Anthony Vierra

Patent Trials and Appeals Board

Jul 29, 2019

14145474 - (D) (P.T.A.B. Jul. 29, 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.
14/145,474 12/31/2013 Anthony Vierra 1051-02001-US 6635
93485 7590 07/29/2019
Brient IP Law, LLC
1175 Grimes Bridge Road
Suite 100
Roswell, GA 30075
EXAMINER
DESAI, RESHA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/29/2019 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):
info@brientip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY VIERRA
____________

Appeal 2017-0114081
Application 14/145,4742
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) claims 11, 13–17, and
20–27. We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was
held on July 23, 2019.
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“Br.,” filed April 27,
2017) and Supplemental Brief (“Supp. Br.,” filed November 2, 2018), and
the Examiner’s Answer (“Ans.,” mailed July 10, 2017) and Final Office
Action (“Final Act.,” mailed August 31, 2016).
2 Appellant identifies “Viesoft, Inc.” as the real party in interest (Br. 3).
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CLAIMED INVENTION
Appellant’s claims relate generally to a system and method for
“retrieving, from various online retail websites, product listings and
associated pricing information for particular product” (Abstract).
Claims 11, 17, and 27 are the independent claims on appeal. Claim 11
is illustrative of the claimed subject matter:
11. A computer-implemented method for determining one or
more potentially matching product listings for a particular
product, enabling a user to indicate that said one or more
potentially matching product listings are one or more matching
product listings for said particular product, and displaying
pricing information for said one or more matching product
listings for said particular product, said method comprising:
(A) receiving, by a processor, a first request to retrieve one
or more matching product listings for a particular product, said
request comprising: a first matching criteria value associated
with a first product field; and a first filter associated with said
first product field;
(B) at least partially in response to said first request,
determining, by a processor, based at least in part on said first
matching criteria value and said first filter, one or more
potentially matching product listings for said particular product
by: retrieving, from one or more retail servers, one or more
product listings from one or more particular online retailers; and
determining which of said one or more product listings are said
one or more potentially matching product listings for said
particular product based at least in part on said first matching
criteria value and said first filter;
(C) displaying, by a processor, said one or more
potentially matching product listings to a user;
(D) receiving, by a processor, from said user, a first
indication that said one or more potentially matching product
listings are one or more product listings for said particular
product;
(E) at least partially in response to receiving said first
indication: associating, by a processor, said confirmed one or
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more potentially matching product listings with said one or more
matching product listings, wherein associating said confirmed
one or more potentially matching product listings with said one
or more matching product listings comprises storing, in memory,
said confirmed one or more potentially matching product listings
in a database of matching product listings; retrieving, from said
one or more retail servers, pricing information for said confirmed
one or more potentially matching product listings; and storing
said pricing information for said confirmed one or more
potentially matching product listings in said database with
pricing information associated with said one or more matching
product listings;
(F) receiving, by a processor, a second request to display
pricing information associated with said particular product;
(G) at least partially in response to said second request:
retrieving, by a processor, said pricing information from said
database; and displaying, by a processor, said pricing
information to said user;
(H) receiving, by a processor, one or more minimum
advertised pricing requirements associated with said particular
product;
(I) determining, by a processor, based at least in part on
said one or more minimum advertised pricing requirements,
whether said pricing information for said one or more matching
product listings in said database conforms with said one or more
minimum advertised pricing requirements; and
(J) at least partially in response to determining that said
one or more matching product listings do not conform with said
one or more minimum advertised pricing requirements, notifying
a user of said non-conformation.

REJECTION
Claims 11, 13–17, and 20–27 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. However, the 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 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
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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.”). 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., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
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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) (“2019 Revised 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, i.e., that “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.” See 2019 Revised Guidance, 84 Fed. Reg. at 53; see
also 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 2019 Revised Guidance.
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Appellant argues claims 11, 13–17, and 20–27 as a group (Br. 26–32).
We select independent claim 11 as representative, and the remaining claims
stand or fall with independent claim 11. See 37 C.F.R. § 41.37(c)(1)(iv).
With regard to the first step of the Mayo/Alice framework, the
Examiner states that independent claim 11 is “determining potentially
matching product listings” (Final Act. 3), which the Examiner considers to
be an abstract idea, inasmuch as it may be characterized as being related to
“activity [that] can be performed in the human mind, or by a human using a
pen and paper” (id. (citing CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011)); see also Ans. 4).
