Ex Parte CHAKRAVARTHY

Patent Trials and Appeals Board

Dec 10, 2018

14102604 - (D) (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/102,604 12/11/2013 Madhusudan CHAKRA VARTHY
74739 7590 12/12/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
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.
2011-0325US01 1019
EXAMINER
OBAID,FATEHM
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MADHUSUDAN CHAKRA VARTHY
Appeal2017-009164
Application 14/102, 604 1
Technology Center 3600
Before LARRY J. HUME, JASON J. CHUNG, and JOHN D. HAMANN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-21 which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Oracle International
Corporation. App. Br. 2.
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Application 14/102, 604
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention are
"directed generally to a billing and revenue management system, and in
particular to a charging system that defines charging tiers for fee
alterations." Spec. ,r 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A non-transitory computer readable medium with
instructions stored thereon configured to cause an altering of
charges for a billing event created for usage of
telecommunications services in a real time charging domain,
the altering comprising:
receiving a usage report including a total quantity of
usage of telecommunications services and a standard rate for
usage of telecommunication services, the telecommunications
services comprising at least one of voice, data, or messaging;
determining a tiered charging rule relative to the standard
rate with at least one step, each step comprising a numerical
range defining quantity entry values and exit values, wherein
each step corresponds to a rule for charge alteration relative to
the standard rate;
determining a quantity usage range corresponding to
usage that generates the billing event, wherein the quantity
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Feb. 6, 2017); Reply Brief ("Reply Br.," filed June 13, 2017); Examiner's
Answer ("Ans.," mailed Apr. 13, 2017); Final Office Action ("Final Act.,"
mailed Sept. 9, 2016); and the original Specification ("Spec.," filed
Dec. 11, 2013).
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usage range defines starting values and ending values for usage
considered for alteration;
intersecting each step with the quantity usage range to
determine applicable steps for the quantity usage range; and
for each applicable step:
calculating a step charge based on a length of the
applicable step range and a base per unit charge rate; and
applying an alteration based on the corresponding rule
for charge alteration for the step.
Rejection on Appeal
Claims 1-21 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2---6.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 4--19) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible
subject matter Rejection RI of claims 1-21 on the basis of representative
claim 1. 3
ISSUE
Appellant argues (App. Br. 4--19; Reply Br. 2-5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1-21
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellant's arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Alice Framework
"Whether a patent claim is drawn to patent-eligible subject matter is
an issue of law that is reviewed de novo." SiRF Tech., Inc. v. Int'! Trade
Comm 'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
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new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice Corp., 134 S. Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice Corp., 134 S. Ct. at 2354 (internal quotation marks,
citation, and bracketing omitted). First, we "determine whether the claims at
issue are directed to [a] patent-ineligible concept[]." Id. at 2355. If so, we
"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." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79).
Although the two steps of the Alice framework are related, the "Supreme
Court's formulation makes clear that the first-stage filter is a meaningful one,
sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court
"has not established a definitive rule to determine what constitutes an
'abstract idea"' for the purposes of step one. Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct at 2357).
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
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Alice. Enfzsh, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to "a specific improvement to the
way computers operate, embodied in the self-referential table" (id. at 1336),
and explained that the claims are "not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database" that functions differently than conventional
databases. Id. at 1337.
In McRO, the claims were not held to be abstract because they recited
a "specific ... improvement in computer animation" using "unconventional
rules that relate[ d] sub-sequences of phonemes, timings, and morph weight
sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-
03, 1307---08, 1314--15 (Fed. Cir. 2016). In McRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
In Bascom, the claims were directed to the inventive concept of
providing customizable Internet-content filtering which, under Step 2 of the
Alice analysis, was found to transform the abstract idea of filtering content
into a patent-eligible invention. Although the underlying idea of filtering
Internet content was deemed to abstract, under step 2 of the Alice analysis,
the claims carved out a specific location for the filtering system, namely a
remote Internet service provider (ISP) server, and required the filtering
system to give users the ability to customize filtering for their individual
network accounts. Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
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In Digitech, " [ t ]he method in the [patent at issue] claims an abstract
idea because it describes a process of organizing information through
mathematical correlations and is not tied to a specific structure or machine."
Digitech, 758 F.3d at 1350. Our reviewing court further held in Digitech:
The above claim recites a process of taking two data sets and
combining them into a single data set, the device profile. The
two data sets are generated by taking existing information-i.e.,
measured chromatic stimuli, spatial stimuli, and device
response characteristic functions-and organizing this
information into a new form. The above claim thus recites an
ineligible abstract process of gathering and combining data that
does not require input from a physical device .... the two data
sets and the resulting device profile are ineligible subject
matter. Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "If a
claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory."
Digitech, 758 F.3d at 1351 (quoting Parker v. Flook, 437 U.S. 584, 595
(1978) (internal quotations omitted)).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct. at 2355-
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57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
The Examiner concludes, " [ c ]laims 1-21 are directed to a series of
steps for instructions stored thereon to alter charges for a billing event in a
real time charging domain, which are Mathematical relationships/formulas."
Final Act. 2. Further, "[t]he claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. Claims 1-21 are directed to the medium, system
and method, respectively, for Mathematical relationships/formulas directed
to a series of steps for instructions stored thereon to alter charges for a
billing event in a real time charging domain." Final Act. 3. The Examiner
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emphasized that abstract ideas identified in Alice include, by way of
example, "Mathematical relationships/formulas," as in claim 1 on appeal.
Final Act. 4.
Appellant argues:
[T]he Examiner failed to meet the requirements of the
guidelines issued by the Patent Office. The Examiner alleges
that the claims are rejected under §101 in view of the decision
in Alice . ... The Examiner alleges that the claims are directed
towards "Mathematical relationships/formulas directed to a
series of steps for instructions stored thereon to alter charges for
a billing event in a real time charging domain." See 9/9/2016
Office Action, pp. 2-3. Alice identifies a number of previous
cases which involved abstract ideas, some of which included
mathematical formulas .... However, the identification of an
abstract idea did not consist merely of noting that the claims in
question were directed towards "mathematical relationships/
formulas," but rather the Court identified an abstract idea that
happened to include mathematical relationships .... [T]he
Examiner must identify an abstract idea with specificity.
App. Br. 5.
In addition, Appellant contends, " [ t ]he Examiner fails to identify any
court decision listing 'to alter charges for a billing event in a real time
charging domain' as being an abstract idea or any court decision identifying
another abstract idea which could be considered similar to the alleged idea
as potentially identified in the Office Action." App. Br. 6. Further, "[i]n the
claims at issue, even if a mathematical relationship or formula is utilized as
part of a claim, the claims are directed towards more than just the math and
are instead applied to the physical elements and process steps of creating an
accurate billing statement in real time." App. Br. 9.
In discussing McRO, Appellant argues:
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[T]he present claims are allowable over the prior art, so there is
no evidence that the claimed process was previously used either
manually, or using a computer. And, just as in McRO, the
present claims includes computer software based rules used to
validate sales call data.
Therefore, because Step 2A is not met, the present claims
are subject matter eligible and Appellant respectfully requests
that the rejections be reversed.
App. Br. 10.4
In response to Appellant's contentions, the Examiner reiterates:
Claims 1-21 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., an
abstract idea) without "significantly more." Claim(s) 1-21 is/are
directed to instructions stored thereon to alter charges for a
billing event created for usage of telecommunications services
in a real time charging domain using rule, which is considered
an abstract idea. Furthermore, the dependent claims 1-7, 9-14
and 16-21 do not resolve the issues raised in the independent
claims.
Ans. 2. The Examiner further explains:
Here, the examiner has found that the claims are not
directed to "an improvement to computer technology," such as
found by the CAFC in Enfish, but to the abstract idea itself.
Examiners have been instructed to refer to the body of case law
precedent in order to better identify abstract ideas by way of
comparison to concepts already found to be abstract. The
examiner refers to the following cases (and their associated
judicial descriptor( s) ), each of which relate to concepts that are
4 Appellant's argument concerning the absence of evidence supporting the
§ 101 rejection also does not persuade us of Examiner error. App. Br. 10.
"Patent eligibility under § 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013). There is no requirement that an examiner cite evidentiary support to
conclude that a claim is directed to a patent-ineligible concept, such as an
abstract idea. See MPEP § 2106.07(a)(III).
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similar to the concepts claimed: Alice ... Bilski ... and
Fairwaming IP .... As indicated above, the claims are directed
to similar concepts. Therefore, the claims are found to be
directed to [an] abstract idea. Similar to the case law cited
above, the examiner finds the abstract idea to include at least
the judicial descriptor( s) of: fundamental economic practice,
certain methods of organizing human activity, an idea of 'itself,
mathematical relationships/formulas.
Ans. 4--5.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 83 8 F .3d at
1257 ( citation omitted).
Turning to the claimed invention, claim 1 recites: "[a] non-transitory
computer readable medium with instructions stored thereon configured to
cause an altering of charges for a billing event created for usage of
telecommunications services in a real time charging domain." Claim 1
(preamble). The altering of charges caused by execution of instructions
requires the steps of:
(a) "receiving .. a usage report including a total quantity
of usage of telecommunications services and a standard rate for
usage of telecommunication services .... ; "
(b) "determining a tiered charging rule relative to the
standard rate with at least one step, each step comprising a
numerical range defining quantity entry values and exit values,
wherein each step corresponds to a rule for charge alteration
relative to the standard rate;"
( c) "determining a quantity usage range corresponding to
usage that generates the billing event, wherein the quantity
usage range defines starting values and ending values for usage
considered for alteration;
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( d) intersecting each step with the quantity usage range to
determine applicable steps for the quantity usage range; and
( e) for each applicable step:
(i) calculating a step charge based on a length of
the applicable step range and a base per unit charge rate;
and
(ii) applying an alteration based on the
corresponding rule for charge alteration for the step.
Our reviewing courts have often identified abstract ideas by referring
to earlier precedent, e.g., by comparing a claimed concept to the concepts
previously identified as abstract ideas by the courts. Amdocs (Israel), Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d. 1327, 1334 (Fed. Cir. 2016). For example, in
Alice, the Supreme Court identified the claimed systems and methods as
describing the concept of intermediated settlement, and then compared this
concept to the risk hedging concept identified as an abstract idea in Bilski.
Because this comparison revealed "no meaningful distinction between the
concept of risk hedging in Bilski and the concept of intermediated settlement
at issue here", the Court concluded that the concept of intermediated
settlement was an abstract idea. Alice, 134 S. Ct. at 2356-57. Similarly, the
Federal Circuit in Amdocs compared the claims at issue with "eligible and
ineligible claims of a similar nature from past cases" as part of its eligibility
analysis. 841 F.3d at 1295-1300.
In Versata, our reviewing court found analogous claims to those in
this Appeal to be
directed to the abstract idea of determining a price, using
organizational and product group hierarchies, in the same way
that the claims in Alice were directed to the abstract idea of
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intermediated settlement, and the claims in Bilski were directed
to the abstract idea of risk hedging. More specifically, claim 1 7
is directed to a method of determining a price. Claim 27 is
directed to a computer-implemented method of determining a
price, and claims 26 and 28 are directed to computer-readable
storage media comprising computer instructions to implement
the methods of claims 17 and 28. Claim 29 is directed to an
apparatus for determining a price that includes computer
program instructions capable of performing the same method
steps recited in claim 27. Using organizational and product
group hierarchies to determine a price is an abstract idea that
has no particular concrete or tangible form or application. It is a
building block, a basic conceptual framework for organizing
information, similar to the claims involving collecting,
recognizing, and storing data in Content Extraction and the
claims in CyberSource.
Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306,
1333-34 (Fed. Cir. 2015).
Under step one, we agree with the Examiner that the invention
claimed in independent claim 1 is directed to an abstract idea, i.e.,
"Mathematical relationships/formulas directed to a series of steps for
instructions stored thereon to alter charges for a billing event in a real time
charging domain" (Final Act. 3) or, alternatively, determining a price using
organizational and product group hierarchies, similar to Versata, which we
also conclude may be categorized as an abstract concept relating to
organizing or analyzing information in a way that can be performed mentally
or is analogous to human mental work.
As the Specification discloses, " [ o ]ne embodiment is directed
generally to a billing and revenue management system, and in particular to a
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charging system that defines charging tiers for fee alterations." Spec. ,r 2. 5
We find this type of activity, i.e., a tiered charging rule, for example,
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 6
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
5 See also Spec. 35 ("Abstract"):
A system determines a tiered charging rule with at least one
step. Each step defines a quantity entry point and exit point for
the step and defines an alteration rule to be applied to charges
falling within the step. The system determines a quantity usage
range based on usage related to a billing event. The system
range intersects each step range with the quantity usage range to
determine applicable steps for the quantity usage range. For
each applicable step, the system calculates a step charge based
on the length of the applicable step range and a base per unit
charge rate and applies an alteration to the step charge based on
the corresponding alteration rule for the step.
6 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830
F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information (e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Also,
collecting and comparing known information has been determined to be an
abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F .3d
1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the #283 patent states the idea of
collecting and comparing known information"). Further, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is abstract. Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Also, more
recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018). Finally, classifying and storing
digital images in an organized manner has been held to be an abstract idea.
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In re TL! Communications LLC Patent Litigation, 823 F.3d 607 (Fed.
Cir. 2016).
Appellant also alleges claim 1 is patent-eligible because its practice
does not preempt practice by others. App. Br. 18-19 ("The present claims
do not preempt all systems and methods for determining billing for
telecommunications services as indicated by some of the cited prior art that
generally performs this same function, albeit using different functionality/
algorithms as compared to the present claims."). Regarding preemption,
"[w]hi1e preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility .... \\There a
patent's claims are deerned only to disclose patent ineligible subject matter
under the lviayo framework, as they are in this case, preemption concerns are
fully addressed and made moot" Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) (finding "that
the claims do not preempt a11 price optimization or may be limited to price
optimization in the e-comrnerce setting do not make them any less
abstract").
Further, Appellant's reliance on DDR (App. Br. 16-18) is misplaced
as the recited claims do not improve the computer. 7 In DDR, the claims at
issue involved, inter alia, "web pages displays [with] at least one active link
7 Appellant alleges, " [ c ]ontrary to TL!, the claims at issue in the present
application are directed towards a solution to a 'technological problem,'
namely, providing real-time assessment of usage of and billing for
telecommunications services, a challenge particular to the mobile
telecommunication industry, as their customers move about freely and use
products at a variety of times and in a variety of locations. App. Br. 18.
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associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants" (claim 1 of US 7,818,399). The
Federal Circuit found the claims in DDR to be patent-eligible under step one
of the Alice test because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, 773 F.3d at 1257.
Specifically, the Federal Circuit found the claims addressed the "challenge
of retaining control over the attention of the customer in the context of the
Internet." Id. at 1258. We find the rejected claims are dissimilar to DDR's
web page with an active link, and the Specification does not support the
view that the computer related claim elements are unconventional. See
Spec. ,r,r 10-13.
Appellant argues the claims are similar to those held patent-eligible in
McRO. App. Br. 10 (citing McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016)). The claims in McRO recited a "specific ...
improvement in computer animation" using "unconventional rules that
relate[ d] sub-sequences of phonemes, timings, and morph weight sets."
McRO, 837 F.3d at 1302---03, 1307---08, 1314--15. In McRO, "the
incorporation of the claimed rules, not the use of the computer," improved
an existing technological process. Id. at 1314. Appellant does not, however,
identify how claim 1 improves an existing technological process, other than
to assert "just as in McRO, the present claims includes [sic] computer
software based rules used to validate sales call data." App. Br. 10. See
Alice, 134 S. Ct. at 2358 (explaining that "the claims in Diehr were patent
eligible because they improved an existing technological process"). Rather,
claim 1 concerns a "non-transitory computer readable medium with
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instructions stored thereon configured to cause an altering of charges for a
billing event created for usage of telecommunications services in a real time
charging domain." App. Br. 21. In addition, Appellant does not direct us to
any evidence that the claimed receiving, determining, intersecting,
calculating, and applying steps correspond to unconventional rules.
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. 8
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
8 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" (or an
equivalent) with an abstract idea; 9 mere instructions to implement an
abstract idea on a computer; 10 or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 11
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of mathematical relationships/formulas directed
to a series of steps for instructions stored thereon to alter charges for a
billing event in a real time charging domain into a patent-eligible application
of that abstract idea. See Ans. 5-7. 12
9 Alice, 134 S. Ct. at 2357-58.
10 Alice, 134 S. Ct. at 2357, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84--85).
11 Alice, 134 S. Ct. at 2359, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
12 The Examiner concludes:
In sum, the examiner finds that the claims "are directed to
the use of conventional or generic technology in a nascent but
well-known environment, without any claim that the invention
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The Examiner concludes:
In sum, the examiner finds that the claims "are directed
to the use of conventional or generic technology in a nascent
but well-known environment, without any claim that the
invention reflects an inventive solution to any problem
presented by combining the two." In re TLI Communications
LLC, No. 2015-1372 (May 17, 2016). Accordingly, when
considered individually and in ordered combination, the
examiner finds the claims to be directed to in-eligible subject
matter.
Ans. 7.
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, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note Appellant's Specification in paragraphs
10 through 13. For example:
Fig. 1 is a block diagram of a computer server/system 10
in accordance with an embodiment of the present invention.
Although shown as a single system, the functionality of system
10 can be implemented as a distributed system. System 10
includes a bus 12 or other communication mechanism for
reflects an inventive solution to any problem presented by
combining the two." In re TLI Communications LLC, No.
2015-1372 (May 17, 2016). Accordingly, when considered
individually and in ordered combination, the examiner finds the
claims to be directed to in-eligible subject matter.
Ans. 7.
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communicating information, and a processor 22 coupled to bus
12 for processing information. Processor 22 may be any type of
general or specific purpose processor. System 10 further
includes a memory 14 for storing information and instructions
to be executed by processor 22. Memory 14 can be comprised
of any combination of random access memory ("RAM"), read
only memory ("ROM"), static storage such as a magnetic or
optical disk, or any other type of computer readable media.
System 10 further includes a communication device 20, such as
a network interface card, to provide access to a network.
Therefore, a user may interface with system 10 directly, or
remotely through a network or any other known method.
Spec. ,r 10.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellant's Specification, as quoted
above. 13 We agree with the Examiner because, as in Alice, the recitation of
data determining and calculating steps is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require generic computer
13 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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implementation, fail to transform [an] abstract idea into a patent-eligible
invention."). 14
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped
claims 2-21, not argued separately, and which fall therewith. See Claim
Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2-5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to patent-ineligible subject
matter Rejection RI of claims 1-21 under 35 U.S.C. § 101, and we sustain
the rejection.
14 Appellant merely alleges, "the final Office Action has failed to provide a
reasonable explanation as to why the elements recited by the claims do not
provide non-conventional and non-generic arrangement of known,
conventional pieces." Reply Br. 5. We are not persuaded by Appellant's
assertion.
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DECISION
We affirm the Examiner's decision rejecting claims 1-21.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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