Ex Parte Hyde et al

Patent Trials and Appeals Board

Jun 26, 2019

13728843 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/728,843 12/27/2012 Roderick A. Hyde
103600 7590 06/28/2019
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
103315-0326
(0412-002-002
5144
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
ipdocketing@foley.com
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE, MURIEL Y. ISHIKAWA, JORDIN T.
KARE, ERIC C. LEUTHARDT, ELIZABETH A. SWEENEY, and
LOWELL L. WOOD, JR.
Appeal2018-004802
Application 13/728,843 1
Technology Center 3600
Before HUNG H. BUI, IRVINE. BRANCH, and DAVID J. CUTITTA II,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-11 and 13-36, which are all the
claims pending in the application. App. Br. 25-39 (Claims Appx.). We
have jurisdiction under 35 U.S.C. § 6(b ).
WeAFFIRM. 2
1 According to Appellants, Elwha LLC is the real party in interest. App. Br.
3.
2 Our Decision refers to Appellants' Appeal Brief filed January 3, 2018
("App. Br."); Reply Brief filed April 6, 2018 ("Reply Br."); Examiner's
Answer mailed February 9, 2018 ("Ans."); Final Office Action mailed May
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Application 13/728,843
STATEMENT OF THE CASE
Appellants' invention relates to methods for providing a user
information indicative of the probable future fees and costs to complete
delivery of healthcare service ( e.g., diagnosis, treatment, or prevention of a
particular disease, illness, injury, or other physical or mental impairment) to
a patient in substantially real time. Spec. ,r 12. According to Appellants,
"receiving data" to forecast probable fees and costs include "data contained
in or reflected in an electronic health record or an electronic medical
record," "electronic billing records" and "data inputted by the patient" where
"data inputted by the patient may be used to update, supplement, clarify, or
modify information inputted related to an activity by a physician, health
worker, hospital, facility, equipment, operating room, imaging, or
laboratory." Spec. ,r 51. As such, data inputted by the patient may be used
to "independently verify information." Id.
Claims 1, 15, 20, 23, and 26 are independent. Claim 1 is illustrative of
the claimed subject matter, as reproduced below:
L A method of communicating probable future fees and
costs to be incurred by a patient, comprising:
electronically receiving, by a network interface of a server
system, a request for infon11atfon indicative of future fees and
costs to be incurred by a patient presently undergoing a
healthcare service1 wherein the healthcare service comprises at
least one of a diagnosis, treatment, or prevention of a particular
disease1 illness, injury, or other physical or mental impairment;
ekctronica11 v receiving. hv the network interface of the
.,I ~,.' ..
server system, data at least partially indicative of the healthcare
service provided to the patient as of receipt of the request for
information;
17, 2017 ("Final Act."); and original Specification filed December 27, 2012
("Spec.").
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fi..)recasting, by a processing unit of the senrer system,
probable foes and costs to complete delivery of the healthcare
service to the patient1 the forecasting responsive to the received
data and a characteristic of the healthcare service, vvherein the
forecasting probable fees and costs to complete delivery of the
healthcare service is based on a prediction interval) wherein the
prediction interval includes a range in which the forecasted
probab1e foes and costs will fi1ll according to a probability, and
wherein the prediction interval is based on an accuracy of prior
predictions of fees and costs incurred in providing the same
healthcare service that the patient is 11._ resentlv undern:oimr to .. (.:.; (.:.;
other patients by the same healthcare facil Hy providing the
healthcare service to the patient; and
outputting, by the network interface of the server system,
in substantially real time in formation indicative of the probable
future fees and costs to complete delivery of the healthcare
service to the patient and the probability of the forecasted
probable foes and costs being within the range;
wherein the outputting includes transmitting, by the
network interface of the server system over a wireless
communication network to a mobile device associated with the
patient presently undergoing the healthcare service, a
notification in response to the forecasted probable fees and costs
falling outside of the range of the prediction intervaL and
wherein the notification causes the mobile device to activate a
camera of the mobile device to capture and save an image of an
activity occun-ing ,:vithin a proximity of the patient
App. Br. 25-26 (Claims Appx.).
