INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Mar 10, 2020

14097995 - (D) (P.T.A.B. Mar. 10, 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.
14/097,995 12/05/2013 Jianying Hu YOR920130846US1
(163-770)
5908
49267 7590 03/10/2020
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/10/2020 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@tb-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIANYING HU, BUYUE QIAN, FEI WANG,
JUN WANG, and XIANG WANG

Appeal 2019-003728
Application 14/097,995
Technology Center 3600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–17, and 19–21. Appeal Br. 1.
Claims 7 and 18 are canceled. Appeal Br., Claims Appendix. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“INTERNATIONAL BUSINESS MACHINES CORPORATION.”
Appeal Br. 3.
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STATEMENT OF THE CASE
APPELLANT’S INVENTION
According to Appellant’s “Description of the Related Art” (Spec. 1
(heading for id. ¶¶ 2–4)), “[p]atient risk stratification [performs] . . . patient
cohort segmentation such that patients in each group share similar risks . . . ,
e.g., the onset of congestive heart failure (CHF)” (id. ¶ 2). “A major
challenge for risk stratification is the heterogeneity of patients’ clinical
conditions[; e.g.], CHF patients have different comorbidities, such as
diabetes, kidney diseases, lung diseases, etc.” Id. ¶ 3. “It [therefore] makes
more sense to first segment the patient cohort into risk groups with
consistent clinical conditions, and then construct the prediction model using
customized risk factors” (id.) “incorporated from domain experts (e.g.,
physicians) . . . [and] validated by extensive clinical studies” (id. ¶ 4). In
view of the above:
The present [invention] formulate[s] an objective function that
receives as input a patient similarity graph and expert knowledge
domain (e.g., known risk factors) . . . . The objective function
. . . determine[s] a first set of patient risk groups from patients in
a patient similarity graph . . . . A second set of patient risk groups
are identified based on expert domain knowledge . . . . Patients
in the first set and second set are aligned for patient stratification.
Id. ¶ 16. Claim 1, reproduced below with added emphasis,2 is illustrative of
the claimed subject matter.
1. A method for patient stratification, comprising:
determining a first set of patient groups from patients in a
patient similarity graph using a similarity structure of the

2 The Examiner finds the unemphasized portions correspond to “judicial
exceptions” of patent-eligible subject matter and the emphasized portions
correspond to “additional elements.” See infra (Steps 2A(1) and (2)).
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patient similarity graph comprising nodes that represent patients
and edges that each represent a similar medical condition for
connected nodes;
identifying a second set of patient groups based on expert
domain knowledge associated with the patients;
aligning patients in the first set and the second set using a
processor to stratify patients, the alignment of patients
including minimizing an objective function based on a soft
assignment of patients into the first set of patient groups and the
second set of patient groups, to output a set of risk groups, each
of which includes patients having consistent clinical conditions,
wherein soft assignment comprises assigning a non-binary
value for each patient’s membership in each group; and
delivering personalized healthcare to the stratified patients
using a customized treatment plan based on a prediction model
specific to the patients’ respective risk groups.
Appeal Br., Claims Appendix.
REJECTIONS
Claims 1–6, 8–17, and 19–21 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception. Final Act. 7–12.
Claims 1–6, 8–17, 19, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wong (US 5,976,082; Nov. 2, 1999), Nigam
(US 2013/0226616 A1; Aug. 29, 2013), Dutta (US 2010/0312798 A1;
Dec. 9, 2010), and Friedlander (US 2008/0082356 A1; Apr. 3, 2008).
Final Act. 13–20.
OPINION
REJECTION OF CLAIMS 1–6, 8–17, AND 19–21
UNDER 35 U.S.C. § 101
Claims 1–6, 8–17, and 19–21 are argued as a group. Appeal Br. 12
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(heading “B”).3 We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). For the following reasons, we are unpersuaded of error in
the rejection of claim 1.
Principles of Law
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. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (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

