Roger G. Pinsonneault

Patent Trials and Appeals Board

Sep 3, 2019

14486292 - (D) (P.T.A.B. Sep. 3, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
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