Erick Kobres

Patent Trials and Appeals Board

Jan 15, 2020

13285386 - (D) (P.T.A.B. Jan. 15, 2020)

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.
13/285,386 10/31/2011 Erick Kobres 11-407 (1592.171US1) 6248
107681 7590 01/15/2020
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/15/2020 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERICK KOBRES
____________

Appeal 2018-007127
Application 13/285,386
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief
(“Appeal Br.,” filed February 15, 2018) and Reply Brief (“Reply Br.,” filed
July 3, 2018), and the Examiner’s Answer (“Ans.,” mailed May 3, 2018) and
Final Office Action (“Final Act.,” mailed September 29, 2017). Appellant
identifies NCR Corporation as the real party in interest. Appeal Br. 2.
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CLAIMED INVENTION
The claimed invention relates to “a method for visually conducting an
automated transaction with an enterprise system” (Spec. ¶ 6).
Claim 1, reproduced below with bracketed notations added, is the sole
independent claim and representative of the subject matter on appeal:
1. A non-transitory processor-readable medium
having instructions programmed into a mobile device to perform
a method, comprising:
[(a)] obtaining, on a processor of the mobile device, a
visual identifier for a transaction, the visual identifier acquired
from a terminal device of an enterprise and obtaining the
transaction as a pre-staged transaction previously defined by a
customer operating the mobile device and awaiting completion
by the customer at the terminal device;
[(b)] decoding, on the processor of the mobile device, the
visual identifier in order to obtain payment details for completing
the transaction;
[(c)] confirming, on the processor of the mobile device
the payment details and also augmenting, on the mobile device,
the payment details and receiving a personal identification
number (PIN) from the customer for completing the transaction
with the augmented payment details;
[(d)] generating, on the processor of the mobile device, a
visual transaction envelope for completing the transaction on the
terminal device, the visual transaction envelope includes
digitally signed and encrypted information for a transaction
identifier for the transaction, payment information for payment
of the transaction including the payment details, and a loyalty
card for the customer of the transaction;
[(e)] providing, from the processor of the mobile device,
the visual transaction envelope to the terminal device to conclude
the transaction; and
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[(f)] displaying, by the processor of the mobile device, a
screen in a display of the mobile device, the screen presenting an
interactive video presentation of the concluded transaction to the
customer to obtain instant feedback from the customer on
completion of the transaction.
REJECTION
Claims 1–12 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 8–10).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
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ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “creating a sales transaction in a
network,” which the Examiner concluded is similar to other concepts that
the courts have held abstract (Final Act. 2–4). The Examiner also
determined that the claims do not include additional elements or a
combination of elements sufficient to amount to significantly more than the
abstract idea itself (id. at 2, 5).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
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applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
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.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded by Appellant’s arguments that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 7–9). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification, including
the claim language, that the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is entitled “Techniques for Visually Conducting
Transactions,” and describes in the Background section that consumers are
increasingly using kiosks to conduct business with enterprises (Spec. ¶ 1).
What is considered a kiosk also is evolving with technology (id. ¶ 2) to
include digital signs, for example, that “provide advertisements and
mechanisms [e.g., near field communication (‘NFC’)] for users to interact
with the displays to perform transactions” (id.), e.g., purchases, registration
for loyalty programs, requesting additional information concerning a good or
service, etc. (id. ¶ 3). The Specification describes that NFC technologies are
increasingly becoming popular for automating consumer transactions;
however, according to the Specification, “NFC is a fragmented body of
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standards, which are not unified, and which have poor industry adoption and
cross-industry support” and “NFC adoption requires specialized hardware in
every mobile device or credit card as well as on each point of service
terminal for enterprises” (id. ¶ 4). The Specification, thus, concludes that
“NFC adoption is years away from full and successful deployment and it is
not entirely clear . . . if such a full scale deployment will or can occur” (id.
¶ 5).
The claimed invention is ostensibly intended to provide a viable
alternative to NFC for visually conducting automated transactions, i.e., to
provide “solutions for visually transacting that can provide NFC-like
experiences to consumers without NFC hardware” (id. ¶ 18). Claim 1, thus,
recites a method for visually conducting an automated transaction by:
(1) receiving, by a mobile application of a customer mobile device from an
enterprise terminal device, a visual identifier3 for a transaction awaiting
completion by the customer at the terminal device, i.e.,
obtaining, on a processor of the mobile device, a visual
identifier for a transaction, the visual identifier acquired from a
terminal device of an enterprise and obtaining the transaction as
a pre-staged transaction previously defined by a customer
operating the mobile device and awaiting completion by the
customer at the terminal device
(step (a)); (2) decoding the visual identifier to obtain payment details, i.e.,
“decoding, on the processor of the mobile device, the visual identifier in
order to obtain payment details for completing the transaction” (step (b));

3 The Specification discloses that “[t]he visual service identifier and visual
transaction envelope can be implemented as any form of digitally displayed
information such as a two-dimensional (2D) barcode, Quick Response (QR
code), machine or human readable text, animation, pattern of flashes, etc.”
(Spec. ¶ 17, see also id. ¶ 56).
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(3) confirming and augmenting the payment details, i.e., “confirming, on the
processor of the mobile device the payment details and also augmenting, on
the mobile device, the payment details and receiving a personal
identification number (PIN) from the customer for completing the
transaction with the augmented payment details” (step (c)); (4) generating a
visual transaction envelope including information for completing the
transaction on the terminal device and transmitting the visual transaction
envelope to the terminal device, i.e.,
generating, on the processor of the mobile device, a visual
transaction envelope for completing the transaction on the
terminal device, the visual transaction envelope includes
digitally signed and encrypted information for a transaction
identifier for the transaction, payment information for payment
of the transaction including the payment details, and a loyalty
card for the customer of the transaction; [and]
providing, from the processor of the mobile device, the
visual transaction envelope to the terminal device to conclude the
transaction
(steps (d) and (e)); and (5) displaying an interactive video presentation of the
concluded transaction to the customer, i.e., “displaying, by the processor of
the mobile device, a screen in a display of the mobile device, the screen
presenting an interactive video presentation of the concluded transaction to
the customer to obtain instant feedback from the customer on completion of
the transaction” (step (f)). These limitations, given their broadest reasonable
interpretation, recite a method for conducting a sales transaction, i.e., a
fundamental economic practice, which is a method of organizing human
activity and, therefore, an abstract idea. See 2019 Revised Guidance,
84 Fed. Reg. at 52. See also, e.g., Priceplay.com, Inc. v. AOL Advert., Inc.,
83 F. Supp. 3d 577, 583 (D. Del. 2015) (“Auctions, competitive activities,
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and sales transactions are all abstract ideas, and do not become non-abstract
when combined and conducted over the Internet.”), aff’d, 627 F. App’x 925
(Fed. Cir. 2016).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 1, beyond the abstract
idea, are a “processor of a mobile device” and a “terminal device” —
elements that, as the Examiner observes (Final Act. 5), are recited at a high
degree of generality, i.e., as generic computer components (see, e.g., Spec.
¶¶ 11, 13). We find no indication in the Specification, nor does Appellant
direct us to any indication, that the operations recited in claim 1 invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
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 that attributes an
improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention integrates the
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abstract idea into a “practical application,” as that phrase is used in the
Revised Guidance.4
Citing the Federal Circuit’s decision in Core Wireless Licensing
S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), Appellant
argues that the present claims “provide a specific manner of displaying a
limited set of information (at least based on the claim language reciting:
‘displaying . . . an interactive video presentation of the concluded transaction
to obtain instant feedback from the customer on completion of the
transaction)” (Appeal Br. 8–9). And Appellant asserts, “accordingly[,] the
claims are not abstract under Mayo step 1” (id. at 9).
Appellant’s reliance on Core Wireless is misplaced. There, the claims
were directed to “an improved user interface for electronic devices,
particularly those with small screens.” Core Wireless, 880 F.3d at 1363.
The specification described that “prior art interfaces had many deficits
relating to the efficient functioning of the computer, requiring a user ‘to
scroll around and switch views many times to find the right
data/functionality’” and disclosed that the claimed invention improved the
“efficiency of using the electronic device by bringing together ‘a limited list
of common functions and commonly accessed stored data,’ which can be
accessed directly from the main menu.” Id. The specification also disclosed

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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that “[t]he speed of a user’s navigation through various views and windows”
was improved because it “saves the user from navigating to the required
application, opening it up, and then navigating within that application to
enable the data of interest to be seen or a function of interest to be activated”
— disclosure that the Federal Circuit concluded “clearly indicates that the
claims are directed to an improvement in the functioning of computers,
particularly those with small screens.” Id.
Appellant asserts here that, as in Core Wireless, the claims provide “a
specific manner” of displaying a limited set of information. But, we find no
indication in the Specification, nor does Appellant direct us to any
indication, that claim 1 is directed to an improved interface analogous to the
one in Core Wireless that provides an improvement in computer
functionality.
Further addressing step one of the Mayo/Alice analysis, Appellant
summarily asserts that, by “providing processing for preparing a transaction
for processing in a visual encoded format on a mobile device for transaction
completion on a terminal device,” the pending claims “improve[ ] the
capabilities associated with transaction processing on both the mobile device
and the terminal device by extending and enhancing such existing
transaction processing in these devices” and are not abstract in accordance
with at least Enfish, McRO,5 and NVIDIA6 (Appeal Br. 9). Appellant also
maintains that the present claims improve “the technological processes

5 McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir.
2016).
6 We understand Appellant to be referencing Visual Memory LLC v.
NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017).
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associated with transaction processing” (id.). But, Appellant neither
explains how or in what way(s) “the capabilities” and “technological
processes” associated with transaction processing are improved, nor directs
us to any disclosure in the Specification to support this contention. Also,
although Appellant ostensibly maintains that the present claims are
analogous to those held patent eligible in Enfish, McRO, and NVIDIA,
Appellant does not explain in what way(s) the claims are similar or how
those similarities impact the analysis under step one of the Mayo/Alice
framework.
Appellant’s argument that the claims are not directed to an abstract
idea because the claims “are not preemptive of any existing transaction
processing technologies” is likewise unpersuasive (Appeal Br. 9; see also
Reply Br. 3–4). There is no dispute that the Supreme Court has described
“the concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216. But,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
fundamental economic practice, i.e., a method of organizing human activity
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and, therefore, an abstract idea, and that the additional elements recited in
the claim are no more than generic components used as tools to perform the
recited abstract idea. As such, they do not integrate the abstract idea into a
practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly
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)). Accordingly, we agree with the Examiner that
claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 adds specific limitations beyond the judicial exception that
are not “well-understood, routine, conventional” in the field, or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.
Responding to the Examiner’s Answer, Appellant asserts in the Reply
Brief that “processing visual identifiers and visual transaction envelopes in
the course of conducting a transaction is not conventional” (Reply Br. 3).
Yet, these limitations (i.e., “decoding . . . the visual identifier in order to
obtain payment details for completing the transaction” and “generating . . . a
visual transaction envelope for completing the transaction on the terminal
device,” as recited in claim 1) are part of the abstract idea, i.e., conducting a
sales transaction; they are not additional elements to be considered when
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determining whether claim 1 includes additional elements or a combination
of elements that is sufficient to amount to significantly more than the
judicial exception.7
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (internal quotations and citation omitted); see Mayo,
566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added) (internal citation omitted)). In other
words, the inventive concept under step two of the Mayo/Alice test cannot be
the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed

7 We also note, for the record, that the Specification discloses that the visual
service identifier and visual transaction envelope can be implemented as
human readable text (see Spec. ¶¶ 17, 56). Appellant has presented no
persuasive argument that processing human readable text in the course of
conducting a sales transaction is unconventional.
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invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”) (internal citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are a “processor of a mobile device” and a
“terminal device,” i.e., generic computer components used to perform
generic computer functions (Final Act. 5) — a determination amply
supported by, and fully consistent with the Specification (see, e.g., Spec.
¶¶ 11, 13).8
Appellant cannot reasonably maintain, nor does Appellant, that there
is a genuine issue of material fact regarding whether operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g.,
receiving, processing, and transmitting information. Indeed, the Federal
Circuit, in accordance with Alice, has “repeatedly recognized the absence of

8 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
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a genuine dispute as to eligibility” where claims 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 1373
(Moore, J., concurring) (citations omitted); see also BSG Tech, 899 F.3d
at 1291 (“BSG Tech does not argue that other, non-abstract features of the
claimed inventions, alone or in combination, are not well-understood,
routine and conventional database structures and activities. Accordingly, the
district court did not err in determining that the asserted claims lack an
inventive concept.”).
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 includes additional elements or a
combination of elements that is not well-understood, routine, and
conventional, because the claim is allegedly novel and/or non-obvious in
view of the prior art (Appeal Br. 9; see also Reply Br. 3). 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 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 Corp., 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 v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
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abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see
also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“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.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–12, which fall with
claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12 101 Eligibility 1–12
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED