Joel C. Dubbels et al.

Patent Trials and Appeals Board

Sep 3, 2019

13181245 - (D) (P.T.A.B. Sep. 3, 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.
13/181,245 07/12/2011 Joel C. DUBBELS ROC920100353US1 3985
103751 7590 09/03/2019
IBM CORP - Rochester Drafting Center
11501 Burnet Road
Austin, TX 78758
EXAMINER
DURANT, JONATHAN W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
rocdrctr@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOEL C. DUBBELS and RICHARD J. STEVENS
____________

Appeal 2018-000202
Application 13/181,2451
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 22–42. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 Appellants identify International Business Machines Corporation as the
real party in interest.
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THE INVENTION
Appellants state, “[t]he field of the invention is data processing, or,
more specifically, methods, apparatus, and products for administering
medical digital images in a distributed medical digital image computing
environment.” (Spec. 1: 9–11).
Claim 22, reproduced below, is representative of the subject matter on
appeal.
22. A system for medical imaging data management in
a medical cloud computing environment, the system
comprising:
a memory having a set of computer readable computer
instructions, and
a computer hardware processor for executing the set of
computer readable instructions, the set of computer readable
instructions including:
creating, with respect to a request to process medical
imaging data in the medical cloud computing environment and
utilizing a computer hardware processor, using a medical digital
image communications protocol adapter included in a
subnetwork of the medical cloud computing environment for
security with respect to the medical imaging data, an original
data structure having the medical imaging data;
executing, utilizing the computer hardware processor, a
medical imaging data operation on the medical imaging data;
capturing, utilizing the computer hardware processor
when executing the medical imaging data operation on the
medical imaging data, an interim data structure having interim
medical imaging data including both a first portion and a
second portion;
identifying, using an error table, a cause of an execution
failure with respect to the medical imaging data operation on
the medical imaging data, wherein the execution failure
includes the second portion but not the first portion;
selecting, by a medical digital image transaction cluster
included in a primary integrated delivery network of the
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medical cloud computing environment, a repaired operation to
correct the execution failure using the cause of the execution
failure; and
executing, by the primary integrated delivery network of
the medical cloud computing environment, the repaired
operation with respect to the second portion but not the first
portion.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Berstis US 5,909,215 June 1, 1999
Wong US 6,260,021 B1 July 10, 2001
Sebastian US 2002/0099838 A1 July 25, 2002
Rudd US 2002/0120693 A1 Aug. 29, 2002
Jeong US 2005/0281212 A1 Dec. 22, 2005
Trofimov US 2008/0085042 A1 Apr. 10, 2008
Mahesh US 2008/0118119 A1 May 22, 2008
Hernandez US 2008/0140454 A1 June 12, 2008
Jandhyala US 2009/0271324 A1 Oct. 29, 2009
Olson US 2009/0307522 A1 Dec. 10, 2009
Vesper US 2011/0153351 A1 June 23, 2011
DICOM PS 3.5-2004 (Digital Imaging and Communications in Medicine
(DICOM), Part 5: Data Structures and Encoding, PS 3.5-2004, National
Electrical Manufacturers Association, 2004,
http://dicom.nema.org/dicom/2004/04_05pu.pdf, Accessed Aug. 8, 2016)
(hereinafter “DICOM”).

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The following rejections are before us for review.
Claims 22–42 are rejected under 35 U.S.C. § 101 as being as patent
ineligible.
Claims 22–42 are provisionally rejected on the ground of non–
statutory double patenting over claims 35–53 of copending Application No.
13/690,741.2
Claims 31, 35, and 37–39 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 22, 23, 32, 33, 35, 38, and 40–42 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hernandez in view of Berstis.
Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hernandez in view of Berstis and in further view of Sebastian and
Jeong.
Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hernandez in view of Berstis and in further view of
Olson.
Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hernandez in view of Berstis and in further view of Sebastian, Jeong,
and Vesper.
Claims 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hernandez in view of Berstis and in further view of Wong.

2 We decline to reach the double patenting rejections because panels have
the flexibility to reach or not reach provisional obviousness-type double
patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential).
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Claims 29 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hernandez in view of Berstis and in further view of Wong and Rudd.
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hernandez in view of Berstis and in further view of Rudd.
Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hernandez in view of Berstis and in further view of Rudd and
Jandhyala.
Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over 35 U.S.C. 103(a) as being unpatentable over Hernandez in view of
Berstis and in further view of Trofimov.
Claim 36 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hernandez in view of Berstis and in further view of DICOM.
Claim 37 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hernandez in view of Berstis and in further view of DICOM and
Mahesh.
Claim 39 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hernandez in view of Berstis and in further view of Vesper and Jeong.
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FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 7–10 in the
Final Office Action3 and on pages 13–21 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS
35 U.S.C. § 112, FIRST PARAGRAPH, REJECTION
The Examiner rejected claims 31, 35, and 37–39 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. (Final Act. 4–7).
Claim 31
The Examiner rejects the limitation “metering, in response to selecting
the repaired operation, execution of the repaired operation; and generating,
in response to metering execution” because
the specification does not describe what algorithm is used
or provide any description of the algorithm (e.g., the
necessary steps and/or flowcharts) that perform the
claimed function in sufficient detail such that one of
ordinary skill in the art can reasonably conclude that the
inventor invented the claimed subject matter (See MPEP
2161.01 ).
(Final Act. 5, Answer 20).
In response, Appellants at best only point to the Examiner’s language
in the Final Office Action (Appeal Br. 33) to attempt to show how the
Specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, applicant was in possession of the invention as

3 All references to the Final Office Action refer to the Final Office Action
mailed on August 18, 2016.
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now claimed. But, an applicant shows possession of the claimed invention
by describing the claimed invention with all of its limitations using such
descriptive means as words, structures, figures, diagrams, and formulas that
fully set forth the claimed invention. Lockwood v. American Airlines, Inc.,
107 F.3d 1565, 1572, (Fed. Cir. 1997). That has not been done here by
Appellants.
Claim 35
The Examiner rejects this claim because
The specification describes re-executing failed business request
objects including correcting and re-executing the transaction
without reporting the error ([0112], of the PG Pub), but does not
describe all of the asserted functions as performed without user
intervention, as claimed. The specification additionally
describes that the cloud model often includes provisioning
computing capabilities without requiring human interaction with
the cloud service provider ([0018], of the PG Pub), but does not
describe the asserted functions as performed without user
intervention, as claimed.
(Final Act. 5–6, Answer 21).
Appellants only generally argue, “while the specification may not
explicitly teach, for example, ‘wherein the creating ... occur[s] in an
automated fashion,’ Applicant contends that a person of skill in the art
would recognize support for the automation of the processes listed in claim
35 throughout the specification as a whole.” (Appeal Br. 33).
Concerning the rejection of claim 35 here, we find Appellants’
argument substantively insufficient to persuade us that the Specification
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, applicant was in possession of the invention as now claimed.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64. (Fed. Cir. 1991).
Claim 37
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The Examiner maintains that “[t]he specification describes as medical
business data object as including a patient ID and a physician ID ([0073] of
the PG Pub), but the specification does not describe any verification of
correspondence used before transmitting the first subset of medical imaging
data sequence, as claimed.” (Final Act. 6).
Appellants cite to page 43 of the Specification concluding “[a]s such,
Examiner’s rejection to claim structure which specifies an order of
operations is misplaced.” (Appeal Br. 34).
The Examiner responds stating:
The specification describes as medical business data
object as including a patient ID and a physician ID (page
22, lines 7-13), but the specification does not describe any
verification of correspondence used before transmitting
the first subset of medical imaging data sequence, as
claimed. It is not an issue of the order of elements, as the
specification simply does not describe any verification of
the claimed elements.
(Answer 21).
We agree with the Examiner because our review of page 43 of the
Specification reveals only general concluding statements which do not
answer the Examiner’s specified claim language, e.g., “architecture,
functionality, and operation of possible implementations of systems,
methods and computer program products according to various embodiments
of the present invention.” For the reasons given in the Answer, we affirm
the Examiner’s rejection of claim 37.
Claims 38 and 39
The Examiner maintains that these claims describe:
‘an intermediate processing cluster separate from the
primary integrated delivery network’ but the specification
does not describe the ‘intermediate processing cluster’ as
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separate from the ‘primary integrated delivery network.’
Instead, the specification shows the ‘medical digital image
transaction cluster’ as part of the ‘primary integrated
delivery network.’ (See Fig 1, 120, 150). The
specification describes no other transaction cluster other
than the "medical digital image transaction cluster" shown
to be a part of the "primary integrated delivery network."
(Final Act. 6, 7).
Appellants argue the Specification on pages 11 and 26 “conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
Applicant was in possession of the invention as now claimed” (e.g., a variety
of separate locations for elements of the claim structure were considered).
We agree with Appellants that the Specification describing “[o]ften
the destination of the image is a different location, logical or physical, from
the provider of the original medical image prior to its being processed by the
medical digital image transaction cluster,” would encompass the different
location of “the identifying [being] performed within an intermediate
processing cluster separate from the primary integrated delivery network.”
In summary, we affirm the rejections of claims 31, 35, and 37, and
reverse the rejections of claims 38 and 39 under 35 U.S.C. § 112, first
paragraph.

U.S.C. § 101 REJECTION
We will affirm the rejection of claims 22–42 under 35 U.S.C. § 101.
We select independent claim 22 as the representative claim for this
group and so the remaining claims stand or fall with claim 22. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
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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).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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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; 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., Diehr, 450 U.S. 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 patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). 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, 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)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then 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
(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.
The U.S. Court of Appeals for the Federal Circuit has explained that
“the ‘directed to’ inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
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test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance 84
Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states:
selecting (410), in dependence upon workflow selection
rules and the attributes of the medical image business
object, one or more medical analytic workflows to process
the medical image. Workflow selection rules are rules that
are tailored to carrying out the image processing
transaction on the medical images and the medical image
business object according to the request received by the
health care provider. Such workflow selection rules
identify the necessary requirements of the transaction and
select workflows having services that carry out those
requirements as well as select workflows that are tailored
for the attributes of those images such as the slice size,
number of slices, type of scanner used to create the
images, standards used for the images and many others as
will occur to those of skill in the art.
(Specification 25: 16–26.) The preamble says the claimed system is “for
medical imaging data management.” Claim 22. Understood in light of the
Specification, claim 22, recites, in pertinent part:
creating, with respect to a request to process medical imaging
data…;
executing, utilizing the computer hardware processor, a medical
imaging data operation on the medical imaging data;
capturing, … an interim data structure having interim medical
imaging data including both a first portion and a second
portion;
identifying, using an error table, a cause of an execution failure
with respect to the medical imaging data operation on the
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medical imaging data, wherein the execution failure includes
the second portion but not the first portion;
selecting, … a repaired operation to correct the execution
failure using the cause of the execution failure; and
executing, …the repaired operation with respect to the second
portion but not the first portion.
Claim 22.
Accordingly, the Examiner found that the claims are directed to:
comparing new (e.g., identified failure information) and stored
information (e.g., possible repairing operations, workflow
selection rule information, error table) and using rules to identify
options (e.g., selecting a repairing operation, workflow selection
rules, using error table) and are thus an abstract idea consistent
with the types of ideas found to be abstract by the courts
(Smartgene). These steps amount to using categories (e.g.,
original data structure, interim data structure, first portion,
second portion, possible repairing operations, workflow
selection rules, description of information stored in a data
structure, error table) to organize (e.g., creating data structures,
error table), store (e.g., storing, capturing, maintaining, error
table), and transmit (e.g., sending, executing) information (e.g.,
medical imaging data) and are thus an abstract idea consistent
with the types of ideas found to be abstract by the courts
(Cyberfone).
(Final Act. 7–8).
We agree with the Examiner that claim 22 is directed to at least
comparing data and using rules to identify options which is a “mental
process—concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” Guidance 84 Fed. Reg. 52. The patent-
ineligible end of the spectrum includes mental processes. Id. The Federal
Circuit has held similar concepts to be abstract. Thus, for example, the
Federal Circuit has held that abstract ideas include the concepts of collecting
data, analyzing the data, and reporting the results of the collection and
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analysis, including when limited to particular content. See, e.g., Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.
2017) (identifying the abstract idea of collecting, displaying, and
manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas).
Turning to the second prong of the “directed to” test, claim 22 only
generically recites “a memory,” “a computer hardware processor,” and “a
primary integrated delivery network.” These components are described in
the specification at a high level of generality. See Spec. 34:21–31, 35:1–31,
36:1–31, 37:1–7. We fail to see how the generic recitations of these most
basic computer components and/or of a system so integrates the judicial
exception as to “impose[] a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance 84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exception of a mental
process that is not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to image repair, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
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Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step the Examiner found the following:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional limitations, other than the
abstract idea per se, amount to no more than limitations which
require no more than a generic computer to perform generic
computer functions that are well understood, routine, and
conventional activities previously known to the industry.
(Final Act. 9).
We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to create, capture, execute, identify, apply decision criteria to data
to generate a result, and transmit and update data amounts to electronic data
query and transmit same are some of the most basic functions of a computer.
All of these computer functions are well-understood, routine, conventional
activities previously known to the industry. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d at 1354; see also In re Katz Interactive Call
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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.
Considered as an ordered combination, the computer components of
Appellants’ claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (creating,
capturing, executing, identifying, applying decision criteria to data generate
a result (select),) and storing 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, 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.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a mental process 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 225–26.
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We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 27–32, Reply Br. 3–4). 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 make individual rebuttals of same.
Appellants argue:
A first reason why the claims are directed to significantly
more than an abstract idea is that the claims are directed towards
‘(i) improvements to another technology or technical field,’
rather than an abstract idea. As noted above, the subject claim(s)
describe a process which manages medical imaging data in a
medical cloud computing environment by using a medical digital
image communications protocol adapter to create an original data
structure having medical imaging data, executing an operation
on the medical imaging data, capturing an interim data structure,
identifying an execution failure with respect to the operation,
selecting a repaired operation to correct the execution failure, and
executing the repaired operation.
App. Br. 28.
We disagree with Appellants because Appellants offer insufficient
evidence as to why reference to “a medical cloud computing environment” is
meaningful beyond the face of the language itself other than being the way
that data are carried within the network. There is no further discussion in the
Specification of the particular technology for performing this claimed step.
See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 at
1336 (Fed. Cir. 2016) (focusing on whether the claim is “an improvement to
the computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity.”) The claims do not describe any
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particular improvement in the manner a computer functions, at least with
respect to the claims in the instant application. They do not recite any
specific means constituting an improvement in the technical field or cloud
based technology and related computing systems. See McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of comparing data and using rules to identify options
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd. at 2360.
That the language includes a general reference to the use of a
“medical cloud computing environment,” a “medical digital image
communications protocol adapter to parse the request and extract the
medical images” and a “medical digital image transaction cluster to select a
repair operation to correct the execution failure” (Appeal Br. 28), does not
make the corresponding generic recitations of these claimed basic computer
components and/or of a system so effective as to integrate the judicial
exception in a way that “imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance 84 Fed. Reg. at 53. Absent
evidence to the contrary, we view these items including the “medical cloud
computing environment” to be only an indication of the environment in
which the abstract idea is practiced.
MPEP 2106.05(h) concern[s] generally linking use of a judicial
exception to a particular technological environment or field of
use, including a discussion of the exemplars provided herein,
which are based on Bilski, 561 U.S. at 612, and Flook, 437 U.S.
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at 588-90. Thus, the mere application of an abstract method of
organizing human activity in a particular field is not sufficient to
integrate the judicial exception into a practical application.
Guidance 84 Fed. Reg. at 53 n.32, see also Alice Corp., 573 U.S. at 223.
Citing to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), Appellants further argue,
Applicant respectfully submits that the claims do not merely
recite the application of an abstract idea performed using generic
computer components, a fundamental economic practice, a
mathematical relationship/formula, a method of organizing
human activity, an idea standing alone, and cannot be performed
solely in the human mind or using pen and paper. As such, the
Office Action improperly applied a ‘high level of abstraction.’
(Appeal Br. 29).
We disagree with Appellants. First, Appellants provide no evidence
that the method “cannot be performed solely in the human mind or by using
pen and paper.” See e.g., CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1373 (Fed. Cir. 2011).
Second, we also disagree with Appellants that similar to the holding in
Enfish, the claimed solution is directed to a specific improvement to the way
computers operate.” (Appeal Br. 29). In Enfish, the invention at issue there
was directed at a wholly new type of logical model for a computer database:
a self-referential table that allowed the computer to store many different
types of data in a single table and index that data by column and row
information. Enfish, 822 F.3d at 1330–32. In finding the claims “not
directed to an abstract idea,” but “to a specific improvement to the way
computers operate,” the Federal Circuit noted that “the claims are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database.” Enfish, 822
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F.3d at 1336–37 (emphasis in original). We find nothing in the claims
before us arising to this level of technical improvement in the claimed
“memory,” “computer hardware processor,” and “primary integrated
delivery network” which arises to the level of technical proficiency as found
in Enfish. Instead, we find the claims are focused on a mental process.
Citing to DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245
(Fed. Cir. 2014), Appellants argue that “the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm(s) of computer networks or medical imaging data
management.” App. Br. 30. In DDR Holdings, the Court evaluated the
eligibility of claims “address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” Id. at 1257. There, the Court found that the claims were
patent eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no “pre-Internet
analog.” Id. at 1258. The Court cautioned, however, “that not all claims
purporting to address Internet-centric challenges are eligible for patent.”
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258–59 (citing Ultramercial, 772 F.3d 7 0 9 ,
715–16 (Fed. Cir. 2014)). As noted there, the Ultramercial claims like
those before us here, were directed to an abstraction.
Although we agree with Appellants that the claims must be read, as a
whole (Appeal Br. 30), we nevertheless find, on balance, that claim 1 is
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directed to comparing data and using rules to identify options for the reasons
specified above with respect to our “directed to” findings. As found supra,
claim 1 only includes the following generically recited device limitations: “a
memory,” “a computer hardware processor,” and “a primary integrated
delivery network.” What remains in the claim after disregarding these
device limitations, are abstractions, i.e., “identifying, using an error table, a
cause of an execution failure with respect to the medical imaging data
operation on the medical imaging data, wherein the execution failure
includes the second portion but not the first portion.” “A claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 566 U.S. at 90).
To the extent Appellants are arguing that these are additional elements
constituting an inventive concept, such features cannot constitute the
“inventive concept.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir.
2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive
concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s]
untouched the numerous cases from this court which have held claims
ineligible because the only alleged ‘inventive concept’ is the abstract idea.”);
see also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s determination of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection
of claims 22–42.
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35 U.S.C. § 103(a) REJECTION
Each of independent claims 22, 32, 33 requires, in one form or
another, “identifying, using an error table, a cause of an execution failure
with respect to the medical imaging data operation on the medical imaging
data, wherein the execution failure includes the second portion but not the
first portion.”
The Examiner found, concerning this limitation that Berstis discloses,
the following:
identifying, using an error table, a cause of an execution failure
with respect to the medical imaging data operation on the
medical imaging data (See column 8, line 14-line 50, database
for looking up error messages, corrective action column indicates
the corrective action to be initiated, Fig 9, also see column 8, line
51 through column 9, line 15, Fig 10), wherein the execution
failure includes the second portion but not the first portion;
(Final Act. 14).
Appellants argue the following:
as claimed, the present disclosure would look-up an error code to
identify the nature of the failure such as insufficient storage and
inadequate bandwidth (e.g., perhaps with values/amounts
thereof). In particular, the nature of the failure may be
particularly useful when a single data structure has a first portion
which succeeds and a second portion which fails (as claimed).
Aspects of the present disclosure may provide more granularity
in order to provide a better solution, whereas the proposed
combination/modification, at best, more bluntly proceeds with a
corrective action (e.g., selecting the corrective action merely
from the error message) without identifying the cause of the
failure (and using the cause of the execution failure to make a
selection) as claimed by the present disclosure. Even under the
broadest reasonable interpretation, the Examiner's construction
‘cannot be divorced from the specification and the record
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evidence,’ NTP, 654 at 1288, and ‘must be consistent with the
one that those skilled in the art would reach,’ Copyright, 165 F.3d
at 1358.
(Appeal Br. 15–16).
We agree with Appellants. According to Berstis,
The process begins by looking up the error message to a database
of error messages (step 700). A determination is made as to
whether corrective action is required (step 702). If corrective
action is required, the process then initiates the corrective action
based on the results of the comparison of the error message to the
database (step 704) with the process terminating thereafter.
(Col. 8, ll. 4–24).
We fail to see how the processing of an error message which already
indicates a cause of failure, equates to “identifying, using an error table, a
cause of an execution failure with respect to the medical imaging data
operation on the medical imaging data.” In Berstis, the error message
already contains the claimed “cause of an execution failure” because a hook
function makes this determination first by “take[ing] the error messages and
an analysis is made as to whether the message that will be displayed to the
user is useful. If it is not useful, the hook function either reformats the
message into a useful message or cancels the display of that error message.”
(Col. 7, ll. 26–30). Thereafter, as Berstis states in Col. 8, ll. 4–24, the
looking up of the error message to a database is done to determine whether
corrective action is required, which is not a determination of a cause, but a
remedy. It is not apparent from the record, and the Examiner has not
cogently explained, why one of ordinary skill in the art would consider
determining corrective action to be the obvious variant of determining a
cause. Therefore, we will not sustain the rejection of independent claims 22,
32, 33.
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Since claims 23–31, 35–42, depend from claim 22 and claim 34
depends from claim 33, and since we cannot sustain the rejection of
independent claims 22 and 33, and because none of the additional references
used the rejection of the dependent claims remedies the above deficiency in
Berstis, we cannot sustain the Examiner’s obviousness rejection of claims
23–31, 35–42 and 34.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 22–42 under
35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 22–42 under
35 U.S.C. § 103.
We conclude the Examiner did not err in rejecting claims 31, 35, and
37 under 35 U.S.C. § 112, first paragraph, and erred in rejecting claims 38
and 39 under 35 U.S.C. § 112, first paragraph.
We do not reach the Examiner’s provisional rejection of claims 22–42
on the ground of non-statutory obviousness-type double-patenting.

DECISION
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