Silvio Tavares et al.

Patent Trials and Appeals Board

Nov 4, 2019

13253756 - (D) (P.T.A.B. Nov. 4, 2019)

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.
13/253,756 10/05/2011 Silvio Tavares 87188-818874 (097710US) 8957
20350 7590 11/04/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
DELICH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SILVIO TAVARES, SUSAN FAHY, and DENNIS CARLSON
Appeal 2018-006540
Application 13/253,756
Technology Center 3600
BEFORE JOHNNY A. KUMAR, JOHN P. PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16 and 24–31. See Final Act. 1. 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 First Data
Corporation, of Greenwood Village, Colorado. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to an analytics systems and methods for
discount instruments. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computerized method for calculating the effectiveness of a
promotion, the method comprising:
receiving and aggregating at an aggregation subsystem of
a host computer system transaction data from a plurality of point
of sale terminals, wherein:
the host computer system comprises a processing
subsystem, a data storage subsystem configured to store the
aggregated transaction data, and an interface subsystem
comprising a web server;
the transaction data has been received at the plurality of
point of sale terminals at a time of a transaction and includes both
purchases in which a discount program identifier that is
associated with a discount program is received at the plurality of
point of sale terminals and purchases in which the plurality of
point of sale terminals do not receive the discount program
identifier; and
the discount program identifier comprises one or more of
a coupon code and a loyalty identifier;
generating and storing datasets from the aggregated
transaction data in the data storage subsystem as an associative
database to facilitate mining, filtering, or sorting the aggregated
transaction data;
filtering a portion of the aggregated transaction data into a
discount program dataset comprising transaction data that
includes discount program identifiers;
calculating a reliable portion of the discount program
dataset as a function of the aggregated transaction data in the
discount program dataset, wherein the reliable portion comprises
only data having a statistically insignificant variability from a
baseline;
calculating by the processing subsystem a characteristic of
the purchases, both for the reliable portion of the discount
program dataset and transactions that do not include discount
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program identifiers, wherein the characteristic is indicative of the
effectiveness of the discount program, wherein the effectiveness
of the discount program is related to whether an increase in sales
growth is attributable to the discount program based on
redemptions of the discount program identifier;
generating a graphical report showing a comparison of the
calculation of the characteristic of the purchases; and
transmitting, using the web server, the graphical report
over a wireless communication channel to a user device, thereby
causing the graphical report to display on the user device.
REJECTION2
Claims 1–16 and 24–31 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-patentable subject matter. Final Act.
9–13.
ANALYSIS
Rejection of Claims 1–16 and 24–31 Under 35 U.S.C. § 101
Appellant argues the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter is in error. Appeal Br. 6–
16.
To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
37 C.F.R. § 41.37(c)(1)(iv). Appellant argues claims 1–16 and 24–31 as a
group. Appeal Br. 16. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1–16 and 24–31
based on representative claim 1.

2 In the Answer, the Examiner withdrew the rejection of claims 1, 2, and 24
under 35 U.S.C. § 112, second paragraph. Ans. 3; Final Act. 7–9.
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Legal Standard
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
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 recently 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 (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 is patent eligible 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
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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. 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 (citation omitted).
To summarize, under the current Office 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 for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
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, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Office Guidance.
Step 1
Claim 1, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101 (process). Therefore, the issue
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before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to “the abstract idea
of calculating the effectiveness of a promotion.” Final Act. 9. The Examiner
identified the “receiving and aggregating,” “generating and storing,”
“filtering,” “calculating,” “generating a graphical report,” and “transmitting”
steps as part of the recited abstract idea. Id. at 9–10.
We review the Examiner’s determinations in light of the Office
Guidance. One of the subject matter groupings identified as an abstract idea
in the Office Guidance is “[m]ental processes—concepts performed in the
human mind (including an observation, evaluation, judgment, opinion).” See
Office Guidance, 84 Fed. Reg. at 52, 53. The Office Guidance explains that
“mental processes” include acts that people can perform in their minds or
using pen and paper, even if the claim recites that a generic computer
component performs the acts. See Office Guidance, 84 Fed. Reg. at 52 n.14
(“If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”)
Consistent with Appellant’s description of the claims (Abstract), we
find that the following limitations describe acts that people can perform in
their minds or using pen and paper, even though the limitations recite that a
generic computer component performs the acts. The following limitations
fall into the mental processes category of abstract ideas. See 84 Fed. Reg. at
52, 53.
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filtering a portion of the aggregated transaction data into
a discount program dataset comprising transaction data that
includes discount program identifiers;
calculating a reliable portion of the discount program
dataset as a function of the aggregated transaction data in the
discount program dataset, wherein the reliable portion
comprises only data having a statistically insignificant
variability from a baseline;
calculating [by the processing subsystem] a characteristic
of the purchases, both for the reliable portion of the discount
program dataset and transactions that do not include discount
program identifiers, wherein the characteristic is indicative of
the effectiveness of the discount program, wherein the
effectiveness of the discount program is related to whether an
increase in sales growth is attributable to the discount program
based on redemptions of the discount program identifier;

Claim 1.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Step 2A(ii) to determine if the idea is integrated into a
practical application, in which case the claim as a whole would not be
“directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determine that claim 1 recites a patent-ineligible concept,
we next determine whether the recited judicial exception is integrated into a
practical application of that exception by (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
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We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Office Guidance at 55 n.24. In claim 1, the additional elements include:
receiving and aggregating at an aggregation subsystem of
a host computer system transaction data from a plurality of point
of sale terminals, wherein:
the host computer system comprises a processing
subsystem, a data storage subsystem configured to store the
aggregated transaction data, and an interface subsystem
comprising a web server;
the transaction data has been received at the plurality of
point of sale terminals at a time of a transaction and includes both
purchases in which a discount program identifier that is
associated with a discount program is received at the plurality of
point of sale terminals and purchases in which the plurality of
point of sale terminals do not receive the discount program
identifier; and
the discount program identifier comprises one or more of
a coupon code and a loyalty identifier;
generating and storing datasets from the aggregated
transaction data in the data storage subsystem as an associative
database to facilitate mining, filtering, or sorting the aggregated
transaction data;
. . .
generating a graphical report showing a comparison of the
calculation of the characteristic of the purchases; and
transmitting, using the web server, the graphical report
over a wireless communication channel to a user device, thereby
causing the graphical report to display on the user device.
The Supreme Court guides that the “prohibition against patenting
abstract ideas ‘cannot be circumvented’ [by] adding ‘insignificant post-
solution activity.”’ Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at
191–92). Several steps of claim 1 merely perform insignificant extra-
solution or post-solution activity, such as storing, transmitting, receiving,
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and communicating. See MPEP § 2106.05(g) “Insignificant Extra-Solution
Activity.” For example, the “receiving and aggregating,” “generating,” and
“transmitting” steps do not improve the function of a computer or another
technology or technical field. Instead, receiving and aggregating data,
generating a formatted graphical report, transmitting the formatted graphical
report, and causing the report to display on a user device recite steps
involving insignificant extra-solution activity that merely make use of
computer technology. We agree with the Examiner that “[n]either the claims
nor the specification illustrate or realize any specific technology required for
the delivery of or improving conventional graphical data delivery.” Ans. 3.
Moreover, as recited in claim 1, the composition of the recited “host
computer system” (“a processing subsystem, a data storage subsystem
configured to store the aggregated transaction data, and an interface
subsystem comprising a web server”) and the descriptions of the
“transaction data” and the “discount program identifier” do not improve the
functioning of a computer or another technology or technical field. We agree
with the Examiner that claim 1 merely uses a generic computer as a tool to
apply the abstract concept and is “focused on specific data gathering,
analysis and display functions.” Ans. 5. We also agree with the Examiner
that there is no improvement defined by the logical structures, and that the
Specification “does not describe any achieved benefit over conventional
computerized systems.” Id.
Appellant argues that “the crux of the claim, as evidenced by the final
result of the claims, is that graphical reports are delivered to a user device
using computer technology,” and “[a]ny alleged involvement of an abstract
idea is merely incidental and has no bearing on the eligibility of the claims.”
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See Appeal Br. 8. Appellant also argues that the Examiner erred because
“the claims recite limitations that necessarily require the use of computer
technology,” and “the limitations require the operation of specific hardware
to perform the recited functions.” Appeal Br. 7–8; see also Reply Br. 2.
We are not persuaded that the Examiner erred. Improving the
functioning of a computer can reflect integration of an idea into a “practical
application.” Office Guidance Section III; see also DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
Appellant, however, does not explain, and we do not discern, any
improvement in technology from the claimed invention. The claims in DDR,
for example, were “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,”
see, e.g., DDR, 773 F.3d at 1257, but Appellant’s claim 1 recites data
processing and report generation that merely use generic computing
elements. See, e.g., Spec. ¶¶ 61, 82–87; Ans. 3–7.
As the Examiner finds, the method of claim 1 may be implemented on
generic computer components. Ans. 3–4. The Specification makes clear that
the recited hardware elements can include general purpose processors and do
not require any “non-conventional arrangement of elements.” Id.; Spec. ¶¶
82–87. None of the claims provides, and nowhere in the Specification can
we find, any description or explanation as to how these data manipulation
steps are intended to provide, for example a “solution . . . necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks,” as explained by the Federal Circuit in
DDR Holdings. DDR, 773 F.3d at 1257. That the claim may require the
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computer to be specially programmed does not claim a solution “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” Id.; see EON Corp. IP Holdings
LLC v. AT & T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A
general purpose computer is flexible—it can do anything it is programmed
to do.”); see Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1056 (Fed. Cir. 2017) (stating “merely ‘configur[ing]’ generic computers in
order to ‘supplant and enhance’ an otherwise abstract manual process is
precisely the sort of invention that the Alice Court deemed ineligible”)
(citing Alice, 573 U.S. at 220–25 (alteration in original)); id. at 1055
(discussing using generic computers to automate a manual process).
We agree with the Examiner that “[t]he use of generic components to
transmit information through an unspecified network or webserver for
display on an unspecified interface does not impose any meaningful limit on
the computer implementation of the abstract idea.” Final Act. 12. Appellant
does not direct us to any evidence that claim 1 recites any unconventional
rules, transforms or reduces an element to a different state or thing, or
otherwise integrates the idea into a practical application. Reciting a result-
oriented solution that lacks any details as to how the computer performs the
steps is the equivalent of the words “apply it.” Intellectual Ventures I LLC
v. Capital One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2017) (citing
Elec. Power Grp., 830 F.3d at 1356 (cautioning against claims “so result
focused, so functional, as to effectively cover any solution to an identified
problem”)).
Moreover, Appellant’s claim 1 is unlike the technology-based
integrations cited by Appellant. See Appeal Br. 8–15. For example, in
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the patent-
eligible claim was directed to a self-referential table to improve computer
databases. Enfish, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to “a specific improvement to the
way computers operate, embodied in the self-referential table” (id. at 1336),
and explained that the claims are “not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database” that functions differently than conventional
databases. Id. at 1337.
Despite Appellant’s argument to the contrary, the instant claims are
not analogous to the claims addressed in Enfish, 822 F.3d at 1335–36. The
Enfish court distinguished between claims that focus on a specific
improvement in computer capabilities, on the one hand, and an abstract idea
that merely invokes computers as a tool, on the other. Id. at 1336. This case
is the latter.
Likewise, in McRO, the patent-eligible claim focused on a specific
asserted improvement in computer animation. McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). The claims in McRO
recited a “specific . . . improvement in computer animation” using
“unconventional rules that relate[d] sub-sequences of phonemes, timings,
and morph weight sets.” McRO, 837 F.3d at 1302–03, 1314–15. In McRO,
“the incorporation of the claimed rules, not the use of the computer,”
improved an existing technological process. Id. at 1314. Appellant does not
direct us to any evidence that the claimed steps correspond to
unconventional rules.
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Rather, Appellant alleges claim 1 is patent-eligible because its
practice does not preempt practice by others. Appeal Br. 9. Although
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility, “[w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract”).
Appellant’s arguments based on BASCOM are similarly unavailing.
827 F.3d at 1349. In BASCOM, the claims were directed to the inventive
concept of providing customizable Internet-content filtering which was
found to transform the abstract idea of filtering content into a patent-eligible
invention. Although the underlying idea of filtering Internet content was
deemed abstract, the claims carved out a specific location for the filtering
system, namely a remote Internet service provider (ISP) server, and required
the filtering system to give users the ability to customize filtering for their
individual network accounts. We find no analogy between Appellant’s
claimed method for calculating the effectiveness of a promotion and the
claims in BASCOM.
Appellant’s arguments based on Ex Parte Ravenel, Appeal 2015-
003604 (PTAB 2016), are also unavailing. See Appeal Br. 10–12. Ravenel is
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a non-precedential decision of the Board; therefore, it is not binding on this
panel.
Regarding Appellant’s arguments based on Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (Appeal Br. 14–15),
the claim in Amdocs provided a technological solution to a technological
problem—i.e., a distributed architecture that allowed the system to
“efficiently and accurately collect network usage information in a manner
designed for efficiency to minimize impact on network and system
resources.” Amdocs, 841 F.3d at 1303. Claim 1, though, does not recite a
technological improvement to how the data is processed or the formatted
graphical report is created. Rather, claim 1 uses the computer as a tool, in its
ordinary capacity, to carry out the abstract idea. In this way, claim 1 is
unlike the claim in Amdocs. Accord Ans. 7 (discussing Amdocs).
Thus, claim 1 recites an abstract idea as identified in Step 2A(i),
supra, and none of the limitations integrates the judicial exception into a
practical application. Claim 1 as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea. Thus, on this record,
Appellant has not shown that the abstract idea is integrated into a practical
application under the guidance of Manual of Patent Examining Procedure
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e) (“Other
Meaningful Limitations”).
Therefore, we conclude the abstract idea is not integrated into a
practical application and, thus, claim 1 is directed to the judicial exception.
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Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner finds that the additional elements are
recited at a high level of generality and are recited as
performing generic computer functions including gathering
data, receiving inputs, storing data, transmitting data and
displaying outputs which are routinely used in computer
applications. Generic computer components recited as
performing generic computer functions that are well-
understood, routine and conventional activities and generically
reciting instructions to implement an abstract idea on a
computer amount to no more than implementing the abstract
idea with a computerized system.
Final Act. 12.
We agree. As discussed above, we are not persuaded by Appellant’s
argument that the limitations of claim 1, “when taken as an ordered
combination, provide unconventional steps that confine the abstract idea to a
particular useful application.” See Reply Br. 5. Appellant’s arguments are
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conclusory and unsupported by persuasive evidence and technical reasoning
identifying or explaining any alleged unconventional use of computer
software or hardware. Moreover, we see nothing in claim 1 or the
Specification suggesting that the recited additional elements are anything but
generic computer components that perform well-understand, routine, and
conventional activities. See, e.g., Spec. ¶¶ 61, 82–87.
Appellant further argues that “if there has been no showing of a
reference that discloses a particular recitation, then it follows that the
rejection has shown nothing to suggest that a particular element is well-
understood, routine or conventional.” Appeal Br. 3.
Appellant, however, does not direct our attention to anything in the
Specification that indicates the computer components perform anything
other than well-understood, routine, and conventional functions, such as
receiving and aggregating, looking up data in a database, storing data in a
database, generating a report, and transmitting data. See 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”); In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data,
extracts classification information from the received data, and stores the
digital images insufficient to add an inventive concept); Alice, 573 U.S. at
225–26 (receiving, storing, sending information over networks insufficient
to add an inventive concept). 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. Diehr, 450 U.S. at 188–89; Two-Way
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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”).
As evidence of the conventional nature of the reporting and display
techniques, we refer to paragraph 82 of the Specification, which states that
“other reporting and display techniques may be used to enhance the look,
feel, usefulness, etc. of the report output 450.” Spec. ¶ 82. Specification
paragraph 83 describes the conventional nature of the various computer
subsystems. Spec. ¶ 83. Similarly, paragraphs 84 through 86 describe the
well-understood, routine, and conventional nature of the computational
system, storage devices, and network communication. Spec. ¶¶ 84–86.
Paragraph 61 describes that the aggregated data may be arranged in any
useful way, for example, as an associative database, as a flat file, as sets of
datasets, in encrypted or unencrypted form, in compressed or uncompressed
form, etc. Spec. ¶ 61. These generic computer components described in the
Specification are well-understood, routine, and conventional, at least
because the Specification describes the computer components in a manner
that indicates that the additional elements are sufficiently well-known that
the Specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a). See Berkheimer Memo3 § III.A.1;
Spec. ¶¶ 61, 82–87.

3 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
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Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly, but reasonably, construed as reciting
conventional computer components and techniques, particularly in light of
Appellant’s Specification, as cited above. We conclude claim 1 does not
have an inventive concept because the claim, in essence, merely recites
various computer-based elements along with no more than mere instructions
to implement the identified abstract idea using the computer-based elements.
Because we determine that claim 1 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of grouped claims 2–16 and 24–
31, not argued separately with particularity.
DECISION
We affirm the decision of the Examiner rejecting claims 1–16 and 24–
31.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–16, 24–31

101 Exception

1–16, 24–31

Overall Outcome: 1–16, 24–31

the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
Appeal 2018-006540
Application 13/253,756

19
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.
§ 1.136(a)(1)(iv).
AFFIRMED