Alan J. Gilbert et al.

Patent Trials and Appeals Board

Sep 20, 2019

14498833 - (D) (P.T.A.B. Sep. 20, 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.
14/498,833 09/26/2014 Alan J. Gilbert 050704/512100 8816
99434 7590 09/20/2019
McKesson Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza
101 South Tryon St., Suite 4000
Charlotte, NC 28280-4000
EXAMINER
GILLIGAN, CHRISTOPHER L
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/20/2019 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALAN J. GILBERT, MATTHEW A. SCANTLAND,
DEREK A. BROWN, RYAN E. SANDERS, MICHELLE S. BROWN,
and BOYAN B. ALEXANDROV
____________

Appeal 2018–005886
Application 14/498,8331
Technology Center 3600
____________

Before ERIC B. CHEN, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL2
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1–16 and 18–20. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is CoverMyMeds LLC.
Br. 4.
2 We reference, herein, the Final Office Action mailed March 2, 2017
(“Final Act.”); the Appeal Brief filed October 30, 2017 (“Br.”); the
Examiner’s Answer mailed January 29, 2018 (“Ans.”); and the Specification
filed September 26, 2014 (“Spec.”).
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STATEMENT OF THE CASE
Appellants’ Invention
The present invention “provide[s] information security and access
controls that allow authentication of prescriber accounts and secure
communication of requests for prior authorizations for a prescription
medications.” Spec. ¶ 2.
According to Appellants’ description of the prior art, “a request for
prior authorization (PA) to fulfill a prescription for a drug under the
coverage of a health insurance plan can be submitted to the health insurance
plan.” Id. ¶ 5. “The request for PA may be a form (paper or electronic) with
a number of information fields (e.g., patient and physician information,
insurance plan information, drug information, etc.) to be completed by the
pharmacy and/or prescribing physician.” Id. A “pharmacy fulfilling the
drug prescription can enter the information pertaining to the patient, drug
and health insurance plan into an appropriate form” and provide the
“partially-completed PA request form . . . to the [prescribing] physician
. . . to be completed [and] submitted to the health insurance provider.” Id.
The invention automates the above process in several respects. First,
the invention “make[s] the PA request form accessible from within a user
account associated with the prescribing physician,” such that the “physician
may access the PA platform via a network [and] graphical user interface
(e.g., a web browser).” Id. ¶ 23. Second, to avoid providing the PA request
form and its confidential patient information to an unauthorized person (e.g.,
someone that “set up an account . . . using publicly-available information
about the physician”), the invention “verif[ies] the identity of the owner of a
user account.” Id. ¶¶ 24, 25. Third, “[i]f . . . there are multiple accounts
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associated with the prescriber,” the invention provides the PA request form
to all verified accounts that are not identified as inapplicable. Id. ¶ 74.
Claim 1 is illustrative of the claimed invention and reproduced, below,
with emphasis on additional elements (explained infra).
1. A system providing access controls for authenticating an
account of a prescriber of prescription medication on a prior
authorization platform, the system comprising:
non-transitory computer storage configured to store an
authoritative registry of contact information for prescribers of
prescription medications, the contact information comprising a
contact channel by which to communicate a message to the
associated prescriber;
an access control system at a first network location in
communication with the non-transitory computer storage, the
access control system comprising computer hardware having a
plurality of modules stored in a memory, the plurality of
modules comprising:
an account management module configured to
establish an account for a prescriber of prescription
medication on a prior authorization platform, the account
associated with a prescriber identification token associated
with the prescriber, the account management module
further configured to require entry of prescriber login
credentials before access to the account is granted;
an access control module configured to:
obtain from the authoritative registry of
prescriber contact information, based at least in part
on the prescriber identification token, contact
information for the prescriber;
send to a device associated with the
prescriber at a second network location, using the
contact channel associated with the prescriber’s
contact information obtained from the authoritative
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registry, an authentication message comprising a
first electronic authentication token;
receive, from the device associated with the
prescriber at the second network location, a
communication containing a second electronic
authentication token;
determine whether the second electronic
authentication token received from the prescriber
matches the first electronic authentication token
sent to the prescriber; and
authenticate the account of the prescriber on
the prior authentication platform in response to the
determination that the electronic second
authentication token matches the electronic first
authentication token; and
a prior authorization module configured to make
available to the prescriber’s authenticated account a
request for prior authorization of a prescription medication
prescribed by the prescriber, wherein the prescriber is
associated with two or more authenticated accounts on the
prior authorization platform, and the prior authorization
module is further configured to:
identify the two or more authenticated
accounts based at least in part on prescriber
information included in the request for prior
authorization; and
make the request for prior authorization
available to each of the two or more identified
authenticated accounts of the prescriber.
