Ex Parte Haynes et al

Patent Trials and Appeals Board

Mar 22, 2019

14553757 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/553,757 11/25/2014 James M. Haynes III
69849 7590 03/26/2019
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
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.
25TY-202683 3773
EXAMINER
EBERSMAN, BRUCE I
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
svpatents@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES M. HA YNES III and
ANTHONYW. ULWICK
Appeal2018-000895
Application 14/553,757
Technology Center 3600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 2, 4, 5, 7-13, 15, and 17-20, which
constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 3, 6, 14, and 16 were cancelled previously.
We affirm and designate our affirmance as a new ground of rejection
within the provisions of 37 C.F.R. § 41.50(b).
1 Appellants identify the real party in interest as Strategyn Holdings, LLC.
App. Br. 2.
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CLAIMED SUBJECT MATTER
Appellants' invention relates to performing commercial venture
analysis by establishing an empirically-derived structure and evaluating
companies within the structure. See generally Abstract.
Claim 1 is representative and reproduced below:
1. A method comprising:
providing a value delivery platform data structure to
accomplish a first job;
comparing the value delivery platform data structure with
templates of existing value delivery platform data structures;
modifying parameters of the value delivery platform data
structure using at least a first creativity trigger;
providing a basic business model data structure;
modifying parameters of the basic business model data
structure using at least a second creativity trigger;
applying features to the value delivery platform data
structure to yield at least a first virtual tool that can be used to
accomplish the first job, the first virtual tool comprising a first
simulated representation of a first process or first device used to
accomplish the first job;
comparing one or more attributes of the first virtual tool to
at least one successfully generated tool to accomplish the first
job;
providing an investment decision based on comparing the
one or more attributes of the first virtual tool to the at least one
virtual competitor tool.
REJECTION
Claims 1, 2, 4, 5, 7-13, 15, and 17-20 stand rejected under 35 U.S.C.
§ 101 as being directed to ineligible subject matter. Final Act. 8-13.
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ANALYSIS
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "'[L]aws of nature, natural phenomena, and abstract
ideas' are not patentable." Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as "molding rubber products" (Diehr, 450 U.S. at 191 ); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252 (15 How.) 267-68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). That
said, 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 tum 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
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ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (brackets in original) ( 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.
In January 2019, the USPTO published revised guidance on the
application of§ 101. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)).
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, and conventional in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. 50.
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CLAIMS 1, 2, 4, 5, 7, 9-13, 15, 17, 19, AND 20
Claims 1, 2, 4, 5, 7, 9-13, 15, 17, 19, and 20 are argued as group. See
App. Br. 5-11. We select claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Alice/Mayo Step One
Independent claim 1 recites a method that provides a value delivery
platform data structure to accomplish a first job. Features are applied to the
value delivery platform data structure to yield a first virtual tool used to
accomplish the first job. The first virtual tool comprises a simulated
representation of a first process or first device used to accomplish the first
job. The first virtual tool's attributes are compared to a successfully
generated tool to accomplish the first job. Based on the comparison, an
investment decision is provided.
The claim adds that parameters of the value delivery platform data
structure are modified using a first creativity trigger, and parameters of a
provided basic business model data structure are modified using a second
creativity trigger. The value delivery platform data structure also is
compared with templates of existing value delivery platform data structures.
As the Specification explains, the claimed invention performs
commercial venture analysis by (1) establishing an empirically-derived
structure and (2) evaluating companies using analytical techniques within
the empirically-derived structure. Spec. ,r 5. According to the Specification,
the claimed invention solves the problems associated with early stage
company investments including high inefficiency and dilution over time. Id.
,r,r 2--4.
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The Specification discloses a "value delivery platform data structure"
that (1) delivers a product or a service and (2) enables a customer to fulfill a
job of interest. Id. ,r 61. Appellants' Figure 6 illustrates value delivery
platform data structure 600 composed of parameters. Id. ,r,r 70-79. The
Specification discloses a "feature" as being a tangible or intangible piece of
information, component, or material that performs a function. Id. ,r 68.
Once the feature is applied to the value delivery platform data structure, the
resultant value delivery platform data structure yields a "virtual tool"-a
process or device that can be used to accomplish a job. Id. "[V]irtual tools
of competitors can also be created and the differences understood before
launching a product." Id.
Step 1 of the Guidance
Under the Guidance, we must first determine whether the claims fall
within the four statutory categories of patent subject matter identified by
35 U.S.C. § 101. Independent claim 1 recites a series of steps and, therefore,
falls within the process category of§ 101.
Revised Step 2A, Prong 1 of the Guidance
Despite falling within this statutory category, we must determine
whether the claim is directed to a judicial exception, such as an abstract idea.
See Alice, 573 U.S. at 218. To this end, we must determine whether the
claim (1) recites a judicial exception and (2) fails to integrate the exception
into a practical application. See 84 Fed. Reg. at 54--55. If both elements are
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satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test, which the Guidance refers to as Step 2A. See id.
In the rejection, the Examiner concludes the claims are directed to the
abstract idea of "providing an investment decision." Final Act. 9. To
determine whether a claim recites an abstract idea, we ( 1) identify the
claim's specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely (a) mathematical concepts; (b) certain methods of
organizing human activity; or ( c) mental processes. See 84 Fed.
Reg. at 52-54.
Mental processes are concepts performed in the human mind
including an observation, evaluation, judgment, or opinion. Id. at 52; see
Intellectual Ventures I LLCv. Symantec, 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011)); see also Benson, 409 U.S. at 67 (indicating
"mental processes ... are not patentable, as they are the basic tools of
scientific and technological work."). Unless the claim cannot practically be
performed in the mind, the claim is in the mental process category if the
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components. See 84 Fed.
Reg. at 52 n.14.
Here, we find claim 1, under its broadest reasonable interpretation,
covers performance in the human mind but for the recited "data structure."
Notably, a person's mind could provide a value delivery platform to
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accomplish a first job as claimed. For example, the person could merely
think of the value delivery platform, or recall such information.
Using this information, the person could then mentally ( 1) compare
the value delivery platform with templates of existing value delivery
platforms, (2) modify parameters of the value delivery platform using at
least a first creativity trigger ( e.g., a person could mentally decide to create a
new platform to perform part of the job or break the platform into modules
(see Spec. 35, Table 9, items 4, 6)), and (3) apply features to the value
delivery platform to yield at least a first virtual tool that can be used to
accomplish the first job, the first virtual tool comprising a first simulated
representation of a first process or first device used to accomplish the first
job as claimed. For example, step (1) could be done by the person merely
thinking or recalling templates of existing value delivery platforms, and then
mentally comparing the value delivery platform with the templates. Step (2)
could be done by the person merely thinking or recalling parameters of the
value delivery platform, and then mentally using at least a first creativity
trigger to modify the parameters. Step (3) could be done by the person
merely thinking or recalling features of the value delivery platform, and then
mentally applying the features to yield a first virtual tool that comprises a
first simulated representation of a first process or first device used to
accomplish the first job.
Using the first virtual tool, the person could then mentally compare an
attribute of the first virtual tool to at least one successfully generated tool to
accomplish the first job. Notably, the person could merely remember a
successfully generated tool to accomplish the first job and an attribute of the
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first virtual tool, and then mentally compare the attribute to the successfully
generated tool. Once the person mentally compares the attribute to the
successfully generated tool, the person could mentally provide an investment
decision based on the comparison.
The person could provide a basic business model by merely thinking
or recalling the basic business model. Using this information, the person
could then modify parameters of the basic business model data structure
using at least a second creativity trigger. Notably, the person could merely
think or recall parameters of the basic business model, and then mentally
modify the parameters using at least a second creativity trigger. Moreover,
to the extent certain steps are complex and may be difficult to manage in
one's mind, these steps also could be performed using pen and paper. See
Symantec, 838 F.3d at 1318 ("with 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. See
CyberSource, 654 F.3d at 1371-72.").
As discussed above, each of these steps is a mental process, such as an
observation, evaluation, judgment, or opinion. See 84 Fed. Reg. at 52.
Thus, the claim recites an abstract idea based on these mental processes.
Revised Step 2A, Prong 2 of the Guidance
Although the claim recites an abstract idea based on these mental
processes, we must determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
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monopolize the abstract idea. See 84 Fed. Reg. at 54--55. To do this, we
evaluate the "additional elements individually and in combination to
determine whether they integrate the exception into a practical application,
using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit." Id. at 55.
Notably, the only additional limitations recited in claim 1 are the data
structures. Thus, we evaluate the additional limitations to determine
whether the recited data structures (i.e., "a value delivery platform structure"
and "a basic business model data structure") integrate the abstract idea into a
practical application.
An improvement in the functioning of a computer, or an improvement
to other technology or technical field can indicate that the additional
elements integrate the exception into a practical application. See 84 Fed.
Reg. at 55 (citing MPEP § 2106.05(a)). Appellants analogize the claimed
invention with DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1258 (Fed. Cir. 2014). App. Br. 8-9, 11; Reply Br. 2--4, 6. According to
Appellants, the claimed solution is rooted in computer technologies that
allow computer systems to analyze large volumes of market data underlying
jobs, outcomes, and investment decisions. App. Br. 11; Reply Br. 6; see
also App. Br. 10 (asserting "the claims provide a solution with virtual tools
for a job."). Appellants contend the claims are rooted in computer
technologies because the claimed subject matter would not have been
possible-i.e., simulating, with virtual tools, representations of processes or
devices to accomplish a first job require digital devices. App. Br. 9; Reply
Br. 4. Thus, Appellants argue the claims are "at least as technologically
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complex as the system at issue in DDR Holdings." App. Br. 9. Appellants
also argue the claims improve computer-related technologies because the
claims "provide improved computer-aided design (CAD) tools to simulate
representations of process/devices used to accomplish a firs[t] job." Id.
(citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
In DDR, the court determined that the claims addressed the problem
of retaining website visitors who, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be transported instantly
away from a host's website after clicking on an advertisement and activating
a hyperlink. DDR, 773 F.3d at 1257. The court further determined that the
claims "specify how interactions with the Internet are manipulated to yield a
desired result-a result that overrides the routine and conventional sequence
of events ordinarily triggered by the click of a hyperlink." Id. at 1258. The
court, thus, held that the claims may pass the second step because they claim
a solution "necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer networks." Id. at
1257.
That is not the case here. As previously noted, Appellants' claims
recite, in essence, mental processes. Despite Appellants' arguments to the
contrary (App. Br. 8-9, 11; Reply Br. 2--4, 6), it would have been possible to
mentally simulate, with virtual tools, representations of processes or devices
used to accomplish a first job mentally. Cf THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE 1996 (adj. def. 2) (3rd ed. 1992)
( defining the term "virtual" as "[ e ]xisting in the mind, especially as a
product of the imagination."). In other words, a virtual tool is merely a
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product of the imagination that exists in the human mind-not one rooted in
computer technology. Moreover, Appellants describe virtual tools as
encompassing merely organized information. Specifically, Appellants
explain that "[ w ]hen features are integrated into the value delivery platform,
the resultant data structure can be referred to as a 'tool.'" Spec. ,r 68
(emphasis added) (also noting "the tool is virtual"). In other words, the
virtual tool can merely be a data structure-i.e., an organizational system or
scheme for particular information. Thus, the claimed invention here is not
necessarily rooted in computer technology in the sense contemplated by
DDR where the claimed invention solved a challenge specifically arising in
the realm of computer networks.
