Ex Parte Li et al

Patent Trial and Appeal Board

Dec 11, 2018

12947928 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/947,928 11/17/2010
47394 7590 12/13/2018
PARKER JUSTISS, P.C./NOKIA
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
FIRST NAMED INVENTOR
Xiang Yang Li
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.
805693 2886
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
docket@pj-iplaw.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIANG YANG LI and YIGANG CAI
Appeal2017-008548
Application 12/94 7 ,928 1
Technology Center 3600
Before LARRY J. HUME, JENNIFER L. McKEOWN, and
NORMAN H. BEAMER, 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 1-3 and 5-16, which are all claims pending in the
application. Appellants have canceled claim 4. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Alcatel-Lucent USA,
Incorporated. App. Br. 3.
Appeal2017-008548
Application 12/947,928
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate
"generally to the field of communication networks, and, more particularly, to
a method and billing system used in charging for communication services,
which, in implementation, is expected to lower the cost of implementing a
communication network by reducing the number of hardware components
required to perform certain rating calculations." Spec. 1, 11. 5-9.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A communication system for assigning a service
quota, comprising:
a charging trigger function (CTF) to receive a service
request associated with a device;
an online charging system (OCS) coupled to the CTF and
configured to use a processor to:
determine subscriber information relating to
a subscriber associated with the device;
compare the service request with a policy
rules database;
determine whether reverse rating is to be
performed based on the comparison;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Jan. 17, 2017); Reply Brief ("Reply Br.," filed May 25, 2017); Examiner's
Answer ("Ans.," mailed Mar. 28, 2017); Final Office Action ("Final Act.,"
mailed Oct. 3, 2016); and the original Specification ("Spec.," filed
Nov. 17, 2010).
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Application 12/947,928
perform reverse rating if it is determined
that reverse rating is to be performed; and
assign a dummy service unit quota if it is
determined that reverse rating is not to be
performed, wherein the dummy service quota sets
a limit on an amount of the requested service to be
provided.
Rejection on Appeal
Claims 1-3 and 5-16 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. 6-9) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible
subject matter Rejection RI of claims 1-3 and 5-16 on the basis of
representative claim 1. 3
ISSUE
Appellants argue (App. Br. 6-9; Reply Br. 2--4) 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." 37 C.F.R. § 4I.37(c)(l)(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 claim 1 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." Gottschalkv. 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 Bank Int'!, 573 U.S. 208; 134 S. Ct. 2347, 2354
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(2014). Accordingly, laws of nature, natural phenomena, and abstract ideas
are not patent-eligible subject matter. Alice Corp., 573 U.S. 208; 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., 573 U.S. 208; 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. If so, 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. Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 573
U.S. 208; 134 S. Ct at 2357).
In Enfish, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed.
Cir. 2016). 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
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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 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). InMcRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
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 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 the filtering
system to give users the ability to customize filtering for their individual
network accounts. Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
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
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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, 573 U.S. 208; 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
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 1 -Abstract Idea
The Examiner concludes " [ t ]he claims are directed to a judicial
exception (i.e., ... [an] abstract idea), specifically the abstract idea of billing
a customer." Final Act. 2. "The reason that the limitations are considered
abstract idea is that evaluating customer data against policy rules and billing
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customers accordingly is a well-understood, routine, and conventional
activity previously known to the industry." Id.
Appellants generally contend, "the [c]laims 1-3 and 5-16 are not
directed to a judicial exception of an abstract idea because the Examiner
fails to establish that the Claims are directed to a concept that the court have
[sic] identified as an abstract idea." App. Br. 6.
More specifically, Appellants argue:
In the Final Rejection, the Examiner suggests that the
Claims are directed to an abstract idea of billing a customer,
which is similar to the concept identified by the court in
Alstom[4J as abstract. The Claims, however, are not directed to
such a broad concept or even to a method as suggested by the
Examiner. Instead, the Claims are directed to an efficient
system for assigning a service quota by selectively performing a
reverse rating and assigning a dummy service unit quota when a
reverse rating is not performed. Moreover, the Claims are
different the claims in Alstom, which are directed to a method
for detecting events on an interconnected electric power grid in
real time over a wide area and automatically analyzing those
events. As the Claims of the current application and those in
Alstom are not directed to a similar concept, the Examiner has
failed to set forth that the Claims are directed to a concept that
the courts have identified as an abstract idea.
App. Br. 6-7.
In addition, Appellants contend:
When a claim is directed to an improvement in computer-
related technology, the claim does not recite a concept similar
to previously identified abstract ideas .... Here the Claims are
directed to an improvement in computer-related technology
4 Appellants refer to Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
(Fed. Cir. 2016) as "Alstom."
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because the specification teaches how the claimed invention
improves the functioning of the computer itself.
App. Br. 7.
In response, the Examiner states:
"[T]he Examiner did provide evidence that the claims are
directed to a concept that the Courts have identified as an
abstract idea [by citing Electric Power Group].
Furthermore, 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.
Ans. 2.
Appellants' suggestion of the absence of evidence supporting the
§ 101 rejection also does not persuade us of Examiner error. App. Br. 6.
"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
conclude that a claim is directed to a patent-ineligible concept, such as an
abstract idea.
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.
Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1047, 119
USPQ2d 1370, 1372 (Fed. Cir. 2016); OIP Techs. v.
Amazon.com, 788 F.3d 1359, 1362, 115 USPQ2d 1090, 1092
(Fed. Cir. 2015); DDR Holdings v. Hotels.com, 773 F.3d 1245,
1255, 113 USPQ2d 1097, 1104 (Fed. Cir. 2014); In re Roslin
Institute (Edinburgh), 750 F.3d 1333, 1335, 110 USPQ2d 1668,
1670 (Fed. Cir. 2014); In re Bilski, 545 F.3d 943, 951, 88
USPQ2d 1385, 1388 (Fed. Cir. 2008) (en bane), aff'd by Bilski
v. Kappas, 561 U.S. 593, 95 USPQ2d 1001 (2010). Thus, the
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court does not require "evidence" that a claimed concept is a
judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues. FairWarning IP,
LLC v. Iatric Sys., 839 F.3d 1089, 1097, 120 USPQ2d 1293,
1298 (Fed. Cir. 2016) (citing Genetic Techs. Ltd. v. Merial
LLC, 818 F.3d 1369, 1373, 118 USPQ2d 1541, 1544 (Fed. Cir.
2016)); OIP Techs., 788 F.3d at 1362, 115 USPQ2d at 1092;
Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1349, 113 USPQ2d 1354, 1359 (Fed. Cir.
2014).
MPEP § 2106.07(a) (III).
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] communication
system for assigning a service quota." Claim 1 (preamble). Limitations in
system claim 1 also require elements including (a) "a charging trigger
function (CTF) to receive a service request associated with a device;" and
(b) "an online charging system (OCS) coupled to the CTF."
The OCS is recited as using "a processor to" carry out functions
including "determine subscriber information," "compare the service request
with a policy rules database;" "determine whether reverse rating is to be
performed based on the comparison;" "perform reverse rating if it is
determined that reverse rating is to be performed;" and "assign a dummy
service unit quota if it is determined that reverse rating is not to be
performed, wherein the dummy service quota sets a limit on an amount of
the requested service to be provided." Claim 1.
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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, LLC v.
Microsoft Corp., 822 F.3d. 1327, 1334 (Fed. Cir. 2016). 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, 573 U.S. 208; 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. Amdocs, 841 F.3d at 1295-1300.
Under step one, we agree with the Examiner that the invention
claimed in independent claim 1 is directed to an abstract idea, i.e., "billing a
customer." Final Act. 2. We further conclude the claims are directed to the
abstract idea of billing a customer in response to a service request by
comparing the request with a policy rules database and assigning a service
quota. We further conclude this may be considered a fundamental economic
practice, e.g., a concept relating to agreements between people or
performance of financial transactions or, alternatively, it may be considered
a method of organizing human activity, i.e., a concept relating to managing
relationships or transactions between people, or satisfying or avoiding a
legal obligation.
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As the Specification discloses," [ t ]he present invention relates
generally to the field of communication networks, and, more particularly, to
a method and billing system used in charging for communication services,
which, in implementation, is expected to lower the cost of implementing a
communication network by reducing the number of hardware components
required to perform certain rating calculations." Spec. 1, 11. 5-9. 5 We find
this type of activity, i.e., choosing how to bill a customer, for example,
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 Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
5 See also Spec. 25 ("Abstract"):
A method and system for charging for services delivered
by a communication network. After receiving a request for
service in the network, usually initialed by a UE, an online
charging system retrieves subscriber information, typically
including subscriber account balance information, and
compares the retrieved subscriber information with reverse
rating policy rules to determine if reverse rating is to be
performed prior to responding to the request for service. If so,
the online charging system is directed to perform the reverse
rating. If not, the service is provided without performing
reverse rating. A dummy quota may be generated if reverse Io
rating is not performed. In one embodiment, reverse rating may
be performed after a service session was allowed to commence
without reverse-rating if the session consumes an amount of
service reaching a threshold determined after the operation of
determining whether reverse rating is to be performed.
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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 Cy her Source 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-
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,
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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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"). Further, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is abstract. Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Also, 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).
Appellants also suggest claim 1 is patent-eligible because its practice
does not preempt practice by others. App. Br. 8 ("[T]he claims as a whole
are clearly not attempting to tie up the purported abstract idea of 'billing a
customer.' The eligibility of the Claims is thus self-evident."). We agree
with the Examiner's response, which we incorporate herein by reference.
Ans. 5 and see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (collecting cases); Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013); Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility").
Further, in Intellectual Ventures I, similar in key respects to the claims
before us on appeal, tailoring content based on information about the user
has also been determined as being directed to an abstract idea and, thus,
patent-ineligible.
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At step one of the Alice framework, it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a "fundamental ... practice
long prevalent in our system .... " Alice, [573 U.S. 208] 134 S.
Ct. at 2356. As noted, the claim relates to customizing
information based on ( 1) information known about the user and
(2) navigation data .... [T]ailoring is "a fundamental ...
practice long prevalent in our system .... "Id. There is no
dispute that newspaper inserts had often been tailored based on
information known about the customer-for example, a
newspaper might advertise based on the customer's location.
Providing this minimal tailoring----e.g., providing different
newspaper inserts based upon the location of the individual-is
an abstract idea.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015).
Appellants argue the claims are an improvement in computer-related
technology, similar to those held patent-eligible in McRO. App. Br. 7 ( citing
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016)). The claims inMcRO 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. InMcRO, "the incorporation of
the claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314. Appellants do not, however, 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 a "communication system for assigning a service quota." In
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addition, Appellants do not direct us to any evidence that the claimed data
request, storage, and generating steps 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, 573 U.S. 208; 134 S. Ct. at 2357. Those "additional
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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features" must be 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
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 billing a customer by, for example, assigning
a service quota, into a patent-eligible application of that abstract idea. See
Ans. 6. 11
8 Alice, 573 U.S. 208; 134 S. Ct. at 2357-58.
9 Alice, 573 U.S. 208; 134 S. Ct. at 2357, e.g., simply implementing a
mathematical principle on a physical machine, namely a computer ( citing
Mayo, 566 U.S. at 84--85).
10 Alice, 573 U.S. 208; 134 S. Ct. at 2359, e.g., using a computer to obtain
data, adjust account balances, and issue automated instructions.
11 The Examiner concludes:
[S]imply utilizing a generic computer system to assign/classify
information and to perform operations on the information faster
and more efficiently is not enough to transform a patent
ineligible claim into a patent-eligible invention .... In order for
the addition of a machine to impose a meaningful limit on the
scope of a claim, it must play a significant part in permitting the
claimed method to be performed, rather than function solely as
an obvious mechanism for permitting a solution to be achieved
more quickly.
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The Examiner concludes, 11 [a]dditional elements include comparing
data using a processor, and assigning a dummy service unit quota if reverse
rating is not to be performed. The processor, as claimed, performs generic
computer functions. Furthermore, assigning a value to set a limit on an
amount of service requested does not significantly add more to the abstract
idea since it is usage control for billing. 11 Final Act. 2.
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, 11 [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. 11
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note Appellants' Specification at page 14,
lines 11-23, page 14, line 28 through page 15, line 12. For example:
OCS 300 includes a network interface 305 for communicating
with other network components such as a CTF or other service
element. Also present is a processor 310 for controlling the 15
components of OCS 300 and performing the process of the
present invention according to instructions stored in a memory
device within or accessible to OCS 300. Memory device 315 is
Here there is no improvement to the communication network
since sending and receiving data is a generic function of a
communication network. The Courts have already recognized
as generic computer functions: receiving, processing, and
storing data, electronic recordkeeping, automating mental tasks,
and receiving or transmitting data over a network, e.g., using
the Internet to gather data.
Ans. 6.
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present in the OCS 300 in this embodiment. Illustrated
separately is a subscriber information module 320, where
subscriber information such as subscriber accounts balances
may be store. A reverse rating determination module 20 325 is
present and also depicted separately, and its operation
according on one embodiment is described above. This and the
other functions of the present inventions are implemented in
hardware or software stored in (non-transitory) storage media,
or both.
Spec. 14, 11. 12-23.
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 either a "communication system for
assigning a service quota" using a "charging trigger function" and an "online
charging system" that uses a processor to carry out functions that may be
carried out in the human mind or by pen and paper ( claim 1) is simply not
enough to transform the patent-ineligible abstract idea here into a patent-
eligible invention. See Alice, 573 U.S. 208; 134 S. Ct. at 2357 ("[C]laims,
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. A cad. 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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which merely require generic computer implementation, fail to transform
[an] abstract idea into a patent-eligible invention."). 13
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, 3
and 5-16, not argued separately, and which fall therewith. See Claim
Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2--4) 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
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to patent-ineligible subject
matter Rejection RI of claims 1-3 and 5-16 under 35 U.S.C. § 101, and we
sustain the rejection.
13 Appellants merely allege:
Here, when the [ c ]laims are considered as a whole, the
limitations of the Claims as an ordered combination amount to
significantly more than an abstract idea because they
significantly reduce the amounts of resources and expenses
necessary in operating a communication network and also
prevent potential billing issues in the network.
Reply Br. 4.
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DECISION
We affirm the Examiner's decision rejecting claims 1-3 and 5-16.
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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