Reveel Inc.Download PDFPatent Trials and Appeals BoardApr 15, 202014699512 - (D) (P.T.A.B. Apr. 15, 2020) Copy Citation 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. 14/699,512 04/29/2015 Amr SHADY 389767-991101 8888 26379 7590 04/15/2020 DLA PIPER LLP (US ) 2000 UNIVERSITY AVENUE EAST PALO ALTO, CA 94303-2248 EXAMINER KONERU, SUJAY ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 04/15/2020 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): PatentDocketingUS-PaloAlto@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AMR SHADY and OMAR EBN EL KHATTAB MAHMOUD KAMAL AHMED ABDELFATTAH HOSNEY ____________ Appeal 2019-004428 Application 14/699,512 Technology Center 3600 ____________ Before JOHN A. JEFFERY, BETH Z. SHAW, and JOHN D. HAMANN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 8–21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Reveel, Inc. Appeal Br. 2. Appeal 2019-004428 Application 14/699,512 2 STATEMENT OF THE CASE Appellant’s invention uses known data to predict future incremental revenue for products that customers buy on a recurring revenue basis, such as services for home and mobile telephones, video streaming, and online music. See Spec. ¶¶ 3–4. Claim 8 is illustrative: 8. A method for generating expected revenue to be generated from new customers of a recurring revenue product during a time period, comprising: receiving, by a computing device comprising a processing unit executing a prediction engine and a visualization engine, an input dataset, the input dataset comprising data for a plurality of cohorts, each cohort comprising a plurality of subscribers of the recurring revenue product; determining, by the prediction engine, a value A according to the formula: where Sm is the number of subscribers still using the service at month m from the starting month, and S1 is the number of customers at month number 1, and where Sm and S1 are determined from the input dataset; determining, by the prediction engine, a value Ā according to the formula: determining, by the prediction engine, an expected revenue to be generated from new subscribers of the recurring Appeal 2019-004428 Application 14/699,512 3 revenue product according to the formula: expected revenue = Ā * Number of New Subscribers * Flat Price Charged Per Recurring Revenue Product. THE REJECTION The Examiner rejected claims 8–21 under 35 U.S.C. § 101 as directed to ineligible subject matter. Final Act. 3–5.2 FINDINGS, CONCLUSIONS, AND CONTENTIONS The Examiner determines that the claimed invention is directed to an abstract idea by reciting a mathematical relationship that uses a formula to determine expected revenue. See Final Act. 3–4; Ans. 3–4. The Examiner adds that the claims do not include elements that add significantly more than the abstract idea, but merely recite elements, including a computing device, processing unit, prediction engine, and visualization engine, whose generic computer functions are well-understood, routine, and conventional. See Final Act. 4; Ans. 4. Appellant argues that the claims are not directed to an abstract idea, nor are the claims similar to those at issue in the cases cited by the Examiner, namely FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016) and In re Maucorps, 609 F.2d 481 (CCPA 1979). Appeal Br. 7–12. Appellant adds that the even if the claims recite an abstract idea, they nonetheless recite an inventive concept and are, therefore, 2 Throughout this opinion, we refer to (1) the Final Rejection mailed May 11, 2018 (“Final Act.”); (2) the Appeal Brief filed September 18, 2018 (“Appeal Br.”); and (3) the Examiner’s Answer mailed October 16, 2018 (“Ans.”). Appeal 2019-004428 Application 14/699,512 4 eligible for that additional reason. Appeal Br. 12–13. According to Appellant, the claims contain an inventive concept because they recite mathematical algorithms that (1) are narrowly defined; (2) tied to a specific process; and (3) do not preempt an entire field. Appeal Br. 13. ISSUE Under § 101, has the Examiner erred in rejecting claims 1–21 as directed to ineligible subject matter? This issue turns on whether the claims are directed to an abstract idea and, if so, whether the recited elements— considered individually and as an ordered combination—transform the nature of the claims into a patent-eligible application of that abstract idea. PRINCIPLES OF LAW An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement Appeal 2019-004428 Application 14/699,512 5 risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 187 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 67 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). That said, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula Appeal 2019-004428 Application 14/699,512 6 to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. In January 2019, the United States Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101. See USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)). Appeal 2019-004428 Application 14/699,512 7 Only if a claim (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. ANALYSIS Claims 8–21: Alice/Mayo Step One Representative independent claim 8 recites: 8. A method for generating expected revenue to be generated from new customers of a recurring revenue product during a time period, comprising: receiving, by a computing device comprising a processing unit executing a prediction engine and a visualization engine, an input dataset, the input dataset comprising data for a plurality of cohorts, each cohort comprising a plurality of subscribers of the recurring revenue product; determining, by the prediction engine, a value A according to the formula: where Sm is the number of subscribers still using the service at month m from the starting month, and S1 is the Appeal 2019-004428 Application 14/699,512 8 number of customers at month number 1, and where Sm and S1 are determined from the input dataset; determining, by the prediction engine, a value Ā according to the formula: determining, by the prediction engine, an expected revenue to be generated from new subscribers of the recurring revenue product according to the formula: expected revenue = Ā * Number of New Subscribers * Flat Price Charged Per Recurring Revenue Product. As the Specification explains, the invention uses known data to predict future incremental revenue for products that customers buy on a recurring revenue basis, such as services for home and mobile telephones, video streaming, and online music. See Spec. ¶¶ 3–4. The invention also predicts the amount of “churn” that will occur resulting from customers terminating recurring revenue products. See Spec. ¶ 4. Turning to claim 8’s eligibility, we first note that the claim recites a method and, therefore, falls within the process category of § 101. But despite falling within this statutory category, we must still determine whether the claim is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. To this end, we must determine whether the claim (1) recites a judicial exception, and (2) fails to integrate the exception into a practical application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. Appeal 2019-004428 Application 14/699,512 9 The Examiner determines that claim 8 is directed to an abstract idea, including mathematical relationships that use formulas to calculate expected revenue. See Final Act. 3–4; Ans. 3–4. To determine whether a claim recites an abstract idea, we (1) identify the claim’s specific limitations that recite an abstract idea, and (2) determine whether the identified limitations fall within certain subject matter groupings, namely, (a) mathematical concepts3; (b) certain methods of organizing human activity4; or (c) mental processes.5 Here, apart from (1) the input data receiving step, where the dataset is received by a computing device comprising a processing unit executing a prediction engine and a visualization engine, and (2) the determinations being made by the prediction engine, all of claim 8’s recited limitations fit squarely within at least one of the above categories of the USPTO’s guidelines. When read as a whole, the recited limitations are directed to using formulas to calculate expected revenue based on subscriber information and financial data. 3 Mathematical concepts include mathematical relationships, mathematical formulas or equations, and mathematical calculations. See Guidance, 84 Fed. Reg. at 52. 4 Certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See Guidance, 84 Fed. Reg. at 52. 5 Mental processes are concepts performed in the human mind including an observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg. at 52. Appeal 2019-004428 Application 14/699,512 10 Notably, apart from using a prediction engine, the three determining steps that determine respective values according to associated mathematical formulas can be done entirely mentally or using pen and paper. In short, these determining steps fit squarely in the mental processes and mathematical concepts categories of the USPTO’s guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observation and evaluation); see also id. (listing exemplary mathematical processes including mathematical relationships, formulas, and equations); see also In re Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989) (“Words used in a claim operating on data to solve a problem can serve the same purpose as a formula.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (noting that 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); Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”); Benson, 409 U.S. 63 (holding ineligible claims involving a mathematical algorithm and directed to converting binary-coded-decimal (BCD) numerals into pure binary numerals for use with a computer). Accord CyberSource, Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in [Benson].”). Appeal 2019-004428 Application 14/699,512 11 Therefore, apart from the (1) the input data receiving step, where the dataset is received by a computing device comprising a processing unit executing a prediction engine and a visualization engine, and (2) the determinations being made by the prediction engine, all of claim 8’s recited limitations are within the mental processes and mathematical concepts categories of the USPTO’s guidelines and, thus, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52. Notably, the two elements enumerated above are the only recited elements beyond the abstract idea, but these additional elements, considered individually and in combination, do not integrate the abstract idea into a practical application when reading claim 8 as a whole. First, the input dataset receiving step is insignificant pre-solution activity that merely gathers data and, therefore, does not integrate the exception into a practical application. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d on other grounds, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity); see also CyberSource, 654 F.3d at 1371–72 (noting that even if some physical steps are required to obtain information from a database (e.g., entering a query via a keyboard, clicking a mouse), such data-gathering steps cannot alone confer patentability). Accord Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). Nor does the second enumerated additional element, namely the determinations being made by a prediction engine, integrate the abstract idea into a practical application when reading claim 8 as a whole. First, we are not persuaded that the claimed invention improves a computer or its components’ functionality or efficiency, or otherwise changes the way those Appeal 2019-004428 Application 14/699,512 12 devices function, at least in the sense contemplated by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that the claimed invention uses such a data structure to improve a computer’s functionality or efficiency, or otherwise change the way that device functions, there is no persuasive evidence on this record to substantiate such a contention. To the extent that Appellant contends that the claimed invention is rooted in technology because it is ostensibly directed to a technical solution (see Appeal Br. 7–12), we disagree. Even assuming, without deciding, that claimed invention can use formulas to calculate expected revenue based on subscriber information and financial data faster or more efficiently than doing so manually, any speed or efficiency increase comes from the capabilities of the generic computer components—not the recited process itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[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.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to accelerate the process of finding errant files and to reduce error, we have held that speed and accuracy increases stemming from the ordinary capabilities of a general-purpose computer do not materially alter the patent Appeal 2019-004428 Application 14/699,512 13 eligibility of the claimed subject matter.”). Like the claims in FairWarning, the focus of claim 8 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks omitted). Nor is this invention analogous to that which the court held eligible in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016). There, the claimed process used a combined order of specific rules that rendered information in a specific format that was applied to create a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315. Notably, the recited process automatically animated characters using particular information and techniques—an improvement over manual three- dimensional animation techniques that was not directed to an abstract idea. Id. at 1316. But unlike the claimed invention in McRO that improved how the physical display operated to produce better quality images, the claimed invention here merely uses formulas to calculate expected revenue based on subscriber information and financial data. This generic computer implementation is not only directed to mental processes and mathematical concepts, but also does not improve a display mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO). Nor is this a case involving eligible subject matter as in DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). There, instead of a computer network operating in its normal, expected manner by sending a website visitor to a third-party website apparently connected with Appeal 2019-004428 Application 14/699,512 14 a clicked advertisement, the claimed invention in DDR generated and directed the visitor to a hybrid page that presented (1) product information from the third party, and (2) visual “look and feel” elements from the host website. DDR, 773 F.3d at 1258–59. Given this particular Internet-based solution, the court held that the claimed invention did not merely use the Internet to perform a business practice known from the pre-Internet world, but rather was necessarily rooted in computer technology to overcome a problem specifically arising in computer networks. Id. at 1257. That is not the case here. As noted previously, Appellant’s claimed invention, in essence, uses formulas to calculate expected revenue based on subscriber information and financial data—albeit by using computer components to achieve that end. The claimed invention here is not necessarily rooted in computer technology in the sense contemplated by DDR where the claimed invention solved a challenge particular to the Internet. Although Appellant’s invention uses computing components, the claimed invention does not solve a challenge particular to those components that are used to implement this functionality. Rather, Appellant’s claimed invention is analogous to that which the court held ineligible in In re Maucorps, 609 F.2d 481 (CCPA 1979) as the Examiner correctly indicates. Final Act. 4; Ans. 4 (citing Maucorps). There, the court held ineligible a computing system for processing data to determine the optimum number of regular visits by a business representative to a client over a predetermined time period, where the system included various calculation means that applied mathematical formulas. See Maucorps, 609 F.2d at 482–86. Although the court applied a test for Appeal 2019-004428 Application 14/699,512 15 eligibility that is no longer viable in reaching its ineligibility conclusion,6 the court’s decision is nonetheless consistent with applicable legal precedent regarding patent eligibility, including the U.S. Supreme Court’s holdings in Benson and, more recently, Alice. See Benson, 409 U.S. at 63–67; see also Alice, 573 U.S. at 208–19. Therefore, Appellant’s attempt to distinguish Maucorps by arguing that the claimed invention does not preempt entire algorithms or equations (Appeal Br. 11–12) is unavailing where, as here, the claims cover a patent- ineligible concept, and preemption concerns “are fully addressed and made moot” by an analysis under the Alice framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). On this record, then, the claimed invention does not recite additional elements that (1) improve a computer itself; (2) improve another technology or technical field; (3) implement the abstract idea in conjunction with a particular machine or manufacture that is integral to the claim; (4) transform or reduce a particular article to a different state or thing; or (5) apply or use the abstract idea in some other meaningful way beyond generally linking the abstract idea’s use to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)– (c), (e)). In short, the claim’s additional elements do not integrate the abstract idea into a practical application when reading claim 8 as a whole. In conclusion, although the recited functions may be beneficial by using formulas to calculate expected revenue based on subscriber 6 The Freeman test applied in Maucorps has since been abrogated. See Bilski, 545 F.3d at 958–59. Appeal 2019-004428 Application 14/699,512 16 information and financial data, a claim for a useful or beneficial abstract idea is still an abstract idea. See Ariosa, 788 F.3d at 1379–80. We, therefore, agree with the Examiner that claim 8 is directed to an abstract idea. Claims 8–21: Alice/Mayo Step Two Turning to Alice/Mayo step two, claim 8’s additional recited elements, namely the (1) the input data receiving step, where the dataset is received by a computing device comprising a processing unit executing a prediction engine and a visualization engine, and (2) the determinations being made by the prediction engine—considered individually and as an ordered combination—do not provide an inventive concept that amounts to significantly more than the abstract idea when reading claim 8 as a whole. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the claimed invention merely uses generic computing components to implement the recited abstract idea. To the extent Appellant contends that the recited limitations, including those detailed above in connection with Alice step one, add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two (see Appeal Br. 12–13), these limitations are not additional elements beyond the abstract idea, but rather are directed to the abstract idea as noted previously. See BSG, 899 F.3d at 1290 (explaining that the Supreme Court in Alice “only assessed whether the claim limitations other than the invention’s use of the ineligible concept to which it was directed were well-understood, routine and conventional”) (emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that additional Appeal 2019-004428 Application 14/699,512 17 recited elements should be evaluated in Alice/Mayo step two to determine whether they (1) add specific limitations that are not well-understood, routine, and conventional in the field, or (2) simply append well-understood, routine, and conventional activities previously known to the industry (citing MPEP § 2106.05(d)). Rather, the claimed (1) input data receiving step, where the dataset is received by a computing device comprising a processing unit executing a prediction engine and a visualization engine, and (2) determinations being made by the prediction engine are the only additional recited elements whose generic computing functionality is well-understood, routine, and conventional. See Mortgage Grader, 811 F.3d at 1324–25 (noting that components such an “interface,” “network,” and “database” are generic computer components that do not satisfy the inventive concept requirement). Accord Spec. ¶¶ 18–24 (describing generic computer components used to implement the invention); Final Act. 4; Ans. 4 (determining that the recited computing device, processing unit, prediction engine, and visualization unit are additional elements that do not add significantly more than the abstract idea). We reach a similar conclusion regarding the recited insignificant extra-solution activity, namely receiving an input dataset. That this dataset is received by a computing device comprising a processing unit executing a prediction engine and a visualization engine as claimed does not mean that this function is performed in an unconventional way to add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Guidance, 84 Fed. Reg. at 56. Given this limitation’s (1) high level of generality, and (2) use of generic computing Appeal 2019-004428 Application 14/699,512 18 components whose functionality is well-understood, routine, and conventional for the reasons noted previously, the recited extra-solution activity does not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. To the extent Appellant contends otherwise (see Appeal Br. 12–13), we disagree. Appellant’s reliance on the District Court decision, California Institute of Technology v. Hughes Communications, 59 F.Supp.3d 974 (C.D. Cal. 2014) (Appeal Br. 12–13) is also unavailing in this regard. Not only is this decision not binding on this Board as the Examiner correctly indicates (Ans. 4), it is inapposite in any event, for the recited determining steps at issue here fall squarely within the mental processes and mathematical concepts categories of the USPTO’s Guidelines, nor do the recited additional elements integrate the abstract idea into a practical application as noted previously. That a prediction engine—a generic computing component—is used to make those determinations does not add significantly more to the abstract idea to provide an inventive concept to render the claimed invention patent-eligible. In conclusion, the additional recited elements—considered individually and as an ordered combination—do not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two when reading the claims as a whole. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. Therefore, we are not persuaded that the Examiner erred in rejecting claims 8–21 as ineligible under § 101. Appeal 2019-004428 Application 14/699,512 19 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed 8–21 101 Eligibility 8–21 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)(1). AFFIRMED Copy with citationCopy as parenthetical citation