We likewise disagree with Appellants' reliance on Enfzsh. App. Br. 9,
11; Reply Br. 2-6. In Enfzsh, the Federal Circuit explained that "[t]he
Supreme Court has suggested that claims 'purport[ing] to improve the
functioning of the computer itself,' or 'improv[ing] an existing technological
process' might not succumb to the abstract idea exception." Enfzsh, 822
F.3d at 1335. Appellants' claimed invention does not parallel any
improvement to computer functionality itself, such as with Enfzsh' s "self-
referential table for a computer database." Id. at 1336. Enfish's self-
referential table for the computer database is a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory. Id. at 13 3 9.
But, unlike the claimed invention in Enfzsh that improved how a
computer stores and retrieves data in memory, we note that claim 1 is silent
regarding a database, let alone any technological aspect of how data is stored
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or accessed in the database. To the extent Appellants contend that the
claimed invention uses the "virtual tool" to improve a computer's
functionality or efficiency, or otherwise change the way that device
functions (see App. Br. 9, 11; Reply Br. 2-6), Appellants' claims merely
recite, in essence, mental processes. There is no persuasive evidence on this
record to substantiate Appellants' contention.
Nor do Appellants explain persuasively how the claimed data
structures-the only additional limitations recited in claim 1 that we
evaluate to determine whether they integrate the abstract idea into a practical
application-improve (1) a computer itself, or (2) another technology or
technical field. See 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Nor do
Appellants provide any persuasive explanation of how the claimed "data
structure" implements the identified judicial exception with, or uses the
judicial exception in conjunction with, a particular machine as set forth in
MPEP § 2106.05(b) or a particular transformation as set forth in MPEP §
2106.05(c). See 84 Fed. Reg. at 55. Rather, the above-noted "data
structure" merely (1) applies the abstract idea on a computer; (2) includes
instructions to implement the abstract idea on a computer; or (3) uses the
computer as a tool to perform the abstract idea. See id. ( citing MPEP
§ 2106.05(±)).
Accordingly, claim 1 does not integrate the judicial exception into a
practical application.
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Alice/Mayo Step Two
Revised Step 2B of the Guidance
Because the claim does not integrate the judicial exception into a
practical application, we determine whether additional elements of the claim,
individually or in combination, provide an inventive concept. 84 Fed. Reg.
at 56. To this end, we determine whether the additional elements (1) add a
specific limitation or combination of limitations that is not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present; or (2) simply append well-understood,
routine, and conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present. Id.
As explained above, the recited data structures are the only additional
element beyond the abstract idea. Thus, to the extent that Appellants
contend that (A) applying features to a value delivery platform data structure
to yield a first virtual tool used to accomplish a first job, (B) comparing
attributes of the first virtual tool to at least one successfully generated tool to
accomplish the first job, and (C) providing an investment decision based on
the comparison add significantly more to the abstract idea to provide an
inventive concept under Alice/Mayo step two (see App. Br. 10-11), we
disagree. These limitations are not additional elements beyond the abstract
idea; rather, these elements are part of the abstract idea. See 84 Fed. Reg. at
56 (instructing that additionally recited elements should be evaluated in
Alice/Mayo step two to determine whether they ( 1) add specific limitation( s)
that are not well-understood, routine, and conventional in the field, or
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(2) simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d)).
The recited data structures (i.e., the only additionally recited elements)
are well-understood, routine, and conventional generic computing
functionality. Accord Final Act. 10-11 (finding all computer-based
functions of claim 1 are well-understood, routine, and conventional activities
previously known in the industry). Appellants' arguments (see App. Br. 10-
11) are, therefore, unpersuasive. Thus, "the claims at issue amount to
'nothing significantly more' than an instruction to apply the abstract idea ...
using some unspecified, generic computer." Alice, 573 U.S. at 225-26
(citing Mayo, 566 U.S. at 71); see also 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 4, 5, 7, 9-13, 15, 17, 19, and 20, not argued separately
with particularity.
CLAIMS 8 AND 18
Claims 8 and 18 are argued as group. See App. Br. 12-16. We select
claim 8 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
Alice/Mayo Step One
Claim 8 directly depends from independent claim 1, thereby including
all the limitations of claim 1. See 37 C.F.R. § 1.75. Claim 8 further adds
that predicted platform-level parameters and business model parameters are
known for the first virtual tool before the first virtual tool is implemented or
physically created.
In the rejection, the Examiner concludes that claim 8 is directed to an
abstract idea. See Final Act. 8, 13; Ans. 20-28. We see no error in this
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finding. Here, we find claim 8, under its broadest reasonable interpretation,
covers performance in the human mind apart from the recited data
structures. Notably, a person's mind could know predicted platform-level
parameters and business model parameters for the first virtual tool before the
first virtual tool is implemented or physically created. For example, the
person could merely memorize predicted platform-level parameters and
business model parameters before the person merely thinks of the first
virtual tool, or merely recalls such information.
Thus, contrary to Appellants' contentions (App. Br. 14--15; Reply
Br. 7), and as noted above, the claimed invention (1) is not necessarily
rooted in computer technology in the sense contemplated by DDR where the
claimed invention solved a challenge specifically arising in the realm of
computer networks, and (2) does not improve a computer's functionality or
efficiency or otherwise change the way that device functions in the sense
contemplated by Enfish. Furthermore, the recited data structures, which are
the only additional element we evaluate to determine whether it integrates
the abstract idea into a practical application, fail to improve a computer itself
or another technology or technical field, as noted above (see 84 Fed. Reg. at
55 (citing MPEP § 2106.05(a))). The data structures also fail to implement
the identified judicial exception with, or use the judicial exception in
conjunction with, a particular machine or a particular transformation (see 84
Fed. Reg. at 55 (citing MPEP §§ 2106.05(b),(c))). Rather, the above-noted
data structures merely (1) apply the abstract idea on a computer; (2) include
instructions to implement the abstract idea on a computer; or (3) use the
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computer as a tool to perform the abstract idea. See 84 Fed. Reg. at 55
(citing MPEP § 2106.05(±)).
We, therefore, agree with the Examiner that claim 8 is directed to an
abstract idea.
Alice/Mayo Step Two
Because claim 8 does not integrate the judicial exception into a
practical application, we determine whether additional elements of the claim,
individually or in combination, provide an inventive concept. See Fed. Reg.
at 56.
We find unavailing Appellants' contention that the limitations of
claim 8 address problems that could not have existed before computer
systems were used to analyze markets. See App. Br. 15. These limitations,
apart from the claimed data structures, are not additional elements beyond
the abstract idea, but rather are directed to the abstract idea, as explained
above. See 84 Fed. Reg. at 56 (citing MPEP § 2106.05(d)). As already
noted, the recited data structures is merely well-understood, routine, and
conventional generic computing functionality. Accord Final Act. 10-11.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 8 and claim 18, not argued separately with particularity.
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4, 5, 7-13, 15, and
17-20 under 35 U.S.C. § 101.
DESIGNATION OF NEW GROUND OF REJECTION
Although the overall thrust of our analysis is the same as the
Examiner's reasoning, we have provided additional explanations not
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provided by the Examiner. Accordingly, in the interests of giving
Appellants a full and fair opportunity to respond, we designate our
affirmance as a new ground of rejection.
DECISION2
We affirm the Examiner's decision to reject claims 1, 2, 4, 5, 7-13,
15, and 17-20, but we designate our affirmance as a new ground of rejection
within our authority under 37 C.F.R. § 4I.50(b).
Section 4I.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
2 Independent claim 11 recites "a platform innovation engine configured to:
... apply features to the value delivery platform data structure to yield at
least a first virtual tool that can be used to accomplish the first job." Claim
13 directly depends from claim 11 and recites in its entirety: "[t]he system of
claim 11, wherein the platform innovation engine applies features to the
value delivery platform data structure to yield at least a first virtual tool that
can be used to accomplish the first job." The Examiner did not articulate a
rejection of claim 13 under 35 U.S.C. § 112, fourth paragraph, and we will
not speculate in that regard here in the first instance on appeal. We,
therefore, leave this question to the Examiner.
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Appeal2018-000895
Application 14/553,757
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
37 C.F.R. § 4I.50(b)
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