O'Neill, Daniel D.

Patent Trials and Appeals Board

Mar 25, 2020

12940147 - (D) (P.T.A.B. Mar. 25, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/940,147 11/05/2010 Daniel D. O'Neill 22008-0002002 6865
26161 7590 03/25/2020
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIEL D. O’NEILL
____________________

Appeal 2018-007030
Application 12/940,147
Technology Center 3600
____________________

Before JOSEPH L. DIXON, JUSTIN BUSCH, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–6, 8, 10, 11, 13–18, 20, 22–26, 31–38, 40–48, and 50–57.
Appellant has canceled claims 7, 9, 12, 19, 21, 27–30, 39, 49, and 58. See
Appeal Br. 36–53. Oral arguments were heard on February 25, 2020. A
transcript of the hearing was placed in the record on March 10, 2020. We
have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Rafferty Asset Management, LLC as the real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
leveraged index products (e.g., leveraged mutual funds and leveraged
exchange traded funds). Spec. 1:3–5. In contrast to traditional index funds,
a leveraged index fund “seeks to return a multiple of the return of an
underlying benchmark over a period of time.” Spec. 1:6–10. “The extent to
which a leveraged index product provides a multiple of the return of the
benchmark index is generally referred to as the ‘Beta’ of the product.”
Spec. 1:19–21. According to the Specification, to attempt to achieve the
stated return, exposure to the benchmark is provided in an amount equal to
the product of the Beta of the fund and the fund’s net assets each day.
Spec. 2:4–6.
According to the Specification, the return of a target index is only for
a limited period of time. Spec. 2:17–19. Compounding successive periods
of return “introduces a path dependency that impacts returns for periods
longer than the stated limited period of time.” Spec. 3:1–3. For example,
market fluctuations (i.e., the market not performing in a linear and
directional fashion) may affect the performance of a Daily Beta Model
versus a Cumulative Beta Model. See Spec. 12:19–19:11.
The claimed approach “attempts to provide a return from the
aggregate investment in the cash equivalent and the leveraged index product
account that is substantially equivalent to a multiple of the cumulative return
of the theoretical index over the period of time.” Spec. 4:1–5.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
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1. A computer implemented method comprises:
periodically calculating by one or more computers, a
theoretical position in an underlying index that corresponds to an
index associated with a leveraged index product;
determining by the one or more computers, based on the
calculated theoretical position, an exposure correction that
corresponds to a level of investment in a leveraged index product
account to provide a leveraged exposure to the underlying index
relative to the exposure provided by the theoretical position;
sending by the one or more computers a message including
the determined exposure correction to a user system;
receiving from the user system a message that causes the
one or more computers to apply the exposure correction to
rebalance the level of investment in the leveraged index product
account;
causing by the one or more computers a cash transfer,
according to the received message from the user system; and
causing by the one or more computers investment of
contents in the leveraged index product account in an investment
pool that invests the investment pool on a daily basis according
to a leveraged investment strategy.

The Examiner’s Rejections
1. Claims 31–38 and 40–48 stand rejected under pre-AIA
35 U.S.C. § 112, second paragraph as being indefinite.2 Final Act. 2–3.
2. Claims 1–6, 8, 10, 11, 13–18, 20, 22–26, 31–38, 40–48, and
50–57 stand rejected under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. Final Act. 3–16.

2 The Examiner initially also rejected claims 3, 16, and 25 on this basis, but
has since withdrawn the indefiniteness rejection of these claims. See
Ans. 3–4.
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ANALYSIS3
Rejection under pre-AIA 35 U.S.C. § 112, second paragraph
Independent claim 31 recites, in relevant part, “sending by one or
more computers a message to a user system indicating the determined cash
amount of investment in the leveraged index product account required to
provide the leveraged index product account with substantially the same
leveraged exposure to an underlying index as a leveraged exposure provided
by the determined theoretical position.”4 (Emphasis added.) Independent
claim 41 recites a commensurate limitation.
The Examiner rejects independent claims 31 and 41 (as well as the
claims that depend from them) under pre-AIA 35 U.S.C. § 112, second
paragraph, because the phrase “‘substantially the same leveraged exposure’
is a relative term whose metes and bounds are not clear.” Final Act. 3
(emphasis omitted).
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”

3 Throughout this Decision, we have considered the Appeal Brief, filed
March 16, 2018 (“Appeal Br.”); the Reply Brief, filed June 29, 2018 (“Reply
Br.”); the Examiner’s Answer, mailed May 4, 2018 (“Ans.”); and the Final
Office Action, mailed July 18, 2017 (“Final Act.”), from which this Appeal
is taken.
4 We note that the term “the determined cash amount” lacks proper
antecedent basis. In the event of further prosecution, we leave it to the
Examiner to determine whether the claim should be amended from “the
determined cash amount” to “a determined cash amount.” Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02 (9th ed. Rev. 08.2017, Jan. 2018).
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Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). “The
purpose of claims is not to explain the technology or how it works, but to
state the legal boundaries of the patent grant. A claim is not ‘indefinite’
simply because it is hard to understand when viewed without benefit of the
specification.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1369 (Fed. Cir.
2001). Moreover, “[i]t is well established that when the term ‘substantially’
serves reasonably to describe the subject matter so that its scope would be
understood by persons in the field of the invention, and to distinguish the
claimed subject matter from the prior art, it is not indefinite.” Verve, LLC v.
Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002). However, we are
mindful that even if the definition of a claim term may be supported by the
specification, “the claim is still indefinite if a person of ordinary skill in the
art cannot translate the definition into meaningfully precise claim scope.”
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir.
2008); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370–
71 (Fed. Cir. 2014).
Here, the Specification provides that the theoretical exposure is
compared to the exposure provided by a current investment in the leveraged
index product and, “if there is a material difference,” recommending or
initiating purchases into, or redemptions from, the leveraged index product
“to attempt to ensure that the exposure to the underlying index provided by
the investment in the leveraged index product is at least roughly equivalent
to the theoretical exposure.” Spec. 20:9–17 (emphasis added); see also
Spec. 21:1–6 (describing the execution of transactions to provide a current
investment that is “substantially equal” to the theoretical benchmark
exposure). Further, the Specification describes that if the absolute value of
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the difference between a current investment and the theoretical benchmark
exposure exceeds a threshold value, then a message (or transaction) will
occur suggesting a transfer of assets to/from a cash equivalent account
from/to a leveraged index product account. Spec. 25:1–27:5. The
Specification also describes the threshold may be bounded by transaction
costs and provides an exemplary maximum threshold of 3%. Spec. 25:8–11;
see also Reply Br. 3. This may suggest that for a difference percentage
below the threshold percentage, the exposure to the underlying index
provided by the current level of investment would be “roughly equivalent
to” or substantially the same exposure as that provided by a theoretical
benchmark exposure.
However, the Specification also indicates the difference threshold
may be greater than 3% (e.g., “up to 5% or more”) “if transaction costs are
more of a concern.” Spec. 25:11–15 (emphasis added). That is, the point at
which a message or transaction would occur to rebalance the exposure in a
leveraged index product account to be substantially the same as the exposure
provided by a determined theoretical position is based on the degree to
which transaction costs are of concern to a particular investor. Stated
another way, the exposure in a leveraged index product account may be
considered substantially the same as the exposure provided by a determined
theoretical position until a difference threshold is exceeded. However, the
trigger value of the difference threshold is subjective and is determined by
the tolerance of one to transaction costs.
The scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual purportedly
practicing the invention, without sufficient guidance in the specification to
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provide objective direction to one of skill in the art. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection under pre-AIA
35 U.S.C. § 112, second paragraph, of independent claim 31. For similar
reasons, we also sustain the Examiner’s rejection of independent claim 41,
which recites a commensurate limitation. Additionally, we sustain the
Examiner’s rejection under pre-AIA 35 U.S.C. § 112, second paragraph, of
claims 32–38, 40, and 42–48, which depend directly or indirectly therefrom.

Rejection under 35 U.S.C. § 101
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 17–35; Reply
Br. 4–20. In particular, Appellant argues that contrary to the Examiner’s
conclusion that the claims are directed to “rebalancing exposure to an
underlying index in a leveraged index product” (Final Act. 4), the claims are
instead directed to “a specific, novel methodology for improving tracking of
leveraged products, such as leveraged index fund products, with respect to a
beta multiplier (volatility multiplier) of an underlying benchmark.” Appeal
Br. 18; see also Appeal Br. 23. In addition, Appellant argues that
rebalancing exposure, as identified by the Examiner, is not similar to the
concepts of hedging or mitigating risk. Appeal Br. 19. Moreover, Appellant
asserts the claims provide a solution to a problem rooted in technology by
reciting features that are neither conventional nor routine practice in the
industry and, as such, recite significantly more than the alleged abstract idea.
Appeal Br. 23–35; Reply Br. 9–20.
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The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office has published revised guidance
for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically
with respect to applying the Alice framework. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office
Guidance”). If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look
at 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, 1257–58 (Fed.
Cir. 2016). Per Office Guidance, this first inquiry has two prongs of
analysis (i) does the claim recite a judicial exception (e.g., an abstract idea),
and (ii) if so, is the judicial exception integrated into a practical application.
84 Fed. Reg. at 54. Under the Office Guidance, if the judicial exception is
integrated into a practical application, see infra, the claim passes muster
under § 101. 84 Fed. Reg. at 54–55. If the claim is directed to a judicial
exception (i.e., recites a judicial exception and does not integrate the
exception into a practical application), the next step is to determine whether
any element, or combination of elements, amounts to significantly more than
the judicial exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea. More
specifically, Appellant’s claims are generally directed to determining an
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exposure correction corresponding to a level of investment in a leveraged
index product account, based on a theoretical position, and rebalancing the
level of investment in the leveraged index product account consistent with
the determined exposure correction. This is consistent with how Appellant
describes the claimed invention. See Spec. 6:19–20 (describing an aspect of
the invention as “rebalancing exposure to an underlying index in a leveraged
index product”). Determining an exposure correction corresponding to a
level of investment in a leveraged index product account, based on a
theoretical position, and rebalancing the level of investment in the leveraged
index product account consistent with the determined exposure correction is
a certain method of organizing human activity (e.g., a fundamental economic
practice)—i.e., an abstract idea. See 84 Fed. Reg. at 52; see also Alice, 573
U.S. at 219–20 (concluding that use of a third party to mediate settlement
risk is a “fundamental economic practice” and thus, an abstract idea); Bilski
v. Kappos, 561 U.S. 593, 611–12 (2010) (concluding hedging to be a
fundamental economic practice and, therefore, an abstract idea); Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017)
(holding that “processing an application for financing a purchase” falls
within certain methods of organizing human activities and is, therefore, an
abstract idea).
Contrary to Appellant’s assertions (see, e.g., Appeal Br. 18–24; Reply
Br. 4–8), determining an exposure correction corresponding to a level of
investment in a leveraged index product account, based on a theoretical
position, and rebalancing the level of investment in the leveraged index
product account consistent with the determined exposure correction is
analogous to mitigating risk due to market fluctuations. See Bilski, 561 U.S.
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at 599 (explaining the pending claims allow consumers “to minimize the
risks resulting from fluctuations in market demand for energy”). Similarly,
the “tracking of leveraged products” and “mitigat[ing] a path dependency
that impacts returns,” as Appellant asserts the claims are directed to (see
Appeal Br. 18, 23; Reply Br. 8, 17), are mechanisms to mitigate an
investment risk (e.g., to transfer money from a leveraged index product
account to a cash equivalent account); see also Spec. 16:10–19:11.
Claim 1 is reproduced below and includes the following claim
limitations that recite determining an exposure correction corresponding to a
level of investment in a leveraged index product account, based on a
theoretical position, and rebalancing the level of investment in the leveraged
index product account consistent with the determined exposure correction,
emphasized in italics:
1. A computer implemented method comprises:
periodically calculating by one or more computers, a
theoretical position in an underlying index that corresponds to
an index associated with a leveraged index product;
determining by the one or more computers, based on the
calculated theoretical position, an exposure correction that
corresponds to a level of investment in a leveraged index product
account to provide a leveraged exposure to the underlying index
relative to the exposure provided by the theoretical position;
sending by the one or more computers a message including
the determined exposure correction to a user system;
receiving from the user system a message that causes the
one or more computers to apply the exposure correction to
rebalance the level of investment in the leveraged index product
account;
causing by the one or more computers a cash transfer,
according to the received message from the user system; and
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causing by the one or more computers investment of
contents in the leveraged index product account in an investment
pool that invests the investment pool on a daily basis according
to a leveraged investment strategy.
More particularly, the concept of determining an exposure correction
corresponding to a level of investment in a leveraged index product account,
based on a theoretical position, and rebalancing the level of investment in
the leveraged index product account consistent with the determined exposure
correction comprises (i) determining a theoretical position for a leveraged
index product (i.e., the claimed step of calculating a theoretical position in
an underlying index corresponding to an index associated with a leveraged
index product); (ii) determining an exposure correction corresponding to a
level of investment in a leveraged index product account based on the
determined theoretical position (i.e., the claimed step of determining, based
on the calculated theoretical position, an exposure correction that
corresponds to a level of investment in a leveraged index product account to
provide the (desired) leveraged exposure); and (iii) rebalancing the level of
investment in the leveraged index product account consistent with the
determined exposure correction (i.e., the claimed step of applying the
exposure correction to rebalance the level of investment in the leveraged
index product account).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
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integrate the judicial exception into a recognized practical application. 84
Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017,
Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. In particular, the claims do not recite
(i) an improvement to the functionality of a computer or other technology or
technical field (see MPEP § 2106.05(a)); (ii) use a “particular machine” to
apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a
particular transformation of an article to a different thing or state (see MPEP
§ 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See 84 Fed. Reg. at 55.
More particularly, the additional limitations merely carry out the
application of the exposure correction by causing a cash transfer and
investing the contents in the leveraged index product account in an
investment pool. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42
(Fed. Cir. 2016); In re Brown, 645 F. App’x 1014, 1017 (determining that a
final step instructing one to apply the abstract idea does not impart patent
eligibility); see also Alice, 573 U.S. at 223 (“Stating an abstract idea ‘while
adding the words “apply it”’ is not enough for patent eligibility.”); Parker v.
Flook, 437 U.S. 584, 590 (1978) (explaining “[t]he notion that post-solution
activity, no matter how conventional or obvious in itself, can transform an
unpatentable principle into a patentable process exalts form over
substance”); MPEP § 2106.05(g).
Additionally, we disagree that the claims are rooted in computer
technology or recite an advancement over conventional computer
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technology. “[T]he fact that the required calculations could be performed
more efficiently via a computer does not materially alter the patent eligibility
of the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance
Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F. 3d 1359, 1363 (Fed. Cir. 2015)
(explaining that “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible”)
(citing Alice, 573 U.S. at 224 (“use of a computer to create electronic
records, track multiple transactions, and issue simultaneous instructions” is
not an inventive concept)); see also Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335–36 (Fed. Cir. 2016) (distinguishing between claims
wherein the focus of the claims is on an improvement in computer
capabilities and those that invoke a computer as a tool).
By contrast, in DDR Holdings, the Federal Circuit determined “the
claimed solution amount[ed] to an inventive concept for resolving [a]
particular Internet-centric problem,” i.e., a challenge unique to the Internet.
DDR Holdings, 773 F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR
Holdings, we held that claims ‘directed to systems and methods of
generating a composite web page that combines certain visual elements of a
“host” website with content of a third-party merchant’ contained the
requisite inventive concept”). The Federal Circuit explained that the patent-
eligible claims specified “how interactions with the Internet are manipulated
to yield a desired result . . . that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a hyperlink.” DDR
Holdings, 773 F.3d at 1258. The court reasoned that those claims recited a
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technological solution “necessarily rooted in computer technology” that
addressed a “problem specifically arising in the realm of computer
networks.” DDR Holdings, 773 F.3d at 1257. Here, unlike the claims at
issue in DDR Holdings, Appellant’s claims rely on a “computer network
[(i.e., one or more computers and a user system)] operating in its normal,
expected manner.” DDR Holdings, 773 F.3d at 1258–59.
Moreover, contrary to Appellant’s assertions (see, e.g., Appeal
Br. 19–31), limitations recited in the dependent claims also fail to transform
the abstract idea into a patent-eligible application.5 Rather, the additional
limitations merely refine the abstract idea itself or append extra-solution
activities to the abstract idea (e.g., refining the determined exposure
correction to provide the investment in the leveraged index product to be
substantially the same to the exposure determined by a theoretical position,
as in claim 3; using a model (i.e., equation) to calculate the theoretical
position, as in claim 56; using a tolerance as to when to apply an exposure
correction, as in claim 8). As discussed above, these limitations are
insufficient to transform judicially excepted subject matter into a patent-
eligible application.
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.

5 Appellant identifies the following claim groups (with the representative
claim identified in bold): (i) 1, 4, 10, 13, 14, 17, 22, and 26; (ii) 2, 15, 32,
35–37, 42, 45–47, and 54–56; (iii) 3, 16, and 25; (iv) 5; (v) 6, 8, 18, and 20;
and (vi) 11, 23, 31, 33, 34, 38, 40, 41, 43, 44, 48, 50, 52, 53, and 57. Appeal
Br. 23–31.
6 See also independent claim 31.
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Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
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, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 77–
79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. See 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply appends well-understood, routine, conventional activities at
a high level of generality. See 84 Fed. Reg. at 56.
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. Instead, the recited computers and computer system
comprising a processor and memory are described at a high level of
generality and perform standard computing functions (e.g., calculating a
value, sending a message, and receiving a message). See Spec. 7:8–8:9; see
also Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (generic computer components, such as an
“interface,” “network,” and “database,” fail to satisfy the inventive concept
requirement); see also Alice, 573 U.S. at 226 at 2360 (“Nearly every
computer will include a ‘communications controller’ and a ‘data storage
unit’ capable of performing the basic calculation, storage, and transmission
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functions required by the method claims.”); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive.”).
Further, to the extent Appellant is asserting a lack of rejection under
Sections 102 and/or 103 suggests the instant claims do not recite well
understood, routine, or conventional activities or, otherwise, recite an
inventive concept (see, e.g., Reply Br. 12), we are not persuaded. Subject-
matter eligibility under 35 U.S.C. § 101 is a requirement separate from other
patentability inquiries. See Mayo, 566 U.S. at 90 (recognizing that the § 101
inquiry and other patentability inquiries “might sometimes overlap,” but that
“shift[ing] the patent-eligibility inquiry entirely to these [other] sections
risks creating significantly greater legal uncertainty, while assuming that
those sections can do work that they are not equipped to do”); see also
Diehr, 450 U.S. at 188–89 (“[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter”); Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (“Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.”); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874
F.3d 1329, 1340 (Fed. Cir. 2017) (“[e]ligibility and novelty are separate
inquiries”).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 1–6, 8,
10, 11, 13–18, 20, 22–26, 31–38, 40–48, and 50–57 under 35 U.S.C. § 101.
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CONCLUSION
We affirm the Examiner’s decision rejecting claims 31–38 and 40–48
under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite.
We affirm the Examiner’s decision rejecting claims 1–6, 8, 10, 11,
13–18, 20, 22–26, 31–38, 40–48, and 50–57 under 35 U.S.C. § 101.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
31–38, 40–
48
112, second
paragraph
Indefiniteness 31–38,
40–48

1–6, 8, 10,
11, 13–18,
20, 22–26,
31–38, 40–
48, 50–57
101 Patent Eligibility 1–6, 8, 10,
11, 13–18,
20, 22–26,
31–38,
40–48,
50–57

Overall
Outcome
1–6, 8, 10,
11, 13–18,
20, 22–26,
31–38,
40–48,
50–57

Appeal 2018-007030
Application 12/940,147

18

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED