Stephen A. Zollo et al.

Patent Trials and Appeals Board

Sep 3, 2019

11370526 - (D) (P.T.A.B. Sep. 3, 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.
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).
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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.

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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.
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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
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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:
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(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
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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.
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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
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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
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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).
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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
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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
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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
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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
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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
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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
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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
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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