Alexander K. Kocoves et al.

Patent Trials and Appeals Board

Sep 17, 2019

14623658 - (D) (P.T.A.B. Sep. 17, 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.
14/623,658 02/17/2015 Alexander K. Kocoves GLP0100DIV 2067
62124 7590 09/17/2019
QUINN IP Law
21500 Haggerty Road
Suite 300
Northville, MI 48167
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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):
USDocketing@quinniplaw.com
adomagala@quinniplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER K. KOCOVES and JAMES M. POLLACK
____________

Appeal 2018-006767
Application 14/623,658
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
GLP & Associates, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates to investment
services and, more particularly, to techniques for . . . analyzing performance
of investment service sales.” Spec. ¶ 2.2 The Specification explains that the
invention endeavors to determine “one or more performance metrics for”
salespersons based on “investment service presentation information” and
“investment service sales information” associated with the respective
salespersons. Id. ¶ 7; see id. ¶¶ 60–61, Fig. 6. The term “investment service
presentation information” includes “number of presentations, time per
presentation, etc.” Id. ¶ 27. The term “investment service sales
information” includes “number of investment services sold, amount of
money invested, etc.” Id. The Specification also explains that the invention
“can include ranking . . . the salespersons.” Id. ¶ 7; see id. ¶ 60.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. A method for aggregating and analyzing investment
service sales data, the method comprising:
receiving, from one or more computing devices over a
distributed computing network via a communication device of
a server computer having one or more processors, investment
service presentation information and investment service sales
information associated with a plurality of salespersons,

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed February 17, 2015; “Final Act.” for the Final Office
Action, mailed November 14, 2017; “Appeal Br.” for the Appeal Brief, filed
March 28, 2018; “Ans.” for the Examiner’s Answer, June 15, 2018; and
“Reply Br.” for the Reply Brief, filed June 20, 2018.
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the investment service presentation information
including respective advertisement, referral, and/or
marketing of investment services data for each of the
salespersons to prospective enrollees in a defined
contribution plan, and
the investment service sales information including
respective total number of sales of investment services
data for each of the salespersons to the prospective
enrollees;
storing, via a memory device of the server computer,
the received investment service presentation information and
investment service sales information;
determining, via the server computer, one or more
performance metrics for one of the salespersons based on the
respective investment service presentation information and the
respective investment service sales information associated with
the salesperson;
analyzing, via the server computer, each of the one or
more performance metrics for the salesperson with respect to
one or more other ones of the salespersons, the one or more
other salespersons being part of a same entity as the salesperson
or another entity associated with the entity of the salesperson;
generating, via the server computer based on the
analyzed one or more performance metrics, performance
comparison data for the salesperson and the one or more other
salespersons and/or the entity of the salesperson and any other
entities associated with the entity of the salesperson; and
generating, via the server computer based on the
performance comparison data, rankings data transmitted to the
one or more computing devices.
Appeal Br. A1 (Claims App.).
The Rejection on Appeal
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 6–14.
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ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusion concerning ineligibility under § 101. We adopt the
Examiner’s findings and reasoning regarding the § 101 rejection in the Final
Office Action and Answer. See Final Act. 3–14; Ans. 3–10. We provide the
following to address and emphasize specific findings and arguments.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
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In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO). Neither the Examiner nor
Appellant had the benefit of the 2019 Guidance when presenting their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
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221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One: PTO Step 2A Prong One
For Mayo/Alice step one, the Federal Circuit has noted that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner determines that the claims are directed to the abstract idea of
“[m]anaging and analyzing performance of investment service sales data.”
Final Act. 8, 12–14. The Examiner explains that the claims encompass
“processes of comparing data or organizing information that can be
performed mentally.” Id. at 9. The Examiner identifies the following
processes: “receiving information, storing received information (collecting
information), determining information, analyzing information (analyzing
information), generating and transmitting information (displaying results and
analysis).” Id. The Examiner reasons that the claims resemble the patent-
ineligible claims in Electric Power directed to “collecting information,
analyzing it, and displaying certain results of the collection and analysis.”
