Nigel Greenwood

Patent Trials and Appeals Board

Sep 30, 2019

13849181 - (D) (P.T.A.B. Sep. 30, 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.
13/849,181 03/22/2013 Nigel Greenwood 103181.0001US 1112
149344 7590 09/30/2019
Umberg Zipser LLP
1920 Main Street Suite 750
Irvine, CA 92614
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
patents@umbergzipser.com
rdean@umbergzipser.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NIGEL GREENWOOD
____________

Appeal 2018-0044791
Application 13/849,1812
Technology Center 3600
____________

Before MICHEL R. ZECHER, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 53, 54, 56, 57, 59–63, 66–81, and 86. Claims 1–52, 55,
58, 64, 65, and 82–85 were cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Our Decision references Appellant’s Appeal Brief (“Br.,” filed Sept. 12,
2017), the Examiner’s Answer (“Ans.,” mailed Jan. 17, 2018), and the Final
Office Action (“Final Act.,” mailed Feb. 14, 2017).
2 Appellant identifies Neurotech Research Pty. Ltd. as the real party in
interest. Br. 2.
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CLAIMED INVENTION
Appellant’s claimed invention general relates to “a method and
apparatus for determining a program for a subject, and to a method and
apparatus for determining subject parameter values representing the effect of
a condition on a subject.” Spec. 1, ll. 4–6.
Claims 53, 81, and 86 are the independent claims on appeal. Claim
53, reproduced below, is illustrative of the claimed subject matter:
53. A method of determining a treatment program for a
subject, the method being performed by a processing system, the
method comprising:
a) obtaining subject data, the subject data representing a
condition of the subject;
b) determining a partial set of system values from the
subject data;
c) determining a plurality of mathematical models, each
mathematical model comprising one or more differential
equations representing a progression of the condition, the
progression being a development of the condition over time;
d) determining a complete set of system values using the
processing system, the subject data and the mathematical
models;
e) selecting one of the plurality of mathematical models in
accordance with a determined complete set of system values by:
i) for each mathematical model, determining a
candidate set of system values in accordance with the
determined partial set of system values and the differential
equations;
ii) comparing the candidate set of system values to
at least one of the partial set of system values and
predetermined thresholds; and
iii) selecting one of the plurality of the mathematical
model[s] in accordance with the
result of the comparison; and
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f) determining a control program comprising a sequence
of control variable values for the selected mathematical model
by:
i) determining, using the processing system, one or
more solution trajectories, the solution trajectories being
solutions to the differential equations and representing
potential routes of progression of the condition within the
subject, the solution trajectories being determined in
accordance with the mathematical model and the
determined candidate set of system values;
ii) determining a set of target points, the target
points comprising stable or otherwise desirable points for
the subject equation(s);
iii) defining a Liapunov function for which the
gradient defines solution trajectories moving towards the
target points;
iv) defining constraints on the control variable
values; and
v) determining control variable values that result in
solution trajectories travelling down the gradient of the
Liapunov function in accordance with the constraints;
[and]
g) determining a treatment program in accordance with the
control program, medication being provided to the subject based
on the determined treatment program, thereby at least partially
treating the subject.
Br. 19–20 (Claim Appendix).

REJECTION
Claims 53, 54, 56, 57, 59–63, 66–81, and 86 are rejected under 35
U.S.C. § 101 as judicially excepted from statutory subject matter.3

3 We treat the Examiner’s identification of canceled claims 58, 64, and 65 in
the rejection heading as inadvertent. See Final Act. 2; see also Ans. 3
(stating the same).
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ANALYSIS
Appellant argues the pending claims together. Br. 8–18. We select
claim 53 as representative. The remaining claims stand or fall with claim
53. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
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patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
The Supreme Court acknowledged in Mayo, that “all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. Therefore, the U.S.
Court of Appeals for the Federal Circuit has instructed that claims are to be
considered in their entirety to determine “whether their character as a whole
is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco
Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. That guidance
“extracts and synthesizes key concepts identified by the courts as abstract
ideas to explain that the abstract idea exception includes” the following three
groupings: (1) mathematical concepts; (2) certain methods of organizing
human activity, e.g., fundamental economic principles or practices,
commercial or legal interactions; and (3) mental processes. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52
(Jan. 7, 2019) (the “2019 Revised Guidance”).4
Under the 2019 Revised Guidance, in determining whether a claim is
patent-eligible, we first look to whether the claim recites a judicial

4 The 2019 Revised Guidance, by its terms, applies to all applications, and
to all patents resulting from applications, filed before, on, or after January 7,
2019. 84 Fed. Reg. 50.
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exception, including one of the enumerated groupings of abstract ideas
(“Step 2A, Prong One”). Id. at 54. If so, we next consider whether the
claim includes additional elements, beyond the judicial exception, “that
integrate the [judicial] exception into a practical application,” i.e., apply, rely
on, or use 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. (“Step 2A, Prong Two”). Id.
at 54–55.
Only if the 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 “[a]dds a specific limitation or combination of
limitations” that is not “well-understood, routine, conventional activity in the
field” or simply “appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception” (“Step 2B”). Id. at 56.
With the legal principles outlined above, and the 2019 Revised
Guidance in mind, we turn to the Examiner’s § 101 rejection. In rejecting
the pending claims under 35 U.S.C. § 101, the Examiner notified Appellant
that the claims are directed to “performing a mathematical analysis of patient
data to determine a treatment program” (Final Act 2) and cites to judicial
precedent in determining that the claims recite an abstract idea (id. at 2–3).
The Examiner also considered the additional elements individually and as an
ordered combination, and concluded that they are not sufficient to amount to
significantly more than the abstract idea. Id. at 3–4. Specifically, the
Examiner determined that the additional elements are generically-recited
computer components, e.g., processing system, that perform generic
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computer functions, which are well-understood, routine, and conventional
activities. Id.
As an initial matter, the Examiner, in our view, set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner as to
meet the notice requirement of 35 U.S.C. § 132. In doing so, we find that
the Examiner established a prima facie case of patent-ineligibility. See In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the USPTO carries
its procedural burden of establishing a prima facie case when its rejection
satisfies the notice requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for the rejection, “together with such information
and references as may be useful in judging the propriety of continuing []
prosecution”). Appellant’s arguments to the contrary are unpersuasive. See
Br. 8–10.
Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A,
Prong 1 of the 2019 Revised Guidance
We are not persuaded here by Appellant’s arguments that the
Examiner erred in determining that claim 1 is directed to an abstract idea
because the Examiner failed to consider the claims, as a whole. Br. 10–11.
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., 790 F.3d at 1346). Here, the Specification,
including the claim language, makes clear that the claims focus on an
abstract idea, and not on any improvement to computer technology and/or
functionality. The Specification is entitled “CONDITION ANALYSIS.”
Spec. 1, l. 1. The Specification describes, in the Background section, that
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the present invention relates to “determining a program for a subject,” and
“determining subject parameter values representing the effect of the
condition on the subject.” Id. at 1, ll. 4–6. The Specification provides that it
is known to “determine medication programs to allow drugs to be
administered for different medical conditions.” Id. at 1, ll. 13–14. However,
conventional medication programs “typically require[] years of
experimentation” to develop and, once developed, are “fairly simplistic,”
requiring a patient to take a specified dose of medication at a specified time
interval. Id. at 1, ll. 14–16.
Rather than focusing on a specific patient, conventional medication
programs typically focus on the condition being treated. Id. at 1, ll. 18–19.
Patients, however, are known to respond differently to a given medication
program. Id. at 1, ll. 19–20. It is possible to tailor a medication program for
a patient; however, such tailoring can occur only after monitoring the effect
of the medication program on the patient’s health, causing a detrimental
effect to the patient during the observation period. Id. at 1, ll. 20–23.
Monitoring also has its share of challenges. For example, the effects
of medication are not always readily apparent, making assessment of the
effects of the program difficult. Id. at 1, ll. 23–25. Exacerbating this
challenge, assessment is usually a subjective inquiry with no quantified
absolutes. Id. at 1, ll. 28–29.
Finally, given the complex, non-linear progression and adaptation of
many diseases over time, it is difficult to predict effectiveness of a particular
medication program over the long term. Id. at 2, ll. 3–4. Likewise, it is
difficult to predict the effect of the medication itself over the long term. Id.
at 1, ll. 1, l. 25–2, l. 1. Appellant’s invention ostensibly seeks to address
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these shortcomings with prior art methods for determining a medication
program for a subject.