In response, Appellant first argues that the Examiner’s rejection is
improper because “the Office Action has described the ‘claim[s] at a high
level of abstraction untethered from the language of the claim when
determining the focus of the claimed invention’” (Br. 28). We cannot agree.
Under the first prong of step 2A of the 2019 Revised Guidance, we
first determine if the claims recite an abstract idea. In this regard, the
Specification is titled “PRODUCT MATCHING SYSTEMS AND
RELATED METHODS.” The Specification describes that “[r]etailers
typically desire to price products that they offer for sale in a way that makes
them competitive with other retailers” (Spec. 1). The Specification further
describes that manufacturers also “have a need to monitor the pricing of
their products” (id.). The Specification identifies it is “difficult and time
consuming to obtain current pricing information” because “products are
typically sold by a variety of different entities in different venues” (id.).
Consequently, the Specification discloses that “there is currently a need for
improved systems for tracking the pricing of products, especially the pricing
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of products that are offered for sale on-line, which may include varying
descriptions and details for the same products” (id.). Taking independent
claim 11 as representative, the claimed subject matter recites generally
[a] method for determining one or more potentially matching
product listings for a particular product, enabling a user to
indicate that said one or more potentially matching product
listings are one or more matching product listings for said
particular product, and displaying pricing information for said
one or more matching product listings for said particular product.
The method of independent claim 11 includes steps for “receiving . . . a first
request to retrieve one or more matching product listings for a particular
product” based on “a first matching criteria value associated with a first
product field; and a first filter associated with said first product field,”
“determining . . . one or more potentially matching product listings for said
particular product,” based on the first request, “by: retrieving, from one or
more retail servers, one or more product listings from one or more particular
online retailers; and determining which of said one or more product listings
are said one or more potentially matching product listings for said particular
product based at least in part on” the first request. The method then includes
steps for “displaying . . . one or more potentially matching product listings to
a user,” “receiving . . . a first indication that said one or more potentially
matching product listings are one or more product listings for said particular
product” from a user, and then “associating . . . said confirmed one or more
potentially matching product listings with said one or more matching
product listings” by
storing, in memory, said confirmed one or more potentially
matching product listings in a database of matching product
listings; retrieving, from said one or more retail servers, pricing
information for said confirmed one or more potentially matching
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product listings; and storing said pricing information for said
confirmed one or more potentially matching product listings in
said database with pricing information associated with said one
or more matching product listings.
After associating the confirmed potential matches with the product
listings, the method includes steps for “receiving . . . a second request to
display pricing information associated with said particular product,”
“retrieving . . . said pricing information from said database” based on the
second request, and “displaying . . . said pricing information to said user.”
The method then includes steps for “receiving . . . one or more minimum
advertised pricing requirements associated with said particular product,”
“determining . . . based at least in part on said one or more minimum
advertised pricing requirements, whether said pricing information for said
one or more matching product listings in said database conforms with said
one or more minimum advertised pricing requirements;” and “at least
partially in response to determining that said one or more matching product
listings do not conform with said one or more minimum advertised pricing
requirements, notifying a user of said non-conformation.”
Understood in light of the Specification, we agree with the Examiner
that independent claim 11 is directed broadly to “determining potentially
matching product listings” (Final Act. 3). We also agree with the Examiner
that “[t]he potentially matching product listings are [sic] determined by the
organization and comparison of data which can be performed mentally”
(Ans. 4). When viewed through the lens of the 2019 Revised Guidance, the
Examiner’s analysis depicts the claimed subject matter as being directed to
ineligible subject matter which may be categorized as one of the ineligible
“[m]ental processes” that include “concepts performed in the human mind
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(including an observation, evaluation, judgment, opinion),” and thus an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Having concluded that claim 11 recites a judicial exception, i.e., an
abstract idea, we turn to the second prong of step 2A of the 2019 Revised
Guidance and determine whether the claims recite a practical application of
the recited judicial exception. Here we look to see if, for example, (i) any
additional elements of the claims reflects an improvement in the functioning
of a computer or to another technological field, (ii) an application of the
judicial exception with, or by use of, a particular machine, (iii) a
transformation or reduction of a particular article to a different state or thing,
or (iv) a use of the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55;
See also MPEP § 2106.05(a)–(c), (e)–(h).
Appellant argues that the present claims are similar to the patent-
eligible claims in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), and patent-eligible because they provide “an improvement to
computer functionality itself, not an economic or other tasks for which a
computer is used in its ordinary capacity,[] as was the case in Enfish”
(Br. 29). However, there is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other (see, e.g., Spec. 6 stating
that the present invention may be implemented using “a general purpose
computer, special purpose computer, or other programmable data processing
apparatus to produce a machine, such that the instructions which execute on
the computer or other programmable data processing apparatus.”). Indeed,
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the Federal Circuit applied this distinction in Enfish in rejecting a § 101
challenge at the step one stage of the Mayo/Alice analysis because the claims
at issue focused on a specific type of data structure, i.e., a self-referential
table for a computer database, designed to improve the way a computer
carries out its basic functions of storing and retrieving data, and not on
asserted advances in uses to which existing computer capabilities could be
put. Enfish, 822 F.3d at 1335–36.
Here, Appellant argues that “storing the confirmed one or more
potentially matching product listings and associated pricing data in a
datab[a]se as recited in claim 11 of the present application, is also a ‘specific
type of data structure designed to improve the way a computer stores and
retrieves data in memory’” (Br. 30 (citing Spec. ¶¶ 73–75; Figs. 6–7)).
More particularly, Appellant argues that
by locally storing the confirmed matching product listing and
pricing information (as opposed to retrieving the data from a
disperse set of web sites in real time), the system is enabled to
more quickly access and retrieve the information associated with
the data from the existing database of confirmed matching
product listings.
(Br. 30). However, we find no parallel here between independent claim 11
and the claims in Enfish nor any comparable aspect in claim 11 that
represents “an improvement to computer functionality.” On this record,
Appellant does not show how merely storing information locally, as opposed
to retrieving it, results in an improvement to computer or database
functionality. In this regard, we note that Appellant’s Specification simply
discloses that “the system is configured to store confirmed matching product
listings for a particular matching rule in a suitable database from which the
system may later retrieve updated pricing information for the confirmed
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matching product listings” (Spec. 17). As such, we agree with the Examiner
that it is clear from the language of the claim and Specification that “the
benefit of the claimed invention to be an improved system for tracking the
pricing of products with varying descriptions and details for the same
products” (Ans. 5).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention “appl[ies], rel[ies] on, or us[es] 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.” See 2019 Revised Guidance, 84 Fed. Reg. at 54.
Turning to Step 2B of the 2019 Revised Guidance, we determine
whether the additional elements (1) add a specific limitation or combination
of limitations that is not well-understood, routine, and conventional activity
in the field, which is indicative that an inventive concept may be present or
(2) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception, which is indicative that an inventive concept may not
be present. See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Addressing the second step of the Mayo/Alice framework, the
Examiner states independent claim 11
the steps of: receiving a first request; receiving a first indication;
receiving a second request; and receiving one or more minimum
advertised pricing requirements, which are performed by the
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processor. These receiving steps are merely receiving data,
which is a function considered by the courts to be well-
understood, routine and conventional (See Alice Corp., 134 S. Ct.
at 2360). Finally, the claims recite the steps of: displaying,
displaying and notifying. These steps are considered to be post
solution activity and can be performed by a routine and
conventional general purpose computer, such as the claimed
processor.
(Final Act. 5). The Examiner further notes
the claimed processor encompasses a general purpose computer
given the claim’s broadest reasonable interpretation in light of
[page 6] of the specification. The claims also recite one or more
retail servers and a memory, which do not add meaningful
limitations to the idea of “determining potentially matching
product listings” beyond generally linking the claim to a
particular technological environment, that is, implementation via
computers.
(Id.). Thus, the Examiner concludes that exemplary independent claim 11
“do[es] not amount to significantly more than the underlying abstract idea of
‘determining potentially matching product listings’” (id.).
Here, we agree with the Examiner that the additional elements taken
alone or in combination do not result in anything more than conventional
computer implementation (see Final Act. 3–6; see also Ans. 4–5). And,
considered as an ordered combination, the “processor,” “retail server,” and
“memory” of independent claim 11 add nothing that is not already present
when the limitations are considered separately. Viewed as a whole,
independent claim 11 simply recites the concept of “determining potentially
matching product listings” (Final Act. 3). The claims do not, for example,
purport to improve the functioning of the computer itself. Nor do they effect
an improvement in any other technology or technical field, as discussed
above with respect to prong two of step 2A. Instead, independent claim 11
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amounts to nothing significantly more than an instruction to apply the
abstract idea of “determining potentially matching product listings” (Final
Act. 3), which under our precedents, is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
In response, Appellant asserts the Examiner “implicitly admits that the
claim includes ‘additional elements’” (Supp. Br. 27 (citing Final Act. 5)),
but argues that the Examiner failed to establish that the additional elements
of independent claim 11 are well-understood, routine, and conventional, to a
skilled artisan in the relevant field, in view of Berkheimer v. HP, Inc., 881
F.3d 1360 (Fed. Cir. 2018) and the Office’s April 19, 2018 Memorandum
entitled, “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (hereinafter “Berkheimer Memo”)3 (Supp. Br. 27–31). We cannot
agree.
In making this determination, we find that Appellant has not
established that the instant patent eligibility inquiry contains an underlying
issue of fact. It is true that the court in Berkheimer held that “[t]he patent
eligibility inquiry may contain underlying issues of fact.” Berkheimer, 881
F.3d at 1365 (quoting Mortgage Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“[T]he § 101 inquiry ‘may
contain underlying factual issues.”’)). However, the court also held that
“[w]hen there is no genuine issue of material fact regarding whether the
claim element or claimed combination is well-understood, routine, [and]
conventional to a skilled artisan in the relevant field, this issue can be

3 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.pdf.
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decided on summary judgment as a matter of law.” Id. at 1368 (emphasis
added). This qualification has been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4–7, but not for claims 1–3
and 9 . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer, 890 F.3d at 1371–74. See also Aatrix Software, Inc. v. Green
Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018)(Order, On
Petition for rehearing en banc, May 31, 2018) (“A factual allegation or
dispute should not automatically take the determination out of the court’s
hands; rather, there needs to be justification for why additional evidence
must be considered—the default being a legal determination.”).
Appellant fails to identify what claim elements should not be
considered well-understood, routine, or of conventional nature (see, e.g.,
Supp. Br. 28–31). Instead, Appellant merely reproduces the language of
independent claims 11, 17, and 27, and concludes, without explaining, “that
the recited elements are not well understood, routine, or conventional
activities” (id. at 28). Thus, the record fails to show that any factual issues
exist regarding a claim element’s well understood, routine, or conventional
nature in light of Berkheimer.
Even so, as discussed above, there is no indication that the steps of
exemplary independent claim 11 require any specialized computer or
inventive computer components – the Specification indicates just the
opposite (see, e.g., Spec. 6–18). And, as the Examiner points out, the only
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claim elements in independent claim 11 beyond the abstract idea are the
claimed “processor,” “one or more retail servers,” and “memory” (Final
Act. 5), which the Specification describes as being generic and conventional
(see Spec. 6–18). In this regard, the Specification discloses
[s]ystem 110 includes one or more computer networks 115, a
Product Matching Server 100, One or More Retail Servers 130,
a Database 140, and one or more remote computing devices such
as a mobile computing device 152 (e.g., such as a smart phone, a
tablet computer, a wearable computing device, a laptop
computer, etc.) or a desktop computer 154.
(Id. at 7). The Specification further discloses that its system is
adapted to track pricing information in the context of an
electronic commerce environment such as the Internet, or other
suitable environment. The system may then use this pricing
information in any suitable way (e.g., the system may facilitate
re-pricing of a particular product so the product priced in a way
that is consistent with current market conditions, or the system
may be used by a company’s legal department to assure that
products are being sold at prices that are consistent with the
company’s contractual pricing obligations.)
(Id. at 9).
Finally, to the extent Appellant maintains that the claimed invention is
patent-eligible, i.e., that claim 11 amounts to “significantly more” than an
abstract idea, because “the Office action implicitly admits that the claims are
both novel and non-obvious” (Supp. Br. 31), Appellant misapprehends the
controlling precedent.
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. Although the second step in the Mayo/Alice framework is
termed a search for an “inventive concept,” the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for “an element or
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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.’” Alice, 573 U.S. at 217–18 (citation omitted).
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 569 U.S. at 591.
A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond,
450 U.S. at 188–89 (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, 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.”))).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 11 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 11, and claims 13–17,
and 20–27, which fall with independent claim 11.
DECISION
The Examiner’s rejection of claims 11, 13–17, and 20–27 under
35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED