Molecular Health GmbH

Patent Trials and Appeals Board

Sep 1, 2021

2021001273 (P.T.A.B. Sep. 1, 2021)

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.
14/370,682 07/03/2014 David Jackson 073044-0162 5826
48329 7590 09/01/2021
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID JACKSON, THEODOROS SOLDATOS,
GUILLAUME TAGLANG, ALEXANDER ZIEN,
and STEPHAN BROCK
____________

Appeal 2021-001273
Application 14/370,6821
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Final Rejection2 of claims 128–147 and 198. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Molecular Health AG as the real
party in interest. (Appeal Br. 2).

2 All references to the Final Office Action refer to the Final Office Action
mailed on August 19, 2019.
Appeal 2021-001273
Application 14/370,682

2

SUMMARY OF DECISION
We affirm.
THE INVENTION
Appellant states its invention relates to “methods and systems for
personalized de-risking based on patient genome data.” Spec. ¶ 2.
Claim 128, reproduced below, is representative of the subject matter
on appeal.
128. A method for identifying unknown drug targets via
adverse event data, comprising:
receiving, by an analyzer module for performing
multivariate analysis executed by a processor of a computing
device from a user, an identification of a first drug;
identifying, by the analyzer module from a medication
information database stored in a computer-readable storage
medium, a second drug related to the first drug;
retrieving, by the analyzer module from an adverse event
database stored in the computer-readable storage medium, a
first side effect profile associated with the first drug, and a
second side effect profile associated with the second drug;
generating, by the analyzer module, a third side effect
profile comprising a subset of the first side effect profile not
shared by the second side effect profile;
identifying, by the analyzer module from the adverse
event database, a third drug having a fourth side effect profile
comprising the third side effect profile;
retrieving, by the analyzer module from the medication
information database, a list of one or more molecular targets of
the first drug not targeted by the second drug;
presenting, by the analyzer module via a display interface
of the computing device to the user, the retrieved list of one or
more molecular targets as potential molecular targets of the
third drug;
Appeal 2021-001273
Application 14/370,682

3

selecting a first molecular target from the potential
molecular targets of the third drug in the presented list,
responsive to the presentation of the retrieved list; and
testing interaction of the first molecular target and the
third drug, responsive to the selection of the first molecular
target from the potential molecular targets in the presented list.

THE REJECTION
Claims 128–147 and 198 stand rejected under 35 U.S.C. § 101 as
being directed to an abstract idea. Final Act. 3.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–4 in the
Final Office Action and on pages 3–10 in the Examiner’s Answer.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 128–147 and 198 under
35 U.S.C. § 101.
The Appellant argues claims 128–147 and 198 as a group (Appeal
Br. 5–6). We select claim 128 as the representative claim for this group, and
so the remaining claims stand or fall with claim 128. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
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).
Appeal 2021-001273
Application 14/370,682

4

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 id. 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
Appeal 2021-001273
Application 14/370,682

5

products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (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.
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 (Jan. 7, 2019)
(“Guidance”).3 “All USPTO personnel are, as a matter of internal agency

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
Appeal 2021-001273
Application 14/370,682

6

management, expected to follow the guidance.” Id. at 51;4 see also October
2019 Update at 1.
Under the 2019 Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior
to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should
not be relied upon.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
Appeal 2021-001273
Application 14/370,682

7

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance,
84 Fed. Reg. at 53; see also MPEP §§ 2106.04–2106.05.
The Specification states:
In one aspect, the present disclosure is directed to systems
and methods for analysis of adverse event data. Adverse event
data may be integrated with data regarding drug targets, classes
of drugs or therapeutic categories, indications, target proteins,
metabolizing enzymes or pathways, and may be analyzed on a
molecular basis. Deciphering the molecular basis of such
adverse responses is not only paramount to the protection of
patient well-being and the development of safer drugs, but it also
presents a unique opportunity to dissect disease systems in search
Appeal 2021-001273
Application 14/370,682

8

of novel predictive biomarkers, drug targets and efficacious
combination therapies.
In another aspect, the present disclosure is directed to
systems and methods for identifying treatment strategies based
on integrating drug molecular data and patient genome
sequencing data with critical clinical information about the
patient. Disaggregated data may be combined and translated into
evidence-based treatment strategies for marketed and clinical
stage therapies.

Spec. ¶¶ 4–5.
The preamble of claim 128 states it is “for identifying unknown drug
targets via adverse event data.”
Claim 128 recites in pertinent part:
receiving, . . . an identification of a first drug;
identifying, . . . a second drug related to the first drug;
retrieving, . . . a first side effect profile associated with
the first drug, and a second side effect profile associated with
the second drug;
generating, . . . a third side effect profile comprising a
subset of the first side effect profile not shared by the second
side effect profile;
identifying, . . . a third drug having a fourth side effect
profile comprising the third side effect profile;
retrieving, . . . a list of one or more molecular targets of
the first drug not targeted by the second drug;
presenting, . . . to the user, the retrieved list of one or
more molecular targets as potential molecular targets of the
third drug;
selecting a first molecular target from the potential
molecular targets of the third drug in the presented list,
responsive to the presentation of the retrieved list; and
testing interaction of the first molecular target and the
third drug, responsive to the selection of the first molecular
target from the potential molecular targets in the presented list.

Appeal 2021-001273
Application 14/370,682

9

The Examiner found claim 128 recites “a method of managing
interactions between people and thus grouped as a certain method of
organizing human interactions” (Final Act. 3).
Accordingly, all this intrinsic evidence shows that claim 128 recites a
way of identifying treatment strategies by integrating adverse event reports
with relevant molecular knowledge. Claim limitations such as, “generating,
…a third side effect profile comprising a subset of the first side effect profile
not shared by the second side effect profile,” and “retrieving, …from the
medication information database, a list of one or more molecular targets of
the first drug not targeted by the second drug,” constitute comparing stored
information using rules similar to those found ineligible in SmartGene, Inc.
v. Advanced Biological Laboratories, 555 F. App’x 950, 955 (Fed. Cir.
2014). We further find that the verbs6 identified above in italics in the
truncated version of claim 128 are mental steps because they mimic human
thought processes, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016).
And, we agree with the Examiner that the claim is also directed to one
of certain methods of organizing human activity7 because the goal of claim

6 We note humans present information by writing or through spoken word in
a presentation to one another. Present: “to offer to view : SHOW.”
https://www.merriam-webster.com/dictionary/present.
7 The Examiner’s characterization of claim 1 is, in our view, fully consistent
with the Specification, including the claim language. “An abstract idea can
generally be described at different levels of abstraction. See Apple, Inc. v.
Appeal 2021-001273
Application 14/370,682

10

128 is to “identify[] treatment strategies.” Spec. ¶ 5. In so doing, medical
professionals are caused to follow instructions based on the identified
strategy, which constitutes one of certain methods of organizing human
activity that are judicial exceptions. Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 128 only
generically requires “an analyzer module.” This component is described in
the Specification at a high level of generality. See Spec. ¶ 26–27, Fig. 3A;
see also Answer 4. We fail to see how the generic recitations of this most
basic computer component and/or of a system so integrates the judicial
exception as to “impose[] a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance, 84 Fed. Reg. at 53.
Thus, we find that claim 128 recites the judicial exception of a mental
process and a certain method of organizing human activity.
That the claim does not preempt all forms of the abstraction or may be
limited to identifying treatment strategies, does not make it any less abstract.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed.
Cir. 2015) (“And that the claims do not preempt all price optimization or

Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). As the Board has
done, the claimed abstract idea could be described as a mental process
and/or comparing/storing data. It could be described in other ways,
including, articulating the abstract idea at a higher level of abstraction as
indicated in the specification, i.e., “identifying treatment strategies,” which
directs actions of medical professionals, and hence is one of certain methods
of organizing human activity. Such differences need not and, in this case
does not, “impact the patentability analysis.” See id. at 1241.

Appeal 2021-001273
Application 14/370,682

11

may be limited to price optimization in the e-commerce setting do not make
them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
claim 128 is directed to an abstract idea/judicial exception, the claim must
include an “inventive concept” in order to be patent eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step the Examiner found the following: “[t]he claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
limitations (i.e. processor, etc.) only store and retrieve information, and these
are well-understood, routine, conventional computer functions.”
Final Act.4.
We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. In short, each step does no more
than require a generic computer to perform generic computer functions. The
claims do not, for example, purport to improve the functioning of the
computer itself. The Specification spells out different generic equipment
Appeal 2021-001273
Application 14/370,682

12

and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
information access under different scenarios. See, e.g., ¶¶ 26–27, Figs. 2A–
2D, 3A. Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (receiving,
identifying/retrieving/generating/identifying/retrieving/presenting/selecting)
and storing is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract); Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
As to the structural claims (138–147), they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting § 101
Appeal 2021-001273
Application 14/370,682

13

“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 573 U.S. at 226 (quoting Mayo, 566 U.S. at 72). As a corollary, the
claims are not directed to any particular machine.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101 (Appeal Br. 5–10; Reply Br. 2–5). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues: “[c]laims 128–147 and 198 recite elements that
integrate any judicial exception into a practical application, namely
physically testing interactions between previously unknown molecular
targets and drugs, and therefore are also patent eligible for this reason.”
Appeal Br. 7 (emphasis omitted).
However, the Appellant’s arguments fail from the outset because they
are not based on limitations appearing in the claims and are not
commensurate with the broader scope of claim 128 which merely recites
“testing interaction,” and not, physically testing interaction. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Notwithstanding, even if Appellant’s claim 128 did recite “physically
testing,” that would still not cause it to be eligible because that step is merely
an insignificant extrasolution test activity. Bilski, 561 U.S. at 610–11
(“Flook stands for the proposition that the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.”’ (quoting Diehr, 450 U.S. at 191–92)); Elec. Power
Appeal 2021-001273
Application 14/370,682

14

Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
In this sense too, claim 128 is distinguishable from the claims in
Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International
Ltd., 887 F.3d 1117 (Fed. Cir. 2018), which Appellant asserts in favor of
eligibility of its claims on appeal. (Appeal Br. 7). In fact, the decision in
Vanda makes clear that the claims on appeal here are more akin to those in
Mayo than those in Vanda because the claims in Vanda require a doctor to
administer the subject drug:
the ’610 patent claims are directed to a method of using
iloperidone to treat schizophrenia. The inventors recognized the
relationships between iloperidone, CYP2D6 metabolism, and
QTc prolongation, but that is not what they claimed. They
claimed an application of that relationship. Unlike the claim at
issue in Mayo, the claims here require a treating doctor to
administer iloperidone in the amount of either (1) 12 mg/day or
less or (2) between 12 mg/day to 24 mg/day, depending on the
result of a genotyping assay.

Vanda Pharms., 887 F.3d at 1135. Nowhere in claim 128 is there any
recitation of administering a drug and a dosage, as recited in Vanda. Simply
put, claim 128, like the claims in Mayo, is not a treatment claim. See id.
Here, like the claims in Mayo, “a doctor . . . could violate the patent even if
he did not actually alter his treatment decision in the light of the test.” Id.
(quoting Mayo, 566 U.S. at 75). The claims before us end in a post solution
activity test, and not in the practical application of administering a specified
drug and dosage, as required in Vanda. Like the claims in Mayo, claim 128
here is “not limited to instances in which the doctor actually decreases (or
increases) the dosage level where the test results suggest that such an
Appeal 2021-001273
Application 14/370,682

15

adjustment is advisable.” Id. (quoting Mayo, 566 U.S. at 76). Therefore, we
do not find Appellant’s reliance on Vanda to be persuasive.
Alternatively, Appellant argues that claim 128 is “directed to a data
processing system that identifies previously unknown molecular targets of
drugs, and conditionally performs further data gathering based on the
identification . . . similar to hypothetical claim 1 of Example 40.” (Appeal
Br. 8).
Appellant’s argument is unpersuasive because again the claims in
Example 40 of the 2019 Guidance, “Subject Matter Eligibility Examples:
Abstract Ideas,”8 are distinguishable from claim 128 before us on appeal.
We find that claim 1 of Example 40 affirmatively recites the network
processing step of “collecting additional traffic data relating to the network
traffic when the collected traffic data is greater than the predefined
threshold.” We find nothing in claim 128 resembling this type of machine
based action.
Appellant maintains that its claims similarly collect data such that,
“the claimed invention provides a specific improvement of prior systems by
conditionally limiting additional data gathering based on the results of data
analysis, respectively avoiding ‘excess traffic volume on the network’ and
‘exhaustive, unguided testing’” (Appeal Br. 9). But, improvements to
computer functionality overcoming a problem specifically arising in the
realm of computers do not cause the claims to be automatically patent
eligible. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1265
(Fed. Cir. 2014) (Mayer, J., dissenting). As noted above, claim 1 of

8 Available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf.
Appeal 2021-001273
Application 14/370,682

16

Example 40 covers actual monitoring of data traffic and causes a response to
that monitoring by collecting additional traffic data based on a threshold
determination.9 Nothing in claim 128, other than the broadly recited
“testing” step, which we find is insignificant extrasolution activity,
constitutes anything more than data collection and analysis– which is
abstract. See Elec. Power, 830 F.3d at 1354.
For the reasons identified above, we will sustain the Examiner’s § 101
rejection of claims 128–147 and 198.
CONCLUSION OF LAW
We conclude the Examiner did not err in rejecting claims 128–147
and 198 under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
128–147,
198
101 Eligibility 128–147,
198

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

9 Example 40, claim 1 requires, “collecting . . . traffic data relating to the
network traffic,” “comparing . . . to a predefined threshold,” and then
“collecting additional traffic data . . . when the collected traffic data is
greater than the predefined threshold.”