Artak Amirbekyan et al.Download PDFPatent Trials and Appeals BoardSep 3, 201913790972 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/790,972 03/08/2013 Artak AMIRBEKYAN CORLOG.002US 5991 113027 7590 09/03/2019 Muncy, Geissler, Olds & Lowe, P.C. CoreLogic113027 4000 Legato Road Suite 310 Fairfax, VA 22202 EXAMINER MPAMUGO, CHINYERE ART UNIT PAPER NUMBER 3621 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): eofficeaction@appcoll.com meo.docket@mg-ip.com meo@mg-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ARTAK AMIRBEKYAN and GREGORY JOHN DICKASON ____________ Appeal 2017-011520 Application 13/790,972 Technology Center 3600 ____________ Before ERIC S. FRAHM, JOHN A. EVANS, and SCOTT E. BAIN, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–21. App. Br. 6. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 Appellants state the real party in interest is CoreLogic Solutions, LLC, 40 Pacifica, Suite 900, Irvine, California, 92618. App. Br. 3. 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed March 17, 2017, “App. Br.”), the Reply Brief (filed September 14, 2017, “Reply Br.”), the Examiner’s Answer (mailed July 14, 2017, “Ans.”), the Final Action (mailed October 20, 2016, “Final Act.”), and the Specification (filed March 8, 2013, “Spec.”) for their respective details. Appeal 2017-011520 Application 13/790,972 2 STATEMENT OF THE CASE The claims relate to a system and method for creation of a marketing campaign. See Abstract. Invention Claims 1, 15, 20, and 21 are independent. App. Br. 6. An understanding of the invention can be derived from a reading of claim 1 which is reproduced below with some formatting added: 1. A computer-implemented method of optimizing a marketing campaign of a saleable commodity, said method comprising: receiving from a user one or more descriptors relating to said saleable commodity; identifying, based at least in part on said one or more descriptors, comparable saleable commodities for which marketing has been conducted; retrieving, by a computing system comprising one or more processors, marketing data corresponding to said comparable saleable commodities, the marketing data including advertising selections used in a sale or an attempted sale of said comparable saleable commodities, the marketing data additionally including associated sales transaction data for at least some of the comparable saleable commodities; aggregating, by the computing system, said comparable saleable commodities into a plurality of groups, each group corresponding to a different respective set of said advertising selections, each group thus corresponding to a respective advertising strategy that is a candidate strategy for advertising the saleable commodity; calculating, by the computing system, for each group of the comparable commodities, performance data based at least in part upon the marketing data, including the sales transaction Appeal 2017-011520 Application 13/790,972 3 data, the performance data reflective of an effectiveness of the advertising strategies in selling the comparable commodities; receiving, via a report generation graphical user interface, a selection by a user of at least one predefined performance metric for measuring performance of the advertising strategies; ranking, by the computing system, based at least in part on the performance data, the advertising strategies according to the at least one predefined performance metric selected by the user; and generating an electronic report based on the ranking, the electronic report including performance data that indicates, for at least a top ranked advertising strategy, an effectiveness of the advertising strategy according to the at least one predefined performance metric. References and Rejections 1. Claims 1–21 stand rejected under 35 U.S.C. § 101 as directed to an abstract idea without significantly more. Final Act. 3–5. 2. Claims 1–21 stand rejected under 35 U.S.C. § 103 as unpatentable over Florance (US 2002/0065739 A1; May 30, 2002) and Heathcock (US 2007/0157229 A1; July 5, 2007). Final Act. 6– 14. ANALYSIS We have reviewed the rejections of claim 1 in light of Appellants’ arguments that the Examiner erred. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We are Appeal 2017-011520 Application 13/790,972 4 not persuaded that Appellants identify reversible error. Upon consideration of the arguments presented in the Appeal Brief and Reply Brief, we agree with the Examiner that all the pending claims are unpatentable. We adopt as our own the findings and reasons set forth in the rejection from which this appeal is taken and in the Examiner’s Answer, to the extent consistent with our analysis below. We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellants’ arguments seriatim, as they are presented in the Appeal Brief, pages 6–27, and the Reply Brief (unpaginated). CLAIMS 1–21: INELIGIBLE SUBJECT MATTER Based upon our de novo review of the record in light of recent Director Policy Guidance3 with respect to the rejection under 35 U.S.C. § 101, we affirm the rejections of claims 1–21 for the specific reasons discussed below. “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). 3 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“Revised Guidance,” “Rev. Guid.”). Appeal 2017-011520 Application 13/790,972 5 PRINCIPLES OF LAW A. 35 U.S.C. § 101 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. Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). 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; see also 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” (Diehr, 450 U.S. at Appeal 2017-011520 Application 13/790,972 6 191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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 “[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, 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); 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.”). Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under this guidance we must, therefore, ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). 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 Appeal 2017-011520 Application 13/790,972 7 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 (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. B. USPTO Revised Guidance The PTO recently published Revised Guidance in the Federal Register concerning the application of § 101. Under the 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); and 2. additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: 3. adds a specific limitation beyond the judicial exception that are not Appeal 2017-011520 Application 13/790,972 8 “well-understood, routine, conventional” 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 Rev. Guid. Step 2A(i) — Abstract Idea. Informed by our judicial precedent, the Revised Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation: a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; b) Certain methods of organizing human activity — fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Under the Revised Guidance, if the claim does not recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the Appeal 2017-011520 Application 13/790,972 9 enumerated groupings of abstract ideas above), then the claim is patent- eligible at Step 2A(i). This determination concludes the eligibility analysis, except in rare situations identified in the Revised Guidance. However, if the claim recites a judicial exception (i.e., an abstract idea enumerated above, a law of nature, or a natural phenomenon), the claim requires further analysis for a practical application of the judicial exception in Step 2A(ii). Step 2A(ii) — Practical Application. If a claim recites a judicial exception in Step 2A(i), we determine whether the recited judicial exception is integrated into a practical application of that exception in Step 2A(ii) by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The seven identified “practical application” sections of the MPEP, cited in the Revised Guidance under Step 2A(ii), are: (1) MPEP § 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field (2) MPEP § 2106.05(b) Particular Machine (3) MPEP § 2106.05(c) Particular Transformation (4) MPEP § 2106.05(e) Other Meaningful Limitations (5) MPEP § 2106.05(f) Mere Instructions To Apply An Exception Appeal 2017-011520 Application 13/790,972 10 (6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity (7) MPEP § 2106.05(h) Field of Use and Technological Environment If the recited judicial exception is integrated into a practical application as determined under one or more of the MPEP sections cited above, then the claim is not directed to the judicial exception, and the patent- eligibility inquiry ends. If not, then analysis proceeds to Step 2B. Step 2B — “Inventive Concept” or “Significantly More” Under our precedent, it is possible that a claim that does not “integrate” a recited judicial exception under Step 2A(ii) is nonetheless patent eligible. For example, the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element. The Federal Circuit has held claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B) because the additional elements recited in the claims provided “significantly more” than the recited judicial exception (e.g., because the additional elements were unconventional in combination). Therefore, if a claim has been determined to be directed to a judicial exception under Revised Step 2A, we must evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). Under the Revised Guidance, we must consider in Step 2B whether an additional element or combination of elements: (1) “Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an Appeal 2017-011520 Application 13/790,972 11 inventive concept may be present;” or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” See Rev. Guid., III.B. In the Step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the Examiner finds an evidentiary basis, and expressly supports a rejection in writing with, one or more of the following: 1. A citation to an express statement in the Specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s); 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s); 3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s); 4. A statement that the Examiner is taking official notice of the well- understood, routine, conventional nature of the additional element(s). See Berkheimer Memo.4 The analysis in Step 2B further determines whether an additional 4 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO 1–5 (2018), https://www.uspto.gov/sites/default/files /documents/memo-berkheimer-20180419.PDF (“Berkheimer Memo”). Appeal 2017-011520 Application 13/790,972 12 element or combination of elements: (a) Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or (b) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. Rev. Guid.; see also Berkheimer Memo. If the Examiner or the Board determines under Step 2B that the element (or combination of elements) amounts to significantly more than the exception itself, the claim is eligible, thereby concluding the eligibility analysis. However, if a determination is made that the element and combination of elements does not amount to significantly more than the exception itself, the claim is ineligible under Step 2B, and the claim should be rejected for lack of subject matter eligibility. C. THE CLAIMS AT ISSUE. Step 1 Claim 1 is a method and recites one of the categories of eligible subject matter enumerated in 35 U.S.C. § 101. Therefore, the issue before us is whether it is directed to a judicial exception without significantly more. Appeal 2017-011520 Application 13/790,972 13 Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner finds the claims include an abstract idea, specifically, “identifying, based at least in part on said one or more descriptors, one or more comparable saleable commodities for which marketing has been conducted” is a an idea of itself that falls under comparing new and stored information and using rules to identify options. Final Act. 4. The Examiner finds there are no meaningful limitations in the claim that transform the exception into a patent eligible application because the steps of claim 1 require no more than a conventional computer to perform generic computer functions, specifically, receiving, storing, and updating data and performing mathematical functions. Id. at 4–5 (citing Spec. ¶¶ 106, 115, 138). Appellants contend independent claim 1 recites a method that provides a specific result, i.e., generating an electronic report based on the ranking [the advertising strategies according to the at least one predefined performance metric selected by the user], the electronic report including performance data that indicates, for at least a top ranked advertising strategy, an effectiveness of the advertising strategy according to the at least one predefined performance metric. App. Br. 10 (emphasis omitted). Appellants argue that, similar to McRO, their claims improve an existing technological process by incorporating specific rules. Id. The preamble of claim 1 recites: “[a] computer-implemented method of optimizing a marketing campaign of a saleable commodity, said method comprising.” Claim 1 further recites the following limitations as set forth in the left column of Table I below. Table I applies the further limitations of claim 1 to the categories of abstract ideas as set forth in the Revised Appeal 2017-011520 Application 13/790,972 14 Guidance. Table I Claim 1 Revised Guidance [a]5 receiving from a user one or more descriptors relating to said saleable commodity; The claimed “server computer” hardware limitation to which the Guidance is not applicable. Recitations relating to data transacted by the server are non- functional descriptive material and, as such, are not entitled to patentable weight. [b] identifying, based at least in part on said one or more descriptors, comparable saleable commodities for which marketing has been conducted; A hardware limitation to which the Guidance is not applicable. [c] retrieving, by a computing system comprising one or more processors, marketing data corresponding to said comparable saleable commodities, the marketing data including advertising selections used in a sale or an attempted sale of said comparable saleable commodities, Mental processes: concepts performed in the human mind.6 5 Indicia, e.g., “[a],” added to facilitate discussion of individual limitations. 6 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”); Rev. Guid. 52 n.31. Appeal 2017-011520 Application 13/790,972 15 the marketing data additionally including associated sales transaction data for at least some of the comparable saleable commodities; [d] aggregating, by the computing system, said comparable saleable commodities into a plurality of groups, each group corresponding to a different respective set of said advertising selections, each group thus corresponding to a respective advertising strategy that is a candidate strategy for advertising the saleable commodity; Displaying a webpage is insignificant extra-solution activity to the judicial exception. Rev. Guid. 55 n.31. Data displayed are non- functional descriptive material. [e] calculating, by the computing system, for each group of the comparable commodities, performance data based at least in part upon the marketing data, including the sales transaction data, the performance data reflective of an effectiveness of the advertising strategies in selling the comparable commodities; Recitations relating to data in the “reference collection” are non- functional descriptive material and, as such, are not entitled to patentable weight. [f] receiving, via a report generation graphical user interface, a selection by a user of at least one predefined performance metric for measuring performance of the advertising strategies; Linked data are non-functional descriptive material and, as such, are not entitled to patentable weight. [g] ranking, by the computing system, based at least in part on the performance data, the advertising strategies according to the at least one predefined performance metric selected by the user; and [h] generating an electronic report based on the ranking, the electronic Appeal 2017-011520 Application 13/790,972 16 report including performance data that indicates, for at least a top ranked advertising strategy, an effectiveness of the advertising strategy according to the at least one predefined performance metric. Under Step 2A(i) and based on the analysis in Table I, we determine that limitation [c] recites a judicial exception. Step 2A(ii) – Practical Application Where, as here, we determine at Step 2A(i) the claims recite a judicial exception, we look to determine the presence of additional elements that integrate the judicial exception into a practical application. The Revised Guidance is “designed to more accurately and consistently identify claims that recite a practical application of a judicial exception []and thus are not ‘directed to’ a judicial exception.” Rev. Guid., 84 Fed. Reg. at 53. The claims recite a practical application where an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field.7 Id. at 55. For the reasons which follow, we conclude that Appellants’ claims do not integrate the judicial exception into a practical application. See MPEP §§ 2106.05(a)–(c), (e)–(h). We address these “practical application” MPEP sections seriatim: MPEP § 2106.05(a) “Improvements to the Functioning of a Computer 7 The Revised Guidance also finds integration into a practical application where the judicial exception is used in medical treatment or to transform an article to a different state. Rev. Guid., 84 Fed. Reg. at 55. Such considerations are not before us. Appeal 2017-011520 Application 13/790,972 17 or To Any Other Technology or Technical Field.” “In determining patent eligibility, examiners should consider whether the claim ‘purport(s) to improve the functioning of the computer itself’” or “‘any other technology or technical field.’” MPEP § 2106.05(a). Appellants contend: [I]ndependent claim 1 recites a method that provides a specific result of “generating an electronic report based on the ranking [the advertising strategies according to the at least one predefined performance metric selected by the user], the electronic report including performance data that indicates, for at least a top ranked advertising strategy, an effectiveness of the advertising strategy according to the at least one predefined performance metric.” App. Br. 10 (emphasis omitted) (citing McRO Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)) (disagreeing that the claims at issue “simply use a computer as a tool to automate conventional activity”). Appellants’ Specification discloses “that the hardware used may be conventional in nature.” Spec. ¶ 108. 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. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Appellants argue: “[i]t is the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks.” App. Br. 10 (citing McRO). But, whereas McRO found “[t]he claimed process uses a combined order of specific rules that renders information into a specific format that is then used Appeal 2017-011520 Application 13/790,972 18 and applied to create desired results” (McRO, 837 F.3d at 1315). The present claims do not recite any “combined order of specific rules,” nor do Appellants point to their Specification for such disclosure. We find that such generic recitations of computing elements fail to transform a patent ineligible concept into an eligible one. See Mortgage Grader, 811 F.3d at 1324–25 (generic computer components, such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and a ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). MPEP § 2106.05(b) Particular Machine. At the outset, we note that the Bilski machine-or-transformation test is only applicable to the method (process) claims on appeal. This section of the MPEP guides: “When determining whether a claim recites significantly more than a judicial exception, examiners should consider whether the judicial exception is applied with, or by use of, a particular machine.” See Bilski, 561 U.S. at 604 (“[T]he machine-or-transformation test is a useful and important clue, an investigative tool” for determining whether a claim is patent eligible under § 101). MPEP § 2106.05(b). MPEP § 2106.05(b) provides further guidance regarding what constitutes a particular machine: [A]s described in MPEP § 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Appeal 2017-011520 Application 13/790,972 19 Development Group v. SAP America, 793 F.3d 1306, 1335 . . . (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”). We find the claims on appeal are silent regarding specific limitations directed to an improved computer system, processor, memory, network, database, or Internet, nor do Appellants direct our attention to such specific limitations. “[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223; see also Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’ or on a generic computer is still an abstract idea”). Applying this reasoning here, we conclude Appellants’ claims are not directed to a particular machine, but rather merely implement an abstract idea using generic computer components. Thus, we conclude Appellants’ method claims fail to satisfy the “tied to a particular machine” prong of the Bilski machine-or-transformation test. Bilski, 561 U.S. 593. MPEP § 2106.05(c) Particular Transformation. This section of the MPEP guides: “Another consideration when determining whether a claim recites significantly more is whether the claim effects a transformation or reduction of a particular article to a different state or thing.” “‘[T]ransformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not Appeal 2017-011520 Application 13/790,972 20 include particular machines.’” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S. at 70). The claims operate to select and analyze certain electronic data, i.e., “marketing data.” The selection of electronic data is not a “transformation or reduction of an article into a different state or thing constituting patent- eligible subject matter[.]” See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (emphasis added); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“The mere manipulation or reorganization of data . . . does not satisfy the transformation prong.”). Applying this guidance here, we conclude Appellants’ method claims fail to satisfy the transformation prong of the Bilski machine-or-transformation test. MPEP § 2106.05(e) Other Meaningful Limitations. This section of the MPEP guides: Diamond v. Diehr provides an example of a claim that recited meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. 450 U.S. 175 . . . (1981). In Diehr, the claim was directed to the use of the Arrhenius equation (an abstract idea or law of nature) in an automated process for operating a rubber-molding press. 450 U.S. at 177-78 . . . . The Court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time, and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products. 450 U.S. at 184, 187 . . . . In contrast, the claims in Alice Corp. v. CLS Bank International did not meaningfully limit the abstract idea of mitigating settlement risk. 573 U.S. . . . . In particular, the Court concluded that the additional elements such as the data Appeal 2017-011520 Application 13/790,972 21 processing system and communications controllers recited in the system claims did not meaningfully limit the abstract idea because they merely linked the use of the abstract idea to a particular technological environment (i.e., “implementation via computers”) or were well-understood, routine, conventional activity. MPEP § 2106.05(e). “[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. Similarly as for Alice, we find that “[t]aking the claim elements separately, the function performed by the computer at each step of the process is ‘[p]urely conventional.’” Id. “In short, each step does no more than require a generic computer to perform generic computer functions.” Id. We find that Appellants’ claims do not add meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. MPEP § 2106.05(f) Mere Instructions To Apply An Exception. Appellants do not persuasively argue that their claims do any more than to merely invoke generic computer components merely as a tool in which the computer instructions apply the judicial exception. MPEP § 2106.05(g) Insignificant Extra-Solution Activity. The claims operate to provide to “generat[e] an electronic report.” We find generating and displaying information to be a classic example of insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en banc), aff’d sub nom, Bilski, 561 U.S. 593. Appeal 2017-011520 Application 13/790,972 22 MPEP § 2106.05(h) Field of Use and Technological Environment. [T]he Supreme Court has stated that, even if a claim does not wholly pre-empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token pre- or post-solution activity—such as identifying a relevant audience, a category of use, field of use, or technological environment. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). We find the “computing system comprising one or more processors” limitation is simply a field of use that attempts to limit the abstract idea to a particular technological environment. We do not find Appellants’ argument to be persuasive because “[t]he courts have also identified examples in which a judicial exception has not been integrated into a practical application.” Rev. Guid., 84 Fed. Reg. at 55. The claims fail to recite a practical application where the additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use. Id. The mere application of an abstract idea in a particular field is not sufficient to integrate the judicial exception into a practical application. See id. at n.32. In view of the foregoing, we conclude the claims are “directed to” a judicial exception. 1. Well-understood, routine, conventional. Because the claims recite a judicial exception and does not integrate that exception into a practical application, we must then reach the issue of whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. Rev. Guid., 84 Fed. Reg. at 56. Appeal 2017-011520 Application 13/790,972 23 Appellants describe the claimed computer system consistent with its being “well-understood, routine, [and] conventional”: “[i]t should be appreciated that the hardware used may be conventional in nature.” Spec. ¶ 108. We find such “well-understood, routine, [and] conventional” limitations fail to indicate the presence of an inventive concept. 2. Specified at a high level of generality. It is indicative of the absence of an inventive concept where the claims simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Rev. Guid., 84 Fed. Reg. at 56. The claims fail to recite any specific steps of an algorithm, nor do Appellants cite Specification disclosure for the required specificity. We find the limitations are specified at such a high level of generality consistent with the absence of an inventive concept. Therefore, we conclude that none of the claim limitations, viewed “both individually and as an ordered combination,” amount to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting Mayo, 566 U.S. at 79). In view of the foregoing, we sustain the rejection of claims 1–21 under 35 U.S.C. § 101. Appeal 2017-011520 Application 13/790,972 24 CLAIMS 1–21: OBVIOUSNESS OVER FLORANCE AND HEATHCOCK. Retrieving. Independent claim 1 recites, inter alia, “retrieving, by a computing system comprising one or more processors, marketing data corresponding to said comparable saleable commodities.” With respect to the claimed “marketing data,” Appellants contend Florance fails to teach “summaries of each comparable sale property,” the “full details on the property,” anything related to the “sale properties comparable to the subject property” or any other, specifically enumerated examples of “marketing data.” App. Br. 18. With respect to the “retrieving” limitation, the Examiner finds Florance teaches a computer system retrieves marketing data. Final Act. 6 (citing Florance ¶ 358). The Examiner equates the claimed “retrieving” with “collecting within a list,” as disclosed by Florance. Ans. 5 (emphasis omitted). And the Examiner equates the claimed “marketing data” with “sales data,” as disclosed by Florance. Id. The Reply reiterates Appellants’ contention that the cited “sales data” is not identical to the specifically claimed “marketing data.” Reply Br. 19.8 We find Appellants admit Florance teaches some form of sales or marketing data, but argue the claimed and taught data are not the same. Id. Appellants attempt to distinguish their claims over the prior art in view of the content of the information claimed versus the information taught. Such a distinction implicates a printed matter analysis. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in 8 The Reply Brief is not paginated. We refer to the corresponding page of the electronic Record. Appeal 2017-011520 Application 13/790,972 25 terms of patentability. Although the printed matter must be considered, in that situation it may not be entitled to patentable weight. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). “[A] limitation is printed matter only if it claims the content of information.” In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015) (“The first step of the printed matter analysis is the determination that the limitation in question is in fact directed toward printed matter.”). Appellants argue: [t]here is simply no disclosure or suggestion in Florance that the “summaries of each comparable sale property,” the “full details on the property,” or anything else related to the “sale properties comparable to the subject property” include “marketing data corresponding to said comparable saleable commodities, the marketing data including advertising selections used in a sale or an attempted sale of said comparable saleable commodities, the marketing data additionally including associated sales transaction data for at least some of the comparable saleable commodities.” App. Br. 18. Appellants further argue: the Examiner did not address the Appellant[s’] explanation of how paragraph [0358] of Florance does not disclose or suggest “retrieving . . . marketing data corresponding to said comparable saleable commodities,” much less where “the marketing data including advertising selections used in a sale or an attempted sale of said comparable saleable commodities, the marketing data additionally including associated sales transaction data for at least some of the comparable saleable commodities.” Reply Br. 19. We find the disputed “limitation is directed to printed matter because ‘if it claims the content of information.’” Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1041 (2018) (citing In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015)). Appeal 2017-011520 Application 13/790,972 26 Claim limitations directed to printed matter are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied. Praxair, 890 F.3d at 1032 (citing DiStefano, 808 F.3d at 848; Gulack, 703 F.2d at 1385). In the context of the rejections under § 101, supra, we explicitly considered whether the claimed limitations improved any technology or technical field. “In determining patent eligibility, examiners should consider whether the claim ‘purport(s) to improve the functioning of the computer itself’” or “‘any other technology or technical field.’” MPEP § 2106.05(a). We considered each limitation (see Table I) and found no such improvement. “Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1349–50 (Fed. Cir. 2014). While the doctrine’s underlying rationale is in subject matter eligibility, its application has been in analyzing other patentability requirements, including novelty under 35 U.S.C. § 102, e.g., King, 616 F.3d at 1279, and nonobviousness under 35 U.S.C. § 103, e.g., In re Huai-Hung Kao, 639 F.3d 1057, 1072–74 (Fed. Cir. 2011). Praxair, 890 F.3d at 1032. We find the claimed “marketing data” to fall within the printed matter doctrine. We further find no functional relationship between the claimed “marketing data” and the computer system that manipulates it, nor do Appellants so argue. We, therefore, find the “marketing data” limitations are not entitled to patentable weight. We are not persuaded the structural limitations distinguish over the prior art. Appeal 2017-011520 Application 13/790,972 27 DECISION The rejection of claims 1–21 under 35 U.S.C. § 101 is AFFIRMED. The rejection of claims 1–21 under 35 U.S.C. § 103 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation