Michael Chun-Chieh. Lee et al.

Patent Trials and Appeals Board

Sep 18, 2019

13061959 - (D) (P.T.A.B. Sep. 18, 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.
13/061,959 03/03/2011 Michael Chun-chieh Lee 2008P01289WOUS 1727
24737 7590 09/18/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL CHUN-CHIEH LEE and
LILLA BOROCZKY
____________________

Appeal 2018-0052801
Application 13/061,959
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1–6 and 16. We
have jurisdiction to review the case under 35 U.S.C. §§ 134(a) and 6(b).
The invention relates generally to medical diagnosis. Spec. 1, line 2.

1 The Appellants identify Koninklijke Philips Electronics N. V. as the real
party in interest. Appeal Br. 2.
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Claim 16 is illustrative:
16. A method for applying a computer-aided diagnosis that has
been split into parts, the method comprising:
defining input patient data comprising at least imaging
data;
applying, by a processor, image classifiers derived from
different patient strata to the input patient data to generate a
plurality of diagnostic hypotheses of the patient, two or more of
the diagnostic hypotheses being based on two or more different
hypothesized values of additional clinical information;
storing, by the processor, the plurality of diagnostic
hypotheses in a computer-readable database;
requesting, by the processor, input of an actual value of the
additional clinical information about the patient based on the
plurality of diagnostic hypotheses;
applying, by the processor a clinical decision tree to the
additional clinical information about the patient to determine
strata to which the patient belongs; and
using this stratification to select a final diagnosis from the
plurality of diagnostic hypotheses.
The Examiner rejected claims 1–6 and 16 under 35 U.S.C. § 101 as
directed to ineligible subject matter in the form of abstract ideas.
The Examiner rejected claims 1–6 and 16 under 35 U.S.C. § 112,
second paragraph, as indefinite.
We AFFIRM.

ANALYSIS
Indefiniteness
In the Final Action, the Examiner rejected all pending claims under
35 U.S.C. § 112, second paragraph, as indefinite, based on two different
claim limitations. Final Act. 3–4. Specifically, the Examiner finds in regard
to claims 1 and 16, that it “is unclear what data/probabilities the
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‘corresponding probabilities of illness’ are based upon, and how the
‘corresponding probabilities of illness’ differ from the likelihood of the
patient having the illness,” and it “is unclear how the hypothesized values
are generated, and it is also clear what a ‘select likelihood of the plurality of
likelihoods corresponding . . . ’ encompasses.” Id.
The Appellants advance argument, relative to claim 1, that asserts
error on the part of the Examiner, supported by claim language and
references to the Specification: page 4, lines 18–26; page 7, line 26, to page
8, line 1; and page 8 lines 17–22. Appeal Br. 6–9. The Appellants also
explain that independent claim 16 does not recite the language in claim 1
that led to the rejection. Appeal Br. 9–10.
The Examiner indicates, shortly after the filing of the Appeal Brief,
that claim amendments filed two days before the filing of the Appeal Brief
will be entered, “to fix antecedent problem.” Advisory Act. 2, mailed July
28, 2017. However, we find no pending rejection in the Final Action related
to antecedent basis.
We also find the Examiner is not responsive to the Appellants’
arguments as to indefiniteness. See Reply Br. 2 (“the Examiner's Answer
does not state whether the Examiner disagrees with the applicants’
arguments and does not present any reasons for disagreement”). Indeed, the
Answer does not mention any rejection under 35 U.S.C. § 112.
We find the Appellants’ argument and evidence as to the definiteness
of claims to be persuasive, for the reasons advanced in the Appeal Brief.
The Examiner has not responded, with additional argument or evidence.
We do not sustain the rejection of claims as indefinite under 35 U.S.C. §
112, second paragraph.

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Patentable Subject Matter
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 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
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 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 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. (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 Examiner finds the claims “are directed to the abstract idea of
‘fusing clinical and image features for computer-aided diagnosis’2, etc.”
Answer 3; see also Final Act. 2:
(Claim(s) 1-6 and 16 is/are directed to the abstract ideas a
method and system for implementing a method that stores prior
diagnoses and corresponding probabilities of the illness and
assesses the plurality of likelihoods of the illness based on: the
prior diagnoses, the image data and proposed possible values of
clinical data (i.e. comparing new and stored information, and
using rules to identify options) and generates a plurality of
likelihoods of an illness based on the processed medical image

2 This phrase appears in the Specification at page 6, lines 22–27.
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data alone and based on potential values for additional clinical
data; and requests and receives an actual value of the clinical
data based on a result of the one or more classifier algorithms
(i.e. organizing information through mathematical
correlations).)
Claim 16 recites a “method for applying a computer-aided diagnosis
that has been split into parts.” Diagnosis, including medical diagnosis of
illness, is a mental process routinely performed by, for example, physicians,
using information available to the physician, and mental thought processes.
The method involves the following steps. First recited is “defining
input patient data comprising at least imaging data.” The Specification
explains that the “CADx algorithm combines image data in CT images
(data-type 1, in this example) with clinical data in the clinical parameters
(considered data-type 2 in this example) of the patient (e.g. emphysema
status, lymph node status).” Spec. 3, lines 27–30 (cited at Appeal Br. 5).
We construe this as a data gathering step, because it collects both image and
clinical data, which can fairly be characterized as insignificant extra-solution
activity. See Bilski v. Kappos, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc),
aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data
gathering steps as insignificant extra-solution activity).
The method next recites:
applying, by a processor, image classifiers derived from
different patient strata to the input patient data to generate a
plurality of diagnostic hypotheses of the patient, two or more of
the diagnostic hypotheses being based on two or more different
hypothesized values of additional clinical information.
The Specification explains deriving image classifiers involves using a
decision tree “to stratify the patients in the training data base, also known as
yielding patient strata.” Spec. 7, lines 14–15 (cited at Appeal Br. 5). The
Specification explains, as to generating diagnostic hypotheses, that “a wide
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variety of image-based classifiers are developed and then use the clinical
data to decide which classifiers to use for different clinical ‘risk’ groups. The
classifiers thus created are subsequently used for the computer-aided
diagnosis of new, previously unseen patients 500.” Spec. 9, lines 20–23
(cited at Appeal Br. 5). As to the two diagnostics hypothesized, the
Specification explains a “decision engine” accesses databases “to compute a
partial diagnosis based on the image data 910 and further compute potential
complete diagnoses based on possible clinical data.” Spec. 13, lines 10–14
(cited at Appeal Br. 5). We construe this as using a computer, to think like a
physician, specifically to hypothesize medical diagnoses based on past
image and clinical data stores about other patient illnesses.
The method continues by “storing, by the processor, the plurality of
diagnostic hypotheses in a computer-readable database.” The Specification
describes that the “results of the computations are further stored in decision
database 930.” Spec. 13, line 23 (cited at Appeal Br. 5). This is merely a
step to remember, or store data.
After storing the developed hypotheses, the method continues by
“requesting, by the processor, input of an actual value of the additional
clinical information about the patient based on the plurality of diagnostic
hypotheses.” The Specification describes that “the request for additional
clinical data is sent to interface engine 980 with display terminal 970 which
queries the operator for additional information.” Spec. 13, lines 14–17
(cited at Appeal Br. 6). We view this as another data-gathering step, which
is insignificant extra-solution activity.
Then, the claim recites, “applying, by the processor a clinical decision
tree to the additional clinical information about the patient to determine
strata to which the patient belongs.” The Specification describes that a new
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“case is sent to a clinical decision tree 620 similar to the clinical decision
tree 330 and 530 of Figs 3 and 5 respectively. One of two alternate paths is
selected.” Spec. 11, lines 1–5 (cited at Appeal Br. 6). We view this as a
mental thought step, because it involves determinations based on data,
implemented on a computer.
Finally, the claim recites, “using this stratification to select a final
diagnosis from the plurality of diagnostic hypotheses.” The Specification
describes that
result of the clinical decision tree is the use of paths to select
which path is activated. The active path allows the result of one
of the two image-based classifier ensemble results, (either the
high risk result or low risk result), to be stored in the likelihood
of malignancy module 660.
Spec. 11, lines 13–16 (cited at Appeal Br. 6). This again is a mental step,
which involves selecting that a feature is either high or low in risk, based on
the examined data.
The claim thus describes a process for medical risk diagnosis,
involving creating and selecting from hypothetical diagnoses derived from
past image and clinical data. Although the claim recites using a “processor”
for four of the six recited steps (applying, requesting, and storing), the
process, in general, merely mimics the mental process of medical diagnosis
based on image and clinical data which, we have no doubt, physicians have
performed for decades. For example, the Specification describes, in
background, that “the decision-making process associated with evaluation of
malignancy typically includes integration of non-imaging evidence,” and
“studies have demonstrated that both diagnostic ratings and perception of
radiological features are affected by patient histories.” Spec. 1, lines 7–12.
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This supports the idea that diagnoses made by medical professionals based
on multiple types of data are well known.
Under Prong One of Revised Step 2A of the Guidance, the claim is
fundamentally directed to a mental process, using image and clinical data to
determine whether collected image data represents high or low risk to the
patient. See Guidance at 52, fn. 14 (“If a claim, under its broadest
reasonable interpretation, covers performance in the mind but for the
recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.”).
The recited components beyond the recited abstract mental process is
only a “processor.” The Specification describes that the “system uses
software which processes the data from the data repository 111. The
software is run on a processor 102 which implements the incomplete data on
a CADx algorithm 121 based system.” Spec. 6, lines 28–30. The
Specification further describes:
a computer operable apparatus including, but not limited to a
computer database data storage embedded within a computer
memory, a computer output display terminal, a keyboard for
inputting data, an interface for the import and extraction of data
and any hardware and software components needed to make
the proposed application function.
Spec. 6, lines 22–27 (emphasis added). We interpret this to mean a general-
purpose computer is sufficient for performing the method. For example, the
Specification describes that a “computer operable software means
comparator step 160 compares the N different candidate CADx calculation
results or potential solutions for the likelihood of malignancy and decides if
they are within a pre-set tolerance.” Spec. 4, lines 27–29. General-purpose
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computers are capable of comparing data and determining if a value is
within a preset range. The Specification thus supports that the abstract
mental process of claim 16 can be implemented on a general-purpose
computer.
Under Prong Two of Revised Step 2A of the Guidance, we are
directed to determine if the abstract idea expressed in the claim language is
“integrated into a practical application.” Guidance at 54.
Here, claim 16 recites steps that receives, categorizes, stores, and
requests data, make determinations from the data, and makes a selection
based on the determinations from the data. The method does not improve
the underlying “processor” recited as performing some limitations of claim
16, because any computer can be used to execute the claimed method. See
Spec. 6, lines 22–27. In addition, the method is directed to medical
diagnosis (Spec. 1, line 2), and as such the claimed method does not improve
another technology. MPEP § 2106.05(a). Because a particular computer is
not required, the claim also does not define or rely on a “particular
machine.” MPEP § 2106.05(b). Further, the method does not transform
matter. MPEP § § 2106.05(c). As such, the method has no other
meaningful limitations (MPEP § 2106.05(e)), and thus merely recites
instructions to execute the abstract idea on a computer (MPEP § 2106.05(f)).
Therefore, we determine that claim 16 does not integrate the judicial
exception into a practical application, under Prong Two of Revised Step 2A.
Under Step 2B of the Guidance, we determine if the additional
elements outside the scope of the abstract idea offer “something more” in the
form of an “inventive concept” that would transform the abstract idea into
eligible subject matter. We find no such limitations.
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Beyond the use of image and clinical data to determine whether
collected image data represents high or low risk to the patient, the claim only
additionally recites the use of a “processor” for four limitations. As we
noted above, the processor is called on to request and receive data,
categorize data, compare data, and make determinations about data such as
whether it meets a tolerance criteria. The operations of storing, analyzing,
receiving, and writing data are primitive computer operations found in any
computer system. See In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed
below, those functions can be achieved by any general purpose computer
without special programming.”). Because the operations the processor
performs, request, receive, analyze, and store, are basic operations, and the
processor is a general-purpose computer, there are no additional limitations
that are not well-understood, routine, and conventional.
Thus, the claim does not recite an “inventive concept.” As a result,
we agree with the Examiner that claim 16 is directed to an abstract idea,
which is not integrated into a “practical application,” and which does not
recite an “inventive concept.”
Independent claim 1, though similar to claim 16 in operation, recites
language we must consider separately.
Claim 1 is directed to “a system for providing interactive computer-
aided analysis of medical images.” An algorithm for analyzing medical
images is essentially a method of organizing human behavior, because it
specifies how a human should undertake steps for medical diagnosis.
The first component of the claimed system is “an image processor that
processes medical image data of a patient.” In support of the limitation, the
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Appellants direct us to Spec. 4, lines 2–11. There, the image processor is
described as retrieving image data, such as from a hospital’s PACS system,
and “applying a CADx algorithm.” Spec. 4, lines 2–7 (cited at Appeal Br.
4). The Specification provides an example of one algorithm. Based on the
broad language of the claim, we construe the step that “processes” as
applying any algorithm, because the claim language does not recite any
particular algorithm, and we do not import the example from the
Specification into the claim. See Superguide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by explanations contained in the written description,
it is important not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”) Thus, the image processor is a component that
applies an algorithm to received image data, much the way a human looking
at image data applies a mental algorithm to examine the image.
The next recited component is “a database of prior diagnoses and
corresponding probabilities of an illness.” This is a collection of data,
similar to information about prior diagnoses and probabilities that a human
may remember in their mind, or by looking at records of illnesses.
The next recited component is “a decision engine that generates a
plurality of likelihoods of the patient having the illness.” The likelihoods are
based on “the prior diagnoses and corresponding probabilities of the illness,
the processed medical image data, and a plurality of different hypothesized
values of additional clinical data.” The Specification describes that the
method “tests different proposed possible values of” clinical data, and
“results are computed.” Spec. 4, lines 14–19 (cited at Appeal Br. 5). In
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addition, the Specification describes that “data is processed using a
processor 102 which includes software that performs at least one of three
estimates.” Spec. 6, lines 30–32 (cited at Appeal Br. 5). These citations do
not explicitly describe the generation of likelihoods of the patient having the
illness, but the Specification also describes that
stratified data 550 is a series of at least one case 552 to N cases
554 generated to determine if an individual case presents a high
risk 556 or a low risk 558 of possessing a given illness or
condition based on whether the probability of a person with a
specific health background is likely to have or not have a given
illness or condition, i.e. based on the information contained
within the clinical data 510.
Spec. 10, lines 14–18. We construe the generation of likelihoods to involve
an analysis of historical data, to which calculations or estimates, or both, are
applied. Selecting hypotheses, based on calculations and estimates from
available historical data, is a task that humans can, and do, perform mentally
through thought.
The next recited component is “an interface engine that: determines
whether a significant difference exists among the plurality of likelihoods,”
and then takes one of two different actions, based on the determination. The
Specification describes that the engine “compares the N different candidate
CADx calculation results or potential solutions for the likelihood of
malignancy and decides if they are within a pre-set tolerance.” Spec. 4, lines
27–29 (cited at Appeal Br. 5). The Specification also describes that the
system acts “to evaluate whether the diagnosis based on incomplete data is
significantly different than estimated diagnoses created with complete data.”
Spec. 7, lines 1–3 (cited at Appeal Br. 5). Acts of comparison of data, and
evaluation of data for differences are acts a human performs mentally
through thought.
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The final recited portion of claim 1 involves executing one of two
steps, for each ends the engine “identifies the select likelihood based on the
plurality of likelihoods.” This identifying is a step that can be performed
mentally by a person, by making a decision based on the available data. In
one of the two steps, “if a significant difference exists among the plurality of
likelihoods: requests and receives an actual value of the additional clinical
data.” That is, if additional information is needed to make a decision,
because there is a difference in the data that prevents a choice, additional
data is requested and used for the decision. This is a step that humans,
especially medical professionals, routinely perform mentally, by
understanding that more information is needed before a decision on the
information can be made.
Other than the claimed “image processor,” “database,” “decision
engine,” and “interface engine,” the claimed system recites functions that are
able to be performed by a human using thought, memory, and potentially,
pen and paper. The Specification describes the processors, database, and
engines, as follows: “The system uses software which processes the data
from the data repository 111. The software is run on a processor 102 which
implements the incomplete data on a CADx algorithm 121 based system.
The data is processed using a processor 102 which includes software.” Spec
6, lines 28–32 (cited at Appeal Br. 4–5). The Specification provides no
additional description of the software or computer system that operates the
software, so we must assume they are general purpose in nature.
Under Prong One of Revised Step 2A of the Guidance, claim 1,
similar to claim 16, is directed to the abstract idea of a mental process of
using image and clinical data to determine whether collected image data
represents high or low risk to the patient, implemented with general-purpose
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software and computer hardware. As with claim 16, the system of claim 1
does not improve the underlying “processor,” “database,” or “engines”
recited as performing the limitations, because any unspecified computer can
be used to execute the claimed functions. See Spec. 6, lines 22–27. In
addition, the method is directed to medical diagnosis (Spec. 1, line 2), and as
such the claimed method does not improve another technology. MPEP
§ 2106.05(a). Because a particular computer is not required, the claim also
does not define or rely on a “particular machine.” MPEP § 2106.05(b).
Further, the method does not transform matter. MPEP § § 2106.05(c). As
such, the method has no other meaningful limitations (MPEP § 2106.05(e)),
and thus merely recites instructions to execute the abstract idea on a
computer (MPEP § 2106.05(f)).
Therefore, we determine that claim 1 does not integrate the judicial
exception into a practical application, under Prong Two of Revised Step 2A.
Further, similar to the analysis for claim 16, claim 1 recites only unspecified,
and therefore well-understood, routine, and conventional components
beyond the recitation of the abstract mental functions. Therefore, claim 1,
like claim 16, does not recite an “inventive concept” that represents
“something more” than the abstract idea recited by the claim, under Step 2B
of the Guidance.
Dependent claim 2 recites “the interface engine displays an average
likelihood of the illness on a display terminal when a significant difference
does not exist.” This is both the result of a mental calculation, and an output
step that is insignificant extra-solution activity. See Bilski v. Kappos, 561
U.S. 593, 610-11 (2010) (“Flook stands for the proposition that the
prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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environment’ or adding ‘insignificant post solution activity.’”) (quoting
Diehr, 450 U.S. at 191-92).
Dependent claim 3 limits the nature of the clinical data used to “at
least one of medical history, health history, family history, physical
measurements, and demographic data.” Dependent claim 4 limits which
data is “used to stratify data.” Dependent claim 5 recites additional
functions capable of being performed through mental thought: “quantify risk
factors, create an image-based classifier library, and derive an ensemble.”
Dependent claim 6 recites that the “interface engine” performs additional
assessment and determination steps, which can be performed mentally by a
human, because it “assesses the plurality of likelihoods to determine a range
of the likelihoods,” and determines if a “significant difference” exists.
None of the dependent claims recites subject matter beyond the
abstract idea recited in claim 1, and instead the dependent claims merely
clarify, limit, or expand the mental functions embodied within the abstract
idea of claim 1.
We therefore agree with the Examiner that claims 1–6 and 16 recite
abstract ideas capable of being performed through mental thought, without
additional elements that integrate the abstract idea into a “practical
application,” or recite an “inventive concept” that represents “significantly
more” than an abstract idea.
We turn to and consider the Appellants’ arguments in light of the
above analysis.
We are not persuaded by the Appellants’ argument that the claims are
not directed to an abstract idea because there are no pending prior art
rejections. Appeal Br. 11. A finding of novelty or non-obviousness does
not automatically lead to the conclusion that the claimed subject matter is
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patent-eligible. Although the second step in the Mayo/Alice framework is
termed a search for an “inventive concept,” the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice Corp., 134 S. Ct. at 2355. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
See also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.”).
Citing similarity with “Google, and DDR,”3 the Appellants assert the
claims are “‘necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer technology’.”