Consistent with this disclosure, claim 53 recites a method of
determining a treatment program for a subject that involves steps a)
through g), reproduced below:
a) obtaining subject data, the subject data representing a
condition of the subject;
b) determining a partial set of system values from the
subject data;
c) determining a plurality of mathematical models, each
mathematical model comprising one or more differential
equations representing a progression of the condition, the
progression being a development of the condition over time;
d) determining a complete set of system values using the
processing system, the subject data and the mathematical
models;
e) selecting one of the plurality of mathematical models in
accordance with a determined complete set of system values by:
i) for each mathematical model, determining a
candidate set of system values in accordance with the
determined partial set of system values and the differential
equations;
ii) comparing the candidate set of system values to
at least one of the partial set of system values and
predetermined thresholds; and
iii) selecting one of the plurality of the mathematical
models in accordance with the
result of the comparison; and
f) determining a control program comprising a sequence
of control variable values for the selected mathematical model
by:
i) determining, using the processing system, one or
more solution trajectories, the solution trajectories being
solutions to the differential equations and representing
potential routes of progression of the condition within the
subject, the solution trajectories being determined in
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accordance with the mathematical model and the
determined candidate set of system values;
ii) determining a set of target points, the target
points comprising stable or otherwise desirable points for
the subject equation(s);
iii) defining a Liapunov function for which the
gradient defines solution trajectories moving towards the
target points;
iv) defining constraints on the control variable
values; and
v) determining control variable values that result in
solution trajectories travelling down the gradient of the
Liapunov function in accordance with the constraints;
g) determining a treatment program in accordance with the
control program, medication being provided to the subject based
on the determined treatment program, thereby at least partially
treating the subject.
Br. 19–20 (Claim Appendix). These limitations, when given their broadest
reasonable interpretation, recite rules or instructions for collecting and
processing patient data to determine a treatment program to provide a
medication treatment program for the patient, i.e., managing an interaction
between people, which is a method of organizing human activity and,
therefore, an abstract idea. See 2019 Revised Guidance 52. In addition,
these limitations are concepts, e.g., observation, evaluation, judgment,
opinion, that could be performed in the human mind with pen and paper, i.e.,
a mental process, which is an abstract idea. Id.
Practical Application: Step One of the Mayo/Alice Framework; Step 2A,
Prong 2 of the 2019 Revised Guidance
Having concluded that claim 53 recites a judicial exception (Step 2A,
Prong 1), i.e., an abstract idea, we next consider whether the claim recites
any additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2). Here, the only additional element recited in
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claim 53, beyond the abstract idea, is the claimed “processing system,”
which is used to perform steps (d) and (i). However, the processing system
is described in the Specification at a high level of generality, i.e., as a
generic computer component. See, e.g., Spec. 13, ll. 4–7 (“the processing
system may be any form of processing system suitably programmed to
perform the analysis . . . [, such as] a suitably programmed computer, laptop,
palm computer, or the like.”).
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any assertedly inventive programming, or
are implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
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invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.5
We are not persuaded by Appellant’s preemption argument. See
Br. 16–18. Although preemption is the concern that drives the exclusion of
abstract ideas from patent eligible subject matter (see Alice, 573 U.S. at
216), it is not a separate test for patent eligibility. Instead, the proper test for
determining whether a claim recites patent eligible subject matter is to apply
the two-step framework that the Supreme Court delineated in Alice and
Mayo. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework . . . , preemption
concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “[P]reemption may
signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
Appellant argues that, similar to the claims in Enfish and McRO,
claim 53 provides an improvement to computer-related technology. Br. 11–
14. Specifically, Appellant alleges that prior to the claimed invention,
determination of a medication program required 15 years of
experimentation, e.g., collecting data on medical conditions and patient
responses to medication, and the resulting program was fairly simplistic,

5 The 2019 Revised Guidance references to the Manual of Patent Examining
Procedure § 2106.05(a)–(c) and (e) (9th ed., Revision 08-2017, Jan. 2018)
(“MPEP”) in describing the considerations that are indicative that an
additional element or combination of elements integrates the judicial
exception, e.g., the abstract idea, into a practical application. Id. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
“directed to” the judicial exception.
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e.g., relying on the patient to take a specified quantity of medication at a
prescribed time interval. Id. at 12. The prior techniques also suffered from
the limited number of factors considered when determining medication
regimes. Id. As a result, these medication programs were “impossible to be
applied [across] various patients with various medical conditions” while
being patient-specific and condition-specific. Id. The “prior technology
could not provide any dynamic modeling for treatment program/medication
to adapt [to] the progression of [the] patient’s condition.” Id. at 13.
Appellant contends that it is readily apparent that the determination of
medication programs of claim 53 is “for a great number of patients with
various conditions and other variables,” rendering the claim “squarely in the
field of computer-related technology.” Id. Appellant also asserts that a
human could not perform these steps “quickly and efficiently enough to
reflect any real-time changes or updates.” Id.
However, there is a fundamental difference between improvements to
the functionality of a computer, on the one hand, and uses of existing
computers as tools to perform a particular task, on the other. In Enfish, for
example, the Federal Circuit noted that “[s]oftware can make non-abstract
improvements to computer technology[,] just as hardware improvements
can.” Enfish, 822 F.3d at 1335. “[T]he first step in the Alice inquiry
. . . asks whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities . . . or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” Id. at 1335–36. In Enfish, the Federal Circuit found that the “plain
focus of the claims” was on an improvement to computer functionality itself,
i.e., a self-referential table for a computer database, designed to improve the
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way a computer carries out its basic functions of storing and retrieving data,
not on a task for which a computer is used in its ordinary capacity. Id. at
1336.
Here, Appellant has not offered any persuasive evidence or technical
reasoning that the modeling recited in claim 53 improves the functioning of
a computer itself. Appellant’s model may well cover a “great number of
patients” with “various variables” and perform these steps “quickly and
efficiently enough to reflect any real time changes.” Br. 13. However, we
are not persuaded that any of the features identified by Appellant reflect an
improvement to the functioning of the claimed processing system, rather
than an improvement to the abstract idea that is implemented using a
computer as a tool. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (“[R]elying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible.”).
Attempting to liken claim 53 to the claims at issue in McRO,
Appellant contends that an improvement in computer-related technology is
not limited to the functionality of a computer but can be claimed “as a set of
‘rules’ (basically mathematical relationships) that improve computer-related
technology by allowing computer performance of a function not previously
performable by a computer.” Br. 12 (citation and emphasis omitted). In this
regard, Appellant contends that the claimed invention “combin[es] the
Liapunov function with the candidate model equations, enab[ling] values
required for control variables to be chosen such that the solution trajectories
will flow in a particular direction through state space in an asymptotically
stable manner.” Id. at 14; see also id. at 13 (arguing there is innovation in
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determining a treatment program by selecting a mathematical model based
on system values and determining a control program based on the selected
model via steps (i)–(v) under limitation (f) (e.g., using Liapunov function)).
However, in McRO an improvement in computer animation was
realized using rules to define an output morph weight set stream as a
function of phoneme sequence and time of said phoneme sequence,
obviating the need of human animators to make visual and subjective
determinations for the morph weight sets. McRO, 837 F.3d at 1306, 1313.
The Federal Circuit determined that the claimed invention was directed to a
“technological improvement over the existing, manual 3-D animation
techniques” through the use of “limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice.” Id. at 1316.
Here, despite Appellant’s assertions to the contrary, there is no
analogous specific set of rules that result in an improvement to technology.
Instead, claim 53 recites results-based rules for each of limitations (a)
through (g), without providing sufficient technological details for how to
achieve the desired results. See Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law
demands more” than claim language that “provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it”).
For example, limitation (c) recites “determining a plurality of
mathematical models, each mathematical model comprising one or more
differential equations representing a progression of the condition, the
progression being a development of the condition over time.” No particular
manner for determining the model is provided that would indicate any
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improvement in technology. The Specification also does not provide such
technical details. See, e.g., Spec. 14, l. 33–15, l. 9 (describing generally that
several different models having one or more ordinary differential equations
may be provided for each condition).
Similarly, limitation (f) recites determining a control program that
broadly makes use of any known Liapunov function. Liapunov functions
are known for imposing desired qualitative behavior on system trajectories.
See Spec. 20, ll. 19–20. Appellant does not specify any particular manner of
determining the Liapunov function to indicate an improvement to
technology, or otherwise indicate that claim 53’s application of a Liapunov
function is somehow an improvement in technology. The Specification
supports our understanding. See, e.g., Spec. 3, ll. 22–23 (“[t]he method can
include using a Liapunov function to determine the one or more control
programs, although other techniques may also be used”); 20, ll. 20–22 (“it
will . . . be appreciated that a number of different Liapunov functions may be
selected for any [] particular scenario”); 20, ll. 24–25 (“[i]t will . . . be
something of an art for a user of the system to select the most advantageous
Liapunov function”).
We do not see any parallel between the limiting rules described in
McRO that result in an improvement technology and the result-based
functional limitations recited in Appellant’s claim 53 that may result in an
improvement in the abstract idea itself. We are not persuaded that the
additional limitations in Appellant’s claim 53 do more than implement the
abstract idea, i.e., a method of organizing human activity and mental
process, on a computer, i.e., the claimed processing system.
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We find no indication in the record that attributes the additional
elements recited in claim 1 to an improvement in the functioning of a
computer or to technology, to implementing the abstract idea with a
particular machine that is integral to the claim, that effects a transformation
or reduction of a particular article to a different state or thing, that applies
the abstract idea in some other meaningful way beyond using a computer as
a tool to perform an abstract idea, or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the 2019 Revised Guidance.
Inventive Concept: Step Two of the Mayo/Alice Framework; Step 2B of the
2019 Revised Guidance
Having determined under Step 2A of the 2019 Revised Guidance that
claim 53 is directed to an abstract idea, we next consider under Step 2B, the
second step of the Mayo/Alice framework, whether claim 53 adds specific
limitations beyond the judicial exception that are not “well-understood,
routine, conventional” in the field, or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception.
As described above, the only claim elements beyond the abstract idea
is the claimed generic “processing system” used to perform the recited steps
of claim 53. Appellant cannot reasonably maintain, nor does Appellant, that
there is a genuine issue of material fact regarding whether operation of this
component is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 53 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using other than
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generic computer components to perform generic computer functions, e.g.,
obtaining, determining, and selecting information.
Appellant argues that claim 53 recites significantly more than the
abstract idea for the same reasons that Appellant argues that the claim
reflects an improvement in technology. See Br. 16. We find these
arguments equally unpersuasive at step two of the Mayo/Alice test. The
steps of determining a plurality of models and determining a control
program, for example, are part of the abstract idea itself and, thus, cannot be
the inventive concept:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer [v. HP, Inc., 881 F.3d 1360
(Fed. Cir. 2018)] . . . leave[s] untouched the numerous cases from
this court which have held claims ineligible because the only
alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring in denial of petition for rehearing en banc). Moreover, as
described above, claim 53 does not recite any unconventional manner for
determining that indicates any inventive concept amounting to significantly
more than the abstract idea.
To the extent Appellant argues these features are novel (see Br. 16),
neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
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., 573 U.S. at 217–18 (citation omitted).
Appeal 2018-004479
Application 13/848,181

19
“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.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 53 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 53, and claims 54,
56, 57, 59–63, 66–81, and 86, which fall with claim 53.

CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
53, 54, 56, 57, 59−63,
66–81, 86
§ 101 53, 54, 56, 57, 59–63,
66–81, 86

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