SparxTeq Inc.

Patent Trials and Appeals Board

Nov 10, 2020

16127190 - (D) (P.T.A.B. Nov. 10, 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.
16/127,190 09/10/2018 Dan Reed Olsen Sparx0302 2373
102983 7590 11/10/2020
Phillips Winchester
4001 South 700 East, Suite 500
Salt Lake City, UT 84107
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
11/10/2020 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):
ahc@phillipswinchester.com
docket@prwlawfirm.com
jlc@phillipswinchester.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAN REED OLSEN

Appeal 2020-001187
Application 16/127,190
Technology Center 3700
____________

Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 14–23, which are all of the
pending claims. 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. The Appellant identifies the real party in interest as
SparxTeq, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “relates to systems and methods for
graphical user interfaces, selective display formatting, selective visual
display systems, and other visualization systems. Particular applications of
the systems and methods described herein can be used for shape-based
assessment and feedback.” Spec. ¶ 2. Specifically, the invention “includes
systems and methods relating to the administration, evaluation, and review
of assessments, such as quizzes and tests.” Id. ¶ 37.
Claims 14 and 23 are the independent claims on appeal. Claim 14,
reproduced below, with bracketed notations, is illustrative of the claimed
subject matter.
14. An electronic-based assessment system for grading
digital assessments, comprising:
an electronic display; and
a computing device in communication with the electronic
display to:
[(a)] store a challenge shape problem in a memory
of the computing device;
[(b)] display the challenge shape problem to an
assessor via the electronic display;
[(c)] display each of a plurality of shape answer
items on the electronic display at the same time as overlays
on the displayed challenge shape problem, wherein each
of the plurality of shape answer items is an answer formed
by an assessee to the challenge shape problem;
[(d)] receive a shape predicate created by the
assessor;
[(e)] evaluate each of the plurality of shape answer
items relative to the received shape predicate;
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[(f)] assign each of the plurality of shape answer
items to one of:
a subset of selected shape answer items, and
a subset of unselected shape answer items;
and
[(g)] increase a transparency level of each of the
shape answer items in the subset of unselected shape
answer items to allow for visual distinction from the shape
answer items in the subset of selected shape answer items.
Appeal Br. 12 (Claim App.).

THE REJECTION
Claims 14–23 stand rejected under 35 U.S.C. § 101 as being directed
to a judicial exception without significantly more.

OPINION
The Appellant presents arguments for the independent claims together
and relies on those arguments for the dependent claims. See Appeal
Br. 7, 10. We thus group all the claims together and select claim 14 as
representative of the group, with the rejection of claims 15–23 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
Section 101
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. 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 Court’s two-part 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
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 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
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Diehr, 450 U.S. at 187; 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.”). Having said that, the 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. (citation omitted)
(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 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.
USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), incorporated into
the MANUAL OF PATENT EXAMINING PROCEDURE §§ 2104–06, Rev. 10.2019
(“MPEP”) in June 2020. “The guidance sets out agency policy with respect
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to the USPTO’s interpretation of the subject matter eligibility requirements
of 35 U.S.C. [§] 101 in view of decisions by the Supreme Court and the
Federal Circuit.” Guidance, 84 Fed. Reg. at 51. Although “[a]ll USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance,” the Guidance “does not create any right or benefit,
substantive or procedural, enforceable by any party against the USPTO.” Id.
The Guidance, by its terms, applies to all applications, and to all patents
resulting from applications, filed before, on, or after January 7, 2019. Id.
at 50.
Under USPTO Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including laws of nature, natural phenomena,
and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b))
(“Step 2A, Prong One”); and (2) additional elements that integrate the
judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2),
2106.04(d)) (“Step 2A, Prong Two”).2
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or

2 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at
54–55, MPEP § 2106.04(d).
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natural phenomenon or abstract idea) itself.’” Id. at § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, (Fed. Cir. 2016)).
Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.

Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO Guidance, the Examiner determines that independent
claim 14 “essentially claim[s] a method of grading tests” (Ans. 5) and is
“directed to an abstract idea in the form of mental processes, in terms of a
process that can be performed in the human mind and/or by a human using
pen and paper” (Final Act. 2) as well as “a method of organizing human
activity” (Ans. 5). Under Prong Two of USPTO Guidance, the Examiner
also determines that “the claims do not include additional elements that
either alone or in combination are sufficient to claim a practical application.”
Final Act. 4.
The Appellant disagrees and contends that, under Prong One, claim 14
“explicitly recites ‘increase a transparency level of each of the shape answer
items in the subset of unselected shape answer items to allow for visual
distinction from the shape answer items in the subset of selected shape
answer items.’” Appeal Br. 7. The Appellant “asserts that while a small
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number of overlaid papers may indeed be held up to a light to show
underlying geometric shape answers, the transparency of the paper-based
shape answer items cannot be manually increased,” and thus “cannot be
performed in the human mind and/or done by a human using pen and paper.”
Id. Under Prong Two, the Appellant contends “[t]he ability to select dozens,
or even hundreds, of answer items (to the exclusion of other answer items)
and grade them concurrently is a significant technological improvement and
‘practical application’ of the recited electronic components.” Id. at 9.
Under the first step of the Mayo/Alice framework and Step 2A
USPTO Guidance, we first determine to what claim 14 is directed, i.e.,
whether claim 14 recites an abstract idea and if so, whether claim 14 is
directed to that abstract idea. The Federal Circuit has explained that “the
‘directed to’ inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether ‘their character as a whole is directed
to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claim is on a specific improvement in relevant technology or on
a process that itself qualifies as an “abstract idea” for which computers are
invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification, including the claim language, that claim 14 focuses on an
abstract idea, and not on any improvement to technology and/or a technical
field.
Reciting a Judicial Exception
The Specification provides for “SYSTEMS AND METHODS FOR
A SELECTIVE VISUAL DISPLAY SYSTEM TO FACILITATE
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GEOMETRIC SHAPE-BASED ASSESSMENTS.” Spec., Title. In the
“TECHNICAL FIELD” section, the Specification states the invention relates
generally to “systems and methods for graphical user interfaces, selective
display formatting, selective visual display systems, and other visualization
systems,” and particularly to applying the described systems and method
“for shape-based assessment and feedback.” Id. ¶ 2.
In the “DETAILED DESCRIPTION” section, the Specification
discusses problems associated with existing methods of grading assessments
and providing feedback, especially in an online learning environment. See
Spec. ¶¶ 33–36. These problems include that, for classes with “thousands or
even tens of thousands of students, a teacher cannot reasonably hand grade
all of the assessments and/or provide meaningful feedback” (id. ¶ 34), and
for multiple-choice tests, “human knowledge is more complex than can be
reasonably represented by a multiple-choice test” such that “[t]rying to
assess more sophisticated concepts can be difficult or impossible to
accomplish with traditional multiple choice assessments” (id. ¶ 36). Thus,
“[t]here is a continuing need for more sophisticated ways to pose assessment
problems to students and associated approaches for automatically or semi-
automatically grading their answers.” Id. The invention ostensibly aims to
address this need by systems and methods for “assessments that utilize
geometric shapes a basic form for assessee answers to a wide variety of
challenge questions,” whereby the shape answers “provided by assessees can
be automatically or semi-automatically assessed by an assessor,” and
“meaningful feedback can be automatically or semi-automatically provided
by an assessor to the assessee with respect to one or more geometric shape
answers.” Id. ¶ 37. “The assessment system may include a grading
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subsystem that allows assessors to express grading criteria” (id. ¶ 39) and
“automatically apply the grading criteria provided by the assessor to
multiple assessee shape answers without any or with limited assessor input”
(id. ¶ 40), and may also include a feedback subsystem that “may facilitate
the association of feedback objects with geometric shape answer items
formed (created or modified) by assessees” (id.).
Consistent with this disclosure, claim 14 recites “[a]n electronic-based
assessment system for grading digital assessments, comprising” the
components of “an electronic display; and a computing device in
communication with the electronic display.” Appeal Br. 12 (Claims App.)
We consider claim 14 as a whole3 giving it the broadest reasonable
interpretation4 as one of ordinary skill in the art would have interpreted it in
light of the Specification5 at the time of filing. The computing device of
claim 14 performs the functions of: (a) storing data of “a challenge shape
problem”; (b) and (c) displaying data of the problem and “each of the
plurality of shape answer items” that are formed by an assessee;
(d) receiving data of “a shape predicate created by the assessor”;

3 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.” Diehr,
450 U.S. at 188.
4 Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation . . . .”) (emphasis added).
5 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual
limitations, it is important to read the claims ‘in light of the specification.’”
Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364,
1378 (Fed. Cir. 2017) (J. Linn, dissenting in part and concurring in part)
(citing Enfish, 822 F.3d at 1335, among others).
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(e) evaluating data of each of the answer items relative to the received shape
predicate; (f) assigning data of each of the answer items to subsets of
selected and unselected answer items; and (g) “increas[ing] a transparency
level” of each of the answer items in the unselected subset “to allow for
visual distinction” from the items in the selected subset. Appeal Br. 12
(Claims App.). The computing device is a generic, conventional computing
device that includes a processor, memory, and display. See Spec. ¶¶ 59–69
(describing a system with “already available” components).
Storing data (limitation (a)) is a mental process. See Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition,
and storage is undisputedly well-known. Indeed, humans have always
performed these functions.”). Displaying data and receiving data
(limitations (b), (c), and (d)) are extra-solution activities. See id.; Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016);
In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom
Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as
insignificant extra-solution activity). Assigning data into subsets (limitation
(f)) is a way of organizing content, which is a mental process. See Versata
Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1333–34 (Fed. Cir. 2015)
(using hierarchies “is a building block, a basic conceptual framework for
organizing information”).
The limitations of evaluating data and increasing a transparency level
(limitations (e) and (g)) are recited functionally without details on how,
technologically or by what algorithm, they are performed. The claim
provides that the evaluating is relative to received data, and the Specification
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discusses that a cluster of matching shapes can be batch graded by
associating objects with the cluster selected for rules. See Spec. ¶ 166. As
such the evaluating can be some form of analysis comprising matching and
comparing, which is a mental process. See Electric Power, 830 F.3d at 1354
(Fed. Cir. 2016) (citing cases) (“we have treated analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes”). Similarly, the claim
provides that increasing a transparency level is for the purpose of visual
distinction, and the Specification discusses distinguishing shapes “by
drawing them in different styles, such as levels of transparency, color, fill,
and/or line style.” Spec. ¶ 172; see also Ans. 6, Reply Br. 3. As such,
increasing the transparency can be simply displaying the information in a
particular manner as a result of the analysis of data (i.e., which subset).
Information, however it is displayed, is abstract. Trading Techs. Int’l., Inc.
v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019); Electric Power, 830 F.3d
at 1354 (“merely presenting the results of abstract processes of collecting
and analyzing information, without more (such as identifying a particular
tool for presentation) is abstract as an ancillary part of such collection and
analysis.”).
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 14 recite a way of grading digital
assessments by storing, receiving, analyzing, organizing, and displaying
data.6 This is an abstract idea comprising “[m]ental processes—concepts

6 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
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performed in the human mind (including an observation, evaluation,
judgment, opinion)” and a “[c]ertain method[] of organizing human activity
. . . managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions).” Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II)(C).
As such, we disagree with the Appellant’s assertion that the claim does “not
fall within one or more of the subject matter groupings of abstract ideas
specified in Alice.” Appeal Br. 7. And, as discussed more fully below with
respect to Prong Two, simply reciting and requiring an electronic display
(see id.; see also Reply Br. 3) does not change the result that the claim
recites an abstract idea. At best, the specific physical elements “limit[] the
invention to a technological environment for which to apply the underlying
abstract concept.” Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1340 (Fed. Cir. 2017) (“Capital One Fin.”).
Our reviewing court has held similar concepts to be abstract. For
example, the Federal Circuit has held abstract the concepts of “providing
information to traders in a way that helps them process information more
quickly” in Trading Techs., 921 F.3d at 1384, collecting, analyzing, and
displaying the results in Electric Power, 830 F.3d at 1354, “organizing,
displaying, and manipulating data of particular documents” in Capital One
Fin. 850 F.3d at 1340–41, collecting, organizing, grouping, and storing data
in In re Jobin, 811 F. App’x 633, 637 (Fed. Cir. 2020).

(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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Having concluded that claim 14 recites a judicial exception under the
Guidance, Step 2A, Prong One, we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application.
Integration into a Practical Application
We look to whether the claim “appl[ies], rel[ies] on, or use[s] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception,” i.e., “integrates a judicial exception
into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP
§ 2106.04(d). Here, the only additional elements recited in claim 14, i.e.,
elements beyond the abstract idea, are the “electronic display,” “computing
device,” and “memory” — elements that, as the Examiner observes (see
Final Act. 3), are described in the Specification as generic computer and off-
the-shelf components. See, e.g., Spec. ¶¶ 59–69, 173; Fig. 16 (“A computer
system may be embodied as a general-purpose or special-purpose computer
(or other electronic devices)”; “A computer system may include a
workstation, laptop computer, disconnectable mobile computer, server,
mainframe, cluster, so-called ‘network computer’ or ‘thin client,’ tablet,
smart phone, personal digital assistant or other handheld computing device,
‘smart’ consumer electronics device or appliance, medical device, or a
combination thereof”; “The processor may include a general-purpose device,
such as an Intel®, AMD®, or other ‘off-the-shelf,’ ‘microprocessor’”; “The
output device(s) may include a monitor or other display, printer, speech or
text synthesizer, switch, signal line, or other hardware with accompanying
firmware and/or software”; “Suitable software to assist in implementing the
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invention is readily provided by those of skill in the pertinent art(s) using the
teachings presented here and programming languages and tools”; “Much of
the infrastructure that can be used according to the present invention is
already available, such as general purpose computers, computer
programming tools and techniques, [and] computer networks and
networking technologies.”).
As is clear from the Specification, there is no indication that the
operations recited in claim 14 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
asserted inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”). We also find no indication in the
Specification that the claimed invention as recited in claim 14 effects a
transformation or reduction of a particular article to a different state or thing.
We are not persuaded of Examiner error by the Appellant’s argument
that “[t]he ability to select dozens, or even hundreds, of answer items (to the
exclusion of other answer items) and grade them concurrently is a significant
technological improvement and ‘practical application’ of the recited
electronic components.” Appeal Br. 9; see also Reply Br. 5 (arguing the
claims improve the way “to grade tests in a unique way in which a grader
can visualize correct and incorrect answers and grade groups of answers”).
First, the argument is not commensurate with the scope of the claim as there
is no requirement of a specific number of answer items. Second, that the
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computer is used to do a manual process (selecting answers and grading
them concurrently) more efficiently and/or faster is not a technological
improvement. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Can., 687 F.3d 1266, 1278–79 (Fed. Cir. 2012) (“the fact that the required
calculations could be performed more efficiently . . . does not materially
alter the patent eligibility of the claimed subject matter . . . the computer
simply performs more efficiently what would otherwise be accomplished
manually.”); see also Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1367, 1370 (“our precedent is clear that merely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea”).
Third, the alleged improvement in grading tests to visualize correct and
incorrect answers is not a technological improvement, but an improvement
in providing information, an abstract idea. See Trading Techs., 921 F.3d
at 1384 (“The claims are focused on providing information to traders in a
way that helps them process information more quickly, . . . not on improving
computers or technology.”).
Rather, the claim recites steps that are mental processes and uses a
computer in its ordinary capacity to store, display, receive, evaluate, and
organize information. At best, as the Examiner finds (see Ans. 9–10), the
additional elements outside the abstract idea link the grading of assessments
to the particular technological environment of “digital” assessments, i.e.,
electronic assessments and computers. See Alice, 573 U.S. at 223 (holding
that attempting to limit the use of an abstract idea to a particular
technological environment does not make a claim patent-eligible) (quoting
Bilski, 561 U.S. at 610–11); Affinity Labs of Tex., LLC v. DIRECTV, LLC,
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838 F.3d 1253, 1259 (Fed. Cir. 2016) (“[M]erely limiting the field of use of
the abstract idea to a particular existing technological environment does not
render the claim[] any less abstract”).
Claim 14 simply provides for storing, receiving, evaluating, and
organizing information and displaying the information in a particular visual
manner and based on some analysis; there is no improvement to the existing
display or graphical user interface. See Trading Techs., 921 F.3d at 1385
(“the claims here fail because arranging information along an axis does not
improve the functioning of the computer, make it operate more efficiently,
or solve any technological problem.”). The claim’s focus is “not a physical-
realm improvement but an improvement in [a] wholly abstract idea[],” i.e.,
visual distinctions to improve assessments (see Appeal Br. 9), that is not
eligible for patenting. SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018); see also Bridge & Post, Inc. v. Verizon Commc’ns, Inc.,
778 F. App’x 882, 893 (Fed. Cir. 2019) (“The ability to run a more efficient
advertising campaign, even if novel, and even if aided by conventional
computers, is an advance ‘entirely in the realm of abstract ideas,’ which we
have repeatedly held to be ineligible.”) (citation omitted).
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claim 14 do not integrate the judicial
exception into a practical application, as the term is used in USPTO
Guidance, and we are not persuaded of error in the Examiner’s
determination that claim 14 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework and USTPO Guidance
Step 2B, we “[e]valuat[e] additional elements to determine whether they
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amount to an inventive concept [which] requires considering them both
individually and in combination to ensure that they amount to significantly
more than the judicial exception itself.” MPEP § 2106.05(I). Here, the
Examiner finds
the claim [does] not include additional elements that taken
individually, and also taken as an ordered combination, are
sufficient to amount to significantly more than the judicial
exception because to the extent that, e.g., a memory of a
computing device, . . . an electronic display, . . . a
computing device, an electronic input device[] are
claimed[,] these are all generic, well-known, and
conventional computing devices, as evidence by them
being disclosed in Applicant’s specification in such a
cursory 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, e.g.,
paragraphs 60-69.
Final Act. 5.
The Appellant does not dispute the Examiner’s determination but
contends that “[t]he [§ 101] analysis need not continue in Step 2B of Alice
because the claims clearly and undeniably satisfy Step 2A of the 2019 PEG
[i.e., Guidance].” Appeal Br. 10. Thus, we are not persuaded of error in the
Examiner’s determination that the additional elements of claim 14,
considered individually and as an ordered combination, do amount to
significantly more than the abstract idea itself.
To the extent the Appellant argues that claim 14 recites elements that
amount to significantly more than the abstract idea because “the [E]xaminer
has not asserted or identified any prior art teaching anything related to
increasing a transparency level of unselected shape answer items to allow for
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visual distinction” (Appeal Br. 9), an abstract idea does not transform into an
inventive concept just because the prior art does not disclose or suggest it.
See Mayo, 566 U.S. at 78. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed,
“[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.”
Diehr, 450 U.S. at 188–89; see also Mayo, 566 U.S. at 91 (rejecting “the
Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”).
We note that the claim simply recites the functional results to be
achieved. The claim “provides only a result-oriented solution[] with
insufficient detail for how a computer accomplishes it. Our law demands
more.” Capital One Fin., 850 F.3d at 1342. The claimed functions of
storing, displaying, receiving, evaluating, assigning, and increasing
transparency for visual distinction of data are part of the abstract idea itself;
they are not additional elements to be considered when determining whether
claim 14 includes additional elements or a combination of elements that is
sufficient to amount to significantly more than the judicial exception. And,
as discussed above, the only claim elements beyond the abstract idea are the
electronic display and computing device with memory to perform the steps,
recited generally, that the Specification indisputably shows were
conventional at the time of filing. See supra; Spec. ¶¶ 59–69; Fig. 16.
We sustain the Examiner’s rejection under 35 U.S.C. § 101 of
independent claim 14 and thus also of claims 15–23.
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CONCLUSION
The Examiner’s decision to reject claims 14–23 is sustained.
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
14–23 101 Eligibility 14–23

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)(iv).

AFFIRMED