Roger G. PinsonneaultDownload PDFPatent Trials and Appeals BoardSep 3, 201914486292 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. 14/486,292 09/15/2014 Roger G. Pinsonneault 050704/502913 6442 99434 7590 09/03/2019 McKesson Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza 101 South Tryon St., Suite 4000 Charlotte, NC 28280-4000 EXAMINER NAJARIAN, LENA ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 09/03/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROGER G. PINSONNEAULT ____________ Appeal 2018‐005881 Application 14/486,2921 Technology Center 3600 ____________ Before DAVID M. KOHUT, IRVIN E. BRANCH, and JOSEPH P. LENTIVECH, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL2 Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1–4, 6–14, and 16–20. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is “McKesson Corporation.” App. Br. 2. 2 We reference, herein, the Final Office Action mailed May 18, 2017 (“Final Act.”), Appeal Brief filed December 18, 2017 (“App. Br.”), Examiner’s Answer mailed March 19, 2018 (“Ans.”), Reply Brief filed May 21, 2018 (“Reply Br.”), and Specification filed September 15, 2014 (“Spec.”). Appeal 2018‐005881 Application 14/486,292 2 STATEMENT OF THE CASE Appellant’s Invention The invention relates to “systems and methods for facilitating [healthcare] claim rejection resolution by providing prior authorization assistance . . . [and] supporting prior authorization inquiries.” Spec. ¶ 3. Claim 1 is illustrative of the claimed invention and reproduced, below, with emphasis on “additional elements” (explained infra). 1. A computer-implemented method, comprising: receiving, by a service provider system comprising one or more computer processors, a prescription claim transaction from a pharmacy computer associated with a pharmacy, wherein the prescription claim transaction comprises a product identifier for a drug or product prescribed to a patient, a pharmacy identifier identifying the pharmacy submitting the prescription claim transaction, and at least one patient identifier identifying the patient; transmitting, by the service provider system, the prescription claim transaction to a claims processor computer associated with a claims processor for adjudication of the prescription claim transaction; receiving, by the service provider system, an adjudicated response to the prescription claim transaction from the claims processor computer, the adjudicated response comprising a rejection response for the prescription claim transaction from the claims processor computer, wherein the rejection response includes a reject code that indicates a denial of coverage for the drug or product; determining, by the service provider system and based at least in part upon the reject code, that the prescription claim transaction qualifies for prior authorization assistance; identifying, by the service provider system, the pharmacy identifier in the prescription claim transaction; Appeal 2018‐005881 Application 14/486,292 3 comparing, by the service provider system, the pharmacy identifier to a plurality of pharmacy identifiers identifying pharmacies eligible to receive prior authorization assistance to determine if the pharmacy identifier matches at least one of the plurality of pharmacy identifiers; generating, by the service provider system and based at least in part upon the positive determination that the prescription claim transaction qualifies for prior authorization assistance and the pharmacy identifier matching at least one of the plurality of pharmacy identifiers identifying pharmacies eligible to receive prior authorization assistance, a request for prior authorization assistance, wherein information included in the request for prior authorization assistance enables a prior authorization assistance computer to initiate a process for completing a prior authorization form and for delivering the completed prior authorization form to a payor; transmitting, by the service provider system, the request for prior authorization assistance to the prior authorization assistance computer; generating, by the service provider system, a message indicating the request for prior authorization assistance has been accepted; appending, by the service provider system, the message to the adjudicated response; and transmitting, by the service provider system, the adjudicated response and the message to the pharmacy computer. App. Br. 21–22 (Claims Appendix). Rejection Claims 1–4, 6–14, and 16–20 stand rejected under 35 U.S.C. § 101 because the claimed subject matter is judicially-excepted from patent eligibility under 35 U.S.C. § 101. Final Act. 2–4. Appeal 2018‐005881 Application 14/486,292 4 PRINCIPLES OF LAW An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. 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, Appeal 2018‐005881 Application 14/486,292 5 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim ”seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., 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 (internal citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2018‐005881 Application 14/486,292 6 USPTO GUIDANCE The United States Patent and Trademark Office (USPTO) recently published revised guidance on the application of § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that 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 interactions 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) (9th Ed., Rev. 08.2017, Jan. 2018)). See Memorandum, 84 Fed. Reg. at 52, 54–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, we conclude the claim is directed to a judicial exception (id. at 54) and then look to whether the claim: (3) adds a specific limitation or combination of limitations beyond the judicial exception that are not “well-understood, routine, conventional” activity 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 Memorandum, 84 Fed. Reg. at 56. Appeal 2018‐005881 Application 14/486,292 7 ANALYSIS Claim 1 is representative of claims 2–4, 6–14, and 16–20. See 37 C.F.R. § 41.37(c)(1)(iv). There is no dispute that claim 1 falls within a category of patentable subject matter. See 35 U.S.C. § 101 (“process, machine, manufacture, or composition of matter”); see also Memorandum, 84 Fed. Reg. at 53–54 (“Step 1”). We accordingly turn to the issues raised by the Memorandum and Appellant’s arguments. Step 2A, Prong One:3 Does the Claim Recite Any Judicial Exceptions Turning to the first issue set forth by the Memorandum (see supra 6, bullet “(1)”), we find that claim 1 recites judicial exceptions. As found by the Examiner, claim 1 recites: 3 The Memorandum separates the enumerated issues (1) to (4) (see supra 6) into Steps 2A(1), 2A(2), and 2B, as follows: [T]he revised procedure . . . focuses on two aspects [of whether a claim is “directed to” a judicial exception under the first step of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the claim recites a judicial exception; and (2) whether a recited judicial exception is integrated into a practical application. [W]hen a claim recites a judicial exception and fails to integrate the exception into a practical application, . . . further analysis pursuant to the second step of the Alice/Mayo test (USPTO Step 2B) . . . is needed . . . in accordance with existing USPTO guidance as modified in April 2018.[] 84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO Memorandum of April 19, 2018, ‘Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https:// www.uspto.gov/sites/default/files/documents/memo-berkheimer- 20180419.PDF [ . . . ‘USPTO Berkheimer Memorandum’].”). Appeal 2018‐005881 Application 14/486,292 8 receiving a prescription claim transaction, transmitting the prescription claim transaction for adjudication of the prescription claim transaction; receiving an adjudicated response to the prescription claim transaction; determining, based at least in part upon a reject code, that the prescription claim transaction qualifies for prior authorization assistance; identifying the pharmacy identifier in the prescription claim transaction; comparing the pharmacy identifier to a plurality of pharmacy identifiers identifying pharmacies eligible to receive prior authorization assistance to determine if the pharmacy identifier matches at least one of the plurality of pharmacy identifiers; generating, based at least in part upon the positive determination that the prescription claim transaction qualifies for prior authorization assistance and the pharmacy identifier matching at least one of the plurality of pharmacy identifiers identifying pharmacies eligible to receive prior authorization assistance, a request for prior authorization assistance, transmitting the request for prior authorization assistance; generating a message indicating the request for prior authorization assistance has been accepted; appending the message to the adjudicated response; and transmitting the adjudicated response and the message. Final Act. 2–3. These steps, as drafted, recite processes that, under their broadest reasonable interpretation, correspond to falling within two of the Memorandum’s enumerated categories of judicial exceptions because healthcare professionals can perform the above activities manually during the processing of a prescription claim transaction. Namely, claim 1 recites “methods of organizing human activity . . . [such as] commercial . . . interactions” and “[m]ental processes . . . [such as] evaluation, judgment.” Memorandum, 84 Fed. Reg. at 52 (emphases added). We also agree with the Examiner that the recited steps are, inasmuch concerning the activities of healthcare professionals, analogous to the abstract ideas recognized by SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed. Cir. 2014) (unreported). See Ans. 3–4; Appeal 2018‐005881 Application 14/486,292 9 SmartGene, 555 F. App’x at 955. As the Examiner finds, claim 1’s above steps “collect[] prescription claim transaction information, analyz[e] said transaction to determine that it qualifies for prior authorization assistance and to find a matching pharmacy identifier, and [provide] an adjudicated response with a message indicating the request for prior authorization assistance has been accepted.” Ans. 4. Similarly, SmartGene’s claim “does not . . . identify any steps beyond those which doctors routinely and consciously perform.” 555 F. App’x at 955. For the foregoing reasons, we find claim 1 recites judicial exceptions. Step 2A, Prong Two: Are the Recited Judicial Exceptions Integrated Into a Practical Application? Turning to the second issue set forth by the Memorandum (see supra 6, bullet “(2)”), we agree with the Examiner that claim 1’s additional elements (see supra 2–3) do not integrate the recited judicial exceptions into a practical application. See Memorandum, 84 Fed. Reg. at 53 (describing a “practical application” as a “meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception”). Specifically, we agree: [Claim 1] recites the additional [elements] of a system, one or more computer processors, computers, at least one memory, and at least one processor[; all of] which are recited at a high level of generality and . . . as performing generic computer functions (i.e., transmitting/communicating information, receiving information, analyzing information, identifying information, comparing information, appending information, and generating information). Final Act. 4; see also id. at 5–6; Ans. 4. We also agree “[t]he computer components . . . perform the basic functions of a computer . . . that would be Appeal 2018‐005881 Application 14/486,292 10 needed to apply the abstract idea via computer.” Final Act. 5. We further agree that “[m]erely using generic computer components . . . [and] basic computer functions to practice or apply the judicial exception does not constitute a meaningful limitation.” Id. We add that the claimed technology consists of only processors (service provider) that: receive a transaction (claim) from a first computer (pharmacy), the transaction including a first identifier (prescribed product), second identifier (submitting pharmacy), and third identifier (patient); transmit the transaction to a second computer (claims processing); receive a response from the second computer, the response including a code (reject); determine, based on the code, the transaction satisfies a condition (qualifies for prior authorization); identify the second identifier in the transaction; compare the second identifier to other identifiers (plurality of eligible pharmacies) and determine a match; generate, based on the match, a request (for prior authorization assistance) enabling completion and delivery of a form; transmit the request; generate a message indicating the request was accepted; append the message to the response; and transmit the response and the message to the first computer. Nothing above constitutes a meaningful restriction of the claim scope, e.g., constitutes a particular technological solution to a problem, particular machine, or particular transformation of an article to a different state. See Memorandum, 84 Fed. Reg. at 55 (“exemplary considerations . . . indicative [of] a practical application”). For the foregoing reasons, we find claim 1 is directed to the recited judicial exceptions—not to a practical application thereof. Step 2B: Does the Claim Recite Anything That Is Beyond the Recited Judicial Exceptions and Not a Well-Understood, Appeal 2018‐005881 Application 14/486,292 11 Routine, Conventional Activity? Turning to the third and fourth issues set forth by the Memorandum (see supra 6, bullets “(3)” and “(4)”), we agree with the Examiner that every claim feature constitutes either a judicial exception or “well-understood, routine, conventional” activity. 84 Fed. Reg. at 56. Specifically, we agree the additional elements provide only “[g]eneric computer components . . . performing generic computer functions [to achieve] well-understood, routine, and conventional activities[; i.e.,] amount to no more than implementing the abstract idea with a computerized system.” Final Act. 4; see also supra 9–10. We also agree the Specification’s paragraph 19 describes the invention’s computer technology as generic. Id.; see also Spec. ¶ 19 (“[P]harmacy computer 103 may be any processor-driven device”). We add that the Specification’s “[s]ystem [o]verview” (Spec. ¶ 16) and “[o]perational [o]verview” (id. ¶ 29) describe all hardware, software, and data as comprised of generic components in well-known configurations (e.g., as adhering to standards). Id. ¶¶ 16–32. We add that claim 1 does not describe any technology. Claim 1 recites non-descript means of automating (“processors”), a non-descript network of those means, and electronic data defined only by informational content directed to judicial exceptions. The claimed invention, accordingly, only requires generic computer components that perform their generic functions to apply judicial exceptions. Such “claims . . . akin to stating the abstract idea . . . and adding the words . . . ‘apply it’ on a computer . . . [are] not sufficient for patent eligibility.” CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1291 (Fed. Cir. 2013), aff’d, by Alice; see also Memorandum, 84 Fed. Reg. at 55 (“apply it” bullet corresponding to the Memorandum’s Appeal 2018‐005881 Application 14/486,292 12 footnote 30); see also MPEP § 2106.05(f) (cited by the Memorandum’s footnote 30 as providing “more information concerning mere instructions to apply a judicial exception”).4 For the foregoing reasons, we find claim 1 fails to recite significantly more than the judicial exceptions to which it is directed. Appellant’s Arguments Appellant contends the Examiner characterizes the claimed invention at a level of abstraction untethered from claim 1, particularly “by implying [it] include[s] only ‘the receiving of new information, the comparing of new information to stored information, and the identification of options such as identifying pharmacies eligible and generating a message indicating acceptance.’” App. Br. 9 (quoting Final Act. 3). Appellant further contends that, “if one were to read those characterizations and not read the claims, one would have no idea what subject matter the claims even relate to.” Id. at 10. We are unpersuaded. The Appeal Brief contends the Examiner’s characterization of claim 1 in the Final Office Action overgeneralizes the limitations. Id. at 9–10. Even assuming that is correct, in the Answer, the Examiner further characterizes the claimed invention as “collect[ing] prescription claim transaction information, analyzing said transaction to 4 MPEP § 2106.05(f)(1) and (2) instruct on this issue: “When determining whether a claim simply recites a judicial exception with the words ‘apply it’ (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following. (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. . . . (2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process . . . (e.g., to receive, store, or transmit data).” MPEP at 2100-64, 66. Appeal 2018‐005881 Application 14/486,292 13 determine that it qualifies for prior authorization assistance and to find a matching pharmacy identifier, and [issuing] an adjudicated response with a message indicating the request for prior authorization assistance has been accepted.” Ans. 4. Appellant does not address the Examiner’s above characterizations (e.g., does not respond in the Reply Brief), much less show the Examiner’s in toto findings over-generalize the claimed invention. Appellant also contends the Examiner’s characterization of claim 1 does not grapple with the fact that the[ claim] steps recite transmission and receipt of data (the particular type recited initially) with another device[,] . . . these initial data transmission steps are critical to facilitate the subsequent operations recited in the claims, and the particular data gathered in these steps cannot be ignored[] because it is functional. App. Br. 11. Appellant further contends there is an additional nuance to these steps, in that they are reliant on the ‘prescription claim transaction’ received from a pharmacy computer and on data gathered from the separate transmission and receipt of data from a claims processor computer, and the specific nature of the data being collected is critical to proper identification of whether a pharmacy is eligible to receive prior authorization assistance. Id. at 12. We are unpersuaded. Appellant mischaracterizes a relationship between “printed matter” and patent-eligibility. Printed matter “claims the content of information” and must be functionally related to the claimed invention (e.g., trigger performance of a claim step) to carry patentable weight under 35 U.S.C. §§ 102 or 103. See In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). The “underlying rationale is in subject matter eligibility” inasmuch claimed informational content, if not functionally Appeal 2018‐005881 Application 14/486,292 14 related to the claimed invention, is abstract and therefore unpatentable. Compare Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018); with In re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994) (“More than mere abstraction, the data structures are specific electrical or magnetic structural elements in a memory.”). This is a separate consideration, however, from whether a claimed invention “as a whole” is directed to an abstract idea. See Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) (“Under step one of Mayo/Alice, the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.”). Thus, just as merely implementing an abstract idea on a computer does not direct a claimed invention “as a whole” to patent-eligible subject matter, neither does a mere functional relationship between printed matter (an abstract idea) and a computer (e.g., a relationship whereby a computer’s abstract activity is recited as merely causing another computer’s abstract activity). Appellant also contends the Examiner’s reliance on SmartGene is unreasonable inasmuch as “every step [of that claim] is a familiar part of the conscious process that doctors can and do perform in their heads.” App. Br. 13 (quoting SmartGene, 555 F. App’x at 955); see also id. at 14. Appellant also identifies a USPTO Memorandum “instructing that ‘examiners should avoid relying upon or citing non-precedential decisions (e.g., SmartGene, Cyberfone) unless the facts of the application under examination uniquely match the facts at issue in the nonprecedential decision.’ November 2, 2016, Memorandum from Robert W. Bahr to Patent Examining Core on Recent Subject Matter Eligibility Decisions, page 4.” App. Br. 14 n.6. Appeal 2018‐005881 Application 14/486,292 15 We are unpersuaded for at least two reasons. First, the current guidance addresses the concerns addressed by the above Bahr Memorandum (see Memorandum, 84 Fed. Reg. at 51–52, n.10) and the argued claim limitations are encompassed by the Memorandum’s enumerated categories of judicial exceptions (see supra 9). Second, even assuming the Bahr Memorandum is still individually instructive, claim 1 and SmartGene’s claim “uniquely match” (per the memorandum) inasmuch both are performed as commercial, conscious activities of health care professionals. See supra 8–9. Appellant also contends claim 1 is analogous to the patent-eligible claim of McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1311 (Fed. Cir. 2016). App. Br. 15–16. We are unpersuaded. Unlike claim 1, McRO’s claim specifies the invention’s results and the mechanism yielding those results. 837 F.3d at 1306–08; see also supra 9–10 (addressing claim 1’s lack of specificity). For example, McRO’s claimed invention generates a “stream of output morph weight sets” (result) by evaluating “sub-sequences” within a “timed data file of phonemes” against rules that define a “morph weight set stream” as a “function of phoneme sequence and time of said phoneme sequence” (mechanism). Id. at 1307–08. In light of such restrictions, McRO found the claim sufficiently “specific” inasmuch as reciting a mechanism of the invention that prevents preemption of the recited abstract idea. Id. at 1314. McRO explains: The preemption concern arises when the claims are not directed to a specific invention and instead improperly monopolize the basic tools of scientific and technological work. . . . A patent is not good for an effect, or the result of a certain process because such patents would prohibit all other persons from making the same thing by any means whatsoever. A patent may issue for the Appeal 2018‐005881 Application 14/486,292 16 means or method of producing a certain result, or effect, and not for the result or effect produced. We therefore look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. Id. (citations and quotation marks omitted). Appellant’s claim 1 does not overcome the above concerns, i.e., specify a mechanism that prevents preemption. Except for the claimed comparing of identifiers to determine a qualifying pharmacy, we cannot ascertain a single recitation of a mechanism. Comparing identifiers is a basic tool of organization, e.g., relational databases. We find claim 1 is not sufficiently specific under the guidance of McRO. Appellant also contends claim 1 is specific enough to compel a finding of patent-eligibility under the guidance of Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). App. Br. 18–19; Reply Br. 5–7. We are unpersuaded. Like McRO’s claim, Bascom’s claim is patent-eligible because it recites a specific mechanism of the invention and thereby prevents preemption of the recited abstract ideas. Bascom, 827 F.3d at 1350–52. Again, we find Appellant’s claim 1 is not specific in this regard. Appellant also contends the Examiner errs in relying on Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Reply Br. 2–3. Specifically, Appellant contends the Examiner “provides a single conclusory statement ostensibly tying the pending claims to Electric Power Group[,] . . . fail[ing] to set forth what about the pending claims makes them analogous to this broad characterization of the Electric Power Group claims.” Reply Br. 2. Appeal 2018‐005881 Application 14/486,292 17 We are unpersuaded. The Examiner relies on Electric Power Group to show that a claim improperly seeks a patent on an “abstract idea itself,” such as sought in Alice, if merely applying the abstract idea with generic computer technology. Ans. 3–4 (“[Claim 1] correspond[s] to concepts identified as abstract ideas by the courts, such as ‘an idea of itself’ in Alice. . . . An additional example of ‘an idea of itself’ is the concept of ‘collecting information, analyzing it, and displaying certain results of the collection and analysis’ (Electric Power Group).”). We agree claim 1 is reciting each of the judicial exceptions as such an “abstract idea itself.” See supra 11–12. Alice, 573 U.S. at 223–24 (“[W]holly generic computer implementation is not . . . any practical assurance that the process [does] more than . . . monopolize the abstract idea itself.” (Citation, internal quotation marks, and brackets omitted)); Elec. Power Grp., 830 F.3d at 1355 (“[Mere] invocation of computers, networks, and displays does not transform . . . claimed subject matter.”). Appellant also contends that Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), requires the Examiner to present evidence that the claimed “technology is well-understood, routine, and conventional.” Reply Br. 6 (quoting 881 F.3d at 1369). We are unpersuaded. Neither Berkheimer nor the USPTO Berkheimer Memorandum (see supra n.2) concerns mere instructions to implement an abstract idea on a computer. See supra 12 (explaining that the Memorandum cites MPEP § 2106.05(f) as instructive on “mere instructions to apply [a judicial] exception”); USPTO Berkheimer Memorandum, 1–2 (“Berkheimer informs the inquiry into . . . well-understood, routine, conventional activity.”), 3 (“This memorandum revises the procedures set forth in MPEP § 2106.07(a) . . . and . . . (b)). Appeal 2018‐005881 Application 14/486,292 18 Conclusion For the foregoing reasons, we sustain the Examiner’s 35 U.S.C. § 101 rejection of claims 1–4, 6–14, and 16–20. DECISION The Examiner’s decision rejecting claims 1–4, 6–14, and 16–20 is affirmed. 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 Copy with citationCopy as parenthetical citation