Ex Parte Amir et al

Patent Trials and Appeals Board

Apr 1, 2019

14017774 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/017,774 09/04/2013 ArnonAmir
63822 7590 04/03/2019
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ARC920050029US2 5341
EXAMINER
CHEN, GEORGE YUNG CHIER
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
04/03/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
63822@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNON AMIR, MYRON D. FLICKNER,
DOUGLAS W. McDA VID, and JAMES C. SPOHRER
Appeal2017-010231
Application 14/017,774 1
Technology Center 3600
Before ERIC S. FRAHM, NORMAN H. BEAMER, and
JOHN D. HAMANN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm the Examiner's rejections of (i) claims 1-30 for
obviousness-type double patenting over certain claims of U.S. Patent No.
8,560,642; and (ii) claims 1-30 under 35 U.S.C. § 101 as being directed to
1 As noted by Appellant in the Appeal Brief (App. Br. 1 ), the applicant and
real party in interest is International Business Machines Corporation. This
application is related to U.S. Patent Application Serial No. 11/185,642, filed
July 20, 2005, issued October 15, 2013, as U.S. Patent No. 8,560,462.
Appeal2017-010231
Application 14/017,774
(a) non-statutory subject matter, such as a transitory computer readable
storage device ( claims 1-20 and 25-27); and/or (b) patent-ineligible subject
matter, without significantly more ( claims 21-24 and 28-30).
Disclosed Invention and Illustrative Claim
Appellant's disclosed invention concerns the trend of introducing new
software applications to assist in employee tasks, wherein employees and
employers implementing the new software face adverse impacts to
productivity due to time spent learning new software. Spec. 1:4--2:3.
"When a new application is rolled out to replace a current application, there
may be a one-time ramp-up cost in learning the tool by users, which may
take several uses of the tool, and there is also an on-going tool usage cost
which likewise involve a learning curve by users." Spec. 11: 5-7.
The disclosed invention relates to (i) a method of managing usage
costs of a resource, and (ii) computer systems and computer program
products for implementing the method. Title; Spec. 1 :4--2:3; Abstract. By
managing resource costs, compensation 2 can be made in response to usage
costs due to replacement of a current software application with a new
software application. Spec. 5:3-5; Figs. 1, 2. The focus of Appellant's
disclosed invention is "to improve employer productivity in conjunction
with software application work projects" (Spec. 2:2-3; see also Spec. 4--5)
by managing the usage costs of an asset (Abstract; Spec. 2:5--4:7) and
2 Compensation for a usage burden is defined by Appellant as being a
financial value (Spec. 15: 1-7), which in tum, is defined as "a monetary
value or an equivalent thereof ( e.g., an asset whose market value is the
monetary value), a credit, withdrawal of a debit, 'funny money' which is a
bookkeeping entry of a credit or debit wherein no funds are actually
transferred, etc." (Spec. 14: 19-21 ).
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Application 14/017,774
compensating a business entity (Abstract; Spec. 4:7-20). Usage costs are
based on application usage time (see Spec. 12: 1-20), which can be measured
or estimated using well-known techniques (see Spec. 12:1-14 incorporating
two known methods of determining application usage time), and a usage
burden is the extra cost incurred by a user in using one application over
another, and can be a function of time (see Spec. 14:2-18).
Independent claims 1, 17, and 25 recite computer program products
including computer readable storage devices storing code for implementing
methods of (i) managing a usage cost of a resource ( claims 1 and 17), and
(ii) compensating a user of a software application ( claim 25). Remaining
independent claims 21 and 28 recite computer systems including a
processor, memory, and computer program products including computer
readable storage devices storing code for implementing methods of
(i) managing a usage cost of a resource ( claim 21 ), and (ii) compensating a
user of a software application ( claim 28). Independent claim 1, reproduced
below with emphases added, is illustrative of the claimed subject matter:
1. A computer program product comprising a computer
readable storage device storing computer readable program code
which, upon being executed by a processor of a
computer system, implements a method for managing a usage
cost of a resource, said method comprising:
said processor providing access of the resource to a user
component of a business entity after an asset has been developed
by a development component of the business entity, wherein the
resource consists essentially of the asset or both the asset and a
sendee, wherein the sendee supports usage of the asset and is
provided by a sendee provider, and wherein if the
resource consists essentially of the asset and the service then said
accessing comprises accessing the service from the sendee
provider, and
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Application 14/017,774
said processor providing to the user component
compensation from at least one compensator in response to the
user component having incurred a usage burden from using
the resource, wherein the usage burden is an expense of using
the resource in excess of an expense of using a predetermined
reference resource, wherein the compensation has a magnitude
that, is a function of the usage burden, wherein the at least one
compensator comprises at least one of:
(A) a component of the business entity and (B) the service
provider if the resource consists essentially of the asset and the
service, wherein the asset is a new software application
developed by the development component, wherein the
predetermined reference resource is a reference software
application, wherein the usage burden comprises a usage time of
an extra amount of time spent in using the new software
application in the computer system relative to a time of using the
reference software application in the computer system, and
wherein a reduction in the usage time spent in using the new
software application in the computer system is facilitated by the
compensation's functional dependence on the usage burden, and
wherein said providing compensation reduces the usage time
spent in using the new software application in the
computer system.
REJECTIONS
The Examiner made the following rejections, which are before us on
appeal:
(1) Computer program product and computer system claims 1-30
stand rejected based on the judicially created doctrine of non-statutory
obviousness-type double patenting, over method claims 1-20, 23-28, and
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30-33 of U.S. Patent No. 8,560,642, issued October 15, 2013). 3 Final Act.
4--5; Ans. 2.
(2) Claims 1-30 stand rejected under 35 U.S.C § 101 as being directed
to non-statutory subject matter. Final Act. 2--4; Ans. 3-8. This rejection
includes rejections of:
(a) claims 1-20 and 25-27 under§ 101 as being directed to
non-statutory subject matter (such as a signal per se, transitory medium or
product), which is not directed to one of the four statutory categories of
subject matter (Final Act. 3--4; Ans. 3);4 and
(b) claims 21-24 and 28-30 under§ 101 as being directed to
patent-ineligible subject matter, without significantly more (Final Act. 2-3;
Ans. 3-8).
ISSUES
Based on Appellant's arguments in the briefs (App. Br. 9-22; Reply
Br. 2-14), the disputed issue on appeal is whether or not the Examiner erred
in rejecting claims 1-30 under 35 U.S.C § 101. This disputed issue, in tum,
includes the two issues herein presented on appeal:
3 Appellant does not present specific arguments for claims 1-30, rejected
based on the judicially created doctrine of non-statutory obviousness-type
double patenting, or otherwise rebut the Examiner's prima facie case in
regards to the obviousness-type double patenting rejection of claims 1-30
(see App. Br. 9; Reply Br. 2).
4 Claims 1-30 were rejected as being signals per seat page 3 of the Final
Rejection. However, the rejection of computer system claims 21-24 and
28-30 was withdrawn by the Examiner in the Examiner's Answer (see Ans.
2). Accordingly, only the rejection of claims 1-20 and 25-27 on this basis is
before us.
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Under the US PTO' s Revised Patent Eligibility Guidance, informed by
our governing case law concerning 35 U.S.C. § 101, did the Examiner err in
concluding:
(1) claims 1-20 and 25-27 are directed to non-statutory subject
matter; and/ or
(2) claims 21-24 and 28-30 are directed to a judicial exception, i.e.,
an abstract idea, without significantly more, and thus are patent-
ineligible under § 101?
PRINCIPLES OF LAW
We first note "[ w ]hether a [patent] claim is drawn to patent-eligible
subject matter is an issue of law that [is] review[ed] de nova." SiRF Tech.,
Inc. v. Int'! Trade Comm 'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. 5
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under § 101.
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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 Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 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. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "[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 192 ("We view
respondents' claims as nothing more than a process for molding rubber
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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 tum 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. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter,
"Revised Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
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Under the Revised Guidance, after determining that a claim falls
within one of the statutory categories under § 101 (hereinafter, "Step l"), 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); 6 and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). 7
See Revised Guidance, 51-52, 54--55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. 8
See Revised Guidance, 56.
Step 2A(i) -Abstract Idea
Informed by our judicial precedent, the recent Revised Guidance
extracts and synthesizes key concepts identified by the courts as abstract
6 Referred to as "Revised Step 2A, Prong l" in the Revised Guidance
(hereinafter, "Step 2A(i)").
7 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance
(hereinafter, "Step 2A(ii)").
8 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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ideas to explain that the abstract idea exception includes the following
groupings of subject matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity -
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
9 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the Revised Guidance for analyzing the claim should be followed. See
Revised Guidance, Section III.C.
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Step 2A(ii) ~ Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning ofa
Computer or To Any Other Technology or Technical Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05( c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
( 6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
10 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B - "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 11 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception ( e.g., because the additional elements were
unconventional in combination). 12 Therefore, if a claim has been
determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under
Step 2B to determine whether they provide an inventive concept (i.e.,
whether the additional elements amount to significantly more than the
exception itself). 13
11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
13 We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, 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 Revised Guidance,
III.B. 14
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the specification or to
a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional element( s ).
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05( d)(II) as noting the well-understood, routine,
conventional nature of the additional element( s ).
14 In accordance with existing Step 2B guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
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3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element( s ).
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s).
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be
present; or
(b) 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.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
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ANALYSIS
Step 1
Under Step 1 in the patent-eligibility inquiry under § 101, in
accordance with the Revised Guidance, we determine whether a claim is
directed to one of the four statutory categories of invention, i.e., a process,
machine, manufacture, or composition of matter.
Computer Program Product Claims 1-20 and 25-27
Independent claims 1, 17, and 21 recite, in pertinent part: "A
computer program product comprising a computer readable storage device
storing computer readable program code ... " (emphasis added). Appellant
contends "[c]laims 1-20 and 25-27 recite a computer program product and
are thus directed to an article of manufacture which is a statutory category of
invention" (App. Br. 15). The Examiner, under the broadest reasonable
interpretation, finds the computer readable storage device making up the
computer program product recited in claims 1, 17, and 21 to cover both
transitory and non-transitory forms of media, including transitory
propagating signals (Final Act. 3--4; Ans. 3). In response, Appellant
contends that (i) page 32, lines 5-11 does not support the scope of "computer
readable storage device" as including transitory signals or signals per se
(Reply Br. 3); and (ii) "Appellant[']s specification explicitly states that a
computer program product is an article of manufacture" (Reply Br. 4). We
have reviewed Appellant's arguments and find them unpersuasive, for the
following reasons:
Page 32, lines 9-11 of the Specification, cited by Appellant for
supporting the interpretation that the computer readable storage device is
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non-transitory (Reply Br. 3) merely describes a general example of the
composition of the computer system 90 which "may comprise said computer
usable medium ( or said program storage device)" (Spec. 32: 10-11 ), which
can be composed of "a computer program product ( or, alternatively, an
article of manufacture)" (id.). In other words, the invention is disclosed as
being embodied in code stored on a computer program product or an article
of manufacture (id.). Therefore, Appellant's contention that the
Specification "explicitly states that a computer program product is an article
of manufacture" (Reply Br. 4 (emphasis added)), is unpersuasive. In fact,
Appellant's Specification supports the opposite understanding, namely that a
computer program product is not an article of manufacture.
We find a reading of the entire description of Figure 19 (Spec. 31: 11-
32 :21 ), showing the computer system 90, is dispositive to our analysis,
( reproduced in pertinent part):
FIG. 19 illustrates a computer system 90 for implementing
aspects of the present invention such as, inter alia, for computing
the magnitude of the compensation or the amount
of compensation contributed by each compensator. The
computer system 90 comprises a processor 91, an input device
92 coupled to the processor 91, an output device 93 coupled to
the processor 91, and memory devices 94 and 95 each coupled to
the processor 91. The input device 92 may be, inter alia, a
keyboard, a mouse, etc. The output device 93 may be, inter alia,
a printer, a plotter, a computer screen, a magnetic tape, a
removable hard disk, a floppy disk, etc. The memory devices 94
and 95 may be. inter alia, a hard disk, a floppy disk, a magnetic
tape, an optical storage such as a compact disc (CD) or a digital
video disc (DVD), a dynamic random access memory (DRAM),
a read-only memory (ROM), etc. The memory device 95 includes
a computer code 97. The computer code 97 includes an
algorithm for implementing aspects of the present invention such
as, inter alia, for computing the magnitude of the compensation
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or the amount of compensation contributed by each
compensator. The processor 91 executes the computer code 97.
The memory device 94 includes input data 96. The input data 96
includes input required by the computer code 97. The output
device 93 displays output from the computer code 97. Either or
both memory devices 94 and 95 (or one or more additional
memory devices not shown in FIG. 19) may be used as a
computer usable medium (or a computer readable medium or a
program storage device) having a computer readable program
code embodied therein and/or having other data stored therein,
wherein the computer readable program code comprises the
computer code 97. Generally, a computer program product ( or,
alternatively, an article of manufacture) of the computer system
90 may comprise said computer usable medium ( or said program
storage device).
Thus the present invention discloses a process for
deploying or integrating computing infrastructure, comprising
integrating computer-readable code into the computer system
90, wherein the code in combination with the computer system
90 is capable of performing a method for implementing aspects
of the present invention such as, inter alia, for computing
the magnitude of the compensation or the amount of
compensation contributed by each compensator.
While FIG. 19 shows the computer system 90 as a
particular configuration of hardware and software, any
configuration of hardware and software, as would be known to a
person of ordinary skill in the art, may be utilized for the
purposes stated supra in conjunction with the particular
computer system 90 of FIG. 19. For example, the memory
devices 94 and 95 may be portions of a single memory device
rather than separate memory devices.
Spec. 31: ( emphases added).
Appellant's Specification, therefore, describes the invention as being
computer program code 97 which (i) "includes an algorithm for
implementing aspects of the invention" (Spec. 31:21-32:1); (ii) is executed
by a processor 91 (see Spec. 32:2-3); and (iii) is stored on memory device
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95 (see Spec. 31 :20-21 ). Further, memory device 95 "may be, inter alia, a
hard disk, a floppy disk ... " or other forms of hard (i.e., non-transitory)
memory (Spec. 31: 18).
We note the open-ended "may be, inter alia," exemplary language at
page 31, line 18 of the Specification, used to describe the composition of the
memory device 95, which contains the algorithm of the invention. This
portion of the Specification thus describes the memory device 95 as taking
several forms (i.e., among other things), both non-transitory (e.g., hard
memory such as a hard disk, DRAM, or ROM) as one example, and
transitory (e.g., propagating signals) as covered by the other things described
by "inter alia" (id.).
Additionally, regarding the "computer readable storage device"
recited in claims 1, 17, and 25, we find PTAB precedential opinion Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) is directly on point and
controlling. Under Mewherter, the scope of a "computer readable storage
medium" was held to encompass transitory media such as signals or carrier
waves, where, as here, the Specification does not expressly disclaim
transitory forms. Moreover, to the extent the scope of the "computer
readable storage device" of claims 1, 17, and 25 broadly covers both
statutory and non-statutory (transitory signal) embodiments, "[t]he four
categories [of§ 101] together describe the exclusive reach of patentable
subject matter. If a claim covers material not found in any of the four
statutory categories, that claim falls outside the plainly expressed scope of
§ 101 even if the subject matter is otherwise new and useful." In re Nuijten,
500 F.3d 1346, 1354 (Fed. Cir. 2007).
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Furthermore, we do not find the term "device" to be effectively
narrower than the term "medium," as far as limiting the claimed subject
matter to a non-transitory element. For example, Google defines "device" as
"a plan, scheme, or trick with a particular aim" (noun two). 15
Dictionary.com defines "device" as "a plan or scheme for effecting a
purpose" (noun two) or "an invention or contrivance" (noun one). 16 Further,
a plan or invention serving a particular aim/purpose can be a computer
program or software -just as Appellant defines the invention of claim 20 in
their own Specification as outlined above.
We note that Appellant is not precluded from amending claims 1, 1 7,
and 25 to overcome this rejection ( e.g., by amending claims 1, 17, and 25 to
read "a non-transitory computer readable storage device"). Nor is
Appellant precluded from amending the Specification to specifically define
"computer readable storage device," "computer readable medium,"
"computer usable medium," and/or "program storage device" to include only
statutory storage media. Guidance on this point is provided in U.S. Patent &
Trademark Office, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) ("A claim drawn to such a
computer readable medium that covers both transitory and non-transitory
embodiments may be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the
limitation 'non-transitory' to the claim."). See also U.S. Patent &
15 Device Definition, Google.com,
https://www.google.com/?gws_rd=ssl#q=device+definition, (last visited
March 4, 2019.)
16 Device Definition, Dictionary.com,
http://www.dictionary.com/browse/device, (last visited March 4, 2019).
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Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC
§ 101 (August 2012 Update) (pp. 11-14), available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf
(noting that while the recitation "non-transitory" is a viable option for
overcoming the presumption that those media encompass signals or carrier
waves, merely indicating that such media are "physical" or tangible" will not
overcome such presumption).
Applying this guidance here, we find Appellant's Specification does
not provide a definition that clearly and unequivocally disclaims the claim
term "computer readable storage device" ( claims 1, 17, and 25) from
encompassing transitory storage devices/media. 17 We note further that
Appellant does not allege that, and Appellant's Specification is silent as to
whether, all disclosed and claimed computer readable storage devices are
non-transitory only (and not transitory).
Therefore, on this record, we are not persuaded the Examiner's
broader reading, that the term "computer readable storage device"
encompasses transitory media/devices such as propagating signals (see Final
Act. 3--4; Ans. 3), is overly broad or unreasonable. 18 As discussed supra,
claims 1, 17, and 25 are product claims that covers transitory media/devices.
17 See Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509, 513-14 (Fed. Cir.
2015); Omega Eng'g., Inc. v. Raytek Corp., 334 F.3d 1314, 1323-26 (Fed.
Cir. 2003). Ambiguous language cannot support disavowal. Omega, 334
F.3d at 1324; see also Schindler Elevator Corp. v. Otis Elevator Co., 593
F.3d 1275, 1285 (Fed. Cir. 2010).
18 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) ( citation omitted).
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Therefore, as discussed above, claims 1, 17, and 25 ( as well as claims 2-16,
18, 19, 26, and 27 depending respectively therefrom) are directed to non-
statutory, and thus, patent-ineligible subject matter. 19 Therefore, under the
USPTO' s Revised Patent Eligibility Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, the Examiner did not err as to Issue
One in concluding claims 1-20 and 25-27 are directed to non-statutory
subject matter. This determination concludes the eligibility analysis for
claims 1-20 and 25-27. Thus, we sustain the Examiner's rejection of claims
1-20 and 25-27 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
Computer System Claims 21-24 and 28-30
Claims 21-24 and 28-30, as computer system claims, recite at least
one of the enumerated categories (e.g., machine and/or manufacture) of
eligible subject matter in 35 U.S.C. § 101. Therefore, as to claims 21-24
and 28-30, we continue our analysis under Step 2A(i) of the Revised
Guidance to determine whether the claims (1) recite a judicial exception ( a
law of nature, natural phenomenon, or subject matter within the enumerated
groupings of abstract ideas above); and (2) the claims are patent-eligible.
For the reasons that follow, we conclude that claims 21 and 28 (as
well as claims 22-24, 29, and 30 depending respectively therefrom) are
directed to a judicial exception ( a law of nature, natural phenomenon, or
subject matter within the enumerated groupings of abstract ideas above)
because the recited claim limitations fall within the enumerated groupings of
abstract ideas - namely mathematical concepts, certain methods of
19 See n.8, supra.
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organizing human activity ( e.g., fundamental economic principles or
practices; commercial or legal interactions; managing personal behavior or
relationships or interactions between people, and mental processes-
concepts performed in the human mind).
Based on Appellant's arguments in the briefs (see App. Br. 10-21;
Reply Br. 4--13), (i) we select claim 28 as representative of the group of
claims (claims 21-24 and 28-30), pursuant to our authority under
37 C.F.R. § 4I.37(c)(iv); and (ii) the remaining issue before us is whether
independent claim 28 as well as claims 21-24, 29, and 30 grouped therewith
are directed to a judicial exception without significantly more.
Step 2A(i): Does Representative Claim 28 Recite a Judicial Exception?
We have reviewed the Examiner's subject matter eligibility rejection
of claims 21-24 and 28-30 (Final Act. 2-3) in light of Appellant's
contentions that the Examiner has erred (App. Br. 10-21; Reply Br. 4--13).
Further, we have reviewed the Examiner's response to Appellant's
arguments (Ans. 3-8). We disagree with Appellant's' contentions that the
Examiner erred in rejecting claim 28 under 35 U.S.C. § 101. More
specifically, we disagree with Appellant's contentions that claim 28 does not
recited an abstract idea or combination of abstract ideas.
The Examiner finds the claims to recite (i) "fee calculation" (Final
Act. 2) which is a mathematical concept as well as a fundamental economic
practice; (ii) "calculating fees that need[ sic] to be compensated to at least
one party and compensate to the receiving party" which is also a
mathematical concept and a fundamental economic practice (Final Act. 2);
(iii) "compensation" based on usage burden/cost and calculating a
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compensation amount (Ans. 6-8) which are a fundamental economic
practice, mathematical concept, and mental process; and (iv) the "business
practice" of improving productivity (Ans. 5) which is a fundamental
economic practice and a mental process. We agree.
Appellant argues (App. Br. 14--16, 18) that the claims are directed to
reducing usage time spent in using new software applications in the
computer system, as recited in the last where clause of each independent
claim. Appellant contends that because reducing usage time "increases time
available for implementing other uses of the computer system," the claims
are not directed to an abstract idea (App. Br. 15). Appellant further contends
that "compensating the user is a means to an end (i.e., reduction of usage
time) and is not an end in itself and is not the purpose of the claims of the
present invention" (App. Br. 16)( emphasis added).
The Examiner responds in the Examiner's Answer that "the 'new'
software, which has already been developed and used by [the] user, would
not actually be improved by the invention" because the technical problem, in
this case, is the development of software application[ s], which would occur
either before or after the usage burden being incurred," thus "the invention
does not in fact, make the 'new' software application currently being used
by the party incurring [the] usage burden work better in any way" (Ans. 5-
6). In other words, the Examiner finds (see Ans. 5-8) that the recited
reduction of "usage time spent in using the new software application in the
computer system" caused by providing compensation to the user does not
actually provide a technological improvement to the computer system
because the claims do not recite actually using the new software application,
the claims only recite compensating the user upon calculating a usage
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burden based on a financial cost of using the new software application. We
agree.
The Examiner further finds that even if the claims were directed to
reducing the usage time as Appellant argues, the claimed compensation
structure "would therefore be categorized as 1) fundamental economic
practice ( cost cutting) and 2) mathematical relationship/formula (the
compensation payout formula)" (Ans. 7).
Appellant responds in the Reply Brief that "achieving a reduction in
the usage time spent in using the new software application in the computer
system does indeed improve employee productivity" (Reply Br. 8), based on
the Specification's disclosure that the need to learn and use too many
applications adversely affects some employee's productivity in their main
job (Reply Br. 8 citing Spec. 1:13-14).
Claim 28 is reprinted below, with emphases added:
28. A computer system comprising a processor, a memory
coupled to the processor, and a computer readable storage device
coupled to the processor, said storage device containing program
code which, upon being executed by the processor via the
memory, implements a method that compensates a user of a
software application, said method comprising:
said processor providing compensation to a user of a
software application in response to the user having incurred a
usage burden from prior use of the software application by the
user, said compensation being provided by a party that
contributed to the usage burden, wherein the software
application is a new software application that replaces a previous
software application that had been used by the user prior to being
replaced by the new software application, wherein the usage
burden is an extra cost consisting of the difference between the
total cost of using the new software application in the computer
system and the total cost of using the previous software
application in the computer system, and wherein the
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compensation has a magnitude that is a function of the usage
burden, and wherein said providing compensation reduces usage
time spent in using the new software application in the computer
system.
Claim 28 ( emphases added). Essentially, claim 28 recites a method of
compensating a user of a software application by providing compensation to
a user based on an incurred "usage burden," where the usage burden is "an
extra cost" as defined in the claim, and the provided compensation as the
result of reducing usage time spent using the new software application.
Although the focus of Appellant's disclosed invention is "to improve
employer productivity in conjunction with software application work
projects" (Spec. 2:2-3; see also Spec. 4--5), claim 28 at issue here only
recites "compensating a user of a software application" by "providing
compensation to a user of a software application in response to the user
having incurred a usage burden ... wherein the usage burden is an extra
cost" based on the cost of using the new software application over the
previous software application.
The remaining limitations of claim 28 merely define the relationship
between and among the recited "compensation," "usage burden," "extra
cost," and "usage time." For example, claim 28 defines (i) the "usage
burden" as being "from prior use of the software application by the user;"
(ii) "the software application is a new software application that replaces a
previous software application that had been used by the user prior to being
replaced by the new software application;" (iii) "the usage burden is an
extra cost consisting of the difference between the total cost of using the
new software application in the computer system and the total cost of using
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the previous software application in the computer system, wherein the
compensation has a magnitude that is a function of the usage burden, and
wherein said providing compensation reduces usage time spent in using the
new software application in the computer system" ( claim 28)( emphases
added).
Appellant does not specifically contest the existence of, or the
Examiner's characterization of, the abstract idea recited in the claims ( e.g.,
compensation); instead, Appellant contends that the claims contain
additional limitations that cannot be equated with the Examiner's identified
abstract idea ( e.g., reducing usage time), and that the claims are not directed
to that idea (App. Br. 14--16; Reply Br. 7-11).
Claim 28 does not explicitly recite (i) increasing employee
productivity; (ii) actually using/replacing a software application (new or
used); (iii) increasing the time available for implementing other uses of the
computer system; and/or (iv) creating an incentive to improve performance
by reducing usage time spent using the new software application, as
Appellant asserts (App. Br. 14--16, 18; Reply Br. 8-9). Instead, claim 28
merely recites compensating a software application user.
Because claim 28 does not recite (i) increasing employee productivity;
(ii) actually using/replacing a software application (new or used);
(iii) increasing the time available for implementing other uses of the
computer system; and/or (iv) creating an incentive to improve performance
by reducing usage time spent using the new software application, as
Appellant contends (see App. Br. 14--16, 18; Reply Br. 8-9), Appellant's
arguments that claim 28 is not directed to an abstract idea, such as cost
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cutting, compensation, or mathematical formula( e) for computing the
compensation (App. Br. 14--16; Reply Br. 10) are not persuasive.
Instead, we agree with the Examiner's findings that claim 28 recites
(i) "fee calculation" for user compensation which is a mathematical concept
and a fundamental economic practice (Final Act. 2); and (ii) "compensation"
based on usage burden/cost which is a fundamental economic practice,
mathematical concept, and mental process (Ans. 6-8). As a result, we agree
with the Examiner that, because claim 28 recites and is directed to
calculating fees for compensation, claim 28 is directed to a judicial
exception which is patent-ineligible (Final Act. 2; Ans. 3-8).
The Federal Circuit has explained that, in determining whether claims
are patent-eligible under Section 101, "the decisional mechanism courts now
apply is to examine earlier cases in which a similar or parallel descriptive
nature can be seen-what prior cases were about, and which way they were
decided." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016). The Federal Circuit also noted in that decision that
"examiners are to continue to determine if the claim recites (i.e., sets forth or
describes) a concept that is similar to concepts previously found abstract by
the courts." Id. at 1294 n.2.
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
finds, and we agree, that claims 21-24 and 28-30 recite calculating
compensation based on the extra cost for using different software
applications, which is a fundamental economic practice and a method of
organizing human activity, therefore, an abstract idea. Final Act. 2; Ans. 5-
8.
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Appellant contends that the claims in the instant case on appeal
(i) provide a technological improvement similar to the claims found eligible
in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016) (see App. Br. 16-17; Reply Br. 11-13);20 and (ii) are rooted in
computer technology and address a technological problem by achieving an
improved technological result (similar to the claims found eligible in DDR
Holdings, LLC v. Hotels.com L.P., 773, F.3d 1245 (Fed. Cir. 2014))21 (see
Reply Br. 16-18). As a result, Appellant contends "the claims are not
directed to an abstract idea" and "the output of Step 2A is NO and,
accordingly, the claims are patent eligible" (Reply Br. 18). We do not agree
with Appellant.
Specifically, Appellant argues that the claims are patent eligible as
they perform an ordered combination of claimed steps and are an
improvement in computer related technology (App. Br. 16-18; Reply Br.
11-12 citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016)).
20 Our reviewing court has held that claims which recite rules that allow
automation of animation tasks that could only be performed manually were
not directed to an abstract idea. See McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1313-14 (Fed. Cir. 2016); see also MPEP
2106.015(a).
21 In DDR Holdings, the court held that a claim may amount to more than
any abstract idea recited in the claims when it addresses and solves problems
only encountered with computer technology and online transactions, e.g., by
providing ( serving) a composite web page rather than adhering to the
routine, conventional functioning of Internet hyperlink protocol. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir.
2014).
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The Examiner responds to Appellant's arguments stating that the
claims in the current application differ from those at issue in McRO, because
(i) the improved technological result is achieved in the next version and new
software that is currently being used would not perform better at all; and
(ii) the claims do not recite increasing technological efficiency, but instead
reduce usage time to increase productivity (Ans. 7-8). In McRO, the
combination of steps were directed to a technological solution to affect lip
synchronization and manipulation of facial expressions, whereas the argued
step of Appellant's claim 28 is directed to the abstract idea itself (e.g.,
providing compensation) and not a technical problem (Ans. 7-8). We agree.
The court in McRO stated "[i]t is the incorporation of the claimed rules, not
the use of the computer that 'improved the existing technological process."'
McRO, 837 F.3d at 1314 (citation omitted). As discussed above, we do not
find that the claims are directed to improving a technological process, and as
such, we are not persuaded by Appellant's arguments citing McRO.
The Examiner has found that the claim limitations other than the
abstract idea merely recite well-understood, routine, and conventional
activities. Final Act. 3. We agree. Appellant's Specification in Figure 19
and pages 31-33 identifies the computer components and code
implementing the system generically and identify that the algorithm of the
invention can be "any configuration of hardware and software, as would be
known to a person of ordinary skill in the art" (Spec. 32: 18-19), thus,
showing that the use of computers to implement the abstract idea is merely
using known computers. Further, as discussed above, the use of records or
files to create and maintain financial information, such as ledgers and
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invoices, has been found to be "electronic recordkeeping - one of the most
basic functions of a computer." Alice, 573 U.S. at 225.
As a result, we are not persuaded that the operation in claim 28 is an
improvement to any technology as opposed to an improvement to a
fundamental economic practice and/or method of organizing human activity.
Considering the claims elements individually and as an ordered
combination, claim 28 does no more than simply instruct the practitioner to
implement the abstract idea on a generic computer or processer. Id. at 2359;
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
("Simply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.").
We additionally find Appellant's reasoning unpersuasive of Examiner
error, as claim 28 does not recite "increase[ing] time available for
implementing other uses of the computer system" by reducing usage time, as
Appellant argues (App. Br. 15; see also App. Br. 18; Reply Br. 11).
Thus, we are not persuaded by Appellant's arguments that the claims
are rooted in computer technology, rather, the claims merely recite use of a
computer as a tool to implement a method of organizing human activity
involving a fundamental economic principle (an abstract idea). See, e.g.,
RecogniCorp LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir.
2017) ("Unlike Enfzsh, [the claim] does not claim a method that improves
the functioning of a computer ... [but] claims a 'process that qualifies as an
"abstract idea" for which computers are invoked merely as a tool."').
Therefore, the limitations positively recited in claim 28 ( e.g., the
computer system, processor, memory, and computer readable storage device
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for implementing a method that compensates a user of a software application
for providing compensation) fall within the enumerated groupings of
abstract ideas - namely mathematical concepts, certain methods of
organizing human activity, and mental processes----concepts performed in
the human mind. As a result, claim 28 is directed to a judicial exception (a
law of nature, natural phenomenon, or subject matter within the enumerated
groupings of abstract ideas above).
At least the following decisions from our reviewing court have found
many types of fundamental commercial practices patent ineligible: OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), cert.
denied, 136 S. Ct. 701 (mem) (2015) (offer-based price optimization);
buySafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (transaction
guaranty); Personalized Media Communications, L.L.C. v. Amazon, Inc., 671
F. App'x. 777 (mem) (Fed. Cir. 2016) (receiving instructions for ordering);
Macropoint, LLC v. Fourkites, Inc., 671 F. App'x 780 (mem) (Fed. Cir.
2016) (tracking freight); Wireless Media Innovations, LLC v. Maher
Terminals, LLC, 636 F. Appx. 1014 (mem) (Fed. Cir. 2016) (monitoring
shipping containers); America's Collectibles Network Inc. v. Jewelry
Channel, Inc. USA, 672 F. App'x 997 (mem) (Fed. Cir. 2017) (conducting
reverse auction by adjusting price and inventory); and Easy Web Innovations,
LLC v. Twitter, Inc., No. 2016-2066, 2017 WL 1969492 (Fed. Cir. 2017)
(receiving, authenticating, and publishing data). The Supreme Court
additionally guides that contractual relations constitute "a fundamental
economic practice long prevalent in our system of commerce." Bilski v.
Kappas, 561 U.S. 593, 611 (2010); see also Alice, 573 U.S. 221-22, as cited
in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014).
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Applying this guidance here, we observe independent claim 28 is directed to
compensating a user of software applications based on a usage burden
defined in terms of costs (which are financial in nature). Thus, claim 28 is
directed to the combination of abstract ideas consisting of mathematical
concepts, fundamental economic practices, and mental processes.
Further, merely combining several abstract ideas (such as a method of
organizing human activity in the field of computer systems providing users
with the ability to use software applications and a fundamental business
practice of compensating users for costs incurred) does not render the
combination any less abstract. RecogniCorp, 855 F.3d at 1327 ("Adding
one abstract idea ... to another abstract idea ... does not render the claim
non-abstract."); see also Fair Warning IP, LLC v. latric Sys., Inc., 839 F.3d
1089, 1094 (Fed. Cir. 2016) (determining the pending claims were directed
to a combination of abstract ideas).
In this light, the provision of compensation to a based on usage
burden and extra cost calculations and comparisons recited in claim 28 on
appeal is "a fundamental economic practice long prevalent in our system of
commerce" (Bilski, 561 U.S. at 611), combined with a method of organizing
human activity and mental processes ( e.g., determining cost differences and
usage time and providing compensation based on judgment/opinion). Thus,
claim 28 is drawn to a combination of abstract ideas. Claims 22-24, 29, and
30 grouped with claim 28 contain similar subject matter, and are similarly
directed to a combination of abstract ideas.
In view of the foregoing, we conclude claim 28 recites (i) calculating
fees for compensation, which is a fundamental economic practice and
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mathematical calculation;22 and (ii) choosing to reduce usage time spent
using an application, which is a mental process including making a
judgment/ opinion performed in the human mind. Because we conclude
independent claim 28 recites a combination of abstract ideas, we proceed to
Step 2A(ii) to determine whether the claims are "directed to" the judicial
exception.
Step 2A(ii)-Practical Application
If a claim recites a judicial exception, in Prong Two we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the
claim is not directed to the judicial exception.
Here, claim 28 merely recites the additional elements of "a processor"
for "providing compensation to a user," "a memory coupled to the
processor," and "a computer readable storage device coupled to the
processor" and "containing program code which, upon being executed by the
processor via the memory, implements a method that compensates a user of
a software application."
22 For example, in order to provide compensation for the usage burden, the
usage burden is determined as a function of the extra time spent using a
resource as measured by a metric (see Spec. 14:2-15:7). Compensation is
then calculated in terms ofa financial value (see Spec. 13:6-10).
Compensation "is determined according to a predetermined formula,
algorithm, agreement, etc." (Spec. 13:9-10).
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Considering claim 28 as a whole, none of the additional elements
applies or uses the abstract idea in a meaningful way such that the claim as a
whole is more than a drafting effort designed to monopolize the exception.
For the reasons set forth by the Examiner, we are not persuaded by
Appellant's arguments that claim 28 improves the functioning of the
computer itself or any other technology or technical field. See Ans. 14--18;
Reply Br. 11-13; MPEP § 2106.05(a). In reviewing the record, we find the
claims on appeal are silent regarding specific limitations directed to an
improved computer system, processor, memory, network, or computer
readable storage device. Therefore, we find Appellant's claimed invention
does not provide a solution "necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks," such as considered by the court in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
For the reasons discussed above, we conclude Appellant's claim 28
invokes generic computer components merely as a tool in which the
computer system code performs a method of compensation that applies the
judicial exception and, thus, the abstract idea is not integrated into a
practical application.
Because representative claim 28 recites a judicial exception ( a law of
nature, natural phenomenon, or subject matter within the enumerated
groupings of abstract ideas above) that is not integrated into a practical
application, in accordance with the Revised Guidance, we conclude claim 28
and claims 21-24, 29, and 30 grouped therewith are directed to a
combination of abstract ideas under Step 2A(i), and the eligibility analysis
with regard to claims 21-24 and 28-30 proceeds to Step 2B.
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Step 2B - Inventive Concept
Having determined the independent claims are directed to an abstract
idea that is not integrated into a practical application, we now evaluate
whether the additional elements add a specific limitation that is not well-
understood, routine, or conventional activity in the field, or simply append
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the abstract idea. See
2019 Guidance. Thus, we determine whether the claims "focus on a specific
means or method that improves the relevant technology" or are "directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016).
Here, the Examiner determined, and we agree, that the only elements
beyond the abstract idea are generic computer components used to perform
generic computer functions (Final Act. 3)- a determination that is
supported by Appellant's Figure 19 and the accompanying description found
in the Specification (see, e.g., Fig. 19; Spec. 31: 11-32:21 ). Appellant's
Specification, for example, describes "memory devices 94 and 95" as
including the broad categories of volatile and nonvolatile memory, without
describing the particulars (see Spec. 31: 17-21 ). The Specification also
describes the terms "memory device" as including "computer code 97 ,"
which in tum "includes an algorithm for implementing aspects of the present
invention" (Spec. 31 :20-32: 1) for computing the magnitude of
compensation, without describing the particulars. The Specification further
describes that a computer program product may be a computer usable
medium or program storage device containing computer readable program
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code comprising computer code 97 (Spec. 32:5-11 ). The Specification
further describes that "[ w ]hile embodiments of the present invention have
been described herein for purposes of illustration, many modifications and
changes will become apparent to those skilled in the art" (Spec. 33:1-2).
The Federal Circuit, in accordance with Alice, has "repeatedly
recognized the absence of 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 v. HP
Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring). As seen
from the discussion above, Appellant's claim 28, as well as claims 21-24,
29, and 30 grouped therewith, recite nothing more than the implementation
of a combination of abstract ideas using existing computers with no
alteration of computer functionality.
Appellant's contentions (Reply Br. 18-21) that the claims recite
significantly more than the abstract idea because claim 28 "improve[ s] the
functioning and utilization of the computer system by reducing usage time
spent in using the new software application in the computer system," thus
"providing an incentive for the development component ... to reduce the
usage time ... in order to reduce or eliminate compensation provided by the
development component to the user component" and "increase[] time
available for implementing other uses of the computer system" (App. Br. 19)
are unpersuasive.
As discussed supra, claim 28 does not explicitly recite (i) increasing
the time available for implementing other uses of the computer system;
and/or (ii) creating an incentive to improve performance by reducing usage
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time spent using the new software application, as Appellant asserts (App. Br.
14--16, 18; Reply Br. 8-9). Instead, claim 28 merely recites compensating a
software application user. More specifically, claim 28 recites a method of
compensating a user of a software application by providing compensation to
a user based on an incurred "usage burden," where the usage burden is "an
extra cost" as defined in the claim, and the provided compensation as the
result of reducing usage time spent using the new software application.
Claim 28 is silent as to increasing time available, creating any incentive, or
using/implementing the new software application so as to actually reduce
costs or use the computer system more efficiently. Thus, Appellant's claim
28 does not exhibit the type of activity that distinguishes inventions having
significantly more than the abstract idea from those claims that do no more
than generically link the use of the method to a particular technological
environment, that is, by computers. Alice, 573 U.S. at 226.
For these reasons, we determine the claims do not recite an inventive
concept because they simply append well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the abstract idea.
Summary
Therefore, under the US PTO' s Revised Patent Eligibility Guidance,
informed by our governing case law concerning 35 U.S.C. § 101, the
Examiner did not err ( as to Issue Two) in concluding claims 21-24 and 28-
30 are directed to a judicial exception, i.e., an abstract idea or combination
of abstract ideas, without significantly more, and thus are patent-ineligible
under § 101. In view of the foregoing, we sustain the Examiner's § 101
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rejection of claims 21-24 and 28-30 as being directed to patent-ineligible
subject matter.
CONCLUSIONS
(1) The Examiner did not err in rejecting (a) claims 1-20 and 25-28
under 35 U.S.C § 101 as being directed to non-statutory subject matter;
and/or (b) claims 21-24 and 28-30 under 35 U.S.C § 101 as being directed
to patent-ineligible subject matter without significantly more.
(2) Appellant has not shown the Examiner erred in rejecting claims 1-
30 based on the judicially created doctrine of non-statutory obviousness-type
double patenting, over claims 1-20, 23-28, and 30-33 of U.S. Patent No.
8,560,642. 23
DECISION
For the above reasons, the Examiner's decision rejecting claims 1-30
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
affirmed. And, the Examiner's rejection of claims 1-30 based on the
judicially created doctrine of non-statutory obviousness-type double
patenting is affirmed proforma.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
23 Because Appellant does not present specific arguments for the claims
rejected based on the judicially created doctrine of non-statutory
obviousness-type double patenting (see generally App. Br. 9; Reply Br. 2),
no issue is presented by Appellant as to this rejection, and we summarily
sustain the non-statutory obviousness-type double patenting rejection of
claims 1-3 0.
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AFFIRMED
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