CHANDRASHEKARAIAH, Pushpa et al.

Patent Trials and Appeals Board

Oct 30, 2019

13923506 - (D) (P.T.A.B. Oct. 30, 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.
13/923,506 06/21/2013 Pushpa CHANDRASHEKARAIAH ORA130205 (O286) 3368
51444 7590 10/30/2019
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
EXAMINER
CROHN, MARK I
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
10/30/2019 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):
DDay@KragLaw.com
MPusti@KragLaw.com
PTOMail@KragLaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________
Ex parte PUSHPA CHANDRASHEKARAIAH,
MOORTHY KAVASSERI, and SHUO TIAN
______________
Appeal 2019-000924
Application 13/923,506
Technology Center 2800
______________
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20 of Application 13/923,506. Final
Act. (Dec. 15, 2017). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Oracle International Corporation as
the real party in interest. Appeal Br. 2.
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BACKGROUND
The present Application generally relates to systems and methods for
analyzing utility data to identify diversion of a utility resource within a
distribution system. Specification (June 21, 2013) (“Spec.”) ¶ 8. The
Specification teaches that, with the adoption of “smart metering”
technology, a utility provider collects a greater volume of information than
previously collected manually. Id. ¶ 9. The Specification further teaches
that data from meter readings is stored in one system while billing data and
customer data are stored in different systems. Id. Figure 1 of the
Specification, reproduced below, depicts a system “associated with
analyzing utility data to identify energy diversion within a distribution
system of a utility provider.” Id. ¶ 11.

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Figure 1 shows an apparatus 100 such as a computer server, diversion
analyzer 105 that includes analysis logic 110 and theft logic 120, and utility
provider system 130 that stores data such as billing data, metering data, and
customer data. Spec. ¶¶ 12–14.
Claim 16 is representative of the Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
16. A method performed by a computing device including at
least one processor, the method comprising:
measuring an amount of utility usage associated with a
geographic area and storing the amount of utility usage as a
first portion of utility data associated with the geographic
area that includes a plurality of meters, wherein a second
portion of the utility data is retrieved from multiple data
sources including utility usage data collected from the
plurality of meters in the geographic area and billing data
corresponding to the plurality of meters;
analyzing the utility data at a first level of granularity by
selecting a distribution point that measures an amount of a
utility resource that flows through the distribution point and
into the geographic area to the plurality of meters;
wherein analyzing the utility data at the first level of
granularity includes applying, by at least the processor, first
diversion rules to identify characteristics associated with the
distribution point that correlate with diversion of the utility
resource;
calculating, by at least the processor, a theft score for the
distribution point that identifies a likelihood that the utility
resource is being diverted within the geographic area based,
at least in part, on the identified characteristics;
comparing, by at least the processor, the theft score to a
threshold value corresponding to a condition for diversion;
in response to determining that the utility resource is likely
being diverted within the geographic area based upon the
comparison:
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(i) selecting a sub-region from within the geographic
area, wherein the sub-region includes a first sub-set
of meters from the plurality of meters,
(ii) analyzing the utility data at a second level of
granularity different than the first level of
granularity by applying second diversion rules to the
utility data of the first sub-set of meters, and
(iii) calculating a second theft score for the sub-region;
compare the second theft score to a second threshold value
corresponding to a condition for diversion; and
in response to determining that the utility resource is likely
being diverted within the sub-region based upon the
comparison of the second theft score to the second threshold
value:
(i) generating, by at least the processor, an alert, and
(ii) transmitting the alert to a device to perform an
investigation of one or more service points in the
sub-region from which the utility resource is likely
being diverted.
Appeal Br. 51–52 (Claims Appendix) (reformatted for clarity).
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1–20 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final
Action (Dec. 15, 2017) (“Final Act.”) 6–11.
DISCUSSION
The Examiner rejected independent claims 1, 9, and 16 as directed to
non-statutory subject matter because the claims as a whole, considering all
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claim elements both individually and in combination, do not amount to
significantly more than an abstract idea. Final Act. 6–8.
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. Alice, 573 U.S. 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 mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). 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 (citations 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.
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(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.
In January of 2019, the PTO 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:
(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 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.
Appellant presents a single set of arguments for reversal of the
rejection of all claims with an emphasis on independent claims 1, 9, and 16.
See Appeal Br. 13, 15–17, 19, 20, 23, 24, and 26. Claim 1 is directed to a
computer readable medium storing instructions that cause a computer to
perform certain steps, claim 9 to an apparatus that includes analysis logic
stored in a computer readable medium including instructions to cause a
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processor to perform steps similar to claim 1, and claim 16 to a method
having steps similar to those required by claims 1 and 9. The Examiner uses
claim 16 as a representative claim. Final Act. 7–8.
Applying the Guidance, we are not persuaded of Examiner error. We
consider the steps enumerated in the Guidance in sequence.
Step 1
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.” 35 U.S.C. § 101.
Initially, we determine that independent claim 1 recites “[a] non-
transitory computer-readable medium.” Claim 9 recites “[a]n apparatus.” As
such, claims 1 and 9 are directed to articles of manufacture, which is a
statutory class of invention. See Appeal Br. 11; see also Examiner’s Answer
(Sept. 10. 2018) (“Answer”) 9. Claim 16 recites a “method” which is also a
statutory class of invention (“process”).
Step 2A, Prong 1
Under Step 2A, Prong 1 of the Guidance, we must determine whether
the claims recite an element falling within a judicial exception to section
101.
In rejecting the claims, the Examiner found that they are directed to an
abstract idea. Final Act. 6–8; see also Answer 10–11. Appellant argues that
the claims are not directed to an abstract idea on several bases. Appeal Br.
11–20. We address Appellant’s arguments regarding overgeneralization (id.
at 12) and fundamental economic processes (id.) under Step 2A, Prong 1.
We address Appellant’s remaining arguments regarding Step 2A under Step
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2A, Prong 2, below. Prior to addressing such arguments, we consider
whether the claims recite an abstract idea under the Guidance. Guidance 54.
Claim 16 is a method claim that requires 1) measuring utility usage
and storing such usage as “a first portion of utility data”; 2) retrieving “a
second portion of utility data”; 3) analyzing the utility data; 4) calculating a
theft score; 5) comparing the theft score to a threshold value; 6) performing
a similar set of steps for a sub-region; and 7) generating and transmitting an
alert. Appeal Br. 51–52 (Claims App.). Claims 1 and 9 include similar
steps (although drafted as article of manufacture claims). Id. at 41–43, 45–
47.
Under the Guidance, mathematical relationships, fundamental
economic practices, and mental processes are identified as abstract ideas.
Guidance 52. Here, at least the steps of measuring utility usage, calculating
a theft score and comparing such score to a threshold value concern
mathematical relationships. Additionally, at least the step of analyzing the
utility data is a mental process. See Electric Power Group, LLC v. Alstom,
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). In this regard, we observe that
the claims lack any limitation regarding the amount or complexity of data to
be collected and analyzed. Fundamental economic processes are discussed
below. Accordingly, we determine that the claims recite a judicial exception
to section 101.
Appellant initially argues that the Examiner merely describes the
claims at a “high level of abstraction and overgeneralization” and that the
rejection is therefore inadequate. Id. at 12.
An Examiner is required to provide an appellant reasonable notice as
to the basis of any rejection predicated upon patent ineligibility as set forth
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by 35 U.S.C. § 132. The Federal Circuit provided guidance in this regard as
follows:
[T]he PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132. That section “is violated when a rejection is 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).

In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Here, the Final Office Action states the Examiner’s findings that the
claims are ineligible as directed to a judicial exception. Final Act. 6.
Specifically, the Examiner finds that the claims are directed to an abstract
idea. Id. The Examiner further finds that “[c]laim(s) 1-20 pertain to a
judicial exception as mathematical concepts such as mathematical
algorithms, mathematical relationships, mathematical formulas, and
calculations without significantly more in the [c]laim(s) beyond those
abstract ideas.” Id. The Examiner additionally finds that “[c]laims 1-20
further pertain to a judicial exception as a fundamental economic practice of
detecting theft or fraud by comparison of good/services supplied to
goods/services paid for, or generally the processes of accounting and
bookkeeping.” Id. at 7. The Examiner quotes a lengthy portion of claim 16
and determines that the quoted limitations “are directed to an abstract idea,
or a composite of abstract ideas, comparable to one or more of the cases set
forth above.”
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In the “Response to Arguments” portion of the Final Action, the
Examiner describes the basis of the rejection as follows:
The Examiner[‘s] concern is that the claims are directed to
business practices known in the pre-Internet/computer age,
namely theft detection, theft deterrence and collection practices.
The present application employs abstract mathematical
processing to identify the theft, but those detection techniques
are in themselves ineligible abstract mathematical algorithms.
The “rooting” in computer technology of the present application
amounts to no more than using a generic computer to perform
the abstract mathematical algorithm.

Id. at 3. The Examiner further explains that the present claims are to “a
mathematical algorithm utilized to produce a mathematical result-the
calculation of theft scores, which are used for the fundamental economic
practices of preventing/remediating/investigating theft.” Id. at 5. We agree
with the Examiner’s determination that limitations requiring calculating a
theft score and comparing such score to a threshold value recite an abstract
mathematical concept. We further agree with the Examiner’s determination
that the calculation of such “theft score” recites a fundamental economic
practice.
In view of the foregoing, we determine that the Examiner provided an
analysis of the patent-eligibility of the claims and an articulated rationale for
the rejection that put Appellant on notice regarding the basis of the rejection
and provided sufficient information for Appellant to judge the propriety of
continuing the prosecution of the application.
Appellant additionally argues that the Examiner is in error in
determining that the subject matter of the claims pertains to a fundamental
economic process. Appeal Br. 12. The Examiner determines that in
addition to requiring a series of abstract steps, the claims “further pertain to
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a judicial exception as a fundamental economic practice of detecting theft or
fraud by comparison of good/services supplied to goods/services paid for, or
generally the processes of accounting and bookkeeping.” Final Act. 7. We
interpret this finding to refer to the recited limitation found in claims 1, 9,
and 16 requiring calculation of a theft score and comparison of the theft
score to a threshold value corresponding to a condition for diversion.
Appellant argues that a “utility resource (electricity, gas) that ‘flows
through the distribution point’ and is measured is not an ‘accounting
process.’” Appeal Br. 12. In its Reply Brief, Appellant argues that
“diverting electricity is not a theft of money but involves physically
changing an electrical device and physically changing the flow of electricity.
Detecting locations of this physical change is not detecting theft of money
via accounting methods.” Reply Brief (Nov. 13, 2018) (“Reply Br.”) 2.
Appellant further argues that “[t]he present claims do not analyze money or
financial documents and thus are not a[] fundamental economic practice.”
Id. Appellant additionally asserts that “The present claims are not directed
to generating utility bills or to an accounting process.” Id. at 4.
In the Answer, the Examiner maintains the determination that the
claims are to a fundamental business practice.
The claims make apparent that the purpose of the invention is to
detect and curtail theft/diversion identified essentially by an
accounting process (the claims make explicit reference to
“billing data” and “theft.”) Accounting is “the action or process
of keeping financial accounts,” (Oxford Dictionaries) which in
the context of utilities means charging for a significant portion
of the utilities supplied. Discovering theft by accounting is
generally referred to “auditing” and would be commonly
understood as searching for regions where the books do not
balance, i.e., there is a diversion/theft of utility that is not being
paid for.
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Answer 12.
We find Appellant’s arguments to be unpersuasive. Each independent
claim requires retrieval and analysis of “utility data” that includes “utility
usage data collected from the plurality of meters in the geographic area and
billing data corresponding to the plurality of meters.” Appeal Br. 41, 45, 51
(Claims Appendix). Dependent claims 2 and 10 require instructions that
“cause the processor to correlate the billing data, the utility usage data and
the customer data to identify relationships between each other.” Id. at 43,
48. Dependent claims 4 and 19 require that “the characteristics that correlate
with the diversion of the utility resource include payment pattern changes,
consumption changes, or tampering events.” Id. at 44. This supports the
Examiner’s finding that “the purpose of the invention is to detect and curtail
theft/diversion identified essentially by an accounting process.” Answer 12.
Nor has Appellant shown error in the Examiner’s determination that
“[a]ccounting is ‘the action or process of keeping financial accounts.’” Id.
(citing Oxford Dictionaries). Accordingly, Appellant has not shown error in
the Examiner’s conclusion that the claims recite a fundamental economic
practice.
Accordingly, we conclude that the claims recite one or more abstract
ideas.

Step 2A, Prong 2
Next, we determine whether the claim is directed to the abstract
concept itself or whether the abstract concept is integrated into a practical
application. Guidance 54. Appellant presents several arguments below.
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Appellant argues that the claims are directed to an improvement to an
existing technological process. Appeal Br. 13–17. Appellant relies on
Enfish2 in support of the proposition that “claims ‘purport[ing] to improve
the functioning of the computer itself,’ or ‘improv[ing] an existing
technological process’ might not succumb to the abstract idea exception.”
Id. at 13. Appellant contends that “[c]laims 1, 9, and 16 are directed to a
system that improves an existing technological process of identifying
physical locations of possible energy diversion in a utility grid system by
using novel computing techniques.” Id. at 13.
In Enfish, however, the specification of the patents at issue expressly
explained how the claimed data storage and retrieval system improved
computer function. See Enfish, 822 F.3d at 1333 (explaining that the patents
at issue “teach that multiple benefits flow from this design” including “faster
searching,” “more effective storage of data,” and “more flexibility in
configuring the database”). In the present case, Appellant cites to several
portions of the Specification indicating the complexity of managing and
correlating meter data with customer data and/or billing data. See Appeal
Br. 14. Appellant, however, does not identify any specific disclosures in the
Specification asserting that improved computer (or other technical) function
results from performing the steps recited in representative claim 16 (or any
claim), nor does Appellant identify any other persuasive evidence suggesting
an improvement in computer function. Rather, the claims are directed, at
their root, to data collection and analysis. Accordingly, Appellant has not
shown that the claims improve an existing technological process.

2 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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Appellant argues that the present claims are similar in nature to the
claims found to be patent eligible in Diamond v. Diehr, 450 U.S. 175 (1981)
and McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Appeal Br. 17–19.
Appellant asserts that claim 1 in Diamond v. Diehr was to a process
for “opening the press automatically when a said comparison indicates
equivalence.” Id. at 17. Appellant then argues that “[p]reventing/
remedying/investigating a diversion of a utility resource or opening a press
are both physical actions performed based on previous computer processing
for controlling when to perform the action.” Id. Appellant, however, does
not specifically identify any physical step in the claims at issue. Id.; see also
Answer 14–15.
Appellant further argues that McRO, Inc. v. Bandai Namco Games
America supports its arguments. Appeal Br. 17–19. Appellant quotes a
USPTO Memorandum providing that “[t]he basis for the McRo court’s
decision was that the claims were directed to an improvement in computer-
related technology (allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’ that
previously could only be produced by human animators), and thus did not
recite a concept similar to previously identified abstract ideas.” Id. at 18
(quoting USPTO Memorandum regarding Recent Subject Matter Eligibility
Decisions, dated November 2, 2016). Appellant asserts that the
Specification “describes the subject matter as improving a computer’s ability
to identify resource diversion through the use of specific rules, rather than
‘physically monitoring or patrolling the distribution system to identify
locations of energy diversion.’” Id.
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The Examiner finds the foregoing unpersuasive. Answer 15–18. The
Examiner determines that “the putative improvement is to the abstract idea
rather than the computer technology.” Id. at 18. The Examiner further
determines that, “[i]n the present claims, a generic computer is used as a tool
to mathematically process the large amount of data provided by smart meter
systems in utility grids which were known at the time of the filing of the
application.” Id.
In McRO, the final step of the claimed method results in the
production of “lip synchronization and facial expression control of . . .
animated characters.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1308 (Fed. Cir. 2016). The court determined that “[t]he claimed
process uses a combined order of specific rules that renders information into
a specific format that is then used and applied to create desired results: a
sequence of synchronized, animated characters.” McRO, 837 F.3d at 1315.
Thus, the process of McRO includes a result that is not abstract. Here,
Appellant has not shown that the claims include a comparable limitation.
Appellant additionally argues that the present claims are analogous to
those found patent eligible in Thales Visionix Inc. v. U.S., 850 F.3d 1343
(Fed. Cir. 2017). In response to an earlier office action, Appellant argued
that the claims are patent eligible based on Thales. See Response to Non-
Final Office Action (Oct. 2, 2017) 7. In the Final Action, the Examiner
responded that the “unconventional configuration of the sensors in Thales
provided significantly more than the abstract idea under the Alice/Mayo
test” but that there is “nothing comparable in the present claims.” Final Act.
4.
In its principal brief, Appellant argues that the claims are similar to
those at issue in Thales because they “efficiently analyze utility data using a
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novel technique that includes analysis at multiple levels of granularity in a
utility grid with various diversion rules to improve how to identify locations
of possible resource diversion in sub-regions of the grid.” Appeal Br. 19.
Appellant argues that the invention in Thales used multiple sensor data
sources in a nonconventional manner to reduce errors. Appeal Br. 19.
Appellant further argues that each sensor of the Thales claims “is simply a
source of data that was combined and the court stated the claim was directed
to an improvement, not an abstract idea.” Id.
This is not persuasive. In Thales, the Court found that “the claims are
directed to systems and methods that use inertial sensors in a non-
conventional manner to reduce errors in measuring the relative position and
orientation of a moving object on a moving reference frame.” Thales
Visionix Inc., 850 F.3d at 1348–49. Here, Appellant has not persuasively
shown that any element of the claim is used in a nonconventional manner.
Rather, Appellant argues that it performs nonconventional analysis.
Appellant further argues that claim 22 (of the patent at issue in
Thales) “is a method and does not positively recite specific sensors, but only
recites using data from the sensors.” Appeal Br. 20. Claim 22 requires, in
part, “determining an orientation of an object relative to a moving reference
frame based on signals from two inertial sensors mounted respectively on
the object and on the moving reference frame.” Thales, 850 F.3d at 1345–
46 (emphasis added). Thus, the claim requires “two inertial sensors,” one
mounted on the object and one mounted on the moving reference frame.
This is the unconventional use of inertial sensors that is fundamental to the
court’s decision. Accordingly, Appellant is in error in stating that claim 22
“only recites using data from the sensors.”
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Under the Step 2B portion of its brief, Appellant presents argument
that the claims are “specific implementations of limitations that define a
particular, practical application for identifying utility resource diversion.”
Appeal Br. 21–23. We consider such arguments here under Step 2A, Prong
2 of the Guidance.
Appellant argues that the steps set forth in claim 1 permit one “to
determine that a utility resource is likely being diverted within a sub-
region.” Id. at 21. Appellant concludes that this “transforms the alleged
abstract idea into practical application (of identifying a location of energy
diversion) and into a patent eligible invention.” Id. (emphasis omitted).
Similarly, Appellant argues that the claims are “specific implementations of
limitations that define a particular, practical application for identifying
utility resource diversion within a smaller sub-region of a large geographical
area of a grid system.” Id. at 23.
The Guidance provides that one evaluates integration into a practical
application by “[i]dentifying whether there are any additional elements
recited in the claim beyond the judicial exception(s)” and determining
“whether they integrate the exception into a practical application.”
Guidance 54–55 (emphasis added). Here, Appellant has not persuasively
shown an individual claim element that falls outside of a judicial exception.
Accordingly, Appellant has not shown integration into a practical
application.

Step 2B
Next, we determine whether the claim includes additional elements
that render the claims patent eligible because the additional elements provide
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significantly more than the judicial exception. Alice, 573 U.S. at 217–18
(quoting Mayo, 566 U.S. at 72–73). In particular, we consider whether any
additional elements or combination of elements recited in the claims adds a
specific limitation or limitations that transform the subject matter of the
claims into a patent-eligible “inventive concept.”
The Examiner determines that the claims do not include “significantly
more” such that the claims are to a patent-eligible concept. Final Act. 8.
Appellant presents several arguments in support of its contention that the
claims include significantly more than the recited abstract elements. Appeal
Br. 23–40.
Appellant, argues that claims 1, 9, and 16 use a nonconventional and
nongeneric arrangement of elements that amounts to an inventive concept.
Id. at 24–26. Appellant cites to precedent where the Federal Circuit held
that “[b]y taking a prior art filter solution (one-size-fits-all filter at the ISP
server) and making it more dynamic and efficient (providing individualized
filtering at the ISP server), the claimed invention represents a ‘software-
based invention[ ] that improve[s] the performance of the computer system
itself.’” Id. at 23 (quoting BASCOM Global Internet Services v. AT&T
Mobility, 827 F.3d 1341, 1351 (Fed. Cir. 2016)). Here, the claims do not
improve the performance of a computer system. Rather, the computer
system is almost incidental to the claims. Claim 16, for example, is to a
“method performed by a computing device including at least one processor.”
The method of claim 16 may improve theft detection but does not relate to
improved computing.
Appellant further argues that “[b]ased on the recent Federal Circuit
decision in Berkheimer v. HP, the Examiner has not supplied the appropriate
evidence to support a conclusion that the claim elements are ‘well-
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understood, routine, and conventional.’” Appeal Br. 25 (emphasis omitted).
The Berkheimer case concerns whether an “additional element” (beyond the
judicial exception) is merely routine and conventional or “whether the
additional elements transform the nature of the claim into a patent-eligible
application.” Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018)
(internal quotations omitted); see also Guidance at 56 (“whether the
additional elements amount to significantly more than the exception itself”).
Appellant has not identified any particular “additional elements” nor shown
how such elements would transform the nature of the claim. See Appeal Br.
24–25 (regarding claim 1.).
Appellant additionally argues that the claims do not preempt all ways
of identifying utility resource diversion. Id. at 26. Appellant asserts that
“[c]laims 1, 9 and 16 do not preempt all ways of the allegedly abstract idea. .
. . Other approaches of identifying utility resource diversion do not require
the sequence of actions as claimed.” Id.
The Federal Circuit has held that “the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The court has
similarly held “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.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015). Accordingly, Appellant’s argument in this regard
is not persuasive.
Appellant responds to the Examiner’s citation of a number of Federal
Circuit cases. Appeal Br. 27–40. In response, Appellant quotes a claim
from each case, asserts that the claims of the precedential case have “no
similarities to the present claims,” sets forth a lengthy excerpt of claim 1,
Appeal 2019-000924
Application 13/923,506
20
and again avers that a comparison indicates that there are no similarities. Id.
The Examiner contends that “the cases were asserted for their legal
conclusions in order to identify the types of inventions that are not eligible
under Section 101 because of an identified judicial exception.” Answer 29.
A general discussion of caselaw followed by an assertion that the
cited cases are not similar to the instant case is insufficient to show error in
the Examiner’s determination. See 37 CFR § 41.37(c)(1)(iv).
* * * *
In view of the foregoing, as well as the facts and reasoning set forth in
the Final Action and the Examiner’s Answer, we affirm the rejection of
claims 1–20 under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–20 101 Nonstatutory subject matter 1–20
Overall
Outcome 1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED