Ex Parte BACON

Patent Trial and Appeal Board

Dec 31, 2018

12474015 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/474,015 05/28/2009
32692 7590 01/03/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
David R. BACON
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
65511US002 1706
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. BACON
Appeal2017-007610
Application 12/474,015 1
Technology Center 3600
Before HUBERT C. LORIN, DAVID M. KOHUT, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David R. Bacon (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1-5, 8-14, 17-23, and 26-31. We
have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies 3M Innovative Properties Company as the real
party in interest. App. Br. 3.
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Application 12/474,015
THE INVENTION
Claim 1, reproduced below with indentation added, is illustrative of
the subject matter on appeal.
1. A computer-implemented method comprising:
receiving, by a processor of a computing device and from
one or more electronic document databases, a plurality of
uncoded electronic documents associated with a
patient's encounter with a health care organization;
receiving, by the processor, a set of rules from a rules
database, the set of rules defining, for given types of electronic
documents, a plurality of terms of interest to a coder and
relevant to medical coding;
generating, by the processor, subsets of the plurality of
uncoded electronic documents by applying the set of rules to
the plurality of electronic documents,
wherein each subset comprises a respective extract
of the plurality of uncoded electronic documents
comprising one or more terms of the plurality of terms
defined by the rules as being of interest to the coder, and
wherein the subsets comprise a first portion of the
plurality of uncoded electronic documents comprising at
least some terms of the plurality of terms instead of a
second portion of the plurality of electronic documents
that does not comprise any terms of the plurality of
terms, the one or more terms of the plurality of terms
being received from a terms database that includes a
relevance score for the one or more terms,
wherein the relevance score is indicative of the
relevance of the respective one or more terms to the
coder, and wherein generating the subsets by applying
the set of rules comprises selecting subsets of the
plurality of uncoded electronic documents that
include terms with respective relevance scores indicative
of greater relevance than terms of other subsets of the
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second portion of the plurality of uncoded electronic
documents; and
generating, by the processor and in a user interface, a
display area that includes at least one subset of the subsets of
the plurality of uncoded electronic documents to present the
first portion of the electronic documents instead of the second
portion of the electronic documents, the one or more terms of
the plurality of terms defined by the rules as of interest to the
coder being associated with visual indicia identifying the one or
more terms within the at least one subset visible in the display
area.
App. Br. 26-27 (Claims Appendix).
THE REJECTION
The following rejection is before us for review:
Claims 1-5, 8-14, 17-23, and 26-31 are rejected under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1-5, 8-14, 17-23, and 26-31
under 35 U.S.C. § 101 as being directed to judicially-excepted subject
matter?
ANALYSIS
Although the Appellant ostensibly argued these claims under three
separate headings entitled "GROUP 1," "GROUP 2," and "GROUP 3," the
Appellant's arguments are the same for each group. See App. Br. 8-24. We
select claim 1 as the representative claim for this group, and the remaining
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claims 2-5, 8-14, 17-23, and 26-31 stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent-eligibility under 35 U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that the claims are directed to
"presenting an interface to assist in the coding of medical documents
according to a series of rules through the communication, storage,
processing and display of data." Final Act. 12. According to the Examiner,
"these concepts relate to the handling of data through the communication,
storage, processing and display of data" and are "not meaningfully different
than those concepts found by the courts in SmartGene2 and CyberFone3 to
be abstract ideas." Responding to Appellant's arguments in the Answer, the
Examiner characterized the claims as directed to the abstract idea of
"generating subsets of uncoded documents by applying rules, wherein each
subset comprises extracted terms of interest to a coder, the rules extracting
terms for a subset of a relevance score greater than terms of another subset."
Ans. 9 ( citing Digitech Image Technologies, LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014), Electric Power Group, LLC v. Alstom
2 SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 Fed.Appx.
950 (Fed. Cir. 2014)
3 Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. Appx 988 (Fed.
Cir. 2014) (nonprecedential)
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S.A., 830 F.3d 1350 (Fed. Cir. 2016), and Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)).
The Appellant argues that "the Office has overly generalized the
features of claim 1, which is improper as stated in Enfzsh" and that "leaving
out features recited in the claim results in an overly generalized concept that
is untethered from the claims." App. Br. 10 (citing Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)). The Appellant reproduces
language of claim 1 and argues that "the actual claimed features of claim 1
are directed to concepts that are not abstract, but specific for providing a
technical solution for a technical problem of automatically reducing the
amount of medical documentation that a coder needs to review." Id. at 11.
According to Appellant, "the recited steps results in, for example, a medical
documentation analysis and extraction system that generates subsets of
electronic documents and displays only these subsets in a user interface to
'allow[s] a coder to concentrate his or her time and effort on the most
relevant portions of electronic documents."' Id. at 13 ( citing Spec. para. 4 ).
Before we can determine whether claim 1 is directed to an abstract
idea, we must first resolve the question of what claim 1 is directed to. Is it
directed to "presenting an interface to assist in the coding of medical
documents" (Final Act. 12), "generating subsets of uncoded documents by
applying rules" (Ans. 9), or is it directed to "automatically reducing the
amount of medical documentation that a coder needs to review" (App. Br.
11 )? This question implicates the "directed to" inquiry.
The "directed to" inquiry applies a stage-one filter to the claims,
considered in light of the Specification, based on whether "their character as
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a whole is directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see also Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); Enfzsh,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (Inquiring into "the focus of the
claimed advance over the prior art.").
"In determining the eligibility of respondents' claimed process for
patent protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
In this case, we find that claim 1, as a whole, is focused on identifying
and displaying relevant portions of electronic documents. We do not see
that claim 1 is focused on an improvement to any technology such as an
improved process for filtering data in a computer or an improved user
interface.
Claim 1 recites four steps including "[a] receiving documents from a
database," "[b] receiving rules from a database, the rules defining terms of
interest to a coder," "[c] generating subsets of the documents by applying the
rules," and "[d] generating a display that includes the subset of documents."
Step [ c] also includes three "wherein" clauses. The first "wherein" clause
specifies that the composition of each subset includes terms of interest to the
coder. The second "wherein" clause specifies that the subsets comprise a
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first portion of the documents that comprises some terms of interest and a
second portion that does not. The third "wherein" clause recites selecting
subsets of documents based on respective relevance scores of terms in the
documents.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016)). The court in Enfish put the question as being "whether the
focus of the claims is on [a] specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Enfzsh, 822 F.3d at
1335-36. The court found that the "plain focus of the claims" there was on
"an improvement to computer functionality itself, not on economic or other
tasks for which a computer is used in its ordinary capacity." Id. at 1336.
In that regard, the Background section of the Specification discusses
the problem, which is that
Many [ medical] documents do not adhere to particular
formatting. Some of the documents are hand written, or
scanned. Medical coders review these documents and identify
billable aspects of the patient encounter, and then associate
these billable aspects with codes. This review process, which
includes reading, navigating, and assessing documentation, is
cumbersome, sometimes requiring up to 70% of a medical
coder's time.
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Spec. 1, 11. 26-32. According to the Specification, the inventors solved the
problem by providing
Systems and methods for creating one or more subsets of
electronic documents associated with a patient's encounter with
a healthcare organization. In various embodiments described
herein, these subsets may contain information of particular
relevance to a coders' job of sifting through the electronic
documents and associating codes with billable aspects of the
patient's encounter. In various embodiments, these subsets
allow a coder to concentrate his or her time and effort on the
most relevant portions of electronic documents, which may
save the coder time, and thus the coder' employer money.
Id. at 1, 1. 35-2, 1. 9. In light of the Specification's description of the
problem and solution, the advancement over the prior art by the claimed
invention is in identifying and displaying relevant portions of medical
documents.
Given the focus of claim 1 as a whole, in light of the Specification, is
on data gathering activities4 in support of identifying and displaying relevant
portions of medical documents, the claims are properly characterized as
being "directed to" and identifying and displaying relevant portions of
electronic documents. Identifying and displaying relevant portions of
electronic documents is an abstract idea. Cf Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015) (holding that claims
4 Cf Elec. Power Grp., LLC, 830 F.3d at 1353 (When "[t]he focus of the
asserted claims" is "on collecting information, analyzing it, and displaying
certain results of the collection and analysis," the claims are directed to an
abstract idea.)
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reciting "1) collecting data, 2) recognizing certain data within the collected
data set, and 3) storing that recognized data in a memory" were drawn to an
abstract idea); Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1369 (Fed. Cir. 2015)
( the claim relates to customizing information based on ( 1)
information known about the user and (2) navigation data. [ ... ]
There is no dispute that newspaper inserts had often been
tailored based on information known about the customer - for
example, a newspaper might advertise based on the customer's
location. Providing this minimal tailoring- e.g., providing
different newspaper inserts based upon the location of the
individual - is an abstract idea.);
Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016) ("tailoring of content based on information about the user - such
as where the user lives or what time of day the user views the content - is an
abstract idea that is as old as providing different newspaper inserts for
different neighborhoods") ( citing Intellectual Ventures I); Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1311-14 (Fed. Cir. 2016)
(holding claims that called for receiving data, determining whether the
received data matched certain characteristics, and outputting data based on
the determining step were "directed to methods of screening emails and
other data files for unwanted content" and that that was an abstract idea
because filtering mail (and likewise filtering e-mail) according to known
characteristics was a "long-prevalent practice.").
The Appellant makes various statements on the theme that the claimed
subject matter is rooted in computer technology rather than an abstract idea.
App. Br. 13-16, 20. For example, the Appellant argues that "the claims are
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necessarily rooted in existing technology related to the analysis of electronic
documents, and provide an improvement to such processes such that a
system reduces the medical documentation to subsets of medical documents
such that [a] medical coder does not need to manually review all documents
for the patient." Id. at 15. But we do not see, and the Appellant does not
adequately explain, how the claimed process improves a generic computer.
To the extent the Appellant contends that a computer makes the medical
coding process more efficient (id. 14), the inclusion of a generic computer
per se for its routine or generic functions cannot alone tum what is an
abstract idea into one that is not. See, e.g., 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."); W. View Research, LLC v. Audi AG, 685 F.
App'x 923, 926 (Fed. Cir. 2017) (non-precedential) ("These claims do not
go beyond receiving or collecting data queries, analyzing the data query,
retrieving and processing the information constituting a response to the
initial data query, and generating a visual or audio response to the initial data
query."); Glasswall Solutions Ltd. v. Clearswift Ltd., No. 2018-1407, slip op.
at 3 (Fed. Cir. Dec. 20, 2018) (non-precedential) ("comparing [a] file's
content to a set of rules [and] extracting conforming data [are] generic
computer functions.").
The features argued by the Appellant simply narrow the abstract idea
to particular information. Identifying information in "uncoded electronic
documents associated with a patient's encounter with a health care
organization" in particular, and displaying the identified information in "a
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display area," with "visual indicia identifying the one or more terms within
the at least one subset visible in the display area" further limit the type of
information displayed, but only as to content. They do not, however, render
the abstract idea any less abstract. Cf SAP America, Inc. v. Investpic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018) ("Contrary to InvestPic's suggestion,
it does not matter to this conclusion whether the information here is
information about real investments. As many cases make clear, even if a
process of collecting and analyzing information is "limited to particular
content" or a particular "source," that limitation does not make the collection
and analysis other than abstract.") (quoting Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)) (citing cases).
We cannot agree with the Appellant's contention that the claims
before us are similar to the claims held eligible in McRO, 837 F.3d 1299.
See App. Br. 16-19; Reply Br. 5-7. The claims in McRO were directed to
an improvement to computer technology- namely, the display of "lip
synchronization and facial expressions" of animated characters. Id. at 1313.
The claimed improvement was to how the computer operated to produce
better quality synchronized images. Here, the claimed improvement relates
to analyzing and filtering information in support of identifying and
displaying relevant portions of electronic documents, and not any improved
way of synchronizing or displaying images. For example, the Specification
describes the claimed "visual indicia" as follows:
The visual indicia associated with the terminology species may
be associated with the typeset (for example, different fonts,
different levels of bolding, underlying, italicizing, and so forth).
Also, specific terms may be highlighted or outlined with a
colored box, the box in one embodiment defining an area that
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may be selected by coder 10 via a pointing device such as a
mouse.
Spec. 10, 1. 33 - 11, 1. 5. The Appellant cannot reasonably argue that
applying italics or highlighting to certain terms in a document amounts to an
improvement to computer technology. Cf Move, Inc. v. Real Estate All.
Ltd., 721 F. App'x 950, 954 (Fed. Cir. 2018) (non-precedential) ("we agree
with the district court that claim 1 of the '989 patent is directed to the
abstract idea of 'a method for collecting and organizing information about
available real estate properties and displaying this information on a digital
map that can be manipulated by the user."').
We find that the claims here are similar to the claims in Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017),
where the claims recited systems and methods for preserving compatibility
between XML documents after they had been edited by different users. Id.
at 1339-40. According to the claims at issue in that case, a "dynamic
document" containing data extracted from the original XML document
would be created, users could edit the data displayed in the dynamic
document, and the changes would then be "dynamically propagated" back
into the original XML document. Id. at 1339. The Federal Circuit
concluded that the claims were, "at their core, directed to the abstract idea of
collecting, displaying, and manipulating data." Id. at 1341.
The Appellant next argues that "claim 1 clearly does not seek to tie up
any judicial exception such that others cannot practice it." App. Br. 18.
It is true that the Supreme Court has characterized pre-emption as a
driving concern for patent eligibility. See Alice, 134 S. Ct. at 2354. But
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characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption 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., 134 S. Ct. at2354). However, "[w]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id. at 1379.
Cf OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir.
2015) ("[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract."). "What matters is whether a claim threatens to subsume
the full scope of a fundamental concept, and when those concerns arise, we
must look for meaningful limitations that prevent the claim as a whole from
covering the concept's every practical application." CLS Bank Int 'l. v. Alice
Corp., 717 F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here,
we find the claimed subject matter covers patent-ineligible subject matter.
Accordingly, the pre-emption concern is necessarily addressed. "Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, [] preemption concerns are fully addressed and
made moot." Ariosa Diagnostics, 788 F.3d at 1379.
In view of the above, we see no error in the Examiner's determination
that claim 1 is directed to an abstract idea. We now tum to step two.
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Step two of the Alice/Mayo framework 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."' Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73
(2012)).
In that regard, the Examiner determined that:
The independent claims do not include additional
elements that are sufficient to amount to significantly more than
the judicial exception because the additional elements when
considered both individually and as an ordered combination do
not amount to significantly more than the abstract idea. The
independent claims recite the additional limitations of a
computer and related components ("computer", "computing
device", "processor", "memory", "microprocessor"), as well as
other conventional functionality that may be composed of
hardware ("database", "user interface", "computer readable
medium") that merely make generic determinations based on
available data, store, communicate and display data. The
additional limitations are recited at a high level of generality
and are recited as performing generic computer functions
routinely used in computer applications, such as receiving,
generating, applying, associating and displaying data.
Applicant's [S]pecification discloses the following material, at
the corresponding paragraphs, to be composed of conventional
hardware: processor (24), computing device (24), database (24),
user interface (22), computer readable medium (24), computer
(24), memory (24), system (24) and microprocessor (24).
Generic computer components recited as performing
generic computer functions that are well-understood, routine
and conventional activities amount to no more than
implementing the abstract idea with a computerized system.
The use of generic computer components to make generic
determinations based on available data, store, communicate and
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display data does not impose any meaningful limit on the
computer implementation of the abstract idea. Thus, taken
alone, the additional elements do not amount to significantly
more than the above-identified judicial exception (the abstract
idea). Looking at the limitations as an ordered combination
adds nothing that is not already present when looking at the
elements taken individually. There is no indication that the
combination of the elements improves the functioning of a
computer or improves any other technology. Their collective
functions merely provide conventional computer
implementation.
Final Act. 13-14.
The Appellant argues that claim 1 requires "significantly more" than
an abstract idea. App. Br. 19-22. According to the Appellant, "the claimed
features provide an improvement to the technical field of medical
information management and provides a technical improvement that
includes automatically reducing the amount of medical documents that a
medical coder needs to review." Id. at 20 (citing Bascom Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); see
also, Reply Br. 7-10.
We do not see how, and the Appellant does not persuasively explain
how, the claims before us are similar to the claims in Bascom. For example,
the Appellant has not argued that the claims require the installation of a
filtering engine "at a specific location, remote from the end-users, with
customizable filtering features specific to each end user," as was the case in
Bascom. 827 F.3d at 1350.
Computer-based "filtering" operations per se have not been found
sufficient to add significantly more. See, e.g., Mortg. Grader, Inc. v. First
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Choice Loan Servs. Inc., 811 F.3d 1314, 1317, 1324 (Fed. Cir. 2016)
(holding ineligible claims that required an interface that "provides
functionality for the borrower to search the database to identify a set of loan
packages for which the borrower qualifies" because "the claims 'add' only
generic computer components such as an 'interface,' 'network,' and
"database."'); LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 993
(Fed. Cir. 2016) (non-precedential) (holding ineligible claims that required
"a filter comprising the plurality of selection criteria of the database to select
without manual intervention each one of said plurality of lending institutions
associated with a match"); Intellectual Ventures I LLC v. J. Crew Grp., Inc.,
No. 6:16-CV-196-JRG, 2016 WL 4591794, at *6 (E.D. Tex. Aug. 24, 2016),
a.ff' d sub nom Intellectual Ventures I LLC v. FTD Companies, Inc.,
703 F. App'x 991 (Fed. Cir. 2017) (Mem) ("The computer components that
adorn the preamble, such as a distributed network, an information processing
system, and database storage, are inarguably generic."). See also !IP
Engine, Inc. v. AOL Inc., 576 F. App'x 982, 994--95 (Fed. Cir. 2014) (non-
precedential) (Mayer, H., concurring):
I/P Engine's claimed invention, which describes a system
which filters information for relevance to a user's query using
combined content and collaborative data [ citations omitted],
does not pass muster under section 101. The asserted claims do
not meet subject matter eligibility requirements because they do
not "improve the functioning of the computer itself' or "effect
an improvement in any other technology or technical field."
Alice, 134 S.Ct. at 2359. To the contrary, the use of search
engines was well-established and the clear advantages of
combining content-based and collaborative filtering were
widely recognized at the time of the claimed invention.
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We also do not see how the claimed "user interface" amounts to
significantly more than an instruction to apply the abstract idea using generic
computer functionality as a tool. For example, as discussed supra, the
claimed "visual indicia" encompass simply highlighting or italicizing terms
displayed in a display area. Cf RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1324 (Fed. Cir. 2017) (claim reciting "selecting a facial feature
image from the first area of the first display via a user interface" held to be
patent ineligible).
The Appellant next argues that "claim 1 recites unconventional
activity because no art of record discloses the features of claim 1, as
indicated by the Examiner withdrawing the art based rejection of the
claims." App. Br. 21.
To the extent that the Appellant maintains that the elements of claim 1
necessarily amount to "significantly more" than the abstract idea, because
the method of claim 1 is allegedly patentable over the prior art, the
Appellant misapprehends the controlling precedent. Although the second
step in the Alice framework is termed a search for an "inventive concept,"
the analysis is not an evaluation of novelty or nonobviousness, but rather, a
search for "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."' Alice, 573 U.S. at 217-18 ( alteration
in original) (quoting Mayo, 566 U.S. at 72-73). In other words, a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 89-90 (rejecting the suggestion that
Sections 102, 103, and 112 might perform the appropriate screening function
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and noting that in Mayo such an approach "would make the 'law of nature'
exception ... a dead letter"); see also Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1376 (Fed. Cir. 2016) ("[U]nder the Mayo/Alice framework,
a claim directed to a newly discovered law of nature ( or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility .... "). "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). Indeed, "[t]he '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." Diamond v. Diehr, 450 U.S. 175, 188-
189 (1981 ).
We have considered all of the Appellant's remaining arguments
(including those made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the determinations
that representative claim 1, and claims 2-5, 8-14, 17-23, and 26-31 that fall
with claim 1, are directed to an abstract idea and do not present an
"inventive concept," we sustain the Examiner's conclusion that they are
directed to patent-ineligible subject matter for being judicially-excepted
from 35 U.S.C. § 101. Cf LendingTree, 656 F. App'x 991, 997 ("We have
considered all of Lending Tree's remaining arguments and have found them
unpersuasive. Accordingly, because the asserted claims of the patents in suit
are directed to an abstract idea and do not present an "inventive concept,"
18
Appeal2017-007610
Application 12/474,015
we hold that they are directed to ineligible subject matter under 35 U.S.C.
§ 101.").
DECISION
The decision of the Examiner to reject claims 1-5, 8-14, 17-23, and
26-31 under 35 U.S.C. § 101 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)(l )(iv).
AFFIRMED
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