Case: 19-2251    Document: 38    Page: 1   Filed: 06/04/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                  ______________________

          IN RE: MICHAEL J. ROSENBERG,
                       Appellant
                ______________________

                        2019-2251
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. 12/102,992.
                   ______________________

                   Decided: June 4, 2020
                  ______________________

    RONALD BRUCE GOLDSTEIN, Law Offices of Ronald B.
 Goldstein, North Brunswick, NJ, for appellant.

    KAKOLI CAPRIHAN, Office of the Solicitor, United States
 Patent and Trademark Office, Alexandria, VA, for appellee
 Andrei Iancu. Also represented by THOMAS W. KRAUSE,
 AMY J. NELSON, FARHEENA YASMEEN RASHEED.
                 ______________________

     Before DYK, WALLACH, and CHEN, Circuit Judges.
 CHEN, Circuit Judge.
      Michael Rosenberg seeks review of a Patent Trial and
 Appeal Board (Board) decision affirming an examiner’s re-
 jection of claims 1, 3–9, 12–19, 21–27, and 30–36 of U.S.
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 2                                           IN RE: ROSENBERG




 Patent Application No. 12/102,992 (the ’992 Application)
 under 35 U.S.C. § 101. We affirm.
                        BACKGROUND
      The ’992 Application describes a method and system to
 collect performance-related data about a clinical trial, ana-
 lyze that data, and report on whether any adjustments
 should be made to the clinical trial based on the review of
 the collected data. As the specification explains with re-
 gards to this kind of performance review, “[t]he invention
 finds application in conducting clinical trials in the medical
 field, as well as in other management systems, by provid-
 ing a fully integrated ability to handle the many collection,
 analytic, and reporting functions.” J.A. 32. To avoid the
 lost time and cost of performing those collection, analytic,
 and reporting functions in person, the specification de-
 scribes performing them on a computer, in which data col-
 lected at remote sites is electronically transmitted to a
 central computer programmed to review the data to deter-
 mine whether any “procedures or parameters” used in the
 trial require modification. The collected data “comprise
 performance metrics,” which the specification describes as
 “benchmarks such as the number of queries generated by a
 clinical site, time to respond to queries, time to submit data
 following a patient visit, and other quality measures.” J.A.
 39. Claim 1 is representative 1:
     l. A computer-implemented method for centrally
     managing data in an adaptive clinical trial or other
     adaptive process that is conducted at a plurality of
     geographically remote sites according to a set of
     procedures or parameters, said method comprising
     the steps of:



     1   The government asserts that claim 1 is representa-
 tive, Appellee’s Br. at 4, and Mr. Rosenberg does not argue
 the substance of any limitations except for claim 1.
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 IN RE: ROSENBERG                                             3



     (a) collecting data in the course of conducting said
     clinical trial or other process at a remote site,
     wherein the data comprise performance metrics
     with respect to said clinical trial or other process;
     (b) electronically transmitting the data from said
     remote site to a processing location;
     (c) checking the transmitted data at said pro-
     cessing location, in automated fashion, to assess
     the consistency of the data with respect to other col-
     lected data, to evaluate changes in the data as com-
     pared with data collected previously, or to monitor
     the data for trends over time;
     (d) electronically reporting the data to a pre-pro-
     grammed computer module;
     (e) determining, by use of said pre-programmed
     computer module, whether procedures or parame-
     ters utilized in conducting said clinical trial or
     other process require modification; and
     (f) providing instructions, based on said determin-
     ing, to follow or modify the procedures or parame-
     ters utilized in conducting said clinical trial or
     other process.
 J.A. 26.
      The examiner rejected all pending claims under the ab-
 stract idea exception of § 101 and the Board affirmed. Spe-
 cifically, the Board found claim 1 directed to a mental
 process, “specifically, evaluating data and rendering a
 judgment or opinion as to how the trial should or should
 not be modified based on the evaluation.” J.A. 19. In ad-
 dition, the Board found that claim 1’s reference to generi-
 cally-defined computer components (e.g., pre-programmed
 module) for performing the abstract process did not
 amount to an inventive concept. See J.A. 20–21, 357–59.
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 4                                            IN RE: ROSENBERG




     Mr. Rosenberg appeals the Board’s decision. We have
 jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
                          DISCUSSION
      Section 101 allows inventors to obtain patents on “any
 new and useful process, machine, manufacture, or compo-
 sition of matter, or any new and useful improvement
 thereof.” § 101. However, “this provision contains an im-
 portant implicit exception”: an inventor may not patent
 laws of nature, natural phenomena, or abstract ideas. Al-
 ice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
 (2014). To assess whether a patent claim violates this ex-
 ception to the terms of § 101, the Supreme Court has set
 forth a two-step framework: (1) whether the claim is “di-
 rected to a patent-ineligible concept,” i.e., a law of nature,
 natural phenomenon, or abstract idea, and, if so, (2)
 whether the elements of the claim, considered “both indi-
 vidually and ‘as an ordered combination,’” add enough to
 “‘transform the nature of the claim’ into a patent-eligible
 application.” Id. at 217 (quoting Mayo Collaborative Servs.
 v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)).
      Patent eligibility under § 101 is a question of law that
 may contain underlying issues of fact. Interval Licensing
 LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018) (cit-
 ing Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir.
 2018)). We review an ultimate conclusion on patent eligi-
 bility de novo. See id.
                        I. ALICE STEP 1
     The inquiry at this first stage looks at the “focus” of the
 claims, and their “character as a whole.” Enfish, LLC v.
 Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016);
 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
 (Fed. Cir. 2016). Representative claim 1 falls into a now-
 familiar class of claims directed to a patent-ineligible con-
 cept. In past cases, we have held claims focused on collect-
 ing and analyzing certain information and then reporting
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 IN RE: ROSENBERG                                             5



 the results of that analysis are directed to an abstract idea.
 See e.g. Elec. Power Grp., 830 F.3d at 1353. In particular,
 “we have treated analyzing information by steps people go
 through in their minds, or by mathematical algorithms,
 without more, as essentially mental processes within the
 abstract-idea category.” Id. at 1354.
      We agree with the Board that Mr. Rosenberg’s claims
 are directed to the basic idea of deciding whether to fine-
 tune a given system (here, a clinical trial) based on review-
 ing the system’s performance data. The claim limitations
 describe computer-performed mental steps that would oth-
 erwise have been performed in person to assess and re-
 spond to performance measures in the field, including:
 “assess[ing] the consistency of the data as compared with
 data previously collected,” “evaluat[ing] changes in the
 data,” “monitor[ing] the data for trends over time,” “deter-
 mining . . . whether procedures or parameters utilized in
 conducting said clinical trial or other process require mod-
 ification,” and “providing instructions . . . to follow or mod-
 ify the procedures or parameters.” J.A. 26.
     In Electric Power, we held ineligible similar claims in
 the context of optimally managing an electric power grid at
 a central location. 830 F.3d at 1356. There the claimed
 method received data streams from geographically distinct
 locations of the electric power grid, analyzed those data
 streams in real time to determine power grid vulnerability,
 and displayed the results of that analysis. Id. at 1351–52.
 Similarly, Mr. Rosenberg’s claimed method collects data
 from remote clinical trials, analyzes that data at a central
 computer, and communicates the results through instruc-
 tions for management of the clinical trial. Because the pur-
 ported advance “is a process of gathering and analyzing
 information of a specified content, then displaying the re-
 sults, and not any particular assertedly inventive technol-
 ogy for performing those functions,” the claimed method is
 directed to an abstract idea. Id. at 1354. For the same
 reasons, we see no error in the Board’s conclusion that Mr.
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 6                                           IN RE: ROSENBERG




 Rosenberg’s claims are analogous to the patent-ineligible
 claims in SmartGene, Inc. v. Advanced Biological Labs.,
 SA, 555 F. App’x 950 (Fed. Cir. 2014) (finding ineligible a
 computer-implemented method of selecting a therapeutic
 regimen by comparing input data with stored data using
 rules).
       Mr. Rosenberg emphasizes that his claimed inven-
 tion, through computer-implementation, improves effi-
 ciency and reduces cost by collecting and analyzing
 performance metric data from remote locations “in real
 time.” Appellant’s Br. at 7. But as the Board correctly
 noted, the claims do not require the collection or analysis
 of data “in real time.” J.A. 19. More fundamentally, it is
 not enough, for patent-eligibility purposes, to improve an
 abstract process by invoking a computer merely as a tool
 for carrying out that process. Elec. Power Grp., 830 F.3d at
 1354. As we recently reiterated, “’claiming the improved
 speed or efficiency inherent with applying the abstract idea
 on a computer’ [is] insufficient to render the claims patent
 eligible as an improvement to computer functionality.”
 Customedia Techs. v. Dish Network Corp., No. 18-2239, slip
 op. 10 (Fed. Cir. March 6, 2020); Interval Licensing, 896
 F.3d at 1346 (“It is well-settled that placing an abstract
 idea in the context of a computer does not ‘improve’ the
 computer or convert the idea into a patent-eligible applica-
 tion of that idea.” (citing Alice, 573 U.S. at 222–24)). As in
 Electric Power, because the claim simply invokes computer
 components such as a “pre-programmed module” in a ge-
 neric, functional way, “the focus of the claims is not on such
 an improvement in computers as tools, but on certain inde-
 pendently abstract ideas that use computers as tools.”
 Elec. Power Grp., 830 F.3d at 1353. The ability to make
 assessments more quickly to provide instructions on
 whether to modify a clinical trial is at best an improvement
 on an abstract process itself and not a technical improve-
 ment, given the broad, non-specific nature of the claim.
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 IN RE: ROSENBERG                                            7



      Moreover, the Board did not err in concluding that the
 claimed collection and analysis of a particular type of infor-
 mation—“performance metrics”—does not affect the eligi-
 bility analysis. “As many cases make clear, even if a
 process of collecting and analyzing information is ‘limited
 to particular content’ or a particular ‘source,’ that limita-
 tion does not make the collection and analysis other than
 abstract.” SAP, 898 F.3d at 1168 (citing Elec. Power Grp.,
 830 F.3d at 1353, 1355)). In any event, collecting perfor-
 mance-related information would be necessary for any pro-
 cess with the objective of improving the performance of the
 trial.
      Thus, we agree with the Board that the claims are di-
 rected to the abstract concept of monitoring and managing
 a clinical trial.
                       II. ALICE STEP 2
      We also agree with the Board that the recitation of ge-
 neric computer components to perform the claimed steps
 does not provide a transformative inventive con-
 cept. J.A. 21. Our inquiry at step 2 asks whether, consid-
 ering the elements of each claim individually and as an
 ordered combination, the additional elements, excluding
 the abstract idea, transform the nature of the claim into a
 patent eligible application. Alice, 573 U.S. at 217; Athena
 Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 927
 F.3d 1333, 1347 (Fed. Cir. 2019) (Chen, J., concurring in
 denial of rehearing en banc). Thus, Mr. Rosenberg’s argu-
 ments that novelty of the abstract idea itself—evaluating
 data and rendering a judgment or opinion as to how the
 trial should or should not be modified based on the evalua-
 tion—is the transformative inventive concept are not suffi-
 cient to meet step 2. “[A] claim for a new abstract idea is
 still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
 Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
    Mr. Rosenberg argues that the claimed “pre-pro-
 grammed computer module” is not a generic computer
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 8                                            IN RE: ROSENBERG




 component because the “determining” and “providing in-
 structions” steps are “specific to the analysis of perfor-
 mance metric data.” Appellant’s Br. at 28. But Mr.
 Rosenberg offers no explanation, and we see none, as to
 why these claimed steps of his abstract process would re-
 quire anything more than conventional computer function-
 ality to perform. Instead, the claims merely invoke the use
 of a generic computer “module” programmed to perform the
 desired functions of determining whether modifications to
 the clinical trials are needed and providing instructions on
 those modifications. We have held that such results-ori-
 ented claiming fails to meet the “inventive concept” re-
 quirement. See Elec. Power Grp., 830 F.3d at 1356 (finding
 no inventive concept in claims which “specif[ied] what in-
 formation in the power-grid field it is desirable to gather,
 analyze, and display, including in ‘real time,’” but “d[id] not
 include any requirement for performing [those] claimed
 functions . . . by use of anything but entirely conventional,
 generic technology.”); SAP Am., Inc. v. InvestPic, LLC, 898
 F.3d 1161, 1170 (Fed. Cir. 2018) (finding that the “invoca-
 tion of [] computers and networks is not enough to establish
 the required ‘inventive concept’ in application” of “an ad-
 vance in mathematical techniques in finance”); Smart-
 Gene, 555 F. App’x at 954 (finding ineligible a claim which
 “does no more than call on a ‘computing device,’ with basic
 functionality for comparing stored and input data and
 rules, to do what doctors do routinely”); see also Alice,
 573 U.S. at 225 (finding no inventive concept in claims that
 “simply recite the concept of intermediated settlement as
 performed by a generic computer”).
     The remaining steps of the claim, i.e., “collecting,”
 “electronically transmitting,” “checking,” and “electroni-
 cally reporting the data,” also fail to provide any transform-
 ative inventive concept. J.A. 26. We have previously
 explained that these types of data-related functions are not
 enough to save a claim from ineligibility. See, e.g., Elec.
 Power Grp., 830 F.3d at 1354–55 (finding no inventive
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 IN RE: ROSENBERG                                          9



 concept in gathering, sending, and presenting desired
 power grid information in real-time); OIP Techs., Inc. v.
 Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
 (finding no inventive concept in claimed steps of sending
 electronic messages over a network, storing test results,
 and “‘using a computerized system . . . to automatically de-
 termine’ an estimated outcome and setting a price”);
 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
 Cir. 2014) (“That a computer receives and sends the infor-
 mation over a network—with no further specification—is
 not even arguably inventive.”).
     At bottom, the claimed invention merely employs ge-
 neric computer components so that “what formerly had to
 be checked in the field [would] be checked, instead, at a
 central location.” J.A. 57. Nothing in the specification de-
 scribes the computers at the remote clinical site and cen-
 tral processing site as requiring anything more than
 conventional computer components. See, e.g., J.A. 32–33,
 48–50. Considering the elements of each claim individu-
 ally and as an ordered combination, the claims do not state
 any transformative inventive concept and thus fail to meet
 the standard for patent eligibility under § 101.
                        CONCLUSION
    We have considered Mr. Rosenberg’s remaining argu-
 ments and find them unpersuasive. For the foregoing rea-
 sons, we conclude that the claims at issue are ineligible
 under § 101 and affirm the decision of the Board.
                        AFFIRMED
                           COSTS
    No costs.