Br. 33–34 (Claims Appendix).
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Rejection
Claims 1–16 and 18–20 stand rejected under 35 U.S.C. § 101 because
the claimed subject matter is judicially-excepted from patent eligibility
under 35 U.S.C. § 101. Final Act. 2–5.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” See 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) (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. 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 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, 69 (1972)). Concepts
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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 184 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 176, and 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. at 191 (citing Benson and Flook), and 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
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ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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.
USPTO GUIDANCE
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of 35 U.S.C. § 101. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance, 84 Fed. Reg.”). Under the Guidance, 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
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed.,
Rev. 08.2017, Jan. 2018)).
See Guidance, 84 Fed. Reg. 52, and 54–55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, we conclude the claim is directed to a judicial exception (id. at
54) and then look to whether the claim:
(3) adds a specific limitation or combination of limitations
beyond the judicial exception that are not “well-understood,
routine, conventional” activity 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.
See Guidance, 84 Fed. Reg. 56.
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CLAIMS 1–5, 7, 11–13, AND 18–20
Claim 1 is representative of claims 2–5, 7, 11–13, and 18–20.
See 37 C.F.R. § 41.37(c)(1)(iv). There is no dispute that claim 1 falls within
a category of patentable subject matter. See 35 U.S.C. § 101 (“[P]rocess,
machine, manufacture, or composition of matter.”); see also Guidance, 84
Fed. Reg. 53–54 (“Step 1”). We accordingly turn to the issues raised by the
Guidance and Appellants’ arguments.
Step 2A, Prong One3 Does the Claim Recite
Any Judicial Exceptions
Turning to the first issue set forth by the Guidance (see supra 6, bullet
“(1)”), find claim 1, as drafted, recites judicial exceptions. Specifically, we
agree with the Examiner that claim 1 recites “data transactions regarding

3 The Guidance separates the enumerated issues (1) to (4) (see supra 6) into
Steps 2A(1), 2A(2), and 2B, as follows:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application.
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018.[footnote omitted]
84 Fed. Reg. 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https://
www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [‘USPTO Berkheimer Memorandum’].”).
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prior authorization” (Ans. 4), “obtaining and comparing token information
for the purpose of validating an account” (Final Act. 3), and particularly:
storing [contact information for prescribers and] a contact
channel for communication with a prescriber, [establishing an
account for a prescriber,] associating an account with [the]
token, obtaining [the contact information based on the token],
[using the contact information to send] an authentication
message to the prescriber, receiving from the prescriber a
second token, determining whether the first and second token
match to authenticate the prescriber’s account, making a
[request for prior authorization] available to the prescriber on
the authenticated account, identifying two or more
authenticated accounts for the prescriber, and making a request
for prior authorization available to each of the authenticated
accounts for the prescriber.
