NORTHROP GRUMMAN SYSTEMS CORPORATION

Patent Trials and Appeals Board

Jun 8, 2020

14873837 - (D) (P.T.A.B. Jun. 8, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/873,837 10/02/2015 Sanjiv Desai 007746-014-US-NPV 7187
149217 7590 06/08/2020
Burr Forman McNair
Northrop Grumman
Bank of America Plaza
101 South Tryon Street, Suite 2610
Charlotte, NC 28280
EXAMINER
REICHERT, RACHELLE LEIGH
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/08/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mcnairip@mcnair.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte SANJIV DESAI and SREELATHA GHANTA

Appeal 2019-004988
Application 14/873,837
Technology Center 3600

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as
Northrop Grumman Systems Corporation. Appeal Br. 1.
2 Throughout this Decision we refer to the Final Rejection mailed September
28, 2018 (“Final Act.”), the Appeal Brief filed February 21, 2019 (“Appeal
Br.”), the Examiner’s Answer mailed April 12, 2019 (“Ans.”), and the Reply
Brief filed June 12, 2019 (“Reply Br.”).
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INVENTION
The present invention relates to “the employment of a system for
healthcare information management in connection with drug discovery” for
“provid[ing] a potential drug to disease link based on the mapping of drugs
to biomarkers and the mapping of biomarkers to diseases using the
biomarkers as a bridge.” Spec. ¶ 1; Abstract. Appellant’s invention
performs drug discovery using (i) “a pharmaco-genomic mapper configured
to provide a mapping of drugs to biomarkers based on extraction of
information from . . . data sources [including a clinical research database
providing results of clinical trials]” and (ii) “a genome connect module
configured to provide a mapping of biomarkers to diseases based on
extraction of information from the data sources.” Spec. Abstract. Claim 1 is
representative of the invention and is reproduced below.
1. A drug discovery system, the system comprising:
a data platform scalable to include a plurality of data
sources, the data sources including at least a clinical research
database providing matched data and not matched data from
results of clinical trials; and
a drug discovery module comprising a pharmaco-
genomic mapper configured to provide a mapping of drugs to
biomarkers having a first mapping score based on extraction of
information from the matched data and the not matched data,
and
a genome connect module configured to provide a
mapping of biomarkers to diseases having a second mapping
score based on extraction of information from the matched data
and the not matched data,
the drug discovery module comprising processing
circuitry configured to provide a potential drug to disease link
based on the mapping of drugs to biomarkers and the mapping
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of biomarkers to diseases using the biomarkers as a bridge
between respective mappings,
wherein the first and second mapping scores indicate a
level of validation for each respective mapping.
Appeal Br. 13 (Claims App.).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hopkins et al. US 2005/0060305 A1 Mar. 17, 2005
Chen et al. US 2014/0121120 A1 May 1, 2014

REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–8.
Claims 1–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hopkins in view of Chen. Final Act. 8–15.

OPINION
Rejection under 35 U.S.C. § 101
Patent eligibility under § 101 is a question of law that may contain
underlying issues of fact. “We review the [Examiner’s] ultimate conclusion
on patent eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d
1360, 1365 (Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
to patent-eligible subject matter is an issue of law that we review de novo.”).
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Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
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. See, 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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
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
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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.
Patent Office Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Guidance”).3 Under
the Guidance, we first look to whether the claim recites:
(1) (see Guidance at 54, Step 2A–Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human

3 The Office issued a further memorandum on October 17, 2019 (“October
2019 Memorandum”) clarifying guidance of the January 2019 Memorandum
in response to received public comments. See
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.
pdf. Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Guidance at 51; see also
October 2019 Memorandum at 1.
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activity such as a fundamental economic practice, or mental
processes); and
(2) (see Guidance at 54–55, Step 2A–Prong Two) additional
elements that integrate the judicial exception into a practical
application (see 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 at 56, Step 2B.
ANALYSIS
At the outset, we determine that the claims are directed to statutory
categories. See Guidance at 53. Claims 1–11 are directed to systems, and
claims 12–20 are directed to methods. See Appeal Br. 13–16 (Claims App.).
Thus, the pending claims are directed to recognized statutory categories
of § 101. We next turn to Step 2A, Prong One, of the Guidance to determine
whether the claims recite a judicial exception. See Guidance at 54.
Step 2A, Prong One: “recites a judicial exception”
The Examiner determines that claims 1–20 are not patent eligible as
they are directed to a judicial exception without reciting significantly more.
Final Act. 2–8; Ans. 5. Specifically, the Examiner determines that claims 1–
20 are directed to
the abstract idea of using a data platform scalable to include a
plurality of data sources, providing a mapping of drugs to
biomarkers having a first mapping score based on extraction
of information from data, providing a mapping of
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biomarkers to diseases having a second mapping score based
on extraction of information, providing a potential drug to
disease link based on the mapping of drugs to biomarkers.

