’ ‘cyclical tracking’ ongoing to the time the ‘due
scheduling / screening’ becoming current, as marked by the
file’s day-to-day encountered page numbers.
These are concepts performed in the human mind as mental processes,
because the steps of marking, scheduling, tracking, storing, and analyzing
data mimic human thought processes of observation, evaluation, judgment,
and opinion, perhaps with paper and pencil, where the data interpretation is
perceptible only in the human mind. See Guidance, 84 Fed. Reg. at 52
(“Mental processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” (footnote omitted)); In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016).
Turning to the second prong of the “directed to” test, claim 51 recites
no computer devices at all. At best, claim 51 only generically requires
“patients are logged into the file,” and “the logged-in patients.” The
“logged-in” components of the claim are described in the Specification
concerning only in the context of a paper log file. See Spec. 10:22–25 (“File
dividers and the month tabs can be done as shown. As mentioned already
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there are some printed file dividers and tabs at the end of this text, which can
be very helpful. All the patients’ records should be logged into this file.”).
Thus, we find that the term “log-in” refers to the use of a paper log or
journal used in the assigning of patients a next visit. We find no indication
in the Specification, nor does Appellant direct us to any indication, that the
operations recited in independent claim 51 invoke any assertedly inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Further, the
method does not transform matter. MPEP § 2106.05(c).
Thus, we find that the claims recite the judicial exception of a mental
process that is not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to a scheduling based filing scheme, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“And that the claims do not preempt all price optimization
or may be limited to price optimization in the e-commerce setting do not
make them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claims
in practice amount to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step, we find the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
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exception because there are no computer components that perform functions,
let alone performing even generic computer functions. Thus, the functions
are well-understood, routine, and conventional activities previously known
to the industry. See Alice, 573 U.S. at 225. .
The claims do not, for example, purport to improve the functioning of
the computer itself because there is no computer device even recited. In
addition, as we stated above, the claims do not affect an improvement in any
other technology or technical field. The Specification spells out different
generic equipment (PAP SCREENING INFORMATION TABLES, pp. 7,
9) and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
information access under different scenarios. Thus, the claims at issue
amount to nothing significantly more than instructions to apply the abstract
idea using paper and pencil. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225–226.
Considered as an ordered combination, the components of Appellant’s
claims add nothing that is not already present when the steps are considered
separately. The sequence of data reception-analysis (devising, logging,
scheduling, paginating, record moving, and tracking) is conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction). The ordering of the steps is, therefore, ordinary and
conventional.
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Claims 51–56 depend from independent claim 51 and are directed to
the same abstract idea as claim 1. See Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat. Ass’n, 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”). These
dependent claims recite additional features of mental steps, e.g., “horizontal
rows [] formatted for inherently flexible spaced appointments of either the
routine preventive screenings, or of the variable screening….” (Claim 53).
The additional claim elements recited in these claims are insufficient, in our
view, to confer patent eligibility.

DECISION
The Examiner’s rejection of claims 51–56 under 35 U.S.C. § 112 (b)
is reversed.
We enter a new ground of rejection of claims 51–56 under 35 U.S.C.
§ 101.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellants, 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:
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(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 prosecution will be remanded to
the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
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).

In summary:

REVERSED; 37 C.F.R. § 41.50(b)

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed New
Ground
51–56 112 Indefiniteness 51–56
51–56 101 Eligibility 51–56
Overall
Outcome
51–56 51–56