Final Act. 2–3, 5–6. As drafted, above-identified claim features plainly fall
within two of the Guidance’s enumerated categories of judicial exceptions:
“[m]ental processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion)” (Guidance, 84 Fed. Reg. 52);
and “[c]ertain methods of organizing human activity—fundamental
economic principles or practices (including . . . mitigating risk) [and]
commercial . . . interactions (including[] business relations).” Id. We find
so because the claim features clearly can be, and clearly have been, mentally
performed by healthcare administration professionals. See e.g., supra 2
(description of the prior art).
Even Appellants’ Specification conveys the claim features as being
previously implemented by such professionals via pen-and-paper, mail,
telephones, faxes, etc. Spec. ¶¶ 5–7. According to the Specification, a PA
request form can be “paper or electronic . . . completed by the . . .
physician,” so long as it contains information fields for the patient,
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physician, insurance plan, and prescribed. Id. ¶ 5. This information
includes long-known identifications such as “a National Provider Identifier
(NPI), a Drug Enforcement Administration (DEA) registration number, or a
state medical license number.” Id. ¶ 7. And, a “contact channel” for passing
the invention’s forms and information “can comprise a facsimile number, an
electronic mail address, a voice telephone number, or a postal mailing
address.” Id.
The claimed tokens are also long-known instruments of commerce.
The Specification conveys a “token” as simply a verifying, numerical
identification of something. See e.g., id. ¶¶ 30 (“[P]rescriber to enter the
prescriber identification token (e.g., the prescriber’s NPI).”), 62 (Allows the
“prescriber to enter an authentication token such as a verification code.”).4
“The prescriber identification token is commonly included in a prescription
for the patient’s medication.” Id. ¶ 47. The “authentication token [can be

4 The Northern Disctrict Court of Illinois and Eastern District Court of
Texas separately held that a same patent (U.S. Patent No. 5,826,245 to
Sandberg-diment) claims an abstract idea of verifying information by
matching associated first and second tokens. See Card Verification Sols.,
LLC v. Citigroup Inc., No. 13 C 6339, 2014 WL 4922524, at *4
(N.D. Ill. Sept. 29, 2014) (“[T]he claims are drawn to the concept of
verifying transaction information, and like the risk hedging in Bilski or
verification of similar information in CyberSource, the concept of
transaction verification is ‘a fundamental economic practice long prevalent
in our system of commerce.’ See Bilski, 130 S.Ct. at 3231.”); Ectolink, LLC
v. Elavon, Inc., No. 6:15-CV-760, 2016 WL 7670060, at *3
(E.D. Tex. Sept. 7, 2016) (“Ectolink asserts that the ‘245 Patent is not
directed to an abstract idea. Rather, the ‘245 Patent claims are ‘directed to
generating first and second tokens, each of which represents some but not all
of the confidential information, verifying the confidential information at a
verifying party based on a comparison of the tokens, and then sending
verification information to the verification-seeking party.’”).
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merely] a multi-digit alphanumeric sequence[] . . . unique to the particular
prescriber authentication transaction . . . . (e.g., having 4, 6, 8, 10, 14, 20 or
more digits).” Id. ¶¶ 50, 62 (“[A]uthentication token that was sent to the
prescriber [is, ]in this example, the code ‘67A4293HI.’)”.
We also agree with the Examiner that these claim features are
analogous to the abstract ideas recognized in CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) and Dealertrack,
Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012). Ans. 4–6; see also Final
Act. 3–5. CyberSource recognizes the abstract idea of a process that “can be
performed in the human mind[,] e.g., using a pen and paper.” Guidance, 84
Fed. Reg. 52 n. 14 (quoting Cybersource, 654 F.3d at 1375, 1372).
Dealertrack recognizes the abstract idea of selectively forwarding
information, e.g., by a “clearinghouse.” Dealertrack, Inc., 674 F.3d at 1333;
see also CLEARINGHOUSE. Merriam Webster Dictionary,
https://www.merriam-webster.com/dictionary/clearinghouse (last visited
Aug. 13, 2019) (Which states that “2 : a central agency for the collection,
classification, and distribution especially of information broadly: an informal
channel for distributing information or assistance.”).
