Ex Parte Rivera de la Vega et al

Patent Trial and Appeal Board

Sep 14, 2018

14537612 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/537,612 11/10/2014
22918 7590 09/18/2018
PERKINS COIE LLP - PAO General
P.O. BOX 1247
SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
Manuel Antonio Rivera de la Vega
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.
l 12353-8001.US02 3328
EXAMINER
LE, LINH GIANG
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANUEL ANTONIO RIVERA DE LA VEGA, and
CECILIA GUADALUPE CORRAL
Appeal2017-006281
Application 14/537,612
Technology Center 3600
Before ST. JOHN COURTENAY III, JENNIFER S. BISK, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final rejection of
claims 1-19, 21-26, 28, 29, and 31. 2 Claims 20, 27, and 30 are cancelled.
See Claims, filed May 23, 2016; see also the Examiner's Jan. 10, 2017,
"Index of Claims." We have jurisdiction over the pending claims under
35 U.S.C. § 6(b). We Affirm.
1 According to Appellants, the real party in interest is Caremessage, which is
the assignee of the present application. App. Br. 2.
2 We note the Examiner rejects claims 1-19, 21-26, 28, 29, and 31 in the
Final Action (3), but incorrectly lists claims 1-19, 21-26, and 31 (omitting
claims 28 and 29), as being rejected on the "Office Action Summary" page
of the Final Action, mailed March 23, 2016.
Appeal2017-006281
Application 14/537,612
STATEMENT OF THE CASE
Introduction
Appellants' invention generally "relates to text messaging campaigns,
and more particularly, to interactive text messaging campaigns." Spec. ,r 2.
Exemplary Claim
1. A computer-implemented method, comprising:
receiving, by a computing system, a health goal for a user
enrolled in a campaign program, the campaign program
specifying a set of tasks to be performed by the user to achieve
the health goal;
generating, by the computing system and based on the
health goal for the user, a plurality of messages having
information related to a campaign program, the messages being
customized for the user, the plurality of messages stored in a
plurality of interaction components generated using an
interaction component creation tool executing at a computer,
wherein each of the interaction components includes an entry
link and an exit link, the entry link specifying a previous
interaction component of the interaction components that
precedes the corresponding interaction component in the
sequence, the exit link specifying a next interaction component
of the interaction components which follows the corresponding
interaction component in the sequence; and
sending, by the computing system, the messages to a
mobile computing device of the user in a sequence, at least one
of the messages eliciting the user to respond, wherein a next
message of the sequence sent to the user is based on a response
received from the user for a previous message of the sequence,
wherein the sending includes:
determining, by the computing system, a first
interaction component corresponding to the previous
message, wherein the first interaction component
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includes a plurality of exit links, each of the exit links
linked to one of the interaction components,
determining, by the computing system, a first exit
link of the exit links that corresponds to the response
received from the user,
retrieving, by the computing system, the next
message from a second interaction component of the
interaction components to which the first exit link is
linked, and
sending, by the computing system, the next
message to the mobile computing device.
App. Br. 22, Claims Appendix.
Rejection
Claims 1-19, 21-26, 28, 29, and 31 are rejected under 35 U.S.C.
§ 101, as being directed to a judicial exception, without significantly more. 3
Final Act. 3-5.
Issues on Appeal
Did the Examiner err in rejecting claims 1-19, 21-26, 28, 29, and 31
under 35 U.S.C. § 101, as being directed a judicial exception without
significantly more?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
3 See MPEP § 706.03(a), form paragraph 7.05.015.
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Mayo/Alice Analysis under 35 USC§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. 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. Id. at 2355-57. 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).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
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whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfish, 822 F.3d at 1336.
The Examiner's Rejection under 35 US.C. § 101
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes that claims 1-19, 21-26, 28, 29, and 31 are directed to a judicial
exception, i.e., an abstract idea, because:
[ A ]n abstract idea is recited in the claims. The abstract idea is
identified as: generating and determining customized messages
sent to a user based on user responses and in relation to a health
goal. Sending personalized messages in relation to a health
goal is an abstract idea as described by the claimed invention
because it uses categories to organize, store and transmit
information, and compares new and stored information and uses
rules to identify options, such as what messages to send to the
user. User responses are categorized to make a determination
on what text messages are sent back to a user. Furthermore,
user responses ( new information) are compared to health goals
(stored information) and a decision tree or algorithm (rules) are
applied to determine what messages are sent to a user.
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Final Act. 3--4 ( emphasis omitted). 4
The Examiner further concludes:
The use of entry and exit links is merely branching logic as a
part of the decision tree. This is a mental process of managing
behavior that be done by a human using pen and paper. Such a
basic concept is similar to concepts the courts have found
abstract such as using rules to identify options.
Final Act. 4 ( emphasis omitted).
Regarding the second step of the Mayo/Alice analysis, the Examiner
concludes the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception, because:
[T]he additional elements or combination of elements in the
claims, other than the abstract idea per se, amount to no more
than a recitation of
A) generic computer structure that serves to perform
generic computer functions that serve to merely link the
abstract idea to a particular technological environment (i.e.
server, wireless telecommunications network, graphical user
interface and processor). Applicant's specification discloses the
computing system may include central processing units,
memory, input/output devices, storage devices and network
adapters. (Specification; para. 96); and
B) functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry (i.e. receiving, generating, sending exchanging,
analyzing, outputting, and linking data).
Final Act. 4--5 ( emphasis added in italics, emphasis in original omitted). 5
4 "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).
5 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed.
Cir. 2016). In particular, "[ t ]he question of whether a claim element or
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The Examiner further finds the claims recite "a mobile device[,] but
this is used only to input and output data and thus is considered to be part of
the insignificant extrasolution activity and [is] not considered to be
significantly more than the abstract idea itself." Final Act. 5 ( emphasis
added).
For the aforementioned reasons, the Examiner concludes that all
claims 1-19, 21-26, 28, 29, and 31 on appeal are not patent-eligible under
35 U.S.C. § 101.
Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellants analogize the instant claims on
appeal to the database claims considered by the court in Enfzsh. App. Br. 8.
In support, Appellants urge:
Similar to the "self-referential table ... [which] is a specific type
of data structure designed to improve the way a computer stores
and retrieves data in memory" (Id. at 18), claim 1 of the present
application recites a specific process designed to improve the
way a computing system generates and determines customized
messages to be sent to a user based on user responses.
Id. (underline omitted).
In response, the Examiner further explains the basis for the rejection:
Appellant further argues that the claims are not directed
to an abstract idea because the claims like those in Enfzsh are
directed to a specific implementation of a solution problem in
the software arts. Applicant states that the interaction
components of the claimed technology improves the efficiency
of the computer by facilitating loading of a partial sequence
rather than a full sequence. Again, Appellant has not pointed to
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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any support in the specification that the claimed use of
"interaction components" helps the computer run more
efficiently. As described in the specification para. [0040]
interaction components [] represent[] a type of text message
generated by the server. There is no discussion that interaction
components as taught in the claimed invention improve the
computer technology or functionality. One could argue that
interaction components can be small or large and could use
varying amounts of computer resources.
Ans. 3 ( emphasis omitted).
Appellants respond in the Reply Brief:
As in McRO, Appellant's claim 1 recites (inter alia) a set of
"rules" that improves computer-related technology by allowing
a computer to automate sending of interactive messages to a
user that are customized to the user in a message-based
campaign program not previously performable by a computer.
The set of "rules" includes "generating ... based on the health
goal for the user, a plurality of messages ... [ and storing them]
in a plurality of interaction components ... [ which determines a
sequence in which the messages are to be sent to the user]."
The "interaction components [ facilitate the sequencing of
messages using] ... an entry link and an exit link ... [in which]
the entry link specif[ies] a previous interaction component ...
that precedes the corresponding interaction component in the
sequence [and] the exit link specif[ies] a next interaction
component ... which follows the corresponding interaction
component in the sequence." To send the next message of the
sequence to a mobile computing device of the user, the set of
rules "determin[ es] ... a first interaction component
corresponding to the previous message [ sent to the user,]
determin[ es] ... a first exit link ... that corresponds to the
response received ... , retriev[ es] ... the next message from a
second interaction component ... to which the first exit link is
linked, and send[ s] ... the next message to the mobile
computing device.