Id. (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)).
Appellant disputes that independent claims 1 and 8 are directed to an
abstract idea. See Appeal Br. 11–15; Reply Br. 1–3, 7–8. Appellant argues
that the Examiner “read[s] out almost every distinguishable limitation” of
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the “independent claims to reach the conclusion that these claims are
directed to” an abstract idea. Appeal Br. 11; see Reply Br. 7.
We disagree. In determining that the claims are directed to an abstract
idea, the Examiner accurately assesses the “focus” of the claims and their
“character as a whole.” See Final Act. 9; see also SAP Am., 898 F.3d
at 1167.
In addition, we determine that the claims recite abstract ideas falling
within one of the three groupings of abstract ideas specified in the 2019
Guidance, i.e., “mental processes.” See 84 Fed. Reg. at 51–52. The 2019
Guidance describes “mental processes” as “concepts performed in the
human mind,” such as “an observation, evaluation, judgment, [or] opinion.”
Id. at 52 (footnote omitted). As explained below, each independent claim
recites “mental processes” in various limitations.
For instance, claim 1 recites the following limitations:
● “determining . . . one or more performance metrics for
one of the salespersons based on the respective
investment service presentation information and the
respective investment service sales information
associated with the salesperson”;
● “analyzing . . . each of the one or more performance
metrics for the salesperson with respect to one or more
other ones of the salespersons, the one or more other
salespersons being part of a same entity as the
salesperson or another entity associated with the entity of
the salesperson”;
● “generating . . . based on the analyzed one or more
performance metrics, performance comparison data for
the salesperson and the one or more other salespersons
and/or the entity of the salesperson and any other entities
associated with the entity of the salesperson”; and
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● “generating . . . based on the performance comparison
data, rankings data . . . .”
Appeal Br. A1. Claim 8 recites similar limitations. Id. at A2–A3.
The above-identified limitations encompass evaluations practically
performed by a human mentally or with pen and paper. For example, the
presentation information could include the number of presentations on a
particular day, and the sales information could include the number of sales
on that particular day. See Spec. ¶¶ 27, 60, Fig. 6. Someone could review
the daily presentation information and the daily sales information for two
individuals, e.g., salesperson A and salesperson B. After reviewing the daily
information, someone could mentally determine performance metrics, e.g.,
higher number of presentations and higher number of sales, for
salesperson A and salesperson B. Moreover, someone could mentally
compare the reviewed information for salesperson A and salesperson B and
mentally discern how they compared to each other. Based on that mental
comparison, someone could mentally rank salesperson A and salesperson B,
e.g., salesperson A had a higher number of presentations or salesperson B
higher number of sales.
For these reasons, the above-identified limitations encompass
evaluations practically performed by a human mentally or with pen and
paper. The 2019 Guidance identifies an evaluation practically performed by
a human mentally or with pen and paper as a mental process, and thus an
abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see also Intellectual Ventures
I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(“Symantec”) (“[W]ith the exception of generic computer-implemented
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steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”).
Mayo/Alice Step One: PTO Step 2A Prong Two
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite computer-
system components. Appeal Br. A1–A3. Specifically, method claim 1
recites (1) a “server” with a “communication device,” a “memory device,”
and “one or more processors”; (2) a “distributed computing network”; and
(3) “one or more computing devices.” Id. at A1. Similarly, system claim 8
recites (1) a “server” with “one or more processors”; (2) a “distributed
computing network”; (3) a “communication device”; and (4) a “memory
device.” Id. at A2–A3.
The independent claims also recite data-collecting limitations. Id.
at A1–A3. For instance, claim 1 recites the following data-collecting
limitations:
● “receiving . . . investment service presentation
information and investment service sales information
associated with a plurality of salespersons, the
investment service presentation information including
respective advertisement, referral, and/or marketing of
investment services data for each of the salespersons to
prospective enrollees in a defined contribution plan, and
the investment service sales information including
respective total number of sales of investment services
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data for each of the salespersons to the prospective
enrollees”; and
● “storing . . . the received investment service presentation
information and investment service sales information.”
Appeal Br. A1. Claim 8 recites similar data-collecting limitations. Id.
at A2–A3.
We determine that each independent claim as a whole does not
integrate the recited abstract ideas into a practical application because the
additional elements do not impose meaningful limits on the abstract ideas.
See 84 Fed. Reg. at 53–54; see also Final Act. 9–12; Ans. 4, 8. The claimed
computer-system components constitute generic computer-system
components that perform generic computer functions. See Final Act. 9,
11–12 (citing Spec. ¶¶ 20, 67–69, 71–73); Ans. 8; see also Spec. ¶¶ 20,
22–23, 67–69, 71–73. Further, the data-collecting limitations constitute
insignificant extra-solution activity. See, e.g., Mayo, 566 U.S. at 79; Bilski
v. Kappos, 561 U.S. 593, 611–12 (2010); OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716 (Fed. Cir. 2014); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); In re Grams,
888 F.2d 835, 839–40 (Fed. Cir. 1989).
As an example of insignificant extra-solution activity, in Mayo the
Supreme Court decided that measuring metabolite levels for later analysis
constituted purely “conventional or obvious” pre-solution activity. Mayo,
566 U.S. at 79. Similarly, the Federal Circuit has held that mere data-
gathering steps “cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The
Federal Circuit has also held that (1) presenting offers to potential customers
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and (2) gathering statistics concerning customer responses were
“conventional data-gathering activities that d[id] not make the claims patent
eligible.” OIP Techs., 788 F.3d at 1363–64. Consistent with those
decisions, the Manual of Patent Examining Procedure (“MPEP”) identifies
“gathering data” as an example of insignificant pre-solution activity. MPEP
§ 2106.05(g) (9th ed. rev. 08.2017 Jan. 2018).
Here, the data-collecting limitations amount to mere data-gathering
steps and require nothing unconventional or significant. See Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir.
2011) (analogizing “data gathering” to “insignificant extra-solution
activity”). For example, the Specification broadly provides that “the server
104 can receive investment service presentation and sales information
associated with the salesperson 116” from some unspecified source or
sources. Spec. ¶ 27. Hence, the data-collecting limitations do not help
integrate the recited abstract ideas into a practical application.
Appellant contends that the claims “are drawn to a limited technique
for generating, aggregating, analyzing and applying a specific type of data,
which offers a quantifiable improvement over existing techniques.” Appeal
Br. 11; see id. at 15. Specifically, Appellant asserts that the claims
implement “a specific solution for gauging the competence and efficacy of
such agents/salespersons in presenting and providing” investment services
and focus “on narrow techniques in a limited field of application” to achieve
“a particular outcome.” Appeal Br. 13–14; see Reply Br. 6–7.
Appellant’s arguments do not persuade us of Examiner error.
“[L]imiting an abstract idea to one field of use” does not impart patent
eligibility. See Bilski, 561 U.S. at 612; see also Parker v. Flook, 437 U.S.
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584, 589–90 (1978); SAP Am., 898 F.3d at 1169; Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“DIRECTV”).
A “claim is not patent eligible merely because it applies an abstract idea in
a narrow way.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287
(Fed. Cir. 2018).
Appellant contends that the claimed “systems and methods are able to
quickly and readily automate the production of performance comparison
data and rankings data for the salespersons.” Reply Br. 4; see id. at 7.
According to Appellant, that effort “historically requir[ed] an exorbitant
number of man hours to produce and collect relevant data, and oftentimes
rel[ied] on subjective, inconsistent metrics for evaluating performance.”
Appeal Br. 13.
“But relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP
Techs., 788 F.3d at 1363. Moreover, the “mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Further, the
Examiner correctly finds that the claims do not improve the “functioning of
the computer itself” or “another technology or technical field.” Final
Act. 13; see Ans. 4, 7–8.
Appellant analogizes the claims here to the claims in the following
cases: Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2018); Thales Visionix Inc. v. United States, 850 F.3d 1343
(Fed. Cir. 2017); McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
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AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); Visual Memory LLC v.
NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017); Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016); and DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). See, e.g., Appeal
Br. 7–9, 12–16; Reply Br. 3–5. But the claims here do not resemble the
claims in any of those cases.
In Core Wireless, the “claims recite[d] a specific improvement over
prior systems,” i.e., a “particular manner of summarizing and presenting
information in electronic devices.” Core Wireless, 880 F.3d at 1362–63.
The Federal Circuit decided that the claims satisfied § 101 under Mayo/Alice
step one because the “invention improve[d] the efficiency of using the
electronic device.” Id. at 1363.
Unlike the claims in Core Wireless, the claims here do not improve
the efficiency of using a computer or another device. As discussed above,
the Examiner correctly finds that the claims do not improve the “functioning
of the computer itself” or “another technology or technical field.” Final
Act. 13; see Ans. 4, 7–8. As also discussed above, the claims use generic
computer-system components to automate manual processes, i.e., processes
that “historically requir[ed] an exorbitant number of man hours to produce
and collect relevant data.” See Appeal Br. 13; Reply Br. 4. Here, “the
purported advance ‘is a process of gathering and analyzing information of a
specified content, . . . and not any particular assertedly inventive technology
for performing those functions.’” Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d 1378, 1385 (Fed. Cir. 2019) (quoting Elec. Power, 830 F.3d
at 1354).
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In Thales, the patent at issue disclosed “an inertial tracking system for
tracking the motion of an object relative to a moving reference frame.”
Thales, 850 F.3d at 1344. Each independent claim required two inertial
sensors, i.e., one sensor mounted on the object and another sensor mounted
on the moving reference frame. Id. at 1345–46, 1348. The claimed inertial
sensors supplied signals for determining the object’s orientation relative to
the moving reference frame. Id. at 1345–46, 1348. The Federal Circuit
decided that the claims satisfied § 101 under Mayo/Alice step one because
they were directed to using “inertial sensors in a non-conventional manner to
reduce errors in measuring the relative position and orientation of a moving
object on a moving reference frame.” Id. at 1348–49.
Unlike the claims in Thales, the claims here do not specify a
non-conventional manner for arranging conventional components. Appeal
Br. A1–A3; see Final Act. 5, 11, 13; Ans. 4, 7–8.
In McRO, the claims recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. The Federal Circuit reasoned that “the
incorporation of the claimed rules” improved an existing technological
process. Id. at 1314.
Similarly, in BASCOM, the claims recited a “specific method of
filtering Internet content” requiring “the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user.” BASCOM, 827 F.3d at 1345–46, 1350.
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The Federal Circuit reasoned that the claims covered “a technology-based
solution . . . to filter content on the Internet that overcomes existing
problems with other Internet filtering systems” and “improve[s] an existing
technological process.” Id. at 1351 (citing Alice, 573 U.S. at 223); see Alice,
573 U.S. at 223 (explaining that “the claims in Diehr were patent eligible
because they improved an existing technological process”).
Unlike the claims in McRO and BASCOM, the claims here do not
cover a technology-based solution that improves an existing technological
process. As discussed above, the Examiner correctly finds that the claims do
not improve the “functioning of the computer itself” or “another technology
or technical field.” Final Act. 13; see Ans. 4, 7–8. As the Examiner
explains, the claims recite “a general server computer with a system memory
connected to the Internet” that performs conventional data-processing steps,
e.g., “aggregating” and “analyzing” information. Ans. 4, 7–8. As the
Examiner also explains, the “claims do not lay out a particular set of rules
for using a computer server with a system memory connected to the
Internet” when “aggregating” and “analyzing” information. Id. at 7.
In Enfish, the Federal Circuit decided that the claims satisfied § 101
under Mayo/Alice step one because they recited a “specific improvement to
the way computers operate,” i.e., an improved database configuration that
permitted faster and more efficient searching. Enfish, 822 F.3d at 1330–33,
1336, 1339. Further, the Federal Circuit has explained that the claims in
Enfish “did more than allow computers to perform familiar tasks with
greater speed and efficiency” and “actually permitted users to launch and
construct databases in a new way.” Finjan, Inc. v. Blue Coat Sys., Inc.,
879 F.3d 1299, 1305 (Fed. Cir. 2018); see Secured Mail Sols. LLC v.
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Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017) (explaining that
the claims in Enfish “focused on an improvement to computer functionality
itself”).
Similarly, in Visual Memory, the Federal Circuit decided that the
claims satisfied § 101 under Mayo/Alice step one because they were
“directed to an improved computer memory system” that “enabl[ed]
interoperability with multiple different processors” and “obviate[d] the need
to design a separate memory system for each [different] type of processor.”
Visual Memory, 867 F.3d at 1259–60, 1262.
Unlike the claims in Enfish and Visual Memory, the claims here do
not recite an improvement to computer functionality. See Final Act. 13;
Ans. 4, 7. For instance, the claims do not recite an advance in hardware or
software that causes a memory itself or a processor itself to operate faster or
more efficiently. As the Examiner properly reasons, the claims “do not
improve a database structure” or “provide a memory system solution or
improvement.” Ans. 4. Further, the claims employ generic computer-
system components, e.g., “one or more computing devices,” in their ordinary
capacities to collect, manipulate, and communicate data. See Appeal Br.
A1–A3; Spec. ¶¶ 20, 22–23, 67–69, 71–73; see also Alice, 573 U.S. at 226.
In Amdocs, the patents concerned network components “arrayed in a
distributed architecture” that “collect[ed] and process[ed] data close to its
source,” and thus enabled “load distribution” and reduced network
congestion. Amdocs, 841 F.3d at 1291–92, 1300, 1303, 1306. The Federal
Circuit decided that the claims satisfied § 101 under Mayo/Alice step two
because they either (1) “entail[ed] an unconventional technological solution
. . . to a technological problem” that required generic computer components
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to “operate in an unconventional manner to achieve an improvement in
computer functionality” or (2) “recite[d] a technological solution to a
technological problem specific to computer networks—an unconventional
solution that was an improvement over the prior art.” Id. at 1299–1306.
Unlike the claims in Amdocs, the claims here do not require generic
computer components to “operate in an unconventional manner to achieve
an improvement in computer functionality.” For instance, the claims do not
require an unconventional arrangement of components or an uncommon
network configuration. As the Examiner properly reasons, the claims
“merely use[] the existing Internet” and “its advantages,” such as “[e]fficient
communication” and “distribution of data,” in a “conventional and
predictable way.” Final Act. 5, 11, 13.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied § 101 under Mayo/Alice step two because “the claimed solution
amount[ed] to an inventive concept for resolving [a] particular Internet-
centric problem,” i.e., a challenge unique to the Internet. DDR Holdings,
773 F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR Holdings, we held that
claims ‘directed to systems and methods of generating a composite web page
that combines certain visual elements of a “host” website with content of a
third-party merchant’ contained the requisite inventive concept”). The
Federal Circuit explained that the patent-eligible claims specified “how
interactions with the Internet are manipulated to yield a desired result . . .
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258.
The court reasoned that those claims recited a technological solution
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“necessarily rooted in computer technology” that addressed a “problem
specifically arising in the realm of computer networks.” Id. at 1257.
According to the Federal Circuit, “DDR Holdings does not apply
when . . . the asserted claims do not ‘attempt to solve a challenge particular
to the Internet.’” Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). Unlike the patent-eligible
claims in DDR Holdings, the claims here do not attempt to solve a challenge
particular to the Internet. See Appeal Br. A1–A3; see also Final Act. 5, 11,
13; Ans. 4, 7–8.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract ideas into a practical application. Thus, each claim is
directed to a judicial exception and does not satisfy § 101 under Mayo/Alice
step one.
Mayo/Alice Step Two: PTO Step 2B
Because we determine that each independent claim is directed to a
judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
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at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
DIRECTV, 838 F.3d at 1258 (quoting Elec. Power, 830 F.3d at 1353). An
“inventive concept” requires more than “well-understood, routine,
conventional activity already engaged in” by the relevant community. Rapid
Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016)
(quoting Mayo, 566 U.S. at 79–80). But a “non-conventional and
non-generic arrangement of known, conventional pieces” may provide an
“inventive concept” satisfying step two. BASCOM, 827 F.3d at 1350.
As discussed above, the independent claims recite computer-system
components, e.g., a “server” with “one or more processors,” a “distributed
computing network,” a “communication device,” a “memory device.”
Appeal Br. A1–A3. The Examiner correctly finds that the claimed
computer-system components correspond to “components in general purpose
computers” and “generic computer components performing generic
computing functions.” Final Act. 11–13; see id. at 5–6. Further, the
Examiner correctly finds that the claimed computer-system components “are
well-understood, routine, and conventional computer components.” Id. at 4,
11 (citing Spec. ¶¶ 20, 67–69, 71–73).
Consistent with the Examiner’s findings, the Specification describes
the claimed computer-system components generically and evidences their
conventional nature. See, e.g., Spec. ¶¶ 20, 22–23, 67–69, 71–73. As an
example, the Specification explains that a “server” may include “one or
more suitable computing devices, each including one or more processors,
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operating in a parallel or distributed architecture.” Spec. ¶ 20; see id. ¶ 22.
As another example, the Specification explains that a “computing device”
may include a “personal computing device,” such as “a desktop computer,
a laptop computer, a tablet computer, a mobile phone, etc.” Id. ¶ 20. In
addition, the Specification states that a “network” may “include a local area
network (LAN), a wide area network (WAN), e.g., the Internet, or a
combination thereof” and may “comprise storage devices and computers that
are communicatively coupled to dissimilar computers and storage devices.”
Id. ¶¶ 20, 73.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972)).
In addition, the claimed computer-system components operate to
collect, manipulate, and communicate data. Appeal Br. A1–A3. Court
decisions have recognized that generic computer-system components
operating to collect, manipulate, and communicate data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S.
at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Symantec, 838 F.3d
at 1316–20; Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334
(Fed. Cir. 2015); Ultramercial, 772 F.3d at 715–16; buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
For example, the system claims in Alice recited a “data processing
system” (e.g., a “server” with “one or more processors”) with
a “communications controller” (e.g., a “communication device”) and a “data
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storage unit” (e.g., a “memory device”). Alice, 573 U.S. at 226. The
Supreme Court decided that the system claims failed to satisfy § 101
because “[n]early every computer” includes those generic components for
performing “basic calculation, storage, and transmission functions” and the
system claims simply implemented the same abstract idea as the method
claims. Id. at 226–27. The Court reasoned that (1) “the system claims are
no different from the method claims in substance”; (2) “[t]he method claims
recite the abstract idea implemented on a generic computer”; and (3) “the
system claims recite a handful of generic computer components configured
to implement the same idea.” Id. at 226.
Here, the claimed computer-system components perform “basic
calculation, storage, and transmission functions” that nearly every computer
system performs. Appeal Br. A1–A3; see Final Act. 10–12; Ans. 4, 7–8, 10.
For instance, nearly every computer system includes a “processor” for
manipulating data, a “memory device” for storing data, and a
“communication device” for transmitting data. Hence, those generic
computer-system components do not satisfy the “inventive concept”
requirement. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding that “generic computer
components such as an ‘interface,’ ‘network,’ and ‘database’” did not satisfy
the “inventive concept” requirement); FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1095–96 (Fed. Cir. 2016) (describing the claimed
“microprocessor” and “user interface” as “generic computer elements”);
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17
(Fed. Cir. 2017) (describing the claimed “authentication server,” “access
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server,” “Internet Protocol network,” “client computer device,” and
“database” as “indisputably generic computer components”).
We reach a similar conclusion concerning the data-collecting
limitations, e.g., the “receiving” limitations in claims 1 and 8. As discussed
above, the data-collecting limitations amount to mere data-gathering steps
and require nothing unconventional or significant. Consequently, the
claimed insignificant extra-solution activity does not satisfy the “inventive
concept” requirement. See, e.g., Mayo, 566 U.S. at 79–80; Flook, 437 U.S.
at 590; OIP Techs., 788 F.3d at 1363–64; CyberSource, 654 F.3d at 1370.
Insofar as Appellant relies on the recited abstract ideas to satisfy the
“inventive concept” requirement, Appellant wrongly does so. See, e.g.,
Appeal Br. 11–14; Reply Br. 6. A “claimed invention’s use of the ineligible
concept,” e.g., an abstract idea, “cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.” BSG
Tech, 899 F.3d at 1290. “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered” abstract idea “cannot rely on the novelty of
that discovery for the inventive concept necessary for patent eligibility.”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Appellant asserts that the Examiner provides “no evidence that the
disputed claim limitations are well known or widely used.” Reply Br. 8; see
Appeal Br. 11–12. Appellant cites PTO guidance about Berkheimer v. HP.3
Reply Br. 6.

3 USPTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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That PTO guidance states that citations to court decisions may
demonstrate “the well-understood, routine, conventional nature of the
additional element(s).” Apr. 19, 2018 PTO Mem. 4. As discussed above,
court decisions have recognized that generic computer components
operating to collect, manipulate, and communicate data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S.
at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Symantec, 838 F.3d
at 1316–20; Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d at 715–16;
buySAFE, 765 F.3d at 1355.
Appellant argues that the claims “detail a particular solution and do
not purport to tie up all manners of aggregating, storing and analyzing data.”
Appeal Br. 12; see id. at 14–16. Appellant also argues that the claims do not
“monopolize ‘a fundamental economic practice’” or “‘tie up’ the generalized
idea of managing and analyzing the performance of investment service sales
agents.” Id. at 15.
Appellant’s arguments do not persuade us of Examiner error. While
preemption may denote patent ineligibility, its absence does not establish
patent eligibility. See FairWarning, 839 F.3d at 1098. For claims covering
a patent-ineligible concept, preemption concerns “are fully addressed and
made moot” by an analysis under the Mayo/Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Given the claimed generic computer-system components that perform
generic computer functions and the claimed insignificant extra-solution
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activity, we conclude that the combination of limitations in each independent
claim does not supply an “inventive concept” that renders the claim
“significantly more” than an abstract idea. Thus, each claim does not satisfy
§ 101 under Mayo/Alice step two.
Summary for the Independent Claims
For the reasons discussed above, each independent claim fails to
satisfy § 101 under Mayo/Alice step one and step two. Hence, we sustain the
§ 101 rejection of the independent claims.
Dependent Claims 2–7 and 9–20
We also sustain the § 101 rejection of dependent claims 2–7 and 9–20
because Appellant does not argue eligibility separately for them. See Appeal
Br. 17, 22; Reply Br. 9; 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20.
In summary:
Claims Rejected Basis Affirmed Reversed
1–20 § 101 1–20
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). See
37 C.F.R. § 41.50(f).
AFFIRMED