We add that, though Cybersource was decided before Alice, the
Federal Circuit still cites CyberSource (post-Alice) to instruct that
“[m]ethods which can be performed entirely in the human mind are
unpatentable.” Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d
1138, 1146–47 (Fed. Cir. 2016) (quoting CyberSource, 654 F.3d at 1373).
For the foregoing reasons, we find claim 1 recites a judicial exception
(e.g., one or more abstract ideas).
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Step 2A, Prong Two: Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
Turning to the second issue set forth by the Guidance (see supra 6,
bullet “(2)”), we agree with the Examiner that claim 1’s additional elements
(see supra 2–3) do not integrate the judicial exceptions into a practical
application. See Guidance, 84 Fed. Reg. 53 (Describing a “practical
application” as a “meaningful limit on the judicial exception, such that the
claim is more than a drafting effort designed to monopolize the judicial
exception.”). Specifically, we agree “the additional elements amount to no
more than generic computer components [including] a non-transitory
computer storage, an access control system comprising computer hardware
having a plurality of modules, [and] network-based communication to and
from a device.” Final Act. 4. We also agree “[these] technical aspects
. . . are simply used as a tool[, e.g.,] to execute the abstract authentication
process, similar to the use of computer components . . . to execute the
abstract concept in Alice.” Ans. 5; see also Final Act. 6. We further agree
“the claims fail to provide a technical solution” (id. at 8) and “merely link
the abstract idea[s] to a particular technological environment.” Id. at 4.
We add that the claimed technology constitutes a system (“access
control system”) communicating with a storage (“non-transitory computer
storage”) and comprising a computer (“hardware having a plurality of
modules stored in a memory”) configured to: (1) establish an account (“for
a prescriber”) that is executed on a platform (“prior authorization platform”),
associated with identifying data (“prescriber identification token”), and
requires a login for access (“prescriber login”); (2) obtain information
(“prescriber contact information”) from the storage (from its “registry”)
based on the identifying data; (3) send a device (“associated with the
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prescriber”), based on the information obtained from the storage, a
communication (“authentication message”) comprising a first electronic
token; (4) receive, from the device, a second electronic token; (5) determine
whether the electronic tokens match; (6) authenticate, in response to the
match, the account and similar accounts (similar identifying data and
authentication); and (7) provide a document (“a request for prior
authorization”) to all such accounts. None of the above constitutes, for
example, a particular technological solution to a problem, particular
machine, or particular transformation of an article to a different state. See
Guidance, 84 Fed. Reg. 55 (“[E]xemplary considerations . . . indicative [of]
a practical application.”). The above imparts only generic computer
components performing their generic functions (i.e., doing only what these
components ubiquitously do as a class) to merely apply the recited abstract
ideas (i.e., merely achieve the end-results of the abstract ideas). See
Guidance, 84 Fed. Reg. 55 (“apply it” bullet corresponding to the
Guidance’s footnote 30); see also MPEP § 2106.05(f) (cited by the
Guidance’s footnote 30 as providing “more information concerning mere
instructions to apply a judicial exception”).5

5 MPEP § 2106.05(f)(1) and (2) instruct on this issue: “When determining
whether a claim simply recites a judicial exception with the words ‘apply it’
(or an equivalent), such as mere instructions to implement an abstract idea
on a computer, [E]xaminers may consider the following: (1) Whether the
claim recites only the idea of a solution or outcome i.e., the claim fails to
recite details of how a solution to a problem is accomplished[;] and
(2) Whether the claim invokes computers or other machinery merely as a
tool to perform an existing process . . . (e.g., to receive, store, or transmit
data).” MPEP §§ 2100-64, 66.
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For the foregoing reasons, we find claim 1 is directed to the recited
abstract ideas—not to a practical application thereof.
Step 2B: Does the Claim Recite Anything That Is
Beyond the Recited Judicial Exceptions and Not a Well-Understood,
Routine, Conventional Activity?