3 In addition to addressing all claims as a group, Appellant cursorily
contends the Examiner failed to address the dependent claims.
Appeal Br. 15. The Examiner correctly responds that findings for all
dependent claims were provided within the Advisory Action mailed October
12, 2018. Ans. 5.
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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 (1853))); 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 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
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patent-eligible application.” Alice, 573 U.S. at 221 (citation 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. (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.
PTO Guidance
The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”); see also USPTO, October 2019 Update: Subject Matter
Eligibility, 84 Fed. Reg. 55942 (October 17, 2019) (“Update”). 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 activity such as a fundamental economic practice, and 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. 2018)).
84 Fed. Reg. at 52−55. If a claim (1) recites a judicial exception and (2)
does not integrate that exception into a practical application, we then
conclude the claim is directed to a judicial exception (id. at 54) and look 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
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Id. at 56.
Step 1: Does Claim 1 Fall within a Statutory Category?
There is no dispute that the claimed subject matter falls within a
35 U.S.C. § 101 category of patentable subject matter. Final Act. 8
(“statutory categories (i.e., a process)”); see also Guidance, 84 Fed. Reg.
at 53−54 (“Step 1”).
Step 2A(1)4: Does Claim 1 Recite Any Judicial Exceptions?
We agree with the Examiner that claim 1 recites—and, more
particularly, describes—judicial exceptions. See Update. Specifically, we
agree:
[Claim 1 is] drawn to a method for stratifying patients from a
first set of patient groups determined from patients in a
similarity graph using a similarity structure with nodes

4 The Guidance separates the enumerated issues (1) to (4) (see supra, PTO
Guidance) 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. at 51.
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representing patients and edges that represent similar medical
conditions for connected nodes and a second set of patient
groups based on expert knowledge, aligning the first and
second sets using an objective function based on a non-binary
soft-assignment of patients into the sets to output a set of risk
groups including patients with consistent conditions, to deliver
healthcare to the stratified patients using a treatment plan based
on a specific prediction model[.]
Final Act. 7–8. We also agree each claim step encompasses judicially
excepted subject matter, as identified in reproduced claim 1. Final Act. 9;
supra n.2. As the Examiner finds, each of those identified limitations:
[i] organizes information (patient information) through
mathematical correlations (patient information is stratified with
other patient information); and/or
[ii] . . . collects information (patient and patient group
information), analyzes it (aligns patient groups based on expert
knowledge and using similarity graphs), and displays certain
results (aligned patients are stratified) of the collection and
analysis;5 and/or
[iii] . . . compares data to determine a risk level (patient and
patient group data is compared to stratify patients).
Final Act. 9–10.
We add that the above activities plainly fall within the categories of
judicial exceptions enumerated by the Guidance. See 84 Fed. Reg. at 52
(categories). The claimed graphing of data, comparing of included nodes,
and minimizing of a function (corresponding to activities [i]) encompass
“[m]athematical concepts [including] mathematical relationships . . . [and]
calculations.” Id.; see also Final Act. 9 (referencing Digitech Image Techs.,
LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) to identify

5 We address these identified limitations, i.e., activities [ii], with respect to
Step 2A(2).
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these activities as encompassing calculations via a mathematical formula).
The claimed identifying of patient groups based on expert domain
knowledge, aligning of patients, assigning of patients to groups, and
delivering of personalized healthcare based on a model of risk groups
(corresponding to activities [iii]) encompass “[m]ental processes [including]
. . . an observation, evaluation, judgment.” 84 Fed. Reg. at 52; see also Final
Act. 10 (referencing PerkinElmer, Inc. v. Intema Ltd., 496 F. App’x 65
(Fed. Cir. 2012) to identify these activities as encompassing mental steps of
healthcare professionals).
For the foregoing reasons, claim 1 recites judicial exceptions.
Step 2A(2): Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
We agree with the Examiner that claim 1’s additional elements do not
integrate the judicial exceptions into a practical application. See Guidance,
84 Fed. Reg. at 53 (describing a “practical application” as a “meaningful
limit on the [recited judicial exceptions], such that the claim is more than a
drafting effort designed to monopolize the [exceptions]”); id. at 55
(“exemplary considerations . . . indicative [of] . . . a practical application”).
Specifically, we agree the additional elements are as identified in reproduced
claim 1 (see supra n.2) and include only the claimed “using a processor” to
perform the stratifying of patients. Final Act. 9. We also agree the claimed
use of the processor “[is a] mere application of [a] generic computer
component[].” Advisory Act., Oct. 12, 2018, Cont’n Sheet, at 1.
We add that pairing the recited judicial exceptions with the collection,
analysis, and display of data for patient stratification (corresponding to the
above activities [ii]) limits the invention’s field of use to its related art. See
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supra, Appellant’s invention (description of the related art); see also Final
Act. 10 (referencing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016) to identify these activities as mere field of use limitations);
830 F.3d at 1351 (“[C]ollection, analysis, and display of available
information in a particular field . . . , without . . . technical means for
performing the[se] functions . . . , defin[e] a . . . result and not . . . means of
achieving the result.”). “Even though such field-of-use limitations prevent a
claim from wholly pre-empting [judicial exceptions], . . . they describe only
the context rather than the manner of achieving a result.” Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016); see also
id. (“The Pythagorean Theorem cannot be made eligible by confining its use
to existing surveying techniques, nor can the business practice of hedging
risk . . . by confining its use to the commodities and energy markets, nor the
goal of gathering and combining data by confining its use to particular types
of photographic information.” (internal quotation marks and citations
omitted)).
For the foregoing reasons, claim 1 is directed to the recited judicial
exceptions—not to a practical application thereof.
Step 2B: Does Claim 1 Recite Anything That Is
Beyond the Recited Abstract Ideas and Not a Well-Understood, Routine,
Conventional Activity?
We agree claim 1’s additional elements—the claimed use of a
processor to perform the stratifying of patients—require only a
“conventional hardware” processor such as a processor of a general-purpose
computer. Final Act. 11; see also Spec. ¶ 22 (disclosing such a processor).
We also agree that addition of a “general-purpose computer has been
determined by the courts to be a well-understood, routine, and conventional
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element (see, e.g., Alice [and] . . . MPEP 2106.05(d)).” Final Act. 11;
accord Alice, 573 U.S. at 222 (“[I]ntroduction of a computer . . . does not
alter the analysis[, e.g.,] . . . claim[ing] an algorithm implemented on a
general-purpose digital computer.” (internal quotation marks and citation
omitted)); MPEP § 2106.05(d)(II) (“nothing more than generic computer
functions merely used to implement an abstract idea”).
For the foregoing reasons, claim 1’s additional elements append only
conventional technology to the judicial exceptions.
Appellant’s Arguments
We have reviewed Appellant’s arguments. Appeal Br. 12–15. In
view of the above analysis, we are unpersuaded the Examiner erred. At the
outset, we repeat that the Examiner has shown the claim limitations
encompass only judicial exceptions described by the Guidance (see
supra Step 2A(1)) and technology described by judicial precedent as
conventional (see supra Step 2B). The Examiner has also shown claim 1’s
ordered combination of activities and technology requires only to execute
the judicial exceptions on a generic processor (the claimed use of a
processor to perform the stratifying of patients) and/or within the invention’s
field of use. See supra Step 2A(2).
Appellant contends the Examiner errs by concluding claim 1 is
analogous to patent-ineligible claims of Elec. Power Grp., Digitech, and
PerkinElmer. Appeal Br. 12–14. We are unpersuaded because, as discussed
above, the Examiner’s findings satisfy the Guidance’s procedure for
concluding a claim is directed to judicially-excepted subject matter. See
supra Steps 2A(1) and (2); see also Guidance, 84 Fed. Reg. at 51–52
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(explaining the Guidance, alone, can be used to show a claim is directed to
judicially-excepted subject matter).
Appellant contends claim 1 is analogous to the patent-eligible claim of
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057
(Fed. Cir. 2011) because: claim 1 “recite[s] delivering personalized
healthcare to the stratified patients using a customized treatment plan based
on a prediction model specific to the patients’ respective risk groups”; and
the Classen claim recites an “act of immunization [in] accordance with a
lower-risk schedule, thus moving from abstract scientific principle to
specific application.” Appeal Br. 14 (quoting Classen, 659 F.3d at 1067–
68); see also Reply Br. 6 (emphasis omitted) (addressing the Guidance’s
discussion of a “particular treatment or prophylaxis for a disease or medical
condition” (84 Fed. Reg. at 55), which references Classen via footnote (id. at
n.26)). We are unpersuaded.
First, Classen was decided based on Bilski. Classen, 659 F.3d at 1059
(“We review the question of eligibility with the Court’s guidance in Bilski
v. Kappos.”). Mayo and Alice have since clarified the standard for
patent-eligibility under 35 U.S.C. § 101. Per our above analysis, claim 1 is
not patent-eligible under the standard set forth by Mayo and Alice.
Second, Classen’s immunizing step is not analogous to claim 1’s
delivering step. Classen’s immunizing step constitutes a “specific”
application of the recited abstract idea. 659 F.3d at 1066–68. Namely, the
delivery of healthcare is specifically an immunization and further specified
inasmuch that: two groups are immunized under different immunization
schedules; the schedules are compared for their respective risks of causing
an immune-mediated disorder; and a subject is immunized according to the
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above lower-risk schedule. Id. at 1060–61. Claim 1’s delivering step is not
a specific application. Claim 1’s delivering step only recites that the
healthcare is personalized by a customized treatment plan, which is in turn
based on a prediction model of the stratified patients’ risk groups. Because
the delivering step lacks a specified treatment plan, prediction model, and
risk groups, the delivery and personalization of healthcare is not even
determinable—much less sufficiently specific. See, e.g., McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)
(Describing an abstract idea as a “result,” McRO distilled the issue of
sufficient specificity to whether a claim recites a means of a result that is
sufficiently specific to prevent preemption of the result.).
Appellant contends the Examiner errs by construing the claimed
“delivering personalized healthcare . . . using a customized treatment plan”
as an act of mentally preparing the treatment plan. Reply Br. 6–7; see also
Ans. 4 (the contested construction). We are unpersuaded because the
Examiner’s interpretation of the claimed delivering adheres to the plain
meanings of the included claim terms. Specifically, the Examiner interprets
the claimed “delivering personalized healthcare . . . using a customized
treatment plan” (emphasis added) as delivering personalized healthcare
including a customized treatment plan. Ans. 4 (“personalized healthcare . . .
notating a treatment plan”); accord “Use,” Dictionary.com (retrieved at
https://www.dictionary.com/browse/use?s=t on Feb. 5, 2020) (“using” as a
“verb (used with object)” means “to employ for some purpose”) (emphasis
omitted). Appellant does not present a persuasive reason to discard the
above plain meaning of “healthcare . . . using” (i.e., healthcare including)
from the disputed claim limitation.
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For the foregoing reasons, we sustain the rejection of claims 1–6, 8–
17, and 19–21 under 35 U.S.C. § 101.
REJECTION OF CLAIMS 1–6, 8–17, 19, AND 20 UNDER 35 U.S.C. § 103 AS
UNPATENTABLE OVER WONG, NIGAM, DUTTA, AND FRIEDLANDER
For the following reasons, we are persuaded of error because the
record shows the rejection of the independent claims violates the Office’s
notice requirement. See, e.g., In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011) (The notice requirement is violated by a failure to provide
sufficient information for understanding the grounds for rejection.); Hyatt
v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) (A prima facie case must
facilitate the applicant’s “effective submission of information.”).
Each of the independent claims recites in disputed part: “minimizing
an objective function based on a soft assignment of patients [into two
groups].”6 Appeal Br. 19 (disputed subject matter). In the Final Action and
post-Final mailings (Advisory Action and Answer), the Examiner presents
different veins of findings for the claimed “minimizing an objective
function” but neither chooses one nor describes them as alternative findings.
Final Act. 16; Advisory Act. 2–3; Ans. 6–7.

6 Because we reverse in view of the rejection’s lack of proper notice,
we need not (and do not) consider whether the claimed “based on a soft
assignment . . .” describes the claimed “minimizing” or “objective function,”
much less whether this potential discrepancy would (if considered) merit
reversing the prior art rejection on the grounds of indefiniteness. See In re
Steele, 305 F.2d 859, 863 (CCPA 1962) (“[T]he board [was] wrong in
relying on . . . speculative assumptions as to the meaning of the claims and
basing a rejection under 35 U.S.C. § 103 thereon.”); Ex parte Miyazaki,
89 USPQ2d 1207 (BPAI 2008) (precedential) (A prior art rejection falls, pro
forma, if a disputed claim limitation is amenable to two or more plausible
claim constructions. (citing In re Steele)).
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In the Final Action, the Examiner finds Dutta teaches an objective
function that is based on assigning a patient into a group and Friedlander
teaches minimizing of an objective function to improve grouping of patients.
Final Act. 16. When viewed in light of the cited prior art, the Examiner’s
statements indicate two further findings. Namely, the Examiner finds Dutta
teaches an objective function that is based on assigning a patient into a group
(clinical profile (CP) such as diabetes) inasmuch that a patient is ascribed a
value for each specification of a group (yes=1 or no=0 for specification
variables such as “HgbAlc” and “nephropathy”), those input values are
weighted to yield respective values (function), the maximum specification
value is the output value (objective function), and that value determines
membership in the group (confers membership if above a threshold).
Id. (“[Dutta’s] objective function . . . is the determination of a final
membership value for each clinical profile group, . . . where the patient case
is assigned three weighted values for each clinical profile group, and then
the objective function determines a final value for each group. One method
is to take the maximum value.” (citing Dutta ¶¶ 29, 36–39)). The Examiner
finds Friedlander suggests minimizing Dutta’s above output value (and, thus,
minimizing an objective function) inasmuch that Friedlander plots patients
by their values for medical characteristics and then chooses a cohort of
patients (a cluster) that minimizes the sum of the Euclidean distances
between the respective plots. Id. (citing Friedlander ¶¶ 7, 8, 30, 40, 56, and
67).
In the post-Final mailings, the Examiner significantly changes the
rejection’s reliance on Dutta and Friedlander by quoting the Final Action’s
above-noted portion (page 16) and “clarif[ying]” the findings. Advisory
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Act. 2–3; Ans. 6–7. The Examiner therein finds that Dutta teaches to
minimize a function (not an objective function, as above) based on assigning
a patient into groups and Friedlander teaches an objective function (not
minimizing such a function, as above) based on assigning a patient into
groups. Id.; see, e.g., Ans. 6 (“Dutta . . . discloses a connection between a
function and the soft assignment. Friedlander . . . discloses the use of an
objective function when assigning patient records to groups.”). When
viewed in light of the quoted portion of the Final Action, the Examiner’s
statements indicate two further findings. Namely, the Examiner finds
Dutta’s assigning of a patient into a group (CP) based on the maximum
specification value (see above) would “minimize” a function if reconfigured
such that the minimum specification value determines membership in the
group (yes=0 and no=1 for specification values and the lowest value confers
membership if below a threshold). Advisory Act. 2–3; Ans. 6–7. The
Examiner finds Friedlander suggests applying this reconfigured function as
an objective function. Id.
Furthering the above inconsistency, consecutive pages of the
Answer’s response to arguments express both veins of findings. Ans. 6–7.
Mirroring the above findings of the Final Action, one page states: “Dutta
discloses an objective function[.] Friedlander discloses minimizing an
objective function.” Ans. 7. Mirroring the above findings of the post-Final
mailings, another page states: “Dutta is not used to disclose an objective
function” (Ans. 6); “Dutta . . . discloses a connection between a function
[and patient assignment]. Friedlander . . . discloses . . . use of an objective
function [for a patient assignment]” (id.).
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Appellant’s arguments show the inconsistency of the Examiner’s
findings. Appellant reasonably contends:
On one hand, the Examiner states . . . “Dutta teaches the
consideration of a function . . . [for] the soft assignment of
patients . . . Friedlander discloses the use of an objective function
[for] assigning patient[s.]” . . . On the other hand, the Examiner
. . . states that “Dutta discloses an objective function[.”] Given
this contradiction, Appellant cannot effectively rebut the
Examiner’s argument[.]
Reply Br. 7–8 (emphasis omitted).
Appellant’s arguments also show a deficiency of both veins of
findings. Namely, the Examiner does not explain how Dutta’s cited function
for assigning an individual to a group would be modified to incorporate a
feature of Friedlander’s function for minimizing Euclidean distances
between assigned individuals of a group. Appeal Br. 20; Reply Br. 8–9.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 1–6, 8–17, 19, and 20 under 35 U.S.C. § 103.

Conclusion
We affirm the Examiner’s decision to reject claims 1–6, 8–17, and
19–21.7

7 “The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim.” 37 C.F.R. § 41.50.
Appeal 2019-003728
Application 14/097,995

18
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–17,
19–21
101 Eligibility 1–6, 8–17,
19–21

1–6, 8–17,
19, 20
103 Wong, Nigam,
Dutta, Friedlander
1–6, 8–17,
19, 20
Overall
Outcome
1–6, 8–17,
19–21

TIME PERIOD FOR RESPONSE
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