Early Warning Services, LLCDownload PDFPatent Trials and Appeals BoardMar 31, 202014281730 - (D) (P.T.A.B. Mar. 31, 2020) 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. 14/281,730 05/19/2014 Julie McNelley 90850-909341 (000520US) 6218 20350 7590 03/31/2020 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER SHARVIN, DAVID P ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 03/31/2020 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): KTSDocketing2@kilpatrick.foundationip.com ipefiling@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JULIE MCNELLEY, RYAN TALBERT, and MIKE GROSS ____________ Appeal 2019-002981 Application 14/281,730 Technology Center 3600 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and KRISTEN L. DROESCH, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 2–10 and 18–26. Claim 1 is canceled. Claims 11–17 are withdrawn. We have jurisdiction over the pending claims 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(a). According to Appellant, the real party in interest is Early Warning Services, LLC of Scottsdale, Arizona. See Appeal Br. 3. Appeal 2019-002981 Application 14/281,730 2 STATEMENT OF THE CASE Introduction Embodiments of Appellant’s invention relate generally to “identification of an individual or other entity and evaluation of risk from doing business with that individual or entity.” Spec. ¶ 5. Rejection Claims 2–10 and 18–26 are rejected under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. See Final Act. 4–6. Issue on Appeal Did the Examiner err in rejecting claims 2–10 and 18–26 under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more? ANALYSIS We reproduce infra independent claim 2 in Table One. We have considered all of Appellant’s arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A under 35 U.S.C. § 101 Principles of Law A. Section 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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and Appeal 2019-002981 Application 14/281,730 3 abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See 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; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Appeal 2019-002981 Application 14/281,730 4 Diehr, 450 U.S. at 187; see also id. at 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); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (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 § 101 Guidance The U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Appeal 2019-002981 Application 14/281,730 5 Fed. Reg. 50 (“2019 Memorandum”).2 Under that guidance, we first look to whether the claim recites: (1) (see 2019 Memorandum Step 2A – Prong One) 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) (see 2019 Memorandum Step 2A – Prong Two) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).3 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 is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 2 The Office issued a further memorandum on October 17, 2019 (October 2019 Update: Subject Matter Eligibility, the “October 2019 Memorandum”) clarifying guidance of the January 2019 Memorandum in response to received public comments. See https://www.uspto.gov/ sites/default/files/documents/peg_oct_2019_update.pdf. Moreover, “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 2019 Memorandum, 84 Fed. Reg. at 51; see also October 2019 Memorandum at 1. 3 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See 2019 Memorandum - Section III(A)(2). Appeal 2019-002981 Application 14/281,730 6 (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 2019 Memorandum Step 2B. Because there is no single definition of an “abstract idea” under Alice step 1, the PTO has recently synthesized, for purposes of clarity, predictability, and consistency, key concepts identified by the courts as abstract ideas to explain that the “abstract idea” exception includes the following three groupings: 1. Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; 2. Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion); and 3. 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). See 2019 Memorandum, 84 Fed. Reg. at 52. According to the 2019 Memorandum, “[c]laims that do not recite [subject] matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas,” except in rare circumstances. Even if the claims recite any one of these three groupings of abstract ideas, these claims are still not “directed to” a judicial exception (abstract idea), and thus are patent eligible, if “the claim as a whole Appeal 2019-002981 Application 14/281,730 7 integrates the recited judicial exception into a practical application of that exception.” See 2019 Memorandum, 84 Fed. Reg. at 53. For example, limitations that are indicative of integration into a practical application include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception — see MPEP § 2106.05(e). In contrast, limitations that are not indicative of integration into a practical application include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea — see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP § 2106.05(h). See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”). Appeal 2019-002981 Application 14/281,730 8 2019 Memorandum, Step 2A, Prong One4 The Judicial Exception Under the 2019 Memorandum, we begin our analysis by first considering whether the claims recite any judicial exceptions, including certain groupings of abstract ideas, in particular: (a) mathematical concepts, (b) mental steps, and (c) certain methods of organizing human activities. The Examiner concludes the claims recite “a method of evaluating [the] risk of conducting business with an entity through calculating a risk level, which is an abstract idea similar to the concepts identified by the courts of collecting and analyzing information to detect misuse and notifying a user when misuse is detected.” Final Act. 4. We apply the Director’s 2019 Memorandum de novo. In Table One below, we identify in italics the specific claim limitations that we conclude recite an abstract idea. We also identify in bold the additional (non-abstract) claim elements that we find are generic computer components: 4 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2019-002981 Application 14/281,730 9 TABLE ONE Independent Claim 2 2019 Memorandum [a] A method of evaluating a risk from conducting business with an entity, the method comprising:5 Abstract Idea: Evaluating a risk from conducting business with an entity is a method of organizing human activity, i.e., a fundamental economic practice including mitigating risk, commercial or legal interactions including agreements in the form of contracts, legal obligations, sales activities or behaviors and business relations. See 2019 Memorandum, 84 Fed. Reg. at 52. [b] receiving, at a processor of a custodian system, identity information related to the entity, the identity information including information from an identity credential presented by the entity, the identity credential issued by a governmental entity and having identity information encoded on the identity credential, the identity information having a specified format; Receiving identity information related to the entity is insignificant extra-solution activity (i.e., data gathering). See 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g). 5 A method falls under the statutory subject matter class of a process. See 35 U.S.C. § 101 (“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.”). Appeal 2019-002981 Application 14/281,730 10 Independent Claim 2 2019 Memorandum [c] validating, with the processor of the custodian system, the identity credential based on the information from the identity credential and a plurality of positive databases maintained by the custodian system, the plurality of positive databases including stored format information contributed by the governmental entity and relating to the correct format of the identity information, the validating of the identify credential including determining that the identify information received from the identity credential has the correct format based on the stored format information; Abstract Idea: Validating, the identity credential based on the information from the identity credential and a plurality of positive databases maintained by the custodian system can be performed alternatively as a mental process. See 2019 Memorandum, 84 Fed. Reg. at 52. See also MPEP § 2106.05(g). [d] verifying, with the processor of the custodian system, an identity of the entity based on the identity information and the plurality of positive databases; Abstract Idea: Verifying an identity of the entity based on the identity information and the plurality of positive databases can be performed alternatively as a mental process. See 2019 Memorandum, 84 Fed. Reg. at 52. See also MPEP § 2106.05(g). [e] screening, with the processor of the custodian system and using the identity information encoded on the identity credential, the entity Abstract Idea: Screening, using the identity information encoded on the identity credential, the entity against a plurality of negative databases, can be performed alternatively as a Appeal 2019-002981 Application 14/281,730 11 Independent Claim 2 2019 Memorandum against a plurality of negative databases maintained by the custodian system based on the identity information for entities related to the entity and indicating past transactions with one or more other entities, and wherein screening is further based on one or more screening criteria maintained by the custodian system and provided to the custodian system by a party considering doing business with the entity; mental process. See 2019 Memorandum, 84 Fed. Reg. at 52. [f] calculating, with the processor of the custodian system, a risk level based on the validation of the identity credential, the verification of the identity of the entity, and the screening of the entity, wherein the risk level represents an amount of risk posed by the entity to the party considering doing business with the entity; and Abstract Idea: Calculating a risk level based on the validation of the identity credential, the verification of the identity of the entity, and the screening of the entity is a mathematical calculation that can be performed as a mental process. See 2019 Memorandum, 84 Fed. Reg. at 52. [g] reporting, from the processor of the custodian system, a response based on the calculated risk level to the party considering doing business with the entity. Reporting a response based on the calculated risk level to the party considering doing business with the entity is insignificant post-solution activity. See 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g). Appeal 2019-002981 Application 14/281,730 12 Abstract Idea As detailed above in Table One, evaluating a risk from conducting business with an entity is a method of organizing human activity: (1) a fundamental economic practice including mitigating risk, and (2) commercial or legal interactions including agreements in the form of contracts, legal obligations, sales activities or behaviors and business relations. See 2019 Memorandum, 84 Fed. Reg. at 52. After considering representative method claim 2 as a whole, we conclude that the italicized steps shown in Table One could be performed alternatively as mental processes.6 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.’).” 2019 Memorandum, 84 Fed. Reg. at 52 6 If a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent eligible under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011); “[t]hat purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654 F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to accelerate an ineligible mental process does not make that process patent- eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”). Appeal 2019-002981 Application 14/281,730 13 n.14. Additionally, step “f” recites a mathematical calculation. See 2019 Memorandum, 84 Fed. Reg. at 52. “An abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Merely combining several abstract ideas does not render the combination any less abstract. See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). Because we conclude all of claims 2–10 and 18–26 on appeal recite an abstract idea, as identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong Two. 2019 Memorandum, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Pursuant to the 2019 Memorandum, we consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. See 2019 Memorandum, 84 Fed. Reg. at 54–55. Additional Generic Computer Limitations As emphasized in bold in Table One, supra, we note the additional generic computer components recited in independent claim 2, for example: “a processor of a custodian system” and positive and negative databases. (emphasis added). We further note the supporting exemplary, non-limiting Appeal 2019-002981 Application 14/281,730 14 descriptions of generic computer components in the Specification, for example, the Specification, paragraph 10: “According to yet another embodiment, a system for identification and risk evaluation comprises a processor and a memory communicatively connected with and readable by the processor.” We emphasize that McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “[t]he abstract idea exception prevents patenting a result where ‘it matters not by what process or machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra Table One. MPEP § 2106.05(a) Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field Appellant contends the claimed method overcomes technical problems arising from advances in counterfeiting technology, which make it difficult to distinguish legally issued identity credentials from fraudulent identity credentials: When considering the recited language of the claims as a whole, Applicant’s claimed concept is much different than the concept identified at the high level of abstraction used by the Examiner. Specifically, Applicant submits that the claims are directed to the concept of specially programmed computer systems and methods (including a custodian system) that validate an identity credential, verify the identity of an entity that provides the identity credential, and then screen the entity, using both positive databases and negative databases. The identity credential is validated based on identity information encoded on the identity credential, using the positive databases. Appeal 2019-002981 Application 14/281,730 15 The positive databases have stored format information contributed by the governmental entity issuing the identity credential, and the stored format information is used to determine that the identity information on the identity credential has the correct format. The identity information itself is verified also using the positive databases, and the entity providing the identity credential is screened against the negative databases that have indication of past transactions, and based on screening criteria maintained by the custodian system. A risk level associated with the entity is calculated based on the validity of the identity credential, the verification of the identity of the entity, and the screening of the entity. As noted earlier, the claimed system and method overcome technical problems arising from advances in counterfeiting technology which make it difficult to distinguish legally issued identity credentials from fraudulent identity credentials (see, e.g., Specification, paragraphs 0002 and 0028). Appeal Br. 8 (emphasis added). MPEP § 2106.05(a) provides applicable guidance: To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. Id. (emphasis added). Here, the argued improvement that overcomes problems arising from advances in counterfeiting technology is not claimed. The claims are silent regarding any mention of counterfeiting technology. Appellant has not sufficiently explained how the recited generic computer components (including the processor and databases) include more than mere instructions Appeal 2019-002981 Application 14/281,730 16 to perform the recited steps to demonstrate an improvement to an existing technology. See claim 2. Accordingly, on this record, we conclude independent claims 2 and 18 and associated dependent claims, do not recite an improvement to the functionality of a computer or other technology or technical field. See MPEP § 2106.05(a). MPEP §§ 2106.05(c), 2106.05(e) Appellant advances no arguments that any of the method claims on appeal are tied to a particular machine, or transform an article to a different state or thing. See MPEP § 2106.05(c). Nor does Appellant advance further substantive, persuasive arguments as to any particular “meaningful” claim limitations, such as those of the types addressed under MPEP § 2106.05(e), that impose meaningful limits on the judicial exception.7 MPEP § 2106.05(f) Merely including instructions to implement an abstract idea on a computer, or Merely using a computer as a tool to perform an abstract idea We conclude Appellant’s claimed invention merely implements the abstract idea using instructions executed on generic computer components, as depicted in bold type in Table One, and as supported in our reproduction of the Specification, paragraph 10, supra. Thus, we conclude Appellant’s 7 See 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP § 2106.05(e): “[A]pply[ing] or us[ing] the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” (emphasis added). Appeal 2019-002981 Application 14/281,730 17 claims merely use a programmed computer as a tool to perform an abstract idea. MPEP § 2106.05(g) Adding insignificant extra-solution activity to the judicial exception As mapped in the right column of Table One, supra, we conclude that representative independent claim 2 recites extra or post-solution activities that courts have determined to be insufficient to transform judicially excepted subject matter into a patent-eligible application. See MPEP § 2106.05(g); 2019 Memorandum, 84 Fed. Reg. at 55 n.31. MPEP § 2106.05(h) Generally linking the use of the judicial exception to a particular technological environment or field of use The Supreme Court guides: “the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–12 (quoting Diehr, 450 U.S. at 191–92). Appellant contends there is an absence of preemption: Finally, it is clear that the claims at issue do not attempt to preempt every application of the abstract idea as characterized by the Examiner (“evaluating risk of conducting business with an entity through calculating a risk level”). The claims include many significant additional features (all referenced above) that are recited in the body of the claims and that are directed to the computerized operations that ensure that the claims are much “more than a drafting effort designed to Appeal 2019-002981 Application 14/281,730 18 monopolize the abstract idea,” as in DDR Holdings. Appeal Br. 17. However, our reviewing court provides applicable guidance: “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Nor do claims 2–10 and 18–26 on appeal present any other issues as set forth in the 2019 Memorandum regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. See 2019 Memorandum, 84 Fed. Reg. at 55. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)– (h)), we conclude claims 2–10 and 18–26 do not integrate the judicial exception into a practical application. Therefore, we proceed to Step 2B, The Inventive Concept. The Inventive Concept – Step 2B Under the 2019 Memorandum, 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 adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or, simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Appeal 2019-002981 Application 14/281,730 19 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) We note that Berkheimer was decided by the Federal Circuit on February 8, 2018. On April 19, 2018, the PTO issued the Memorandum titled: “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memorandum”).8 The Berkheimer Memorandum provided specific requirements for an Examiner to support with evidence any finding that claim elements (or a combination of elements) are well-understood, routine, or conventional. Under Step 2B, the Examiner finds: The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional element of a processor of a custodian system is a generic computer component that is performing routine and conventional computer functions of receiving identity information, validating, verifying, screening, and calculating. . . .” Final Act. 4 (emphasis added). The specification at ¶ [0019] states “in other instances, well- known structures and devices are shown in block diagram form” and the drawings show almost all the components and steps of the invention in block diagram form, leading the Examiner to conclude that nearly every structure or device in the invention can be considered well-known, routine, and conventional under the BRI of the claims. Viewing the limitations as an ordered combination does not add anything further that looking at the limitations individually. Final Act. 5 (emphasis added). 8 Available at https://www.uspto.gov/sites/default/files/documents/memo- berkheimer-20180419.PDF. Appeal 2019-002981 Application 14/281,730 20 In the Appeal Brief, filed September 27, 2018, Appellant cites to Berkheimer. See Appeal Br. 15. Appellant makes a demand for Berkheimer evidence, such as one or more of the specific types of factual evidence identified in the USPTO Berkheimer Memorandum: “Appellant respectfully submits that the Examiner has not met this burden, and that the lack of cited art and the lack of cited court decisions (with at least some explanation/analysis), in fact, supports Appellant’s position that the claim elements recite ‘significantly more’ than the Examiner-characterized abstract idea.” Appeal Br. 15. The Examiner disagrees with Appellant, and further explains the basis for the rejection, relying on the Specification, at paragraphs 19, 30–32, as supporting evidence: As to the argument presented to para. [0019], the Examiner has provided the rationale as to how the block diagrams can be entirely well-known structures and devices under the broadest reasonable interpretation of the specification. Although the Appellant argues that the structures are not all well-known, the specification nor the Appellant provides guidance as to what structures are not well-known and under what instance the structures are well-known; therefore the Examiner has reasonably concluded that nearly all the structures could be well-known in a certain instance and the additional specification paras [0030]-[0032] support that the computer components and structures can be nearly any well-known structure. Ans. 6–7 (emphasis added). Appellant files a Reply Brief that further traverses the Examiner’s findings regarding paragraph 19 of the Specification. However, Appellant does not rebut or otherwise persuasively traverse the Examiner specific findings regarding paragraphs 30–32 of the Specification, in the Appeal Appeal 2019-002981 Application 14/281,730 21 Brief (15–17) or in the Reply Brief. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). BASCOM We note the Federal Circuit held in BASCOM that the claimed Internet content filtering, which featured an implementation “versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location,” expressed an inventive concept in “the non-conventional and non-generic arrangement of known, conventional pieces.” BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Although Appellant cites BASCOM as a case authority in support (Appeal Br. 16), we do not find a substantive argument analogizing the claims on appeal to the subject claim considered by the BASCOM court. In particular, Appellant has not persuasively shown an unconventional, non- generic arrangement regarding the non-abstract limitations of generic computer components in any of the claims on appeal, as was held by the court in BASCOM. See 2019 Memorandum, 84 Fed. Reg. at 52. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Further, regarding the use of the recited generic computer components identified above in Table One, the Supreme Court has held that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing court provides additional guidance: See FairWarning, 839 F.3d at 1096 (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent- eligible subject matter.”); OIP Techs., 788 F.3d at 1363 (claims reciting, Appeal 2019-002981 Application 14/281,730 22 inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “‘well- understood, routine conventional activit[ies],’ either by requiring conventional computer activities or routine data-gathering steps”). This reasoning is applicable here. Therefore, on the record before us, Appellant has not shown that the claims on appeal add a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional, when the claim limitations are considered both individually and as an ordered combination. See MPEP § 2106.05(d). In light of the foregoing, we conclude, under the 2019 Memorandum, that each of Appellant’s claims 2–10 and 18–26, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept.9 Therefore, we sustain the Examiner’s Rejection under 35 U.S.C. § 101 of claims 2–10 and 18–26. CONCLUSION Under the Director’s 2019 Memorandum, as governed by relevant case law, we conclude that all claims 2–10 and 18–26, rejected under 35 U.S.C. § 101, are directed to patent-ineligible subject matter. 9 For the reasons discussed above, grouped claims 2–10 and 18–26 fall with representative independent claim 2 under 35 U.S.C. § 101. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-002981 Application 14/281,730 23 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–10, 18–26 101 Eligibility 2–10, 18–26 FINALITY AND RESPONSE 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 Copy with citationCopy as parenthetical citation