Final Act. 2–3. The Examiner considers the claims to be similar to the
claims in Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016), which are directed to collecting information, analyzing the
information, and obtaining and displaying certain results of the collection
and analysis. Final Act. 4. In the Answer, the Examiner finds, under the
Guidance, that “the claims can be categorized under the mental processes
category” as “[t]he claims and/or specification does not make it clear that the
amount of data is so large as to preclude the analysis being done in one’s
head.” Ans. 5.
Appellant argues independent claims 1 and 12 together. Appeal Br. 4,
7–8. As a result, we select independent claim 1 as the representative claim
and address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv).
Independent claim 12 stands or falls with claim 1. Id.
Appellant argues the claims are not directed to an abstract idea
because “the specific actions claimed define a specific means by which to
improve the capability to discover drug to disease links” and “improve the
relevant technology of drug discovery,” by using “data that is normally
discarded or ignored [such as data on drugs that do not exhibit positive
characteristics relative to a target effect of a clinical trial] to identify
potential uses for drugs” and to identify “useful drug interactions that were
not the focus of a study that was already performed.” Appeal Br. 5–7.
Appellant argues that likening Appellant’s claims to the claims in Electric
Power Grp. misconstrues and oversimplifies Appellant’s claims. Appeal Br.
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5; Reply Br. 2–3. Appellant also argues “neither independent claim 1 nor
independent claim 12 recites a mental process” and Examiner’s assertion
that “the claims can be categorized under the mental process category” is
“without any support or evidence.” Appeal Br. 8; Reply Br. 4.
Appellant’s arguments do not persuade us that the claims do not recite
an abstract idea, and we concur with the Examiner’s conclusion that the
claims recite an abstract idea. Final Act. 2–4; Ans. 5.
Under its broadest reasonable interpretation, claim 1 recites an
abstract mental process of collecting/gathering information (“include a
plurality of data sources, the data sources including at least a clinical
research database providing matched data and not matched data from results
of clinical trials” as recited in claim 1), analyzing it (“provide a mapping of
drugs to biomarkers having a first mapping score based on extraction of
information from the matched data and the not matched data” and “provide a
mapping of biomarkers to diseases having a second mapping score based on
extraction of information from the matched data and the not matched data,”
wherein “the first and second mapping scores indicate a level of validation
for each respective mapping”), and providing results of the collection and
analysis (“provide a potential drug to disease link based on the mapping of
drugs to biomarkers and the mapping of biomarkers to diseases using the
biomarkers as a bridge between respective mappings”). See Final Act. 4.
Our reviewing court has concluded that mental processes include similar
concepts of collecting, manipulating, and providing, data. See Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.
2017) (the Federal Circuit held “the concept of . . . collecting
data, . . . recognizing certain data within the collected data set,
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and . . . storing that recognized data in a memory” ineligible); see also
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776
F.3d 1343, 1347 (Fed. Cir. 2014) (claims are drawn to the basic concept of
data recognition and storage); Electric Power Grp., 830 F.3d at 1353
(merely selecting information, by content or source, for collection, analysis,
and display does nothing significant to differentiate a process from ordinary
mental processes); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375 (Fed. Cir. 2011) (purely mental processes can be unpatentable,
even when performed by a computer).
Thus, Appellant’s arguments that claim 1 recites elements that cannot
be characterized as mental steps or performed mentally, and that the claim
recites more than an abstract idea, have not persuaded us the Examiner erred
in finding the claim also recites an abstract idea. See Appeal Br. 5–8; see
also Reply Br. 2–4.
We also remain unpersuaded by Appellant’s argument that the
Examiner’s “statement [that the claims can be categorized under the mental
process category] is made without any support or evidence.” See Reply Br.
4 (emphasis added). The Examiner has provided support when the
Examiner explained “the claims can be categorized under the mental
processes category” because “[t]he claims and/or specification does not
make it clear that the amount of data is so large as to preclude the analysis
being done in one’s head.” See Ans. 5; see also Final Act. 4. Indeed,
Appellant’s claim 1 does not require more than one “mapping of drugs to
biomarkers,” one “mapping of biomarkers to diseases,” and one “potential
drug to disease link” based on two mappings. See Appeal Br. 13 (Claim 1).
Thus, claim 1’s drug discovery technique identifies correlations between
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biomarkers, drugs, and diseases using operations readily performable in the
human mind.
Having determined that representative claim 1 recites an abstract idea
(mental process) identified in the Guidance, we turn to Step 2A, Prong Two,
of the Guidance to determine whether the abstract idea is integrated into a
practical application. See Guidance at 54–55.
Step 2A, Prong Two: “does not integrate that exception into a
practical application”

The Examiner asserts that “the plain focus of the claims is not an
improvement to computer functionality itself . . . the claims are merely using
a computer to implement the abstract idea and there is no technological
improvement,” and “the additional elements of the claims do not integrate
the abstract idea into a practical application.” Ans. 3–5. We agree.
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., 830 F.3d at 1353).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
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the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
relates to. In this case, the Specification discloses that the invention relates
to “healthcare information management” and “employment of a system for
healthcare information management in connection with drug discovery.”
Spec. ¶ 1. In order to perform drug discovery, “clinical trial data for
unmatched drug and biomarker candidates is used (as wells[sic] as the
clinical trial data for matched drug and biomarker candidates),” mapping
scores “may be generated based on some indicator of data quantity and/or
quality” determined from, e.g., sizes of clinical studies and the clinical
datasets, and the mapping scores “may be combined or otherwise employed
to define a potential drug to disease link using the biomarkers as a bridge” to
“identify correlations (i.e., bridging links) that are direct links (e.g., a one-to-
one association [between a drug and a disease]) or indirect links (e.g., not
one-to-one associations [between a drug and a disease)].” Spec. ¶¶ 23, 103,
109–110.
We do not find persuasive Appellant’s arguments that claim 1 is not
directed to an abstract idea because: (i) the claim integrates a practical
application for “creating mappings of links that can be used to identify
potentially effective drugs in connection with test results that would have
otherwise been completely discarded,” thereby identifying “useful drug
interactions that were not the focus of a study that was already performed”
and “improv[ing] the capability to discover drug to disease links” (Appeal
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Br. 5–6, 8); and (ii) the claim recites “an improved way to use information
that, although previously available, would have been disregarded or
discarded” (Reply Br. 4). Appellant also asserts, analogizing to Core
Wireless, claim 1 recites “steps that achieve a function that was not
previously done, and with data (and therefore mappings) that were not
previously made or used,” thus providing “steps not previously performed to
achieve a function not previously capable of performance to thereby
improve the relevant technology of drug discovery.” Appeal Br. 6–7 (citing
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed.
Cir. 2018)); Reply Br. 3–4. Finally, Appellant asserts, analogizing to McRO,
claim 1’s “recitations, when read as an ordered combination, without
ignoring the requirements of the individual steps, define a specific means by
which to accomplish a function that is not a preemption of the function
itself” and “the claimed invention is clearly not directed to an abstract idea
following the instructions of McRO.” Appeal Br. 5–6 (citing McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). We
disagree, and distinguish the McRO and Core Wireless cases from the instant
claims.
Claim 1 is not analogous to the claims in McRO. There, the Federal
Circuit determined that the claims were directed to an improvement in
computer animation, and, thus, did not recite a concept similar to previously
identified abstract ideas. McRO, 837 F.3d at 1316. The court relied on the
specification’s explanation of how the claimed rules enabled the automation
of specific animation tasks that previously could not be automated. Id. at
1313. The McRO court indicated that it was the incorporation of the
particular claimed rules in computer animation that “improved [the] existing
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technological process,” unlike cases such as Alice where a computer was
merely used as a tool to perform an existing process. Id. at 1314. Here,
claim 1 is not directed to a process that could not previously be automated,
rather, it is directed to a drug discovery technique that identifies correlations
between biomarkers, drugs, and diseases by operations readily performable
in the human mind. See Spec. ¶¶ 1, 23, 103, 109–111. We are not
persuaded that the operations in claim 1 amount to “a specific means or
method [e.g., patentable subject matter] that improves the relevant
technology.” McRO, 822 F.3d at 1314 (emphasis added). Rather, the recited
operations merely describe determining a potential drug to disease link
based on mapping of drugs to biomarkers and biomarkers to diseases. See
Appeal Br. 13. These operations do not incorporate an improvement to the
computer itself or other technological improvement. Ans. 3–4.
To be sure, claim 1 does utilize computer components such as a “data
platform,” “clinical research database,” “module[s],” and “processing
circuitry” for determining a potential drug to disease link. These
components, however, are used in an ordinary manner, and for their ordinary
functions, and claim 1 does not evidence any improvement to those
components themselves. See MPEP § 2106.05(a). Claim 1 merely uses the
computer components to store, provide, and analyze data. Hence, instead of
a technical improvement, the claimed operations of providing mappings and
a potential drug to disease link improve drug discovery using processes that
are readily performable in the human mind. Such an improvement does not
integrate the abstract idea into a practical application. See OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
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computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).
We additionally note many of Appellant’s arguments are not
commensurate with the scope of claim 1. Claim 1 does not require
“put[ting] the not matched data to use in a new way, which can lead to the
discovery of useful drug interactions that were not the focus of a study that
was already performed,” as Appellant argues. See Appeal Br. 5–6 (emphasis
added). Although claim 1 recites “providing . . . not matched data from
results of clinical trials,” claim 1 does not require the “not matched data” to
be used particularly for determining the “mapping of drugs to biomarkers,”
the “mapping of biomarkers to diseases,” and the “potential drug to disease
link”; rather, claim 1 merely requires the mappings to be “based on
extraction of information from the matched data and the not matched data.”
See Appeal Br. 13 (Claim 1 (emphases added)). Appellant’s Specification
also describes identification of a potential drug (A) to disease (B) link from
“a first study [that] may identify a link between drug A and biomarker x1”
and “another study [that] may identify a link between biomarker x1 and
disease B,” which, again, does not evidence the actual use of not matched
data (i.e., data that regards biomarkers produced by drugs in a drug trial
where the biomarkers did not match desired results for the condition or
disease being studied from a drug trial). See Spec. ¶¶ 100, 110.
Claim 1 also does not recite or require “identify[ing] potentially
effective drugs in connection with test results that would have otherwise
been completely discarded,” “us[ing] information that, although previously
available, would have been disregarded or discarded,” or “us[ing] data that
is normally discarded or ignored to identify potential uses for drugs” as
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Appellant argues. See Appeal Br. 5–6, 8 (emphases added); Reply Br. 4
(emphasis added).
Claim 1 is also not analogous to the claims in Core Wireless. The
Federal Circuit determined that “[t]he asserted claims in [Core Wireless] are
directed to an improved user interface for computing devices,” particularly
“those with small screens,” by “bringing together ‘a limited list of common
functions and commonly accessed stored data,’ which can be accessed
directly from the main menu.” Core Wireless, 880 F.3d at 1362–63. In
contrast to Core Wireless, Appellant’s claim 1 does not provide an improved
user interface for accessing data. Rather, Appellant’s claim 1 recites a drug
discovery technique using steps that are readily performable in the human
mind.
Appellant also argues claim 1 provides meaningful limitations
regarding the use of “data that was previously discarded” and “the making
and using of various linkages or mappings of data that would not have
previously been made,” not preempting or tying up the use of an abstract
idea. Appeal Br. 5–6. This argument does not persuade us of Examiner
error. Although preemption may denote patent ineligibility, its absence does
not demonstrate patent eligibility. See FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016); see also Ans. 4. For claims
covering a patent-ineligible concept, preemption concerns “are fully
addressed and made moot” by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Accordingly, under Step 2A, Prong Two, we find claim 1 does not
recite “additional elements that integrate the judicial exception into a
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practical application,” and is directed to an abstract idea in the form of a
mental process because the claimed drug discovery identifies correlations
between biomarkers, drugs, and diseases by operations readily performable
in the human mind using thought processes of observation, evaluation,
judgment, and opinion. Guidance, 84 Fed. Reg. at 52, 54; see also MPEP
§ 2106.05(a)–(c), (e)–(h).
Step 2B: “well-understood, routine, conventional”
We must now determine whether independent claim 1 recites any
elements additional to the abstract idea that are not well-understood, routine,
or conventional. See MPEP § 2106.05(d). We are unable to identify any.
The Examiner asserts,
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements, other than the abstract
idea per se, when considered both individually and as an ordered
combination, amount to no more than limitations consistent with
what the courts have recognized, or those in the art would
recognize, to be well-understood, routine, and conventional.

Final Act. 4–5. Appellant argues the claims recite “significantly more”
because the claims demonstrate “improvement relative to the other
conventional uses of computing devices” and “improve the capability of the
system as a whole to increase the likelihood of discovering useful drugs by
using data previously not used.” Reply Br. 3; Appeal Br. 7. Appellant also
argues the Examiner has not provided factual support or evidence for the
“statement that the ‘present claims merely implement an old practice in a
new environment.’” Reply Br. 3–4.
Appellant’s arguments are not persuasive. Particularly, we are not
persuaded by Appellant’s arguments that claim 1 demonstrates an
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“improvement relative to the other conventional uses of computing devices”
or “improve[s] the capability of the system as a whole to increase the
likelihood of discovering useful drugs by using data previously not used.”
Reply Br. 3; Appeal Br. 7. As discussed supra, claim 1 does not recite or
require “discovering useful drugs by using data previously not used.” See
Appeal Br. 7. Additionally, claim 1 does not recite more than generic and
readily available computer components performing generic data storage and
manipulation steps, and does not evidence an improvement over
conventional uses of computing devices, as Appellant argues. See Reply Br.
3.
Appellant’s argument that the Examiner has failed to produce factual
support or evidence that claim 1 is conventional and “old practice” is also
unpersuasive. See Reply Br. 3–4. The Examiner has noted that Appellant’s
Specification describes generic computer elements performing generic
computer functions. Final Act. 6–7 (citing Spec. ¶ 94). The Examiner has
also identified conventional techniques for performing drug discovery.4 The
Examiner further noted the claimed storage and data analysis are performed
with basic computer functions, i.e., they are well-understood, routine, and
conventional functions previously known to the industry. See Final Act. 7
(citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321
(Fed. Cir. 2016) (receiving, screening, and distributing data over a computer
network is well known)); see also Versata Dev. Group, Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (receiving, storing, retrieving,

4 For example, the Examiner has identified Hopkins as disclosing techniques
for performing drug discovery using correlations between drugs, biomarkers,
and diseases. See Hopkins ¶¶ 23, 30, 61, 63, 96, 102, 107, Fig. 3.
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sorting, and eliminating information is well known); OIP Techs., 788 F.3d at
1363 (storing data is well-understood, routine, and conventional); Elec.
Power Grp., 830 F.3d at 1356 (The claims “do not include any requirement
for performing the claimed functions of gathering, analyzing, and displaying
in real time by use of anything but entirely conventional, generic technology.
The claims therefore do not state an arguably inventive concept . . . .”); 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,’ . . . those functions can be achieved
by any general purpose computer without special programming.”). “[T]he
use of generic computer elements like a microprocessor or user interface” to
perform conventional computer functions “do not alone transform an
otherwise abstract idea into patent-eligible subject matter.” FairWarning IP,
839 F.3d at 1096 (citing DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014)); see also BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1286–87 (Fed. Cir. 2018) (“[C]laims are not saved from
abstraction merely because they recite components more specific than a
generic computer”).
Considered as an ordered combination, the generic computer
components of Appellant’s claim 1 add nothing that is not already present
when the data processing steps are considered separately. For example,
claim 1 does not, as discussed above, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. Instead, claim 1 amounts to nothing
significantly more than an instruction to apply the abstract idea using a
generic computer. That is not enough to transform an abstract idea into a
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patent-eligible invention. See Alice, 573 U.S. at 225–26. “[A]fter Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible.” DDR Holdings, 773
F.3d at 1256; see also SiRF Tech., 601 F.3d at 1333 (“In order for the
addition of a machine to impose a meaningful limit on the scope of a claim,
it must play a significant part in permitting the claimed method to be
performed,” rather than “function solely as an obvious mechanism for
permitting a solution to be achieved more quickly, i.e., through the
utilization of a computer for performing calculations.”).
Appellant also argues the claims recite “significantly more” because
“the claimed functions are clearly directed to a new application or function
that was not known or obvious,” and “the invention’s novelty demonstrates
its improvement relative to the other conventional uses of computing
devices.” Appeal Br. 7; Reply Br. 2–4. This improperly conflates the test
for 35 U.S.C. § 101 with the separate tests for 35 U.S.C. §§ 102 and 103.
See, e.g., Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016) (“[U]nder the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility.”); see also Ans. 5. As the Supreme Court emphasizes,
“[t]he ‘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.” Diehr, 450 U.S. at 188–89 (emphasis added). Thus, a novel and
nonobvious claim directed to a purely-abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 89–91.
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Because Appellant’s representative claim 1, and grouped claim 12 are
directed to a patent-ineligible abstract concept and do not recite an
“inventive concept” under the second step of the Alice analysis, we sustain
the Examiner’s § 101 rejection of independent claims 1 and 12, and their
dependent claims 2–11 and 13–20.

Rejection under 35 U.S.C. § 103
The Examiner finds the combination of Hopkins and Chen renders
obvious claims 1–20. Final Act. 8–15; Ans. 5–7. Appellant contends,
however, that Hopkins fails to teach or suggest “employing a drug discovery
module to provide a mapping of drugs to biomarkers having a first mapping
score based on the information from the matched data and the not matched
data” and “employing the drug discovery module to provide a mapping of
biomarkers to diseases having a second mapping score based on the
information from the matched data and the not matched data” as required by
claim 1, because “Hopkins fails to provide any discussion regarding the
usage of not matched data from clinical trials.” Appeal Br. 9–10.
Appellant’s contention does not persuade us of error in the Examiner’s
rejection, for the reasons described below.
Initially, we note that we agree with Appellant that the Specification
describes multiple kinds of data, including the claimed “matched data”
(which may be “clinical trial data for matched drug and biomarker
candidates,” see Spec. ¶ 23) and the claimed “not matched data from results
of clinical trials” (which is “data regarding biomarkers produced by drugs in
a drug trial where the biomarkers did not match desired results for the
condition or disease being studied from a drug trial,” see Spec. ¶ 100).
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Reply Br. 5; Appeal Br. 9. However, we agree with the Examiner that “[t]he
terms ‘matched and not matched data’ is non-functional, and therefore, is
given little patentable weight” in the context of claim 1. Ans. 5.
First, we note that claim 1 does not recite or require “a mapping of
potential links, particularly for the not matched data” or “identify[ing] (from
information that is normally discounted and effectively discarded) potential
drug to disease correlations” as Appellant represents. See Appeal Br. 9.
Particularly, claim 1 does not require the “not matched data” to be used for
determining the “mapping of drugs to biomarkers,” the “mapping of
biomarkers to diseases,” and the “potential drug to disease link”; rather,
claim 1 broadly requires the mappings to be “based on extraction of
information from the matched data and the not matched data.” See Appeal
Br. 13 (Claim 1 (emphases added)). Appellant’s Specification also describes
identification of a potential drug (A) to disease (B) link from “a first study
[that] may identify a link between drug A and biomarker x1” and “another
study [that] may identify a link between biomarker x1 and disease B,” which
again does not evidence the actual use of not matched data from results of
clinical trials. See Spec. ¶¶ 100, 110.
Second, to the extent Appellant is contending the claimed “not
matched data” has different informational content than the “matched data”
(see Reply Br. 5; Appeal Br. 9), claim 1 does not recite the informational
content of the “not matched data” as functionally related to the claimed
mappings of drugs to biomarkers and biomarkers to diseases. See In re
Distefano, 808 F.3d 845, 850–51 (Fed. Cir. 2015) (printed matter, i.e.,
“claimed for what it communicates,” has no patentable weight unless
functionally or structurally related to the claimed invention.). As discussed
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supra, claim 1 does not require the mappings to map links for biomarkers in
not matched data (i.e., biomarkers produced by drugs in a drug trial where
the biomarkers did not match desired results for the condition or disease
being studied from a drug trial). See Appeal Br. 13 (Claim 1); see also Spec.
¶ 100. Although Appellant’s drug discovery technique provides a potential
drug to disease link based on the mappings, the not matched data is not
applied in a way that creates a patentable distinction from Hopkins’ drug
discovery technique. The content of the not matched data is nonfunctional
descriptive material that does not distinguish claim 1 from the prior art.
Ans. 5. Particularly, this content does not reconfigure the claimed provision
of mappings and drug to disease link to perform a different function than
that disclosed in the prior art. For example, Hopkins teaches using various
data sources to provide mappings of drugs to biomarkers and of biomarkers
to diseases, and potential drug to disease links based on the mappings. See
Hopkins ¶ 107, Fig. 3; Final Act. 9–10 (citing Hopkins ¶¶ 23, 30, 61, 63, 96,
102, 107); see also Hopkins ¶¶ 61 (describing the use of “[v]arious data
sources . . . provided by a single, combined or federated database of
information (for example the MEDLINE collection of biomedical literature),
by single entry additions, by feeds of non-database information, such as
news-wires, by proprietary documents or results, (e.g. internal company
reports) and so on,” for drug discovery), 96 (describing the use of “various
sources relevant to drug discovery (e.g. research papers, internal company
reports, books, clinical trial results, regulatory filings, etc.)” for drug
discovery).
We, therefore, agree with the Examiner that Hopkins teaches and
suggests “a drug discovery module comprising a pharmaco-genomic mapper
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configured to provide a mapping of drugs to biomarkers having a first
mapping score based on extraction of information from the matched data and
the not matched data” and “a genome connect module configured to provide
a mapping of biomarkers to diseases having a second mapping score based
on extraction of information from the matched data and the not matched
data,” as recited in claim 1.
Appellant further contends “Hopkins also fails to teach or suggest
providing a potential drug to disease link based on the mapping of drugs to
biomarkers and the mapping of biomarkers to diseases using the biomarkers
as a bridge between respective mappings” as recited in claim 1. Appeal Br.
11. Appellant argues:
Hopkins maps or plots all three parameters of disease, target and
compound in three dimensional space on the same plot. Any one
of the three can be used to search the plot for other parameters.
However, in all cases, all three are plotted (or mapped) together
in a single plot. There is no disclosure in Hopkins regarding two
separate mappings, much less using biomarkers as a bridge
between two separate mappings to identify drug to disease links.
To the extent a biomarker is considered analogous to a target,
and the target was used as a parameter for a query or hypothesis
in Hopkins to find a compound and disease, the target is plotted
with the compound and disease within the same three
dimensional plot, and there is not any bridging between separate
mappings as claimed.

Id. at 10–11 (emphases added).
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings that Hopkins’ “linkages [provided] between a specified
entity on a first axis and each of the set of entities on a second axis” teach (i)
two separate mappings as claimed and (ii) “a potential drug to disease link
based on the [two] mapping[s] . . . using the biomarkers as a bridge between
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respective mappings” as claimed. Final Act. 10 (citing Hopkins ¶¶ 30, 107);
Ans. 6 (citing Hopkins ¶¶ 63, 180, 212, 233–238). For example, Hopkins’
Figure 3 teaches: (i) the claimed providing a mapping of drugs to
biomarkers (“a drug or compound (C1) is found that interacts with the target
T1” (a biomarker), which “defines a second line in the matrix, represented in
FIG. 3 by line B,” see Hopkins ¶ 107); (ii) the claimed providing a mapping
of biomarkers to diseases (“starting with the discovery or recognition of a
disease (D1), a target (T1) is identified that is relevant to this disease” and
“[t]he combination of D1 and T1 defines a line in the matrix, illustrated in
FIG. 3 by line A . . . [that] runs parallel to the compound axis and passes
through the coordinate (D1, T1, C=0),” see id.); and (iii) the claimed
providing a potential drug to disease link based on the two mappings using
the biomarkers as a bridge between respective mappings (“[t]he intersection
of lines A and B, corresponding to the vector I=(D1, T1, C1), then identifies
the possibility of using compound C1 as a drug for treating disease D1 by
interacting with target T1,” see id.).
We additionally note that Appellant’s arguments—that Hopkins does
not use “biomarkers as a bridge between two separate mappings” because
“[Hopkins’] target is plotted with the compound and disease within the same
three dimensional plot, and there is not any bridging between separate
mappings”—are not commensurate with the scope of claim 1. See Appeal
Br. 10–11 (emphases added). Claim 1 merely recites “using the biomarkers
as a bridge between respective mappings” and does not specify details of the
claimed bridging. Claim 1’s bridging does not exclude the use of
biomarkers to search for correlations to drugs and diseases in a 3D plot of
diseases, drugs, and biomarkers (as in Hopkins). Furthermore, claim 1’s
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provision of mappings (of drugs to biomarkers and of biomarkers to
diseases) does not exclude searching a 3D plot for biomarker-drug
correlations and biomarker-disease correlations (as in Hopkins).5 Thus,
Appellant has not persuaded us that the claimed use of biomarkers as a
bridge between mappings would preclude Hopkins’ use of biomarker
coordinates in a 3D plot to perform drug discovery.
Therefore, for all the reasons stated supra, we sustain the Examiner’s
rejection under 35 U.S.C. § 103 of independent claim 1, independent claim
12 for which Appellant provides the same arguments, and dependent claims
2–6, 10, 11, and 13–17 that are not argued separately. Appeal Br. 9–11.
With respect to dependent claims 7–9 and 18–20, Appellant contends
the rejection of these claims is in error for the same reasons as base claims 1
and 12. Appeal Br. 11. Appellant also refers to “the features of claims 7
and 18, which generally relate to the incorporation of data quality into the
mapping scores” and “the features of claims 8 and 19 . . . [and] the features
of claims 9 and 20, each of which provide specific definitions for the

5 We further note Appellant’s Specification does not provide explicit and
exclusive definitions for the claimed terms “mapping” and “bridge,” and
merely provides discussion of non-limiting examples of mappings and using
biomarkers as a bridge between mappings. See Spec. ¶¶ 22 (“biomarkers
may be used as a bridge to connecting drugs to diseases that such drugs may
be effective to treat”), 23 (“identify biomarker to disease mapping such that
links between drugs and diseases can be made”), 100 (“The mapping
between drugs and biomarkers may be formed by extracting correlations
between drugs and biomarkers”), 110 (“the mappings may be used by the
drug discovery module 500 to identify correlations (i.e., bridging links) that
are direct links (e.g., a one-to-one association) or indirect links (e.g., not
one-to-one associations[)]”), 113 (describing “bridging or linking
biomarkers”).
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indicator of data quality,” arguing that Examiner’s “cited passages [in
Hopkins], and indeed all of Hopkins, are completely silent as to any
indicator of data quality either literally or in any subtle way that could be
construed as being analogous to an evaluation or indication of data quality.”
Id. at 11–12.
Appellant’s arguments, however, have not rebutted the Examiner’s
specific findings regarding how Hopkins teaches and suggests the “indicator
of data quality” features recited in claims 7–9 and 18–20. We have
reviewed the Examiner’s findings and the cited portions of Hopkins, and we
concur with the Examiner’s findings that: (i) Hopkins’ ordering a listing of
entity associations (e.g., linkages between drugs, biomarkers, and/or
diseases) “according to confidence” or “relevance” teaches a mapping score
including an indicator of data quality as recited in claims 7 and 18 (see
Hopkins ¶¶ 31, 57; Final Act. 13 (citing Hopkins ¶¶ 31, 57); Ans. 7 (citing
Hopkins ¶ 213)); (ii) Hopkins’ search results (for a disease, such as malaria,
and for targets/biomarkers listed in a database) presented by target, “with
those targets that are mentioned in most information items at the top of the
list,” teaches an indicator of data quality defined based on an assessment of a
number of biomarkers associated with a disease as recited in claims 8 and 19
(see Hopkins ¶ 171; Final Act. 13 (citing Hopkins ¶ 171); Ans. 7); and (iii)
Hopkins’ identification of classes of interaction (between particular
targets/biomarkers, and drugs and diseases) using previously recognized or
recently identified “targets or compounds that might be useful as a
biomarker for that disease,” teaches an indicator of data quality defined
based on an assessment of an identity of biomarkers associated with a
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disease as recited in claims 9 and 20 (see Hopkins ¶¶ 33, 212; Final Act. 13
(citing Hopkins ¶¶ 33, 212); Ans. 7).
Accordingly, Appellant’s arguments have not persuaded us of error in
the Examiner’s rejection of claims 7–9 and 18–20, and we sustain the
Examiner’s rejection under 35 U.S.C. § 103 of claims 7–9 and 18–20.

CONCLUSION
The Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 101
is affirmed.
The Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103
is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 1–20
1–20 103 Hopkins, Chen 1–20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED