YU, Chun Nam et al.

Patent Trials and Appeals Board

Dec 9, 2019

14811989 - (D) (P.T.A.B. Dec. 9, 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.
14/811,989 07/29/2015 Chun Nam YU 67108-429PUS1;
816067-US
3851
46368 7590 12/09/2019
CARLSON, GASKEY & OLDS, P.C./Alcatel-Lucent
400 W MAPLE RD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
NORMAN, JAMES G
ART UNIT PAPER NUMBER
2827
NOTIFICATION DATE DELIVERY MODE
12/09/2019 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):
cgolaw@yahoo.com
nokia.ipr@nokia.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUN NAM YU, TIN KAM HO, and PIOTR MIROWSKI
Appeal 2019-002358
Application 14/811,989
Technology Center 2800

Before CATHERINE Q. TIMM, ELIZABETH M. ROESEL, and
BRIAN D. RANGE, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. 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(a). Appellant identifies the real party in interest as Alcatel-Lucent
USA, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a method and device for electrical load
prediction including sparse coding. Spec. (title). Claims 1 and 10 are
illustrative of the claimed subject matter and are reproduced below:
1. A method, comprising the steps of:
determining a relationship between power load and
temperature during a selected time;
determining a decomposition of the determined
relationship, wherein the decomposition indicates a plurality of
contributors to the determined power load; and
estimating a predicted power load based on the plurality of
contributors and a regression model;
wherein determining the relationship, determining the
decomposition and estimating the predicted power load are
performed by a load analyzer processor, and wherein the load
analyzer processor is configured to determine the decomposition
and use the plurality of contributors indicated by the
decomposition and the regression model to estimate the
predicted power load.
10. A device, comprising:
a load analyzer processor and an associated data storage
configured to at least temporarily store power load and
temperature information, the load analyzer processor using the
power load and temperature information, the load analyzer
processor being configured to
determine a relationship between power load and
temperature during a selected time;
determine a decomposition of the determined relationship,
wherein the decomposition indicates a plurality of contributors
to the determined power load; and
estimate a predicted power load based on the plurality of
contributors and a regression model.
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REJECTION
The Examiner maintains a rejection of claims 1–18 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
OPINION
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. 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 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.”).
Subject matter 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
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(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). Subject matter 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
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.”). The
Supreme Court also indicated that a claim “seeking patent protection for that
formula in the abstract . . . is not accorded the protection of our patent laws,
. . . and this principle cannot be circumvented by attempting to limit the use
of the formula to a particular technological environment.” Id. (citing Benson
and Flook); see, e.g., id. at 187 (“It is now commonplace that an application
of a law of nature or mathematical formula 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
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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. (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 that guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see 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 are 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.
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USPTO Step 2A, Prong 1 (Alice-Mayo Step One)
The Examiner finds that claims 1–18 are directed to an abstract idea.
Final Act. 2, 4. The Examiner quotes independent claims 1 and 10 and
highlights the claim limitations that correspond to the abstract idea. Id. at 3–
5. The Examiner finds that claims 1 and 10 are analogous to “[c]ollecting
information, analyzing it, and displaying certain results of the collection and
analysis.” Id. at 3, 5 (citing Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016)). According to the Examiner, “[t]his
abstract idea is an algorithm which could be carried out as a purely mental
process, at least in principle.” Id. The Examiner identifies almost the
entirety of claims 1 and 10 as corresponding to the abstract idea. Id. at 3–5.
Appellant argues that “claims 1 and 10 are directed to something
much more specific than the broad abstract idea stated by the Examiner.”
Appeal Br. 6. Appellant argues that, “[i]n contrast to Electric Power Group,
[Appellant’s] claims include new techniques and a new load analyzer
processor.” Id. Appellant additionally argues that “the claims at issue are
related to physical devices” and “a physical load representing electrical
power consumed by devices such an HVAC unit.” Reply Br. 2.
Under Step 2A, Prong 1, we evaluate whether the claim recites a
judicial exception by referring to the subject matter groupings of abstract
ideas in Section I of the Guidance, which lists mathematical concepts,
certain methods of organizing human activity such as fundamental economic
practices, and mental processes. Guidance, 84 Fed. Reg. at 51–53.
Applying the Guidance, we agree with the Examiner that claims 1 and
10 recite an abstract idea analogous to the abstract idea recited in the claims
at issue in Electric Power Group. There, the preamble of the representative
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claim recited: “[a] method of detecting events on an interconnected electric
power grid in real time over a wide area and automatically analyzing the
events on the interconnected electric power grid.” 830 F.3d at 1351. At step
one of the Alice-Mayo framework, the Federal Circuit held that “[t]he
advance [the claims] purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.”
Id. at 1354. The Federal Circuit noted that it has “treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Id.
Here, similar to the claims at issue in Electric Power Group,
Appellant’s claims recite a process for analyzing information relating to
electric power consumption. Although Appellant’s claims do not recite
steps for gathering information or displaying the results of the analysis, the
absence of such steps does not make the subject matter of the claims any less
abstract. Steps for analyzing information can by themselves be ineligible.
Id. (“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more” is a patent ineligible abstract idea.).
Although the claims require analysis of information relating to physical
parameters and devices, e.g., electric power consumption and HVAC units,
the claims do not recite any improvement in any physical process, system, or
device. Instead, the claimed invention is solely in the realm of data analysis,
which in this case is a mathematical concept or a mental process, which is an
abstract idea. Id.
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Appellant argues that claims 1 and 10 are analogous to the claim
found patent-eligible in Smart Meter Techs., Inc. v Duke Energy Corp.,
No. 16-208-SLR, 2017 WL 2954916 (D. Del. July 11, 2017). Reply Br. 3.
Appellant’s argument is not persuasive for two reasons. First, Smart Meter
was a denial of a motion to dismiss, not a final determination of patent
eligibility on a more full record. Second, we disagree with Appellant that
claims 1 and 10 are analogous to the claim at issue in Smart Meter, which
the court found “addresses a technical solution to the technical problem of
connecting metering devices over power line networks.” 2017 WL
2954916, at *6. The court pointed out that Smart Meter’s patent described a
metering device “altogether different” from a conventional power meter and
architectures that enable the performance of metering and non-metering
tasks that traditional power meters cannot do. Id. Appellant does not show
that claims 1 and 10 provide a technical solution to a technical problem
analogous to that of Smart Meter.
We find that Appellant’s abstract idea falls into two categories
identified in the Guidance: mathematical concepts and mental processes.
First, we agree with the Examiner that claims 1 and 10 recite a
mathematical algorithm. Final Act. 3, 5. The determining and estimating
functions performed by the load analyzer according to the claims are
individually and collectively a mathematical algorithm. Our finding is
supported by the Specification, which discloses that “[o]ne example
embodiment includes using a cubic polynomial-based technique to capture
and represent the dependency of load on temperature.” Spec. ¶ 20
(describing first determining limitation of claims 1 and 10). The
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Specification discloses exemplary mathematical equations for the cubic
polynomial and a least squares regression used in this example. Id. ¶ 21.
The Specification further discloses that “[t]he load analyzer . . .
determines a decomposition of the hourly load (over a day, or a week, for
example) as a sum of the temperature component b() and a few learned
load components dj.” Spec. ¶ 23 (describing second determining limitation
of claims 1 and 10). The Specification discloses a mathematical equation for
determining the load components. Id. ¶ 25. In view of these disclosures,
there can be no dispute that the determining limitations of claims 1 and 10
recite mathematical algorithms. In fact, the Specification expressly states
that the “decomposition can be done using algorithms, such as a known basis
pursuit technique.” Id. ¶ 32.
The estimation limitation of claims 1 and 10 likewise recites a
mathematical algorithm. The Specification expressly describes the
regression model as an “algorithm,” stating: “[t]he regression algorithm in
some example embodiments is a known regression algorithm such as
support vector regression or ridge regression.” Spec. ¶ 33. The
Specification provides an example of a regression model in the form of a
mathematical equation. Id. ¶ 34. Accordingly, the evidence supports the
Examiner’s finding that the highlighted limitations of claims 1 and 10 recite
a mathematical concept. See Final Act. 3–5.
Second, we agree with the Examiner the “abstract idea is an algorithm
which could be carried out as a purely mental process, at least in principle.”
Final Act. 3, 5. Appellant does not specifically challenge this finding.
Although the Specification discloses complex mathematical equations for
performing the determining and estimating limitations of claims 1 and 10,
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the claims are not limited to these complex algorithms. Under a broadest
reasonable interpretation, the claims are broad enough to encompass a
simpler process that could be performed in the human mind, perhaps with
the aid of pencil and paper. The determining limitations, for example, are
illustrated by the load decomposition curves shown in Figures 4A–4F, which
could be plotted manually. Spec. ¶¶ 25, 26, Figs. 4A–4F. It is also possible
to use a mental process to estimate a predicted power load, as recited in
claims 1 and 10. Accordingly, we agree with the Examiner that claims 1 and
10 recite a mental process.
The method recited in claim 1 is implemented on a computer
processor, and the device recited in claim 10 includes a processor and data
storage. Like claims that the courts have deemed patent ineligible, however,
the focus of the claims is not any improvement in computer technology, but
an improved mathematical analysis. SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1168 (Fed. Cir. 2018) (“the focus of the claims is not any
improved computer or network, but the improved mathematical analysis”);
Electric Power Group, 830 F.3d at 1354 (“the focus of the claims is not on
such an improvement in computers as tools, but on certain independently
abstract ideas that use computers as tools”). Accordingly, the recitation of a
processor and a data storage does not alter our view that claims 1 and 10
recite an abstract idea.
USPTO Step 2A, Prong 2 (Alice-Mayo Step One)
Referring to claims 1 and 10, the Examiner finds that, “[r]ather than
being a particular limited application of the abstract idea which serves to
improve a specific method or device, the claim would tend to monopolize
the abstract idea itself in practice.” Final Act. 4, 6.
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Appellant argues that, even if the claims are directed to an abstract
idea, “the claims are directed to a practical application of this judicial
exception because the claims are directed to estimating a predicted power
load based on a plurality of contributors and a regression model.” Supp.
Appeal Br. 2.2 According to Appellant, “[a] utility company, for example,
could use the claimed method and device to proactively configure grid
operation or energy distribution in a manner that accounts for variations in
consumer demand . . . , which is both practical and useful.” Id. (citing Spec.
¶ 1).
Under Step 2A, Prong 2, we consider whether the claims integrate the
abstract idea into a practical application by imposing a meaningful limit on
the judicial exception. Guidance, 84 Fed. Reg. at 53 (“A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use 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.”).
Appellant does not persuade us that claims 1 and 10 integrate the
abstract idea into a practical application within the meaning of the Guidance
and applicable case law. Although Appellant asserts that “the claims are
directed to estimating a predicted power load based on a plurality of
contributors and a regression model” (Supp. Appeal Br. 2), these recitations
do not impose a meaningful limit on the abstract idea. Estimating the value
of a future condition is both a mathematical concept and a mental process,
i.e., a patent ineligible abstract idea. Limiting the process to “a predicted

2 Appellant submitted a Supplemental Appeal Brief to address the January
2019 Guidance.
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power load” merely limits the abstract idea to a particular field of use or
technological environment, without placing a meaningful, non-abstract
limitation on the process. Bilski, 561 U.S. at 3230 (“the prohibition against
patenting abstract ideas ‘cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment’ or adding
‘insignificant postsolution activity’” (quoting Diehr, 450 U.S. at 191–192));
Electric Power Group, 830 F.3d at 1354 (“limiting the claims to the
particular technological environment of power-grid monitoring is, without
more, insufficient to transform them into patent-eligible applications of the
abstract idea at their core”).
The recitation of a “plurality of contributors and a regression model”
likewise fail to impose meaningful limitations on the abstract idea.
According to the Specification, the “plurality of contributors” are, for
example, “learned, dictionary load components dj, which may be referred to
as sparse codes.” Spec. ¶ 24. The values of dj correspond to and are
represented by the load versus time curves shown in Figures 4B–4F. Id.
¶ 26. The Specification describes the “regression model” as a mathematical
algorithm. Spec. ¶ 33. Because both the “plurality of contributors” and the
“regression model” are mathematical concepts or algorithms, neither places
a meaningful limitation on the estimating process sufficient to integrate the
abstract idea into a practical application.
The Specification acknowledges that both the decomposition
algorithm and the regression algorithm are known in the art. Spec. ¶ 32
(“this decomposition can be done using algorithms, such as a known basis
pursuit technique”); id. ¶ 33 (“The regression algorithm in some example
embodiments is a known regression algorithm . . .”). Even if these
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mathematical algorithms were novel, however, they are still mathematical
concepts, which are themselves a category of abstract ideas. Diehr, 450 U.S.
at 191 (“A mathematical formula as such is not accorded the protection of
our patent laws.); Flook, 437 U.S. at 591–92 (“the novelty of the
mathematical algorithm is not a determining factor at all”); SAP America,
898 F.3d at 1163 (“The claims here are ineligible because their innovation is
an innovation in ineligible subject matter.”); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea.”); Guidance, 84 Fed. Reg. at 52.
Accordingly, we are not persuaded that Appellant’s decomposition and
regression algorithms add meaningful limitations sufficient to integrate the
abstract idea into a practical application.
Appellant argues that the claimed method and device “do not
monopolize the alleged abstract idea” because it is limited to estimating
predicted power loads and “[e]ven in the realm of power load prediction,
there are methods and devices of predicting power loads that fall outside of
the claims.” Supp. Appeal Br. 2. Appellant’s argument addresses the
Supreme Court’s concern about preemption. Alice, 134 S. Ct. at 2354;
Bilski, 561 U.S. at 611–12 (“Allowing petitioners to patent risk hedging
would pre-empt use of this approach in all fields, and would effectively
grant a monopoly over an abstract idea.”). Preemption is not, however, a
separate test for patent eligibility. Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017), cert. denied, 139 S.
Ct. 378 (2018) (“where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Alice framework, . . . preemption
concerns are fully addressed and made moot”); Ariosa Diagnostics, Inc. v.
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Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“the absence of
complete preemption does not demonstrate patent eligibility”). Appellant
must still show the presence of additional elements that integrate the abstract
idea into a practical application. Guidance, 84 Fed. Reg. at 54–55.
Accordingly, Appellant’s argument about not monopolizing the abstract idea
is not persuasive because it fails to show that the claims integrate the
abstract idea into a practical application.
Accordingly, we conclude that claims 1 and 10 are directed to an
abstract idea and proceed to the second step of the Alice-Mayo test.
USPTO Step 2B (Alice-Mayo Step Two)
The Examiner finds that claims 1 and 10 recite “additional elements”
that are not abstract, including a load analyzer processor and an associated
data storage. Final Act. 4, 6. The Examiner determines that “the additional
elements, considered individually and in combination with the other claim
elements, do not make the claim as a whole [amount to] significantly more
than the abstract idea itself.” Id. According to the Examiner, the load
analyzer processor and associated data storage are “recited at a high level of
generality and they are well-understood, routine, and conventional in the
art.” Id.
Appellant argues that the claims “recite significantly more than the
alleged abstract idea of collecting / analyzing / displaying.” Appeal Br. 7.
Appellant argues that the second determining step and the estimating step of
claim 1 are “more than merely an abstract idea” because they “amount to
more than just gathering and displaying information.” Id. Appellant
additionally argues that, because the load processor performs the
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determining and estimating steps, it is not well-understood, routine, and
conventional. Id.
Under Step 2A, Prong 2, we consider whether the claims recite
“additional elements” that individually or in combination “provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself).” Guidance, 84 Fed. Reg. at 56;
see Alice, 573 U.S. at 217–18 (“We have described step two of this analysis
as a search for an ‘inventive concept’—i.e., an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible concept itself.”) (internal
quotations and alterations omitted). Applying the Guidance, we are not
persuaded that claims 1 and 10 recite an inventive concept as contemplated
by the Alice-Mayo test.
We agree with the Examiner’s analysis of claims 1 and 10, including
the identification of claim limitations that recite an abstract idea and the
identification of “additional elements” that are not abstract. Final Act. 3–5.
Under applicable case law and the Guidance, the Examiner is correct that the
additional elements, including a load analyzer processor and an associated
data storage, considered individually and in combination with the other
claim elements, do not make the claim as a whole amount to significantly
more than the abstract idea itself. There is no evidence that a load analyzer
processor and an associated data storage, as recited in claims 1 and 10, are
anything other than conventional computer hardware, such as an off-the-
shelf general purpose computer processor with an associated hard drive or
other storage medium. Such generic computer implementation is not
sufficient to transform an abstract idea into a patent eligible process or
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device. Alice, 573 U.S. at 223–24 (“wholly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself’” (quoting Mayo, 566
U.S. at 77)); Electric Power Group, 830 F.3d at 1355 (“the claims’
invocation of computers, networks, and displays does not transform the
claimed subject matter into patent-eligible applications”).
We are not persuaded by Appellant’s argument that the second
determining step and the estimating step of claim 1 are “more than merely an
abstract idea.” Appeal Br. 7. According to Appellant, these steps “amount
to more than just gathering and displaying information.” Id. We disagree.
Even if these steps are novel, as argued by Appellant (id.), they do not recite
significantly more than the abstract idea of analyzing information.
Synopsys, 839 F.3d at 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract
idea is still an abstract idea.”). Like the innovations at issue in SAP and
Electric Power Group, Appellant’s claimed invention is wholly within the
realm of abstract ideas.
We are not persuaded by Appellant’s argument that the load processor
is not well-understood, routine, and conventional. Appeal Br. 7. Appellant
argues that the load processor is not well-understood, routine, and
conventional because it performs the determining and estimating steps,
which Applicant contends are not well-understood, routine, and
conventional. Id. Appellant’s argument does not pass muster under
applicable case law. Novel mathematical calculations, such as Appellant’s
determining and estimating steps, do not become patent-eligible merely by
invoking a conventional computer processor to carry out the calculations.
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As recently explained by our reviewing court, “an invocation of already-
available computers that are not themselves plausibly asserted to be an
advance, for use in carrying out improved mathematical calculations,
amounts to a recitation of what is ‘well-understood, routine, [and]
conventional.’” SAP America, 898 F.3d at 1170 (quoting Mayo, 566 U.S. at
73).
Dependent Claims
The Examiner finds that dependent claims 2–9 and 11–18 “extend[]
the abstract idea by adding details to the algorithm” and “do[] not contain
further ‘additional elements’.” Final Act. 4, 6. The Examiner determines
that the additional limitations of the dependent claims, whether “considered
individually and in combination with the other claim elements, do not make
the claim as a whole significantly more than the abstract idea itself.” Id.
According to the Examiner, “[r]ather than being a particular limited
application of the abstract idea which serves to improve a specific method or
device, the claim would tend to monopolize the abstract idea itself in
practice.” Id.
Appellant challenges the sufficiency of the Examiner’s treatment of
the dependent claims, arguing that “each dependent claim must be separately
analyzed” and that Appellant “has no way of determining the merits of the
Examiner’s § 101 rejection of the dependent claims because no analysis has
been articulated.” Appeal Br. 8.
After considering Appellant’s argument, we determine that the
Examiner’s rejection provides adequate notice of the reasons for the § 101
rejection. 35 U.S.C. § 132 (requiring the Director to “stat[e] the reasons for
such rejection, or objection or requirement, together with such information
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and references as may be useful in judging of the propriety of continuing the
prosecution of his application”). The Examiner’s rejection informs
Appellant of the reasons and statutory basis for the rejection sufficient to
identify the issues on which counter-evidence and counter-arguments can be
submitted and is “[not] so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
Because Appellant presents no substantive argument regarding patent
eligibility of the dependent claims separate from its arguments regarding the
independent claims, we do not need to analyze the dependent claims
separate from the independent claims. Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1264 n.4 (Fed. Cir. 2016) (Appellant “has
not separately argued the patent eligibility of the dependent claims and thus
has waived any argument that those claims should be analyzed separately
from claim 1.”).
CONCLUSION
The Examiner’s rejection of claims 1–18 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is affirmed.
DECISION SUMMARY
In summary:
Claims Rejected 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–18 101 Eligibility 1–18

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2017).
AFFIRMED