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The above set of "rules" allows a computer to automate
sending of interactive messages to a user that are customized to
the user in a message-based campaign program ....
. . . Accordingly, the above set of "rules" improves
computer-related technology by allowing computer
performance of automating sending interactive messages to a
user that are customized to the user in a message-based
campaign program not previously performable by a computer.
Reply Br. 3 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016)).
We note McRO was decided by the Federal Circuit on September 13,
2016. Appellants could have fully addressed McRO in the Appeal Brief,
filed on September 26, 2016, but did not do so. Therefore, we find
Appellants' citation to McRO is untimely, because McRO is not an
intervening authority.
Because Appellants: (1) did not raise McRO in the opening brief, and,
(2) good cause has not been shown why it should be considered, we will not
consider this argument. See 37 C.F.R. § 41.41(b)(2); Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.").
In the Appeal Brief, Appellants principally rely on Enfzsh in support
of the contention that the claims are directed to an improvement in computer
functionality under Alice step one (see Enfzsh, 822 F.3d at 1335):
Similar to the "self-referential table ... [which] is a specific type
of data structure designed to improve the way a computer stores
and retrieves data in memory" (Id. at 18), claim 1 of the present
application recites a specific process designed to improve the
way a computing system generates and determines customized
messages to be sent to a user based on user responses.
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App. Br. 8.
We note the claimed self-referential database table considered by the
court in Enfzsh was a specific type of data structure designed to improve the
way a computer stores and retrieves data in memory. Enfzsh, 822 F .3d at
1339.
Here, Appellants' claims 1-19, 21-26, 28, 29, and 31 are silent
regarding any mention of a database. On this record, Appellants have not
shown that the claim language before us on appeal improves the way the
recited generic computer components store and retrieve data in memory, in a
manner analogous to that found by the court in Enfzsh. See claims 1, 12, 16,
and 26.
Therefore, we are not persuaded by Appellants' contention (App. Br.
8) that the claimed invention improves the recited computer system or
processor functionality or efficiency, or otherwise changes the way the
claimed generic computer components function, at least in the sense
contemplated by the Federal Circuit in Enfzsh.
We conclude each of Appellants' independent claims 1, 12, 16, and 26
is directed to, inter alia, gathering and processing data, for example:
receiving, by a computing system, a health goal for a user
enrolled in a campaign program, the campaign program
specifying a set of tasks to be performed by the user to achieve
the health goal; [ and]
generating, by the computing system and based on the
health goal for the user, a plurality of messages having
information related to a campaign program ....
Claim 1.
Data gathering is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane),
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aff'd on other grounds sub nom. Bilski v. Kappas, 561 U.S. 593 (2010). 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); see also
Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364,
13 72 (Fed. Cir. 201 7) ( concluding "claims directed to the collection, storage,
and recognition of data are directed to an abstract idea"); Elec. Power Grp.
LLC v. Alstom, S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (the collection of
information and analysis of information are abstract ideas).
Moreover, but for the recitation of a generic computer system and
mobile computing device (independent claim 1 ), a generic server, wireless
telecommunications network, and computing device (independent claim 12),
a generic machine-implemented processing system (independent claim 16),
and a generic processor and mobile computing device (independent claim
26), we are of the view that the recited steps or acts, or functions could be
performed as mental steps, or with the aid of pen and paper. See Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
("While the Supreme Court has altered the § 101 analysis since CyberSource
in cases like Mayo and Alice, we continue 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."' (brackets in original) ( quoting Elec. Power Grp., 830 F .3d at
1354)); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
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even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalkv. Benson [409 U.S. 63 (1972)].").
"[M]erely selecting information, by content or source, for collection
[and] analysis ... does nothing significant to differentiate a process from
ordinary mental processes .... " Elec. Power Grp., 830 F.3d at 1355. Data
gathering, such as receiving and analyzing ( or identifying data), by itself,
does not transform an otherwise-abstract process or system of information
collection and analysis. See id. Therefore, we agree with the Examiner that
"[t]he use of entry and exit links is merely branching logic as a part of the
decision tree. This is a mental process of managing behavior that [can] be
done by a human using pen and paper." Final Act. 4 (emphasis omitted).
Appellants advance no further substantive arguments regarding Alice
Step 1. Therefore, on this record, we conclude Appellants' claims 1-19,
21-26, 28, 29, and 31 are directed to an abstract idea, which is similar to the
abstract ideas identified by our reviewing courts as discussed above, and that
could additionally be performed as mental steps, albeit with the aid of pen
and paper.
Mayo/Alice Analysis-Step 2
Because we conclude claims 1-19, 21-26, 28, 29, and 31 are directed
to an abstract idea for essentially the same reasons articulated by the
Examiner (Final Act. 3--4; Ans. 2-3), we tum to the second part of the
Alice/ Mayo analysis. We analyze the claims to determine if there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to "significantly more" than the abstract idea. Alice, 134
S. Ct. at 2357.
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Regarding Alice Step 2, Appellants address the purported inventive
concept of the claims. Appellants argue: "Even assuming arguendo that
Appellant's claims are directed to an abstract idea (which Appellant denies),
the limitations in each of Appellant's independent claims, viewed together as
a combination, are sufficient to ensure that the claims amount to
significantly more than the abstract idea itself." App. Br. 11.
In support, Appellants urge: "The limitations of claim 1, among
others, are not well-understood, routine, or conventional activity, as
indicated by the fact that no prior art references are cited as teaching those
limitations. Accordingly, for at least this reason, claim 1 amounts to
significantly more than the alleged abstract idea." App. Br. 12 (emphasis
omitted).
However, the Supreme Court guides: "The 'novelty' of any element
or steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr,
450 U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court further
emphasizes that "[ e ]ligibility and novelty are separate inquiries." Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016) (holding that "[e]ven assuming" that a particular
claimed feature was novel does not "avoid the problem of abstractness").
In the Reply Brief (7), Appellants persist in urging that the claims
recite a very specific implementation that is "significantly more" than the
alleged abstract idea. In support, Appellants cite to Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016), as an
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intervening authority (we note Amdocs was decided on Nov. 1, 2016, after
the Appeal Brief was filed on Sept. 26, 2016, but before the Reply Brief was
filed on March 10, 2017).
In Amdocs, the court found claim 1
entails an unconventional technological solution ( enhancing
data in a distributed fashion) to a technological problem
(massive record flows which previously required massive
databases). The solution requires arguably generic components,
including network devices and "gatherers" which "gather"
information. However, the claim's enhancing limitation
necessarily requires that these generic components operate in an
unconventional manner to achieve an improvement in computer
functionality.
Id. at 1300--01.
However, in contrast with Amdocs, Appellants do not present, nor do
we find, a specific technical improvement provided by the claims before us
on appeal. We are of the view that Appellants' claims do not operate the
recited generic computer components in an unconventional manner to
achieve an improvement in computer functionality.
Our reviewing court provides additional guidance: See FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use
of generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter."); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) ( claims reciting, inter alia, sending messages over a network,
gathering statistics, using a computerized system to automatically determine
an estimated outcome, and presenting offers to potential customers found to
merely recite "well-understood, routine conventional activit[ies]" by either
requiring conventional computer activities or routine data-gathering steps
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(brackets in original) (citation omitted)). See also Elec. Power Grp., 830
F.3d at 1355 ("We have repeatedly held that such invocations of computers
and networks that are not even arguably inventive are 'insufficient to pass
the test of an inventive concept in the application' of an abstract idea."
(quoting buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353, 1355 (Fed.
Cir. 2014))); Intellectual Ventures Iv. Capital One Financial Corp., 850
F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims recite both a generic
computer element-a processor-and a series of generic computer
'components' that merely restate their individual functions .... That is to
say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.").
Appellants further urge that claim 1 does not preempt the use of the
abstract idea because "[t]he alleged abstract idea of 'generating and
determining customized messages sent to a user based on user responses and
in relation to a health goal' (Office Action at 3) can be practiced in various
ways, e.g., using if-then-else branching logic or associating sequence IDs to
each of the messages." App. Br. 16.
Our reviewing court provides applicable guidance: "While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
Therefore, we are not persuaded by Appellants' argument regarding
the absence of complete preemption. The Supreme Court additionally
guides that the "prohibition against patenting abstract ideas 'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or [by] adding 'insignificant postsolution
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activity."' Bilski v. Kappas, 561 U.S. at 610-11 (quoting Diamond v. Diehr,
450 U.S. at 191-92).
Applying this guidance here, we agree with the Examiner that "[ t ]he
additional limitation of a mobile device for input and out[put] of data is
insignificant [post]solution activity and does not amount to significantly
more." Ans. 6; see Independent claim 1 ("mobile computing device").
Appellants further urge:
Similarly to the facts in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) and claim 2 of Example
21 of the July 2015 Update, claim 1 recites specific limitations
that are necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of
computer networks. The network-centric problem addressed by
the claimed technology is how to enable conducting a campaign
program for a large set of users and that is customized to each
of the users by use of a user's mobile computing device that
operates on a wireless network and implementing the solution
using a text-messaging network.
App. Br. 18.
We do not find that Appellants' claims are similar to the claimed
solution the court held to be patent-eligible in DDR. In DDR, the Federal
Circuit applied the Supreme Court's Alice two-step framework, and upheld
the validity of DDR's patent on its web-page display technology. DDR, 773
F.3d at 1255.
The problem addressed by Appellants' claims is not similar or
otherwise analogous to the specific technical problem addressed by the
subject claims in DDR, which were directed to retaining a website visitor
when the visitor clicked on a third-party merchant's advertisement on the
host website. Instead of taking the visitor to the third-party merchant's
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website (and thus losing the visitor to the third-party merchant), DDR's
claimed system generated a hybrid web page that: (1) displayed product
information from the third-party merchant, but also, (2) retained the host
website's "look and feel."
Here, Appellants' claims 1-19, 21-26, 28, 29, and 31 are not directed
to a website that retains the host website's "look and feel" while displaying
product information from the third-party merchant, as was the case in DDR,
at 1257. Although Appellants' invention is directed to the result of
"sending, by the computing system, the next message to the mobile
computing device" ( claim 1 ), we find the "next message" is at best merely
an improvement in the informational content (i.e., data) that is intended to be
viewed and evaluated by a person as a mental step.
We find the claims on appeal are silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet. Therefore, we find Appellants' claimed invention does
not provide a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as considered by the court in DDR, 773 F.3d at 1257. (Emphasis added.).
Further regarding the use of the recited generic "processor" ( claim 1 ),
the Supreme Court held "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Alice, at 2358; see also Bascom Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an
Internet computer network' or on a generic computer is still an abstract
idea.").
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Because we find Appellants have not established that claims 1-19,
21-26, 28, 29, and 31, are directed to an improvement in the recited generic
computer system ( claim 1 ), we conclude that none of the claim limitations,
viewed both individually and as an ordered combination, amount to
significantly more than the judicial exception in order to sufficiently
transform the nature of the claims into patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analyses,
that each of Appellants' claims 1-19, 21-26, 28, 29, and 31, considered as a
whole, is directed to a patent-ineligible abstract idea (under step one), and
under step two, does not recite something "significantly more" to transform
the nature of the claim into a patent-eligible application.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1-19, 21-26, 28, 29,
and 31, as being directed to a judicial exception without significantly more. 6
CONCLUSION
The Examiner did not err in rejecting claims 1-19, 21-26, 28, 29, and
31 under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
6 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
18
Appeal2017-006281
Application 14/537,612
DECISION
We affirm the Examiner's decision rejecting claims 1-19, 21-26, 28,
29, and 31 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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
19