Appeal Br. 11. The Appellants describe shortcomings in the algorithms of
prior art computer-aided diagnostics programs that “before a practitioner can
take advantage of the potential benefits of a computer aided diagnostic
system, the practitioner must prescribe all of the tests that are necessary to
provide the values of the clinical data required by the particular computer
aided diagnostic system,” and prior art database include “clinical data that is
irrelevant or redundant.” Appeal Br. 11.

3 No citations are provided by the Appellants, so we have uncertainty as to
which cases these refer.
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Appellants’ apparent reliance on DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) is unavailing, because the claims at
issue do not address a problem unique to the Internet. See Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
2015) (“The patent at issue in DDR provided an Internet-based solution to
solve a problem unique to the Internet that (1) did not foreclose other ways
of solving the problem, and (2) recited a specific series of steps that resulted
in a departure from the routine and conventional sequence of events after the
click of a hyperlink advertisement. The patent claims here do not address
problems unique to the Internet, so DDR has no applicability.” (Citation
omitted)).
Indeed, humans attempting diagnosis may well seek more data than is
actually necessary to make a diagnosis, and may remember information that
is irrelevant or redundant. The identified problems are seen in human
diagnostic-process shortcomings, or human decisions of functions to
implement in software, not Internet or computer-related problems.
We are unpersuaded by the Appellants’ argument that the
“preprocessing of the data” to generate “hypothetical values for each
combination of possible values of each missing clinical data item, and the
subsequent determination of the likelihoods of the patient having the illness .
. . cannot be performed manually within a reasonable time period.” Appeal
Br. 12. We first discern no time constraints within the claim language.
Second, merely using a computer as a tool, to more quickly process data that
could be processed mentally, does not mean a mental process so
implemented is not an abstract idea. See Intellectual Ventures ILLC v.
Capital One Bank, 792 F.3d 1363, 1370 (“[M]erely adding computer
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functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea.”).
In arguing that the claims are not directed to an abstract idea, the
Appellants assert the “claims are directed to the requesting and receiving of
the additional clinical data only if the actual value of the additional clinical
data will affect the diagnosis of the patient having, or not having, a particular
illness.” Reply Br. 3; see also id. at 4. This accompanies the argument that
the claims provide the benefit of avoiding “unnecessary patient testing,” by
only requesting additional “clinical data” when necessary. Id. at 2.
We reject the Appellants’ characterization of what the claims are
directed to, because the claims recite far more than “requesting and
receiving of the additional clinical data.” In addition, we note the claims,
broadly construed, do not necessarily have the stated benefit, because the
Specification describes that “[c]linical data describes aspects of the patient’s
health history, family history, physique, and lifestyle, including such
elements as, but not limited to, smoking, previous illnesses, and the like,”
and does not include test results. Spec. 3, lines 24–26; see also Spec. 7,
lines 26–31 (“clinical data 310 is a collection of cases beginning with a first
case 312 and proceeding to a given N cases 314 . . . . Each case contains a
name or identifier 316 of a patient and a series of attributes . . . [that] include
but are not limited to smoking, and exercise, or physical attributes such as
but not limited to height and weight.”).
Also arguing that the claims are not directed to abstract ideas, the
Appellants argue the claims “include the concrete physical step of requesting
and receiving additional data only when required.” Reply Br. 4. We are not
persuaded that asking for additional information is a concrete, physical step,
because a human can do it by speaking or through writing on pen and paper,
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which is both part of human mental activity, and essentially data gathering,
considered insignificant extra-solution activity, as we noted before.
In response to the Examiner’s assertion that the claimed steps
correspond to collecting, analyzing, and displaying information in “Electric
Power Group,” the Appellants argue “unlike the claimed system and method
of Electric Power Group, the applicants’ claims go well beyond merely
collecting, analyzing, and displaying results.” Reply Br. 6. We are not
persuaded by the Appellants’ argument. First, merely collecting data and
displaying results each represent insignificant extra-solution activity.
Further, as in the claimed method here, the Court in Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) held that “we have
treated analyzing information by steps people go through in their minds, or
by mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.” Electric Power Group, at 1354.
In addition, the Appellants argue, “as in Vanda, the applicants’ claims
specifically recite an application of the results of the analysis to determine
whether the additional clinical data is to be requested and received.” Reply
Br. 6.4 The apparent “application” of the analysis in claim 1 is that the
system “presents the selected likelihood.” This is an output step. See Bilski,
561 U.S. at 610-11. The “application” in claim 16 is not apparent, because
the last recited step, “using this stratification to select a final diagnosis,” is
part of the analysis specified in the algorithm.
Asserting that the claims also provide “something more” beyond an
abstract idea, the Appellants repeat a previous argument: “the applicants’

4 “Vanda” is cited only as “Vanda Pharmaceuticals, Inc. v. West-Ward
Pharmaceuticals, Inc, (13 April 2018),” without any further reference.
Reply Br. 6.
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process requires the use of a computer to provide a diagnosis in a reasonable
time period, and is not merely instructions to implement the idea on a
computer.” Appeal Br. 13. As we have explained, “the fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.’” FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1098
(Fed. Cir. 2016).
We are also unpersuaded by the Appellants’ argument that “the
generation of hypothesized values for missing data elements to determine, a
priori, whether providing the actual values for the missing data elements is
not a function that is well-understood, routine, or conventional.” Appeal Br.
13.
The precise language in claim 16 that corresponds to this argument is
“requesting, by the processor, input of an actual value of the additional
clinical information about the patient based on the plurality of diagnostic
hypotheses.” This is merely a way of stating that the diagnostician may seek
additional information if the diagnosis cannot be made based on the
available information, which is inarguably a routine step taken by
diagnosticians.
The precise language in claim 1 that corresponds to this argument is:
an interface engine that:
determines whether a significant difference exists among the
plurality of likelihoods and:
if a significant difference exists among the plurality of
likelihoods: requests and receives an actual value of the
additional clinical data, and identifies a select likelihood of the
plurality of likelihoods corresponding to a match between the
actual value and one of the plurality of different hypothesized
values.
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This language essentially means the same thing as in claim 16: seek
additional information when a diagnosis cannot be made without it. This is
unquestionably a common practice amongst medical professionals
attempting to make a diagnosis, and is a step that is well-understood, routine,
and conventional.
Citing “Classen, 1066” that is asserted as quoting “Research
Corporation,” the Appellants argue “providing a system that only requests
and receives additional clinical data when it is determined that this
additional data will affect the diagnosis of a patient having a particular
illness is likely to be perceived in the marketplace as a specific improvement
in the technology of medical diagnostic systems.” Reply Br. 4. Although
we have no evidence to address this assertion, the law does not base
patentable subject matter eligibility on what a “marketplace” may perceive
in a product.
We are also unpersuaded by the Appellants’ argument of “something
more” by “the significance of being able to selectively determine whether to
incur the time and cost required to obtain additional clinical data based on an
a priori assessment of the effect that this additional clinical data will have on
the outcome of the diagnosis.” Reply Br. 7; see also id. at 8 (“the
applicants’ invention avoids the time and cost that is conventionally
expended to obtain missing clinical data regardless of an a priori
determination of whether the missing clinical data will significantly affect
the diagnosis.”). Because “clinical data” may include whether a patient
smokes, we fail to discern, for example, a significant savings in time or cost
by asking a patient whether they smoke, which is an act within the scope of
the claimed selective determination. See Spec. 3, lines 24–26; see also Spec.
7, lines 26–31.
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Appellants argue that the claims provide “something more” because
“the determination that particular clinical data will significantly affect the
diagnosis may result in conducting a test that otherwise might be omitted
due to the time and/or cost associated with the test.” Reply Br. 8. This,
however, is the mental decision making process that any health professional
must make when deciding whether to request additional “clinical data” or
order additional tests.
The Appellants have failed to show error in the Examiner’s finding
that claims 1–6 and 16 are directed to abstract ideas. Because we agree that
these claims recite abstract mental processes, without being “integrated into
a practical application” and reciting “something more” beyond the abstract
idea that represents an “inventive concept,” we sustain the rejection of
claims 1–6 and 16 under 35 U.S.C. § 101.

DECISION
We reverse the rejection of claims 1–6 and 16 as indefinite under
35 U.S.C. § 112, second paragraph.
We affirm the rejection of claims 1–6 and 16 under 35 U.S.C. § 101.
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