Turning to the third and fourth issues set forth by the Guidance (see
supra 6, bullets “(3)” and “(4)”), we agree with the Examiner that every
claim feature constitutes either a judicial exception or “well-understood,
routine, conventional” activity. Guidance, 84 Fed. Reg. 56. Specifically, we
agree the additional elements merely “perform[] routine and conventional
activities that are well-understood in the healthcare industry (i.e. storing a
registry of information, establishing user accounts, processing login
credentials, obtaining contact information, sending messages, sending and
receiving tokens, matching tokens, providing and prohibiting access to
information).” Final Act. 4. We also agree the Specification describes the
invention’s computer technology as conventional inasmuch:
The [S]pecification identifies conventional hardware for
implementing the claimed functions including “computer
hardware, such as one or more physical computer servers.
The computing devices 120-132 can include general purpose
computers, servers, data input devices (e.g., terminals or
displays), web interfaces, portable or mobile computers,
laptops, or tablets, smart phones, etc.” ([see] paragraph 0028,
emphasis added). Storing a registry of information,
establishing user accounts, processing login credentials,
obtaining contact information, sending messages, sending and
receiving tokens, matching tokens, providing and prohibiting
access to information are, individually, routine and
conventional activities of general purpose computing devices.
Ans. 7; see also Final Act. 4.
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We add that claim 1 does not describe any of its recited technology.
Claim 1 recites nondescript means of automating (“module[s] configured
to”), a nondescript network of those means and storage, and electronic data
defined only by informational content directed to judicial exceptions. The
claimed technology thus constitutes, alone and in combination with the
abstract ideas, only generic computer components performing their generic
functions to merely apply judicial exceptions. Such “claims . . . akin to
stating the abstract idea . . . and adding the words . . . ‘apply it’ on a
computer [are] not sufficient for patent eligibility.” CLS Bank Int’l v. Alice
Corp. Pty., 717 F.3d 1269, 1291 (Fed. Cir. 2013), aff’d by Alice; see also
Guidance, 84 Fed. Reg. 55 (“apply it” bullet corresponding to the
Guidance’s footnote 30); and MPEP § 2106.05(f) (cited by the Guidance’s
footnote 30) (As providing “more information concerning mere instructions
to apply a judicial exception.”).6
For the foregoing reasons, we find claim 1 fails to recite more than the
judicial exceptions to which it is directed.
Appellants’ Arguments
Appellants contend claim 1 recites a specific technical solution and is
accordingly patent-eligible under McRO, Inc. v. Bandai Namco Games

6 MPEP § 2106.05(f)(1) and (2) instruct on this issue: “When determining
whether a claim simply recites a judicial exception with the words ‘apply it’
(or an equivalent), such as mere instructions to implement an abstract idea
on a computer, examiners may consider the following: (1) Whether the
claim recites only the idea of a solution or outcome i.e., the claim fails to
recite details of how a solution to a problem is accomplished; (2) Whether
the claim invokes computers or other machinery merely as a tool to perform
an existing process . . . (e.g., to receive, store, or transmit data).” MPEP
§§ 2100-64, 66.
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Am. Inc., 837 F.3d 1311 (Fed. Circ. 2016). Br. 10–12, 24 (“The specificity
. . . transforms claim 1 . . . beyond an abstract recitation . . . . to solve the
problems in the existing electronic prior authorization platform.”). We are
unpersuaded. Unlike claim 1, McRO’s claim specifies the invention’s
results and specific mechanisms (i.e., how the results are achieved). McRO,
837 F.3d. at 1306–08; see also Br. 12–15 (addressing claim 1’s lack of
specificity). For example, McRO’s claimed invention generates a “stream of
output morph weight sets” (result) by evaluating “sub-sequences” within a
“timed data file of phonemes” against rules that define a “morph weight set
stream” as a “function of phoneme sequence and time of said phoneme
sequence” (specific mechanism). In light of such restrictions, McRO found
the claim sufficiently specific inasmuch as reciting a mechanism of the
invention that prevents preemption of the recited abstract idea. McRO,
837 F.3d. at 1314. McRO explains:
The preemption concern arises when the claims are not directed
to a specific invention and instead improperly monopolize the
basic tools of scientific and technological work. . . . A patent is
not good for an effect, or the result of a certain process because
such patents would prohibit all other persons from making the
same thing by any means whatsoever. A patent may issue for
the means or method of producing a certain result, or effect, and
not for the result or effect produced. We therefore look to
whether the claims in these patents focus on a specific means or
method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery.
Id. (citations and quotation marks omitted).
The argued claim features do not overcome the above concerns, i.e.,
recite a specific mechanism that prevents preemption. For example, the
claimed uses of tokens—obtaining of contact information based on an
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identification token and authenticating of an account based on matching
authentication tokens—are basic tools for categorizing and verifying
confidential data. Moreover, these argued claim features (Br. 10) fall within
the Guidance’s enumerated categories of judicial exceptions (see supra 8–
11), such that they cannot alone transform the claimed invention into
patent-eligible subject matter. See SAP Am., Inc. v. Investpic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018) (“[An] advance [that] lies entirely in the realm
of abstract ideas . . . is ineligible for patenting.”).
Appellants also contend claim 1 is specific enough to compel a
finding of patent-eligibility under Bascom Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and DDR
Holdings, LLC v. Hotels.com, L.P., (Fed. Cir. 2014). App. Br. 24–26. We
are unpersuaded. Like the claim of McRO, the claims of Bascom and DDR
are patent-eligible because each claim recites a specific mechanism of the
invention and thereby prevents preemption of the recited abstract ideas.
Bascom, 827 F.3d at 1350–52; see also DDR, 773 F.3d at 1257–59. As
explained above, Appellants’ claim 1 is not specific in this regard.
Appellants also contend the Examiner characterizes the claimed
invention at a level of abstraction untethered from claim 1. Br. 15–16.
Specifically, Appellants contend the Final Action “[o]vergeneraliz[es]
claim 1 to merely organizing, categorizing, and transmitting information”
and thereby neglects that “claim 1 aims to provide a solution related to
information security and access controls in the existing electronic prior
authorization platforms.” Id. at 16, and 23–24.
We are unpersuaded. The Appeal Brief contends the Examiner’s
characterization of claim 1 in the Final Office Action overgeneralizes the
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limitations. Even assuming that is correct, in the Answer, the Examiner
further characterizes the claimed invention as “obtaining and comparing
intangible data in the context of transaction authentication” and as, more
specifically, “obtain[ing] and compar[ing] intangible data in the form of
authentication tokens to authenticate transactions in the form of prescription
prior authorizations.” Ans. 4 (citing generally Cybersoure). The Examiner
further characterizes the claimed invention as “selectively routing data
transactions to the appropriate destination.” Id. at 5 (citing generally
Dealertrack). Appellants do not address the Answer’s above
characterizations (e.g., did not file a Reply Brief), much less show the
Examiner’s in toto findings overgeneralize the claimed invention.
Appellants also contend the Examiner errs by presenting Cyberfone
Sys., LLC v. CNN Interactive Grp., Inc., 558 Fed.Appx. 988
(Fed. Cir. 2014). Br. 17–20. We decline to address Cyberfone because it is
an unreported decision and unnecessary to understand the Examiner’s
reasoning. Though neither of these considerations render Cyberfone
immaterial per se, Cybersource and the Guidelines are alone sufficient to
analyze the prima facie case.
Appellants also contend the Examiner errs by presenting Cybersource
because:
One key reason that the Federal Circuit found that the claim in
CyberSource failed under section 101 . . . was because the
claim recites a determination of pure business risks and does
not even mention a computer. See id. at 1370. By ignoring the
element of “business risk” while analogizing the abstract idea
of CyberSource and the alleged abstract idea of claim 1
(“obtaining and comparing token information for the purpose of
validating an account”), the Examiner’s reasoning represents
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another level of overgeneralization on an already
overgeneralized abstract idea.
Br. 21–22. We do not understand this argument. To the extent Appellants
may contend that only a “business risk” can be analogous to the abstract idea
recognized in Cybersource, Appellants provide no persuasive reasoning or
caselaw for that position. Moreover, if that were correct, the aforementioned
Synopsys decision would not confirm Cybersource’s post-Alice relevance by
holding the “method for converting a hardware independent user description
of a logic circuit” (Synopsys, 839 F.3d at 1142) directed to the “mental
processes subcategory of unpatentable abstract ideas” recognized in
Cybersource. Id. at 1146.
Conclusion
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–5, 7, 11–13, and 18–20.
CLAIM 6
Claim 6 depends from claim 5 and recites “the access control module
is configured to: receive a selection of one of the plurality of contact
channels; and send the authentication message to the device associated with
the prescriber at the second network location using the selected one of the
contact channels.” Claim 5 depends from claim 1 and recites that “the
contact channel [is] associated with the prescriber’s contact information
comprises a plurality of contact channels.”
Appellants contend the Examiner failed to examine claim 6. Br. 27–
29. For example, Appellants contend the Examiner “failed to provide any
analyses on why the additional elements . . . are directed to [an identified]
abstract idea.” Id. at 28.
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We are unpersuaded. Claim 6 adds nothing more than a user’s
selection of the authenticated contact channels (and consequent devices) that
will receive the authentication message. This addition plainly and entirely
falls within the Guidance’s “[m]ental processes— [] judgment, opinion”
category of judicial exceptions. Guidance, 84 Fed. Reg. 52; see also Affinity
Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271
(Fed. Cir. 2016) (“[T]ailoring content to a user . . . is an abstract idea.”). It
is also plainly directed to the presented abstract idea of selectively routing
transactions. Ans. 5 (citing Dealertrack).
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 6.
CLAIMS 8–10
Claim 8 is representative of claims 9 and 10. See 37 C.F.R.
§ 41.37(c)(1)(iv). Claim 8 depends from claim 1 and recites “the
authentication message comprises a Uniform Resource Locator (URL) to a
web resource configured to allow entry of an authentication token.”
Appellants contend a “URL is a web address that specifies a location
on a computer network” and, therefore, “claim 8 expressly recites
network-centric subject matter and would be understood to be directed to a
technical challenge specific to computer networks (including the Internet).”
Br. 29.
We are unpersuaded. The Federal Circuit has held that affixing a
URL to a communication for purposes of receiving a “request . . . by the
recipient over the network using the personalized network address” does not
transform a claim to patent-eligible subject matter. Secured Mail Sols. LLC
v. Universal Wilde, Inc., 873 F.3d 905, 911 (Fed. Cir. 2017).
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For the foregoing reasons, we sustain the Examiner’s rejection of
claims 8–10.
CLAIMS 14–16
Claim 14 is representative of claims 15 and 16. Claim 14 depends
from claim 1 and recites “the prior authorization module is further
configured to: identify from the request for prior authorization, prescriber
information associated with the prescriber; determine whether the prescriber
information in the request for prior authorization matches information
associated with an authenticated account of the prescriber; and make the
request for prior authorization available to the matched authenticated
account of the prescriber.”
Though addressing claims 14–16 under separate heading, Appellants
do not present meaningful arguments for claim 14. Appellants merely repeat
the arguments presented for base claim 1, presenting no indication that
claim 14’s limitations are not addressed by the Examiner’s findings for
claim 1.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 14–16.
DECISION
The Examiner’s decision rejecting claims 1–16 and 18–20 is affirmed.
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