Collins, Dean M. et al.

Patent Trials and Appeals Board

Jan 13, 2020

13316754 - (D) (P.T.A.B. Jan. 13, 2020)

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.
13/316,754 12/12/2011 Dean M. Collins TR01-011-05 1025
12394 7590 01/13/2020
Travelers Companies
c/o Fincham Downs LLC
90 Grove Street Suite 205
Ridgefield, CT 06877
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
01/13/2020 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):
bripple@travelers.com
docketing@cpaglobal.com
ePAIR@finchamdowns.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEAN M. COLLINS and JOHN P. O’CONNOR
____________

Appeal 2018-007833
Application 13/316,754
Technology Center 3600
____________

Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–5 and 7–21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed December 6, 2017) and Reply Brief (“Reply Br.,” filed July 30, 2018),
and the Examiner’s Answer (“Ans.,” mailed June 4, 2018) and Final Office
Action (“Final Act.,” mailed July 7, 2017). Appellant identifies “The
Travelers Indemnity Company” as the real party in interest. Appeal Br. 3.
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CLAIMED INVENTION
Appellant describes that the disclosure “relates to systems, media, and
methods for determining an insurance premium based on client-selected
and/or client-customized data items relating to vehicular operations”
(Spec. ¶ 6).
Claims 1 and 21 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method, comprising:
[(a)] receiving, by a specially-programmed and
electronically networked computer server device and from a
mobile electronic user device, first input comprising an
indication of a request for a fleet insurance product for a fleet of
vehicles;
[(b)] calculating, by the specially-programmed computer
device, a base premium for the fleet insurance product;
[(c)] receiving, by the specially-programmed computer
device and from the mobile electronic user device, second input
comprising an indication that telematic monitoring will be
permitted for at least one portion of the fleet of vehicles;
[(d)] generating, by the specially-programmed computer
device and providing to the mobile electronic user device and in
response to the indication that the telematics monitoring will be
permitted, a plurality of menu-selectable options, each option
representing at least one rule representing at least one of how and
when a data item relevant to the fleet insurance product is to be
monitored by a telematics device;
[(e)] receiving, by the specially-programmed computer
device and from the mobile electronic user device, third input
comprising an indication of a user selection of at least one of the
plurality of menu-selectable options;
[(f)] calculating, by the specially-programmed computer
device and based on the user selection, an adjusted premium for
the fleet insurance product;
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[(g)] transmitting, to the telematics device, a signal that
configures the telematics device to monitor the at least one
portion of the fleet of vehicles in accordance with the at least one
rule representing at least one of how and when the data item
relevant to the fleet insurance product is to be monitored based
on the indication of the user selection of the at least one of the
plurality of menu-selectable options;
[(h)] transmitting, by the specially-programmed
computer device and to the mobile electronic user device, an
indication of the adjusted premium for the fleet insurance
product;
[(i)] facilitating, by the specially-programmed computer
device and based on the adjusted premium, a sale of the fleet
insurance product to a client; and
[(j)] receiving, after the sale of the fleet insurance
product to the client and from the telematics device, data
monitored by the telematics device in accordance with the at least
one rule representing at least one of how and when the data item
relevant to the fleet insurance product is to be monitored based
on the indication of the user selection of the at least one of the
plurality of menu-selectable options.
REJECTION
Claims 1–5 and 7–21 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 14–21).
We select independent claim 1 as representative. The remaining claims,
thus, stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to calculating a base premium for
fleet insurance based on user selection of a telematics monitoring option,
i.e., to a fundamental economic practice and, therefore, to an abstract idea
similar to other concepts that the courts have held abstract (Final Act. 14–
18). The Examiner also determined that the claims do not include additional
elements or a combination of elements that is sufficient to amount to
significantly more than the abstract idea (id. at 18–30).
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After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) providing groupings of subject matter that are
considered an abstract idea; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50. The 2019 Revised Guidance, by its
terms, applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019. Id.2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded by Appellant’s arguments that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 14–19). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, the Specification, including the claim
language, makes clear that the claims focus on an abstract idea, and not on
any improvement to computer technology and/or functionality.
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The Specification is entitled “MONITORING CLIENT-SELECTED
VEHICLE PARAMETERS IN ACCORDANCE WITH CLIENT
PREFERENCES,” and describes, in the Background section, that an
automobile premium may be based on various factors, e.g., the age, gender,
credit rating, and home address of an insured, and the distance the
automobile is driven within a particular time period (Spec. ¶ 4). In some
cases, insurance companies may set or adjust automobile insurance
premiums based on information obtained by monitoring the automobile’s
operation (id.). And, in those cases, customers may opt in or opt out of the
monitoring program (id.).
The claimed invention is ostensibly intended to improve on these
existing systems by allowing a client to select the monitored vehicle
parameters on which his or her premium is based, rather than merely
allowing the client to opt in or opt out of the monitoring program (see, e.g.,
id. ¶¶ 6, 48). Claim 1, thus, recites a method comprising: (1) receiving a
customer request for a fleet insurance product and calculating a base
premium for the insurance product, i.e., “receiving, by a specially-
programmed and electronically networked computer server device and from
a mobile electronic user device, first input comprising an indication of a
request for a fleet insurance product for a fleet of vehicles”; and
“calculating, by the specially-programmed computer device, a base premium
for the fleet insurance product” (steps (a) and (b)); (2) receiving the
customer’s selection of at least one monitoring option from among a
plurality of available options for telematic monitoring of the vehicle fleet,
i.e.,
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receiving, by the specially-programmed computer device
and from the mobile electronic user device, second input
comprising an indication that telematic monitoring will be
permitted for at least one portion of the fleet of vehicles;
generating, by the specially-programmed computer device
and providing to the mobile electronic user device and in
response to the indication that the telematics monitoring will be
permitted, a plurality of menu-selectable options, each option
representing at least one rule representing at least one of how and
when a data item relevant to the fleet insurance product is to be
monitored by a telematics device; [and]
receiving, by the specially-programmed computer device
and from the mobile electronic user device, third input
comprising an indication of a user selection of at least one of the
plurality of menu-selectable options
(steps (c) through (e)); (3) calculating an adjusted premium amount based on
the customer selection, i.e., “calculating, by the specially-programmed
computer device and based on the user selection, an adjusted premium for
the fleet insurance product” (step (f)); and (4) consummating a sale of the
fleet insurance product to the customer at the adjusted premium price, i.e.,
“transmitting, by the specially-programmed computer device and to the
mobile electronic user device, an indication of the adjusted premium for the
fleet insurance product”; and “facilitating, by the specially-programmed
computer device and based on the adjusted premium, a sale of the fleet
insurance product to a client” (steps (f), (h), and (i)). Simply put, these
limitations, given their broadest reasonable interpretation, recite a method
for calculating a premium for a fleet insurance product based on user-
selected telematics monitoring parameters and consummating a sale of the
fleet insurance product at the calculated premium amount, i.e., a
fundamental economic practice and commercial interaction, which are a
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method of organizing human activity and, therefore, an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52.
The courts have held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that managing an insurance policy is a
fundamental economic practice, i.e., an abstract idea. See, e.g., Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1280
(Fed. Cir. 2012) (concluding that “managing a stable value protected life
insurance policy by performing calculations and manipulating the results” is
an abstract idea); Accenture Global Servs., GmbH v. Guidewire Software,
Inc., 728 F.3d 1336, 1344–45 (Fed. Cir. 2013) (finding ineligible claims
directed to generating rule-based tasks for processing an insurance claim).
And an integral part of managing an insurance policy is processing data
related to the policy and determining a premium amount to be paid by the
policy holder.
Insurance also is a form of risk management, principally used to
hedge against the risk of a contingent loss (see, e.g., Spec. ¶ 34 (describing
that premium pricing may include performance of a risk assessment), id.
¶ 65 (describing that different parameters may result in different discounts
and that the weighting of parameters may be based on how predictive of risk
the parameters have been shown to be)). And the Supreme Court has held
that claims directed to “the basic concept of hedging, or protecting against
risk” recite “a fundamental economic practice,” i.e., an abstract idea. Bilski
v. Kappos, 561 U.S. 593, 611 (2010) (citations omitted).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
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recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and
(e) in describing the considerations that are indicative that an additional
element or combination of elements integrates the judicial exception, e.g.,
the abstract idea, into a practical application. 84 Fed. Reg. at 55.
Summarizing the relevant case law, the Revised Guidance also notes that
courts have generally not considered an “additional element [that] adds
insignificant extra-solution activity” to integrate a judicial exception into a
practical application. Id.
Here, in addition to the recited abstract idea, claim 1 recites a
“specially-programmed and electronically networked computer server,”
“a mobile electronic user device,” and a “telematics device.” These
elements are each recited at a high level of generality and, as the Examiner
observes, are described in the Specification as generic components operating
in their normal and ordinary capacity ((Final Act. 20–24 (citing Spec. ¶¶ 14,
18, 20, 28, 30, 35, 39, 44, 45, and 46)). Although Appellant characterizes
the computer server as “specially programmed,” we find no indication in the
Specification, nor does Appellant direct us to any indication, that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
assertedly inventive programming, or that the claimed computer device is
other than a generic computer component used to perform generic computer
functions, e.g., receiving, processing, and transmitting information.
See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
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computer limitations does not make an otherwise ineligible claim patent-
eligible.”); cf. In re Katz Interactive Call Processing Patent Litig., 639 F.3d
1303, 1316 (Fed. Cir. 2011) (“Katz has not claimed a specific function
performed by a special purpose computer, but has simply recited the claimed
functions of ‘processing,’ ‘receiving,’ and ‘storing.’ Absent a possible
narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’
discussed below, those functions can be achieved by any general purpose
computer without special programming.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the recited generic components integrate the
abstract idea into a “practical application,” as that phrase is used in the 2019
Revised Guidance.
Claim 1 additionally recites method steps (g) and (j). But, these steps
do not integrate the recited abstract idea into a practical application at least
because they represent insignificant extra-solution activity.
Method step (g) requires configuring the telematics device to monitor
the vehicle fleet in accordance with the user-selected parameters that are the
basis for calculating the user’s adjusted premium, and is analogous to
adjusting an alarm limit according to a mathematical formula, which the
Supreme Court determined in Flook was “post-solution activity.” Parker v.
Flook, 437 U.S. 584, 590 (1978). See also Mayo, 566 U.S. at 79
(concluding that the additional element of measuring metabolites of a drug
administered to a patient was insignificant extra-solution activity, which was
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insufficient to confer patent eligibility). And method step (j) (i.e.,
“receiving, after the sale of the fleet insurance product to the client and from
the telematics device, data monitored by the telematics device”) involves no
more than data gathering — another example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc),
aff’d on other grounds sub nom. Bilski v. Kappos, 561 U.S. 593 (2010)
(characterizing data gathering steps as a classic example of insignificant
extra-solution activity); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1371–72 (Fed. Cir. 2011) (noting that even if some physical
steps are required to obtain information from a database (e.g., entering a
query via a keyboard, clicking a mouse), such data-gathering steps cannot
alone confer patentability).
Appellant argues that the claims are not directed to an abstract idea
because, similar to the claim at issue in McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), which improved the way that
computers are able to render animated lip synchronization, the present
claims improve “the functionality of the remote telematics device (and the
ability to utilize related data for various purposes, such as in the context of a
fleet insurance policy) – a capability that had previously not been available”
(Appeal Br. 14–17). Yet, we find nothing in the Specification, nor does
Appellant direct us to anything in the Specification, that attributes any
improvement in the functionality of remote telematics devices to the claimed
invention.
The Examiner determined, and we agree, that the pending claims are
directed to calculating a premium for a fleet insurance product based on user
selection of a telematics monitoring option (Final Act. 14). This also is fully
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consistent with Appellant’s Specification, which expressly discloses that the
invention relates to “systems, media, and methods for determining an
insurance premium based on client-selected and/or client-customized data
items relating to vehicular operations” (Spec. ¶ 6). To the extent claim 1
reflects an improvement at all, that improvement is not to any technology
and/or technical field, but rather to a general business practice (i.e., setting
or adjusting automobile insurance premiums based on data obtained by
monitoring automobile operation) by allowing a customer to select the
monitored vehicle parameters on which his or her premium is based, rather
than requiring the customer to opt in or opt out of the monitoring program
(see, e.g., Spec. ¶¶ 6, 48).
Appellant argues that the pending claims are not “merely directed to
‘processing an insurance claim,’ but [to] a very particular (and novel)
implementation of telematics-based insurance product method and system
that implement [a] user-customizable remote telematics sensor
reconfiguration” (Appeal Br. 17). But again, we find no indication in the
Specification that the operations recited in claim 1 require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, invoke any assertedly inventive programming, or that
physical components recited in the claim, including the telematics device,
are other than generic components used in their normal, routine and
expected manner.
Claim 1, moreover, merely recites “transmitting, to the telematics
device, a signal that configures the telematics device to monitor . . . the fleet
of vehicles in accordance with the . . . user selection” without any technical
details regarding how the telematics device is reconfigured and/or
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customized based on the user selection. Appellant, by its argument, suggests
such details exist, but those details are not reflected in the claim. Instead,
“the claim language here provides only a result-oriented solution with
insufficient detail for how a computer accomplishes it. Our law demands
more.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1342 (Fed. Cir. 2017).
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing a human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than either generic
components used as tools to perform the recited abstract idea or represent
insignificant extra-solution activity. As such, they do not integrate the
abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–
24 (“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
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Addressing step two of the Mayo/Alice framework, Appellant argues
that even if the claims are directed to an abstract idea, the claims are
nonetheless patent eligible because the claims present no risk of preemption
(Appeal Br. 19–20). But, that argument is not persuasive at least because
preemption is not the sole test for patent eligibility.
Although the Supreme Court has described “the concern that drives
[the exclusion of abstract ideas from patent-eligible subject matter] as one of
pre-emption,” Alice Corp., 573 U.S. at 216, characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp.,
573 U.S. at 216). “[P]reemption may signal patent ineligible subject matter
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 includes significantly more than an abstract
idea because the claim is allegedly novel and non-obvious in view of the
prior art (Appeal Br. 20–21). Neither a finding of novelty nor a non-
obviousness determination automatically leads to the conclusion that the
claimed subject matter is patent eligible. Although the second step in the
Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “an element or combination of elements that is ‘sufficient to
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ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18
(citation omitted). “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 2–5 and
7–21, which fall with claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–21 101 Eligibility 1–5, 7–21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED