Advance Health

Patent Trials and Appeals Board

Jun 1, 2020

14144453 - (D) (P.T.A.B. Jun. 1, 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.
14/144,453 12/30/2013 Brian Wise 1166-003 1236
88360 7590 06/01/2020
Richards Patent Law P.C.
20 N Clark Street
Suite 3300
Chicago, IL 60602
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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@richardspatentlaw.com
eofficeaction@appcoll.com
robin@richardspatentlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN WISE
____________

Appeal 2019-000578
Application 14/144,453
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MATTHEW S. MEYERS, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 10–30. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a medical screening system. (Spec. ¶ 1, Title).
Claim 10 is representative of the subject matter on appeal.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Advance
Health. (Appeal Br. 3.)
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10. A method for performing an in-home medical
assessment of a person, the method comprising the steps of:
providing a medical screening intake device to a
technician, the mobile device in communication with a server;
receiving, by the medical screening intake device,
objective medical data, subjective medical data, and medical
test results for the person as input through the user interface by
the technician, wherein the server stores the objective medical
data, subjective medical data, and medical test results for two or
more people;
communicating, by the medical screening intake device,
the objective medical data, subjective medical data, and medical
test results to the server,
assigning, by the server, an objective score to the person
using the objective medical data, subjective medical data, and
medical test results, wherein the objective score identifies the
individual person's risk of future medical claims,
assigning, by the server, a relative risk score for the
person using the objective medical data, subjective medical
data, and medical test results, wherein the relative risk score
quantifies the relative risk of future medical claims for each
person for whom objective medical data, subjective medical
data, and medical test result is stored as compared to other
people for whom objective medical data, subjective medical
data, and medical test results is stored,
automatically stratifying, by the server, the person into a
risk class of two or more risk classes, wherein the risk classes
are distinguished by the relative risk of future medical claims
for people in each risk class,
using the risk class, determining, by the server, whether
to offer medical coverage to the person, and, when medical
coverage is to be offered, determining a price tier;
prompting, by the medical screening intake device, the
technician to enter responses to a follow-up medical screening,
receiving, by the medical screening intake device, the
responses to the follow-up medical screening,
automatically processing, by the server, the follow-up
medical screening to generate one or more plans of care
specifically adapted for the person based on the objective
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medical data, subjective medical data, medical test results, and
the responses to the follow-up medical screening, and
communicating, by the medical screening intake device,
the one or more plans of care to the person as a report embodied
in a structured data output.

THE REJECTIONS
Claims 10–30 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter because the claimed
invention is directed to a judicial exception.
Claims 10–30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112
(pre-AIA), second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor or a joint
inventor, or for pre-AIA the applicant regards as the invention.
Claims 10, 12–22, and 26–30 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Klingborg et al. (US 2012/0105443 A1;
published May 3, 2012) in view of Nadeau et al. (US 2010/0004947 A1;
published Jan. 7, 2010).
Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Klingborg in view of Nadeau and further in view of Kim
et al. (US 2004/0083123 A1; published Apr. 29, 2004).
Claims 23–25 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Klingborg et al. in view of Nadeau and further in view of
Malik (US 2012/0270199 A1; published Oct. 25, 2012).
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ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 10–30 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the
elements of each claim both individually and “as
an ordered combination” to determine whether the
additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The
Court] described step two of this analysis as 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.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. 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.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
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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.
In so doing 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 judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (Guidance”).
In the briefing, Appellant refers to prior USPTO guidance regarding
§ 101. However, the earlier guidance including: (1) 2014 Interim Guidance
on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618 (December 16,
2014); (2) July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg.
45,429 (July 30, 2015) (“the 2015 Update”); (3) May 2016 Subject Matter
Eligibility Update, 81 Fed. Reg. 27,381 (May 6, 2016); and (4)
Memorandum on Subject Matter Eligibility Decisions dated Nov. 2, 2016
have been superseded by the 2019 Revised Guidance. See 2019 Revised
Guidance, 84 Fed. Reg. at 52. As such, our analysis will not address the
sufficiency of the Examiner's rejection against the cited prior guidance.
Rather, our analysis will comport with the 2019 Revised Guidance as
discussed below.
The Examiner determines that the claims are directed to a
fundamental economic practice and collecting information (receiving and
objective medical data, subjective medical data and medical test results for a
person), analyze it and displays results. (Non-Final Act. 4). The Examiner
finds that the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because the
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additional elements or combination of elements in the claims, other than the
abstract idea per se, amount to no more than a recitation of a generic
computer structure and functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry. (Non-
Final Act. 5).
The Specification discloses that the present subject matter relates
generally to a medical screening system embodied in a mobile application.
The system/method of the invention collects objective and subjective
information for providing a quantified evaluation of the health status of
customers of health insurance plans and accountable care organization and
uses the data collected to automatically provide one and more recommended
plans of care. (Spec. ¶ 1). The Specification explains that medical screening
questionnaires are typically provided and completed in paper form, requiring
the medical company representative to transport paperwork to the potential
customer’s house, where both the representative and the potential customer
complete the paperwork together. This paperwork, according to the
Specification, can be burdensome and may be difficult to keep organized
and the paper data presents a risk of loss and violation of federal HIPAA
laws. (Spec. ¶ 3). In addition, because the data is collected manually, the
data is not compiled and analyzed until well after the customer’s portion of
the medical screening is complete so that it is difficult to provide helpful and
relevant information to the potential customer at the time of the evaluation.
(Spec. ¶ 4). To solve these problems, the system of the invention utilizes
mobile devices to securely communicate with an associated database. The
mobile device collects data during a medical screening and uploads the data
to the database. (Spec. ¶ 8). Because the data is collected at the customer’s
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home, additional subject matter may be collected such as subjective
information about the living conditions and/or surroundings of the customer.
(Spec. ¶ 10). The data collected is analyzed by the computer to come up
with a recommended plan of care. A medical insurance company can use a
score to assess the risk of future medical claims from any customer, to
provide a year-over-year comparative analysis of objective risk scores.
(Spec. ¶¶ 12–13).
The claims recite assessing a person’s risk of future medical insurance
claims and thus relates to the fundamental economic practice related to
insurance. A fundamental economic practice is a certain method of
organizing human activities, which is a judicial exception. 2019 Revised
Guidance, 84 Fed. Reg. 52. We thus agree with the Examiner’s findings that
the claims are directed to the judicial exception of a fundamental economic
practice.
Also, we agree that the steps of claim 10 (receiving, communicating,
stratifying etc.) constitute “analyzing information by steps people go through
in their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.” Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed
to certain arrangements involving contractual relations are directed to
abstract ideas). Thus, we find that the claims recite the judicial exception of
a method of organizing human activity and in the alternative a mental
process.
Turning to the second prong of the “directed to test,” claim 1 requires
an “input/mobile device” and a “server.” The recitations of an input/mobile
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device and a server do not impose “a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” 2019 Revised Guidance, 84 Fed. Reg. at
18. We find no indication in the Specification, nor does Appellant direct us
to any indication, that the operations recited in independent claim 10 invoke
any inventive programming, require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitation does not affect an improvement in the
functioning of the input/mobile device or other technology, does not recite a
particular machine or manufacture that is integral to the claim, and does not
transform or reduce a particular article to a different state or thing. Id.
Thus, claim 10 is directed to judicial exceptions that are not integrated into a
practical application and thus is directed to “abstract ideas.”
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Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The input/mobile device is disclosed as a mobile electronic device i.e.,
a computer. (Spec. ¶ 43). The introduction of a computer into the claims
does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer”
simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly 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.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
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Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
intake/mobile device (computer) at each step of the process is purely
conventional. Using a computer to retrieve, select, and apply decision
criteria to data and modify the data as a result amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
activities previously known to the trading industry. See Elec. Power Grp.,
830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, “even if a process of collecting and analyzing information is ‘limited
to particular content’ or a particular ‘source,’ that limitation does not make
the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic,
LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and 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,
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allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the intake/mobile device. 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 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. (See, e.g., Spec. ¶ 43). Thus, the claims at issue amount to
nothing significantly more than instructions to apply the abstract idea of
information access using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 6–13; Reply Br. 2–
7) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to provide reviewable analysis of same.
We do not agree with Appellant that the claims are patent eligible
because, like the claims in BASCOM Global Internet Servs. v. AT&T
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Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the instant claims do not
preempt all ways of tracking medical information and assigning risk.
(Appeal Br. 8). While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193
(2015) (“[T]hat 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.”). And, “[w]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they
are in this case, preemption concerns are fully addressed and made moot.”
Ariosa, 788 F.3d at 1379.
We do not agree that the claimed interrelationship between relative
risk, price tiers of medical coverage, and plans of care are limitations that
create a unique environment that are necessarily significantly more than any
abstract idea. (Appeal Br. 9). The determination of whether a claim recites
significantly more is made in the second step of the Alice analysis and
addresses whether the claim elements in addition to the abstract idea ensure
that the claim in practice amounts to significantly more than the abstract idea
itself. The claim element in addition to the abstract idea in claim 10 is the
input/mobile device. As we discussed above, this device is disclosed as a
generic device. In fact, the Specification indicates that this device may be
any electronic device in communication with the server and may include a
portable electronic device such as a tablet, smart phone or any other mobile
communication device. The user interface is also described as generic and
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includes a touch screen, a keyboard, a microphone, camera or any other
device used for data collection. (See, e.g., Spec. ¶ 43). We also agree with
the Examiner that the functions performed are generic computer functions
that serve to link the abstract ideas to a particular technological environment
and a functions that are well-understood, routine and conventional. (Final
Act. 5). Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea of information access using some
unspecified, generic computer.
We do not agree that the steps of collecting and processing medical
data, assigning an objective score, assigning a relative risk score, stratifying
the person into a risk class, determining a price tier and generating a plan
amount to significantly more than the abstract idea of the fundamental
economic practice of assessing a person risk of future medical insurance.
The above-referenced steps of claim 10 are part of the abstract idea itself.
While we agree that performing the above-referenced steps on a computer
increases the efficiency of processing medical coverage plans for insurance
providers as well as the efficiency of providing plans of care to patients, this
increase in efficiency is generic, due to the fact that the claims are performed
on a computer rather than manually. “[R]elying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359). In short, Appellant
has not demonstrated how these cited disclosures reflect an improvement to
computer capabilities or functionality.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 10. We will also sustain the rejection as it is directed to the remaining
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claims because Appellant has not argued the separate eligibility of those
claims.
REJECTION UNDER 35 U.S.C. §112, SECOND PARAGRAPH
Appellant has not argued this rejection. (Appeal Br. 14). Therefore,
we summarily affirm this rejection.

REJECTION UNDER 35 U.S.C. §103(A)
We will not sustain this rejection because we agree with Appellant
that the prior art does not disclose “assigning, by the server, an objective
score using the objective medical data, subjective medical data.”
The Specification describes the subjective medical data as information
that may include what the representative observes regarding the customer
such as the customer’s house and surroundings. (Spec. ¶ 47).
The Examiner relies on paragraphs 15–25 of Nadeau for teaching this
subject matter. (Non-Final Act. 10–13). However, Nadeau discloses
assigning a score based on objective evidence not subjective evidence.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 10 and claims 12–22 and 26–30 dependent thereon.
We will also not sustain the remaining rejections under 35 U.S.C.
§ 103(a) for the same reason.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 10–30 under
35 U.S.C. § 101.
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We conclude the Examiner did err in rejecting claims 10–30 under 35
U.S.C. §103(a).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
10–30 101 Eligibility 10–30
10–30 112(b) Indefiniteness 10–30
10, 12–22,
26–30
103 Klingborg, Nadeau 10, 12–22,
26–30
11 103 Klingborg,
Nadeau, Kim
11
23–25 103 Klingborg,
Nadeau, Malik
23–25
Overall
Outcome
10–30

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