Ex Parte BANSAL et al

Patent Trial and Appeal Board

Dec 10, 2018

13891761 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/891,761 05/10/2013
74739 7590 12/12/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
NehaBANSAL
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.
2011-0035US01 6316
EXAMINER
BRADY, MARIE P.
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEHA BANSAL, MICHAEL R. BESSE, and
RAMON RAMIREZ
Appeal2017-008521
Application 13/891,761 1
Technology Center 3600
Before PHILLIP J. KAUFMANN, LARRY J. HUME, and
JUSTIN BUSCH, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Oracle International
Corporation. App. Br. 3.
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Application 13/891,761
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention are
"directed generally to a computer system, and in particular to a computer
system that generates retail promotion baselines." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A computer readable medium having instructions
stored thereon that, when executed by a processor, cause the
processor to generate a retail promotion baseline, the generating
compnsmg:
receiving sales data for a target product, the sales data
including first sales data and second sales data, the first sales
data occurring during a first time period before a promotion
time period, and the second sales data occurring during a
second time period after the promotion time period;
assigning first weights to the first sales data, the first
weights exponentially increasing from the oldest first sales data
to the newest first sales data;
exponentially weighting the first sales data by applying
the first weights to the first sales data;
assigning second weights to the second sales data, the
second weights exponentially decreasing from the oldest second
sales data to the newest second sales data;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Feb. 7, 2017); Reply Brief ("Reply Br.," filed May 22, 2017); Examiner's
Answer ("Ans.," mailed Mar. 23, 2017); Final Office Action ("Final Act.,"
mailed Oct. 19, 2016); and the original Specification ("Spec.," filed
May, 10, 2013).
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exponentially weighting the second sales data by
applying the assigned weights to the second sales data; and
calculating the retail promotion baseline based upon the
exponentially weighted first and second sales data, the retail
promotion baseline corresponding to an amount of sales for the
target product before and after the promotion time period.
Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 6-15) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of the patent-
ineligible subject matter rejection of claims 1-20 on the basis of
representative claim 1. 3
ISSUE
Appellants argue (App. Br. 6-15; Reply Br. 2-3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-20
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
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Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice Corp., 134 S. Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice Corp., 134 S. Ct. at 2354 (internal quotation marks,
citation, and bracketing omitted). First, we "determine whether the claims at
issue are directed to [a] patent-ineligible concept[]." Id. at 2355. Ifso, we
"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." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79).
Although the two steps of the Alice framework are related, the "Supreme
Court's formulation makes clear that the first-stage filter is a meaningful one,
sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court
"has not established a definitive rule to determine what constitutes an
'abstract idea"' for the purposes of step one. Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct at 2357).
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to "a specific improvement to the
way computers operate, embodied in the self-referential table" (id. at 1336),
and explained that the claims are "not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
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for a computer database" that functions differently than conventional
databases. Id. at 1337.
In McRO, the claims were not held to be abstract because they recited
a "specific ... improvement in computer animation" using "unconventional
rules that relate[ d] sub-sequences of phonemes, timings, and morph weight
sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-
03, 1307---08, 1314--15 (Fed. Cir. 2016). In McRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "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 Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
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omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step,
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
We note, " [ w ]hether a patent claim is drawn to patent-eligible subject
matter is an issue of law that is reviewed de nova." SiRF Tech., Inc. v. Int'!
Trade Comm 'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
The Examiner concludes, " [ c ]laims 1-20 are directed to the abstract
idea of generating a retail promotion baseline, which is a fundamental
economic practice, and by exponentially weighting sales data around the
promotion, which uses mathematical formulas. The exponentially
weightings merely employ mathematical formulas to manipulate the sales
data in order to generate a retail promotion baseline." Final Act. 2.
Appellants generally contend the claims are not directed to an abstract
idea (App. Br. 7) and, more specifically, Appellants argue:
[T]he final Office Action acknowledges that "generating a retail
promotion baseline" is a concept that has not been identified as
an abstract idea by the courts. And for good reason -- a
comparison of "generating a retail promotion baseline" to the
abstract ideas identified by the courts shows that there are no
similarities. See, e.g., December 2016 Quick Reference Sheet at
Page 2 (table with listing of court-identified abstract ideas).
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Furthermore, the final Office Action also fails to cite a
court decision that identifies "generating a retail promotion
baseline" as an abstract idea, as directed by the USPTO.
App. Br. 7-8 (footnote omitted).
In addition, Appellants contend, "the final Office Action fails to
provide a reasoned rationale that explains why 'generating a retail promotion
baseline' is similar to the abstract idea identified in the Digitech decision.
App. Br. 8. Appellants also argue:
Here, in addition to assigning weights and exponentially
weighting the first and second data sets, the claims recite
"calculating the retail promotion baseline based upon the
exponentially weighted first and second sales data."
Importantly, calculating the retail promotion baseline is the
"additional limitation" identified in Digitech that distinguishes
the claimed process from the alleged abstract idea. Furthermore,
"calculating" an additional, specific quantity based on weighted
data is not the same as "organizing" those data.
App. Br. 10. Additionally,
the final Office Action has failed to provide evidence that the
conventional process for generating a retail promotion baseline
is the same as the specific process required by the instant
claims. And for good reason - the instant claims were found to
be allowable over the prior art, which demonstrates that the
ordered combination of the claimed steps use unconventional
methods for generating a retail promotion baseline.
App. Br. 11.
Appellants' argument concerning the absence of evidence supporting
the§ 101 rejection does not persuade us of Examiner error. "Patent
eligibility under § 101 presents an issue of law." Accenture Glob. Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013).
There is no requirement that an examiner cite evidentiary support to
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conclude that a claim is directed to a patent-ineligible concept, such as an
abstract idea in every case. Unlike an evidence-based rejection under 35
U.S.C. § 102 and/or 35 U.S.C. § 103, the courts consider the determination
of whether a claim is eligible ( which involves identifying whether an
exception such as an abstract idea is being claimed) to be a question of law.
See, e.g., In re Roslin Inst., 750 F.3d, 1333, 1335 (Fed. Cir. 2014);
Accenture Global Services, GmbH v. Guidewire Software, 728 F.3d 1336,
1340-41 (Fed. Cir. 2013); Fort Properties, Inc. v. American Master Lease
LLC, 671 F.3d 1317, 1320 (Fed. Cir. 2012); Cybersource, 654 F.3d at 1369;
SiRF Tech., 601 F.3d at 1331; In re Ferguson, 558 F.3d 1359, 1363 (Fed.
Cir. 2009); In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (en bane), ajfd,
561 U.S. 593 (2010). Accordingly, courts do not rely on evidence that a
claimed concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any factual findings.
See also MPEP § 2106.07(a) (III) (collecting cases).
Under the "abstract idea" step we must evaluate "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, 838 F.3d at
1257 (citation omitted).
Turning to the claimed invention, claim 1 recites: " [a] computer
readable medium having instructions stored thereon that, when executed by
a processor, cause the processor to generate a retail promotion baseline."
Claim 1 (preamble).
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Medium claim 1 limitations also require the generating functions
include:
(a) "receiving sales data ... including first sales data and
second sales data [ occurring during different time periods]";
(b) "assigning first [ exponentially increasing] weights to
the first sales data";
( c) "exponentially weighting the first sales data by
applying the first weights";
( d) "assigning second [ exponentially decreasing] weights
to the second sales data;"
( e) "exponentially weighting the second sales data by
applying the assigned weights;" and
( f) "calculating the retail promotion baseline based upon
the exponentially weighted first and second sales data."
Our reviewing courts have often identified abstract ideas by referring
to earlier precedent, e.g., by comparing a claimed concept to the concepts
previously identified as abstract ideas by the courts. Amdocs (Israel), Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016); Enfish, 822
F.3d. at 1334. For example, in Alice, the Supreme Court identified the
claimed systems and methods as describing the concept of intermediated
settlement, and then compared this concept to the risk hedging concept
identified as an abstract idea in Bilski. Because this comparison revealed
"no meaningful distinction between the concept of risk hedging in Bilski and
the concept of intermediated settlement at issue here," the Court concluded
that the concept of intermediated settlement was an abstract idea. Alice, 134
S. Ct. at 2356-57. Similarly, the Federal Circuit in Amdocs compared the
claims at issue with "eligible and ineligible claims of a similar nature from
past cases" as part of its eligibility analysis. 841 F.3d at 1295-1300.
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The Examiner rebuts Appellant's contention (App. Br. 7-8) that no
pertinent case law was cited in support of the conclusion that the claimed
subject matter is directed to an abstract idea. Ans. 3. In further support of
the Examiner's rebuttal, we note the Examiner's finding in the Final Action,
i.e., " [ t ]his idea is similar to the basic concept of manipulating information
using mathematical relationships found to be an abstract idea by the courts.
Such as Digitech ... which organizes information through mathematical
correlations, the current invention organizes promotion data using
mathematical correlations." Final Act. 2-3 ( citing Digitech Image Techs.,
LLC v. Elec.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)). 4
In Digitech, " [ t ]he method in the [patent at issue] claims an abstract
idea because it describes a process of organizing information through
mathematical correlations and is not tied to a specific structure or machine."
Digitech, 758 F.3d at 1350. Our reviewing court further held in Digitech:
The above claim recites a process of taking two data sets and
combining them into a single data set, the device profile. The
two data sets are generated by taking existing information-i.e.,
measured chromatic stimuli, spatial stimuli, and device
response characteristic functions-and organizing this
information into a new form. The above claim thus recites an
ineligible abstract process of gathering and combining data that
does not require input from a physical device .... the two data
4 In the Answer, the Examiner concludes "the claims are also analogous to
Maucorps." Ans. 4 (citing In re Maucorps, 609 F.2d 481 (Fed. Cir. 1979)).
While we do not necessarily disagree with the Examiner's conclusion, we
note there are various ways to analogize appealed claims to claims that have
been previously-determined as being directed to an abstract idea, and there is
also considerable overlap between the general categories of abstract ideas,
i.e., "fundamental economic practice," "methods of organizing human
activity," "an idea 'of itself," and "mathematical relationships/formulas."
We review the claim rejection de nova.
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sets and the resulting device profile are ineligible subject
matter. Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "If a
claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory."
Digitech, 758 F.3d at 1351 (quoting Parker v. Flook, 437 U.S. 584, 595
(1978) (internal quotations omitted)).
Under step one, we agree with the Examiner that the invention
claimed in independent claim 1 is directed to an abstract idea, i.e.,
organizing and manipulating information through mathematical correlations,
which we also conclude may more generally be considered as relating to
organizing or analyzing information in a way that can be performed
mentally, i.e., in a way that is analogous to human mental work. See Final
Act. 2-3; Ans. 3--4.
As the Specification discloses:
One embodiment is a system for generating a retail
promotion baseline. The system receives historical sales data
for a target product. The sales data reflects sales for the target
product that occurred during a first time period and a second
time period, the first time period occurring before a promotion,
and the second time period occurring after the promotion. The
system exponentially weights the sales data. The sales data
reflecting sales which occurred closer to the promotion is
weighted more heavily than the sales data reflecting sales which
occurred further from the promotion. The system calculates the
retail promotion baseline based upon the exponentially
weighted sales data. The retail promotion baseline corresponds
to an amount of sales for the product that would occur without
the promotion for the product.
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Spec. ,r 4. 5 We find this type of activity, i.e., generating a retail promotion
baseline using weighted historical sales data, includes longstanding conduct
that existed well before the advent of computers and the Internet, and could
be carried out by a human with pen and paper. See CyberSource, 654 F .3dat
1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). 6
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
5 See also Spec. 24 ("Abstract"):
A system for generating a retail promotion baseline
receives sales data for a target product. The sales data reflects
sales for the target product that occurred during a first time
period and a second time period, the first time period occurring
before the promotion, and the second time period occurring
after the promotion. The system exponentially weights the sales
data. The sales data reflect sales which occurred closer to the
promotion is weighted more heavily than the sales data
reflecting sales which occurred further from the promotion. The
system calculates the retail promotion baseline based upon the
exponentially weighted sales data. The retail promotion
baseline corresponds to an amount of sales for the product
absent the promotion for the product.
6 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830
F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information (e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Also,
collecting and comparing known information has been determined to be an
abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d
1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the #283 patent states the idea of
collecting and comparing known information"). Additionally, more
recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Appellant also alleges claim 1 is patent-eligible because its practice
does not preempt practice by others. App. Br. 12-13. We agree with the
Examiner's response, which we incorporate herein by reference. Ans. 7.
Regarding preemption, " [ w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
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patent eligibility .... Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the lviayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) ("that the claims do not preempt an price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract").
In support of their lack of preemption argument, Appellants argue the
claims are similar to those held patent-eligible in McRO. App. Br. 13 ( citing
McRO, 837 F.3d 1299). However, the claims in McRO recited a "specific
... improvement in computer animation" using "unconventional rules that
relate[ d] sub-sequences of phonemes, timings, and morph weight sets."
McRO, 837 F.3d at 1302---03, 1307---08, 1314--15. In McRO, "the
incorporation of the claimed rules, not the use of the computer," improved
an existing technological process. Id. at 1314.
Other than stating, "the present claims 'incorporate[ e] the specific
features of the rules as claim limitations ... [ the claim] is limited to a
specific process ... and does not preempt approaches that use rules of a
different structure or different techniques"' (App. Br. 13), Appellants do not
identify how claim 1 improves an existing technological process. See Alice,
134 S. Ct. at 2358 (explaining that "the claims in Diehr were patent eligible
because they improved an existing technological process"). Rather, claim 1
concerns generating a retail promotion baseline. In addition, Appellants do
not direct us to any evidence that the claimed steps of receiving sales data,
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assignment of weights, exponentially weighting the sales data, and
calculating the retail promotion baseline correspond to unconventional rules.
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354.7
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
7 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea; 8 mere instructions to implement an
abstract idea on a computer; 9 or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 10
The Examiner concludes:
The claims recite[] the additional elements of a computer
readable medium, a processor, and a memory, which are
generic computing elements performing generic computing
functions. The additional elements of an analyzing module, a
weighting module, and a calculating module are specific
technological elements which are involved in only insignificant
extra solution activity and are used in a conventional fashion in
the art. Looking at the elements as [a] combination does not add
anything more than the elements analyzed individually.
Final Act. 3.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of organizing and manipulating information
8 Alice, 134 S. Ct. at 2357-58.
9 Alice, 134 S. Ct. at 2357 (e.g., "simply implementing a mathematical
principle on a physical machine, namely a computer" ( quoting Mayo, 566
U.S. at 84).
10 Alice, 134 S. Ct. at 2359: e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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through mathematical correlations into a patent-eligible application of that
abstract idea. See Ans. 9--10. 11
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note the Examiner's citation to Appellant's
Specification in paragraphs 13 and 37. For example:
Processor 22 may be any type of general or specific purpose
processor. System 10 further includes a memory 14 for storing
information and instructions to be executed by processor 22.
Memory 14 can be comprised of any combination of random
access memory ("RAM"), read only memory ("ROM"), static
storage such as a magnetic or optical disk, or any other type of
11 The Examiner concludes:
Applicant has failed to provide evidence on how the instant
claims, and particularly the combination of the instant claimed
elements, provide an improvement or solution to an existing
technological process that can be considered some more than
routine or conventional. The technology recited in the claim[ s ],
such as a processor, a computer readable medium, a memory,
are just generic computer elements that perform generic
computer functions as explained in paragraphs [0013] and
[0037] of the specification. Furthermore, all the assigning,
weighting, and calculation steps could be performed by a
human with pen and paper. The use of the technology is just to
automate the process.
Ans. 10.
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computer readable media. System 10 further includes a
communication device 20, such as a network interface card, to
provide access to a network.
Spec. ,r 13.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellant's Specification, as quoted
above. 12
With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of a "computer readable medium having
instructions stored thereon that, when executed by a processor, cause the
processor to generate a retail promotion baseline" by receiving and
manipulating weighted sales data is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention.").
Appellants mistakenly argue:
12 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Evidence that the claims as a whole amount to
significantly more can be found in the final Office Action itself,
which essentially admits that the pending independent claims
recite a "non-conventional and non-generic arrangement of
known, conventional pieces." As noted above, the final Office
Action admits that the claims are allowable over the prior art,
which means that all of the pending claims recite an inventive
concept per Step 2B, as discussed in BASCOM.
App. Br. 14 ( emphasis added).
We find this assertion by Appellants to be erroneous with respect to
the relevance of prior art in the patent-eligibility analysis because the
Supreme Court emphasizes, "[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-
89 (1981) ( emphasis added). Our reviewing court further guides that
"[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v.
Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs, 838 F.3dat 1263 (holding that "[e]ven assuming" that a
particular claimed feature was novel does not "avoid the problem of
abstractness").
In contrast, in BASCOM, the claims were directed to the inventive
concept of providing customizable Internet-content filtering which, under
Step 2 of the Alice analysis, was found to transform the abstract idea of
filtering content into a patent-eligible invention. Although the underlying
idea of filtering Internet content was deemed to be abstract, under step 2 of
the Alice analysis, the claims carved out a specific location for the filtering
system, namely a remote Internet service provider (ISP) server, and required
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the filtering system to give users the ability to customize filtering for their
individual network accounts. BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
However, the claims in BASCOM were determined to be patent-
eligible for reasons different than in this Appeal. In this Appeal, the
underlying abstract idea is generating a retail promotion baseline using
weighted historical sales data, which is directed to the abstract idea of data
comparisons that can be performed mentally in the human mind and/ or by
pen and paper. We are not persuaded by Appellants' assertion that "[t]he
claims, taken as a whole, amount to significantly more than 'organizing
information through mathematical correlations."' App. Br. 14.
Thus, we find no analogy between claim 1 and the claims of
BASCOM and also find the character of the claims as a whole, is still
directed to the abstract idea.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims 2-
20, not argued separately, which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
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Examiner's Answer will not be considered except for good cause (see 3 7
C.F.R. § 4I.41(b)(2)), which Appellants have not shown.
CONCLUSION
Appellants have not demonstrated that the Examiner erred with
respect to the patent-ineligible subject matter rejection of claims 1-20 under
35 U.S.C. § 101, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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