Stephen A. Zollo et al.Download PDFPatent Trials and Appeals BoardSep 3, 201911370526 - (D) (P.T.A.B. Sep. 3, 2019) 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. 11/370,526 03/07/2006 Stephen A. Zollo 103806.000098 4097 45511 7590 09/03/2019 BakerHostetler Cira Centre, 12th Floor 2929 Arch Street Philadelphia, PA 19104-2891 EXAMINER ELCHANTI, TAREK ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN A. ZOLLO, STEVEN A. SHAYA, and SPYROS STAVRAKAS ____________ Appeal 2017-0114311 Application 11/370,526 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, AMEE A. SHAH, and MATTHEW S. MEYERS, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–6, 8–18, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held on July 23, 2019. SUMMARY OF DECISION We affirm. 1 Appellants identify Johnson & Johnson Services, Inc. as the real party in interest. (App. Br. 1). Appeal 2017-011431 Application 11/370,526 2 THE INVENTION Appellants state, “[t]he inventions relate to the field of sales and marketing analysis and prediction.” Spec. ¶ 3. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A system for generating intelligent promotional recommendations for a product, the system comprising: a database comprising first longitudinal data related to non- promotional activity with respect to a product and second longitudinal data related to one of sales activities for the product and marketing activities for the product; and a processor, operatively connected to the database, the processor executing computer executable instructions to implement a recommendation engine, wherein the computer executable instructions comprise instructions for: receiving a request relating to a target from a user; receiving, from the database, the first longitudinal data and the second longitudinal data; forming a statistical neighborhood of similar targets related to the product, wherein the size of the statistical neighborhood reduces as the amount of the first and second longitudinal data in the database increases; classifying the target, relative to the similar targets in the statistical neighborhood; and generating one of an individualized intelligent sales recommendation and an individualized intelligent marketing recommendation specifically relating to the target based on the classification of the target and the first longitudinal data and the second longitudinal data. Appeal 2017-011431 Application 11/370,526 3 THE REJECTION The following rejection is before us for review2. Claims 1–6, 8–18, 20, and 21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. FINDINGS OF FACT We adopt the Examiner’s findings as set forth on pages 2–3 in the Final Office Action3 and on pages 2–4 in the Examiner’s Answer, concerning only the 35 U.S.C. § 101 rejection. ANALYSIS 35 U.S.C. § 101 REJECTION We will affirm the rejection of claims 1–6, 8–18, 20, and 21 under 35 U.S.C. § 101. The Appellants argue claims 1–6, 8–18, 20, and 21 as a group, and we select claim 1 as the representative claim for this group (App. Br. 8), and so the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). 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 2 The Examiner withdrew the rejections of claims 1, 2, 6, 8-11, 16-18, 20, and 21 under pre-AIA 35 U.S.C. 102(b) and claims 3-5, and 14 under pre- AIA 35 U.S.C. 103(a). (Answer 2). 3 All references to the Final Office Action refer to the Final Office Action mailed on Oct. 13, 2016. Appeal 2017-011431 Application 11/370,526 4 implicit exceptions: “[l]aws of nature, natural phenomena, and 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 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 id. 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 (1854))); 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 Supreme Court held that “[a] claim drawn to subject matter otherwise Appeal 2017-011431 Application 11/370,526 5 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.”). Having said that, 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., Diehr, 450 U.S. 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. The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: Appeal 2017-011431 Application 11/370,526 6 (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)). 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 Guidance. The U.S. Court of Appeals for the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, 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 claims 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. In so doing, as indicated above, we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a Appeal 2017-011431 Application 11/370,526 7 meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance at 53; see also MPEP § 2106.05(a)–(c), (e)–(h). The Specification describes: With the increasing use of ever-more sophisticated technology in healthcare and related areas, richer and more granular data on activities relating to healthcare (e.g., patient and physician activity) have become available from a variety of sources in a variety of forms. This data offers the potential, if compiled, analyzed, and utilized appropriately, to more accurately understand patient and physician behavior; and for companies to achieve a better return on investment by predicting, employing, and refining more effective sales and marketing techniques and approaches for their products. In general, this new data falls into the following commercially available classes or types, portions of which may overlap one another in varying degrees: longitudinal prescription data, longitudinal patient data, pharmacy benefit manager data, switch-sourced data, and integrated medical and pharmacy chains data. Examples of companies from which such data may be obtained include: Dendrite International, Inc., Bedford, New Jersey (www.dendrite.com); Verispan, Yardley, Pennsylvania (www.verispan.com); IMS Health, Inc., Fairfield, Connecticut (www.imshealth.com); and NDCHealth Corp., Atlanta, Georgia (www.ndchealth.com), among others. Specification ¶ 5. The Specification further describes: As those ordinarily skilled in the art will appreciate, the types of data noted above can be analyzed in many cases to determine approximately how many prescriptions for a specific drug are being written by individual physicians and/or filled by individual patients. This information can give a rough indicator of whether a company's sales and marketing campaign for a drug or product is relatively effective or ineffective. Id. ¶ 9. Appeal 2017-011431 Application 11/370,526 8 Claim 1, recites, in pertinent part: first longitudinal data related to non-promotional activity with respect to a product and second longitudinal data related to one of sales activities for the product and marketing activities for the product; . . . receiving a request relating to a target from a user; receiving . . . the first longitudinal data and the second longitudinal data; forming a statistical neighborhood of similar targets related to the product, wherein the size of the statistical neighborhood reduces as the amount of the first and second longitudinal data in the database increases; classifying the target, relative to the similar targets in the statistical neighborhood; and generating one of an individualized intelligent sales recommendation and an individualized intelligent marketing recommendation specifically relating to the target based on the classification of the target and the first longitudinal data and the second longitudinal data. The Examiner found that the claims are directed to the abstract idea of generating intelligent promotion recommendations for a product. The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of granularity, provide, conventional computer functions that do not add meaningful limits to practicing the abstract idea. (Final Act. 2). Under the first prong of the “directed to” test, we agree with the Examiner that claim 1 recites a way of “generating intelligent promotion recommendations for a product” because the claim results in “generating one of an individualized intelligent sales recommendation and an individualized intelligent marketing recommendation.” Such recommendations are a form of marketing or sales activities which is fundamental economic Appeal 2017-011431 Application 11/370,526 9 practice/commercial interaction, and hence a certain method of organizing human activity. Claim 1 is thus directed to a certain method of organizing human activity. The patent-ineligible end of the spectrum includes certain methods of organizing human activity. Guidance, 84 Fed. Reg. at 52, citing Alice, 573 U.S. at 218–220. We also find that claim 1 also recites a way of forming a statistical neighborhood of targets related to a product, which is a mathematical concept and/or a mental process. This is because claim 1 recites the mathematical relationship of “forming a statistical neighborhood of similar targets related to the product, wherein the size of the statistical neighborhood reduces as the amount of the first and second longitudinal data in the database increases,” and thus is directed to mathematical concepts and mental processes. Both mathematical concepts and mental processes are patent-ineligible categories. Guidance, 84 Fed. Reg. at 52, citing e.g., Mayo, 566 U.S. at 71. Turning to the second prong of the “directed to” analysis, claim 1 only generically requires “a database,” “a processor,” and “a recommendation engine.” These components are described in the Specification at a high level of generality. See Spec. ¶¶ 21–23, Figs. 1, 2. We fail to see how the generic recitations of these most basic computer components and/or of a system so integrates the judicial exception as to “impose[] a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. Thus, we find that the claims recite the judicial exceptions of a mathematical concept, a certain method of organizing human behavior, and a mental process that are not integrated into a practical application, and thus Appeal 2017-011431 Application 11/370,526 10 is directed to abstract ideas. That the claims do not preempt all forms of the abstraction or may be limited to product data, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“And 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.”). Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas/judicial exceptions, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at 72–73). Concerning this step the Examiner found the following: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. These limitations are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well- understood, routing and conventional activities amount to no more than implementing the abstract idea with a computerized system. (Final Act. 3). Appeal 2017-011431 Application 11/370,526 11 We agree with the Examiner. “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to receive, compute, classify, generate a result, and transmit data amounts to electronic data query and transmit same are some of the most basic functions of a computer. All of these computer functions are well- understood, routine, conventional activities previously known to the industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of Appellants’ claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis (receive, compute, classify, generate a result) and storing is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence Appeal 2017-011431 Application 11/370,526 12 of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract ideas of a mathematical concept, a certain method of organizing human behavior, and a mental process, using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. We have reviewed all the arguments Appellants have submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. (App. Br. 8–17, Reply Br. 2–9). We find that our analysis above substantially covers the substance of all the arguments which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. First, Appellants’ references to the May 4, 2016 Memorandum (Appeal Br. 9–10), are directed to now-superseded USPTO guidance, and have been considered but are not persuasive of error. (See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”))). Appellants argue: While Alice is directed to the fundamental economic practice of intermediated settlement, the claimed system is directed to a system for generating intelligent promotional recommendations Appeal 2017-011431 Application 11/370,526 13 for a product including steps such as “forming a statistical neighborhood of similar targets related to the product, wherein the size of the statistical neighborhood reduces as the amount of the first and second longitudinal data in the database increases.” Appellant[s] submit[] that “intermediated settlement” is not a similar abstract idea to “generating intelligent promotional recommendations and reports” and the Examiner has not explained why the abstract idea recited in the claims corresponds to the abstract of “intermediated settlement” identified in Alice so as to maintain the rejection. Appellant[s] submit[] that there is no such correspondence. (App. Br. 12). We disagree with Appellants first because judicial exceptions cover all of the following categories: a mathematical concepts, b) certain methods of organizing human behavior and c) mental processes. As we found above, the claims are at least directed to “generating intelligent promotion recommendations for a product” which is a mental process and is included as one of the enumerated judicial exceptions. Concerning the Appellants’ “intermediated settlement” argument, we note that the issue is not whether the claims are directed to “an intermediated settlement,” but rather whether the claims are directed to a fundamental economic principle or practice or a commercial interaction. Guidance, 84 Fed. Reg. at 52, citing Alice, 573 U.S. at 219–20. Here, the Examiner found the claims are directed to “generating intelligent promotion recommendations for a product” (Final Act. 2), which we find is a fundamental economic principle or practice/commercial interaction because it deals with marketing of products/services for sale. Second, we are not persuaded that the rejection is so uninformative as to fail to comply with the notice requirement of 35 U.S.C. § 132 — the standard by which the sufficiency of the Examiner’s rejection is properly Appeal 2017-011431 Application 11/370,526 14 assessed. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”) Although evidence may be helpful, e.g., where facts are in dispute, it is not always needed. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“[I]t is also possible, as numerous cases have recognized, that a § 101 analysis may sometimes be undertaken without resolving fact issues.”). See, e.g., MPEP 2106.07(a)(III) (2018) (“The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Thus, the court does not require ‘evidence’ that a claimed concept is a judicial exception, and generally decides the legal conclusion of eligibility without resolving any factual issues.” (Citations omitted.)) All that is required of the USPTO to meet its prima facie burden is that the Examiner set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. § 132. As the statute itself instructs, the Examiner must “notify the applicant,” “stating the reasons for such rejection,” “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application.” 35 U.S.C. § 132; see also In re Jung, 637 F.3d at 1363 (Fed. Cir. 2011) (declining “to impose a heightened burden on Appeal 2017-011431 Application 11/370,526 15 examiners beyond the notice requirement of § 132”). Here, as we found above, the Examiner has made these findings as required by the statute. See Final Act. 2–6. Specifically, in rejecting the pending claims under § 101, the Examiner analyzed the claims using the Mayo/Alice two-step framework. Specifically, the Examiner notified Appellants that the claims are directed to the abstract idea of generating intelligent promotion recommendations for a product. The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of granularity, provide, conventional computer functions that do not add meaningful limits to practicing the abstract idea. (Final Act. 2). Concerning the Alice step 2 requirement, the Examiner further found: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. These limitations are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well- understood, routing and conventional activities amount to no more than implementing the abstract idea with a computerized system. (Final Act. 3). For the reasons identified above, we determine there are no deficiencies in the Examiner’s determination of patent ineligibility of the rejected claims. Appellants argue, “[t]he Examiner has provided absolutely no factual Appeal 2017-011431 Application 11/370,526 16 or legal analysis to support the allegation that the claims lack ‘substantially more’ than the purported abstract idea of ‘generating intelligent promotional recommendations and reports.’” (App. Br. 15). We disagree with Appellants. To the extent Appellants are arguing that the additional elements constitute an inventive concept, such features cannot constitute the “inventive concept.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech. LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). In Berkheimer, the Federal Circuit made clear that “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d at 1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not require evidentiary support for independent claim 1 because “[t]he limitations [of claim 1] amount to no more than performing the abstract idea of parsing and comparing data with conventional computer components.” Id. at 1370. Appellants list various claim limitations on pages 16–17 of their Appeal Brief as examples of improvements amounting to significantly more, without providing evidence that they are improvements in the computer as contrasted with marketing and advertising tactics. Although a database and Appeal 2017-011431 Application 11/370,526 17 a processor are by definition in some sense technological, their use has become so notoriously settled that merely invoking them is no more than abstract conceptual advice to use well known technology for its intended purpose. See In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 612–613 (Fed. Cir. 2016). (Using a generic telephone for its intended purpose was a well–established “basic concept” sufficient to fall under Alice step 1.) In addition, the method is directed to “generating intelligent promotion recommendations for a product” which we find, as claimed, is more akin to saying to just “apply” the mental steps to a field of use, as opposed to an improvement to another technology. MPEP § 2106.01, see also, Alice 573 U.S. at 225–26 (“Instead, the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.”) Also, the argument that these limitations “improve[] the functioning of the computer itself by reducing the size of the statistical neighborhood and increasing accuracy as the amount of longitudinal data in the database increases” (Appeal Br. 16) is not commensurate with the broader scope of claim 1 which merely describes “forming a statistical neighborhood of similar targets related to the product, wherein the size of the statistical neighborhood reduces as the amount of the first and second longitudinal data in the database increases,” without any technological mechanisms for doing so. The question is whether the claims as a whole “focus on a specific means or method that improves the relevant technology” or are “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, claim 1, as a whole, is Appeal 2017-011431 Application 11/370,526 18 focused on satisfying certain contingencies for extracting selected data related to generating intelligent promotional recommendations for a product, and not a particular way of programming or designing the software or a computer circuit. In other words, nothing in claim 1 purports to improve computer functioning or “effect an improvement in [any other] technology or technical field.” Alice, 573 U.S. at 225. We also disagree with Appellants that under the holding in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), our decision would be different. (Appeal Br. 17). In Enfish, the invention at issue was directed at a wholly new type of logical model for a computer database: a self- referential table that allowed the computer to store many different types of data in a single table and index that data by column and row information. Enfish, 822 F.3d at 1330–32. In finding the claims “not directed to an abstract idea,” but “to a specific improvement to the way computers operate,” the Federal Circuit noted 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.” Enfish, 822 F.3d at 1336–37 (emphasis in original). We find nothing in the claims before us arising to this level of technical improvement in the claimed “a database” and “a processor” which arises to the level of technical proficiency as found in Enfish. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1–6, 8–18, 20, and 21 under 35 U.S.C. § 101. Appeal 2017-011431 Application 11/370,526 19 DECISION 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 Copy with citationCopy as parenthetical citation