EXAMINER'S REJECTION
Claims 1-11 and 13-36 stand rejected under 35 U.S.C. § 101 because
the Examiner determines the claimed invention is directed to an abstract idea
without significantly more. See Final Act. 3-9.
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DISCUSSION
Patent-Eligible Subject Matter
In support of the§ 101 rejection of claims 1-11 and 13-36, the
Examiner determines the claims are directed to "estimating probable fees
and costs currently incurred in providing a healthcare service based on a
prediction interval concerning a threshold ... and forecasting probable total
fees and costs for the delivery of the healthcare service to the patient" and
includes limitations that are similar to ( 1) concepts of organizing
information through mathematical correlations as discussed in Digitech; (2)
concepts of collecting information, analyzing it, and displaying certain
results of the collection and analysis as discussed in Electric Power Group;
and (3) concepts of receiving a file, characterizing the file based on identifier
and communicating the characterization as discussed in Intellectual
Ventures. Final Act. 4--5; Ans. 6-7; see Digitech Image Techs., LLC v.
Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding
claims directed to "a process of organizing information through
mathematical correlations" are patent-ineligible under § 101 ); Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding
that claims directed to "gathering and analyzing information of a specified
content, then displaying the results" are patent-ineligible under § 101 ); see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313
(Fed. Cir. 2016) (holding that claims directed to "receiving e-mail (and other
data file) identifiers, characterizing e-mail based on the identifiers, and
communicating the characterization" are patent-ineligible under§ 101).
The Examiner also determines the claims fail to amount to
"significantly more than the judicial exception" because the additional
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elements recited (e.g., processors) (1) are generic computer elements that
perform generic computer functions that are "well-understood, routine, and
conventional activities previously known to the pertinent industry"; (2) "the
camera and image data merely comprises extra-solution activity"; and (3) do
not improve the functioning of a computer or improve any other technology.
Final Act. 6-9; Ans. 4--10.
Appellants argue independent claims 1, 15, 20, 23, and 26 together
(see App. Br. 15-24). We select claim 1 as representative. Claims 2-11 and
13-36 stand or fall with claim 1 (see 37 C.F.R. § 4I.37(c)(l)(iv)).
Legal Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step framework articulated in Alice Corp. Pty. v.
CLS Bank Int'!, 573 U.S. 208 (2014). First, we determine whether the
claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 217. If so, we then proceed to the
second step to consider the elements of the claims "individually and 'as an
ordered combination'" to determine whether there are additional elements
that "'transform the nature of the claim' into a patent-eligible application."
Id. In other words, the second step is to "search for an 'inventive concept'
-i.e., an element or combination of elements that is 'sufficient to ensure
that the patent in practice amounts to significantly more than a patent upon
the [ineligible concept] itself."' Id. at 217-18 (alteration in original)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
72-73 (2012)).
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The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Because there is no single definition of an "abstract idea" under Alice
step 1, the Federal Circuit has adopted the common law, analogy-driven
approach (i.e., the "analogous claim" test) to determine whether a claim is
directed to an abstract idea, and has instructed us "to examine earlier cases
in which a similar or parallel descriptive nature can be seen-what prior
cases were about, and which way they were decided." Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec.
Power Grp., 830 F.3d at 1353-54).
The Office sought to apply the Federal Circuit's common law
"analogous claim" test in the aftermath of Alice (see USPTO Memorandum,
JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY, at 3 (July 30, 2015),
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf ("[A] claimed concept is not identified as an abstract idea unless
it is similar to at least one concept that the courts have identified as an
abstract idea")). But recently, the Office concluded that having examiners
seek analogous claims had since become impractical and unpredictable in
light of the growing body of Federal Circuit precedent. Thus, the Office
recently published revised guidance interpreting governing case law and
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establishing a framework to govern all patent-eligibility analysis under Alice
and§ 101 effective as of January 7, 2019. 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50-57 (Jan. 7, 2019)
("Revised Guidance").
Revised Guidance
Under the Revised Guidance, we first look under Alice step 1 or "Step
2A" to whether the claim recites:
( 1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes, or [iii] certain methods of organizing
human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions
between people); and
(2)Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure ("MPEP") § 2106.05(a}-(c), (e}-(h)). 3
See Revised Guidance, 84 Fed. Reg. at 51-52, 55, Revised Step 2A, Prong
One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an "inventive concept" under Alice step 2 or
"Step 2B." See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217-18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
3 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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2) 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 2019 Revised Guidance, 84 Fed. Reg. at 56.
Alice/May~tep 1 (Abstract Idea)
Step 2A-Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Turning to the first step of the Alice inquiry, Appellants argue the
claims are not directed to an abstract idea because the Examiner (1)
"oversimplifies the claims" and (2) "no abstract ideas defined by the courts
are analogous to the alleged abstract idea identified by the Examiner." App.
Br. 18-21.
Appellants' arguments are not persuasive. At the outset, we note the
newly published Revised Guidance governs all patent-eligibility analysis
under Alice and§ 101 effective as of January 7, 2019. In particular, the PTO
has acknowledged that the Federal Circuit's common law, analogy-driven
approach was effective soon after Alice was decided by the Supreme Court,
but that approach has since become impractical as the growing body of
Federal Circuit precedent has become increasing more difficult for the
Office and examiners to apply in a predicable manner. As a result, the PTO
has synthesized, for purposes of clarity, predictability, and consistency, the
"abstract idea" exception to include three categories of abstract ideas: (1)
mathematical concepts; (2) mental processes; and (3) certain methods of
organizing human activity-fundamental economic principles as outlined in
the Revised Guidance, 84 Fed. Reg. at 54--55.
Contrary to Appellants' arguments, Appellants' Specification and
claims describe processing of healthcare data so to enable "outputting in
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substantially real time information indicative of the probable future fees and
costs to complete delivery of the healthcare service to the patient." Spec.
,r,r 12-16. For example, Appellants' independent claim 1 defines a
computer-implemented method comprising (numbering added):
(1) electronically receiving ... a request for information
indicative of future fees and costs to be incurred by a patient
presently undergoing a healthcare service ...
(2) electronically receiving ... data at least partially
indicative of the healthcare service provided to the patient ...
(3) forecasting ... probable fees and costs to complete
delivery of the healthcare service to the patient ... and
( 4) outputting ... in substantially real time information
indicative of the probable future fees and costs to complete
delivery of the healthcare service.
App. Br. 25 (Claims App.).
As correctly recognized by the Examiner (see Ans. 6-7), steps (1}-(4)
of Appellants' claim 1, recite nothing more than a series of "mental
processes" that could be performed in the human mind or by a human using
a pen and paper-subject matter that falls within the three types of abstract
ideas identified by the PTO § 101 Memorandum. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) ("[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under§ 101."); see also In re Comiskey, 554 F.3d 967,
979 (Fed. Cir. 2009) ("[M]ental processes----or processes of human
thinking-standing alone are not patentable even if they have practical
application."); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Phenomena
of nature, ... mental processes, and abstract intellectual concepts are not
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patentable, as they are the basic tools of scientific and technological work."
(Emphasis added)). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 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.").
For example, steps ( 1 }-( 4) of Appellants' claim 1 can be performed
by a person in an insurance company or physician office who is simply
asked to determine the total cost of the health care procedure that a patient is
undergoing, who then retrieves the relevant information and provides the
estimate mentally or with pen and paper along with the accuracy of that
estimate.
Alternatively, receiving data and providing a forecast of probable fees
and costs to complete delivery of the healthcare service based on the
received data recite the concept of basic financial activity that occurs in the
healthcare industry. Estimating cost for a service being rendered in order to
make a treatment choice or for budgeting is a fundamental economic
practice. Therefore, we conclude steps (1 }-( 4) recited in claim 1, recite a
fundamental economic practice, which is a certain method of organizing
human activity identified in the Revised Guidance, and thus an abstract idea.
See Revised Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at 52, 54.
Thus, under Step 2A, Prong One, we agree with the Examiner that
claim 1 recites a judicial exception identified as an abstract idea in the
Revised Guidance.
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Step 2A, Prong Two (Integration into a Practical Application)
Under Prong Two of the Revised Guidance, we must determine if the
claim integrates the judicial exception into a practical application. That is,
we identify any additional claim limitations beyond the judicial exception
and evaluate the additional limitations individually and in combination for
determining whether these limitations integrate the judicial exception into a
practical application.
We discern no additional elements ( or combination of elements)
recited in Appellants' claim 1 ( e.g., one or more server systems, processing
unit, a mobile device, or a camera) that integrate the judicial exceptions into
a practical application. See Revised Guidance, Revised Step 2A, Prong Two.
For example, Appellants' claimed additional elements (e.g., a processing
unit) recited in claim 1 do not: (1) improve the functioning of a computer or
other technology; (2) are not applied with any particular machine ( except for
a generic computer); (3) do not effect a transformation of a particular article
to a different state; and ( 4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§ 2106.0S(a}-(c), (e}-(h).
Appellants argue that claim 1 "provides a particular solution to a
technological problem" by "improving computer-related technology by
automatically acquiring information to improve the forecasting step." App.
Br. 22. In particular, Appellants assert that by "causing the mobile device to
activate a camera to capture and save an image of an activity ... the image
of the activity occurring within proximity of the patient may be used to
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supplement or to independently verify inputted information." App. Br. 22
( citing Spec. ,r 95).
As recognized by the Examiner (see Ans. 5), there is no support for
such an assertion in the Specification. 4 Even assuming for the sake of
argument that the Specification mentions "verifying" or "supplemental" data
input using images captured in the "proximity of the patient," Appellants'
claim 1 is not directed to such a method for improving or verifying accuracy
of the forecast or to an improved computer functionality for verifying or
supplementing inputted information "in response to the forecasted probable
fees and costs falling outside of the range of the prediction interval."
Instead, claim 1 merely recites insignificant "post-solution activity," i.e.,
outputting a notification which activates a camera to capture and save
additional data around the patient after "forecasting ... probable total fees
and costs to complete delivery of the healthcare service to the patient." See
Parker v. Flook, 437 U.S. 584 (1978). That is, claim 1 does not recite or
require the captured additional data to be used so as to "supplement or to
independently verify inputted information" as Appellants argue. See App.
Br. 22; Reply Br. 3--4.
We also note Appellants' reliance on McRO is misplaced. For
example, McRO's '576 patent (U.S. Patent No. 6,307,576) describes
4 Although Appellants cited claims 2, 15, and 35 in support of their
assertion, that feature is not recited in the Specification, including the
original claims; instead, that feature was added during the prosecution. In
particular, Appellants' Specification only discloses receiving data as data
indicative of an activity within a proximity of the patient (i-f 95). There is no
disclosure about taking that information when the notification is made in
response to the "forecasted probable fees and costs falling outside of the
range of the prediction interval."
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computer software for matching audio to a 3D animated mouth movement to
provide lip-synched animation. McRO 's claims contain (i) specific
limitations regarding a set of rules that "define[] a morph weight set stream
as a function of phoneme sequence and times associated with said phoneme
sequence" to enable computers to produce "accurate and realistic lip
synchronization and facial expressions in animated characters" (McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016))
and, when viewed as a whole, are directed to (ii) a "technological
improvement over the existing, manual 3-D animation techniques" that uses
"limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice." Id. at 1316 (citation
omitted).
In contrast to McRO, Appellants' Specification and claims do not
describe technological improvements or specific improvements to the way
computers operate. Rather, Appellants' Specification and claims describe
techniques that forecast probable costs and fees associated with healthcare
service and gather additional inputs to be saved. Appellants argue, like the
claims in McRO, their claims seek to improve "computer-related technology
by automatically acquiring information to improve or confirm the accuracy
of the forecasting step." See App. Br. 22-23.
However, Appellants' claim 1 does not recite any feature deemed
necessary to improve any computer-related technology. In particular,
Appellants' method of "captur[ing] and sav[ing] an image of an activity
occurring within a proximity of the patient" does not provide a technical
solution to a technical problem. The focus of Appellants' invention is not to
improve the performance of computers or any underlying technology, but to
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use computers as a tool to gather patient healthcare service information in
order to provide accurate healthcare service information to the server system
(see Spec. ,r,r 85-86). While Appellants' methods may improve the process
of gathering patient healthcare service data for forecasting the probable fees
and costs, it is not an improvement to another technology or technical field.
Thus, under Step 2A, Prong Two, we determine the judicial exception
is not integrated into a practical application under the Revised Guidance.
Accordingly, on this record, claim 1 is directed to the identified judicial
exception.
Alice/May~tep 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
In the second step of the Alice inquiry, Appellants contend claim 1
recites "significantly more" than the alleged abstract idea because (1) like
the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014), claim 1 "provides a particular solution to a technological
problem" by "automatically acquiring information to improve the
forecasting step" where "the image of the activity occurring within
proximity of the patient may be used to supplement or to independently
verify inputted information" App. Br. 21-23 (citing Spec. ,r 95; Fig. 17); and
(2) the claims contain an "inventive concept" like the claims in Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350,
1352 (Fed. Cir. 2016) and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014) because the claim recites "a particular solution
to a technological problem [] thereby improving computer-related
technology." App. Br. 21-22.
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Appellants' arguments are not persuasive. In contrast to DDR,
Appellants' Specification and claim 1 describes techniques that provide a
probable cost and fee forecast to complete healthcare service based on
information- a fundamental economic practice long prevalent in our system
of commerce. See Spec. ,r,r 12-16; Title. Appellants' forecasting technique
based on inputted information does not provide a technical solution to a
technical problem unique to the Internet, i.e., a "solution ... necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." DDR, 773 F.3d at 1257.
Instead, the solution proposed by Appellants is a business solution rather
than a technological solution that utilizes general purpose hardware such as a
server system and processing unit.
Appellants' reliance on BASCOM is also misplaced. For example,
Bascom (U.S. Patent No. 5,987,606 ("Bascom '606 patent")) describes a
particular arrangement of filtering software at a specific location, remote
from the end-users, with customizable filtering features specific to each end
user. The filtering software enables individually customizable filtering at
the remote ISP server by taking advantage of the technical ability of the ISP
server to identify individual accounts and associate a request for Internet
content with a specific individual account. Bascom '606 patent, 4:35-38.
The Federal Circuit recognized that Bascom's installation of an
Internet content filter at a particular network location is "a technical
improvement over prior art ways of filtering such content" because such an
arrangement advantageously allows the Internet content filter to have "both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server" and "give[ s] users the ability to customize filtering for their
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individual network accounts." BASCOM, 827 F.3d at 1350, 1352.
According to the panel, Bascom's claims "carve out a specific location for
the filtering system (a remote ISP server) and require the filtering system to
give users the ability to customize filtering for their individual network
accounts." Id. As such, "an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces."
Id. at 1350.
In contrast to Bascom, Appellants' claim 1 and Specification are
directed to a system and method for "forecasting probable fees and costs to
complete delivery of the healthcare service to the patient" and "outputting
in substantially real time information indicative of the probable future fees
and costs to complete delivery of the healthcare service." Spec. ,r,r 12-16.
There is no evidence in the record to support the contention that Appellants'
claimed system is provided with any non-conventional and non-generic
arrangement of known, conventional components similar to Bascom.
Appellants also argue claim 1 recites significantly more than an
abstract idea because the claim does not "represent insignificant,
conventional extra-solution activities well-understood in the art" evidenced
by absence of any prior art rejections. App. Br. 23; see also Reply Br. 8.
This improperly conflates the test for § 101 with the separate tests for § § 102
and 103. See, e.g., 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"); Diamond v. Diehr, 450 U.S. 175, 188-89
(1981) ("The 'novelty' of any element or steps in a process, or even of the
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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.").
Because Appellants' independent claim 1 is directed to a patent-
ineligible abstract concept and does not recite an "inventive concept" by
providing a solution to a technical problem under the second step of the
Alice analysis, we sustain the Examiner's § 101 rejection of independent
claim 1, and of independent claims 15, 20, 23, and 26, and dependent claims
2-11, 13-14, 16-19, 21-22, 24--25, and 27-36, which are not separately
argued.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-11 and 13-36 under
35 U.S.C. § 101.
DECISION
As such, we affirm the Examiner's decision to reject claims 1-11 and
13-36 under 35 U.S.C. § 101.
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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