Ex Parte Glissmann et al

Patent Trial and Appeal Board

Feb 25, 2019

13073509 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/073,509 03/28/2011
84374 7590 02/25/2019
LIEBERMAN & BRANDSDORFER, LLC
802 STILL CREEK LANE
GAITHERSBURG, MD 20878
FIRST NAMED INVENTOR
Susanne M. Glissmann
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.
ARC920110009US 1 8059
EXAMINER
MISIASZEK, AMBER AL TSCHUL
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
02/25/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSANNE M. GLISSMANN, ANA LELESCU, and
IGNACIO G. TERRIZZANO
Appeal2018-000350
Application 13/073,509
Technology Center 3600
Before ST. JOHN COURTENAY III, DENISE POTHIER, and
JASON REPKO, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 6-9, 12-15, 18, 19, and 24--27, which
constitute all the claims pending in this application. Claims 4, 5, 10, 11, 16,
1 7, and 20-23 have been cancelled. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 3.
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STATEMENT OF THE CASE
Embodiments of Appellants' invention relate to "measurement of
social media impact on a business. More specifically, the invention relates
to text analytics and social media tools and their connection into components
of a business architecture." Spec. ,r 1.
Exemplary Claim
1. A computer implemented method for use with a
business architecture of an underlying business, the business
architecture documenting and communicating a current situation
of the underlying business in order to drive business actions, the
method comprising:
selecting, by a processor in communication with memory,
an element from a business architecture of an underlying
business for evaluation, the business architecture comprising a
map having one or more elements associated with one or more
respective business metrics, wherein each business metric is a
quantifiable component reflecting performance of an element;
and
integrating, by the processor, social media data into the
business architecture, the integration comprising:
creating a social media metric based on the selected
element, wherein the social media metric characterizes one or
more attributes of the selected element, and wherein the social
media metric is a statistical measure reflecting consumer
perception contained within online consumer generated data;
assigning the created social media metric to a business
metric;
producing a correlation between the social media metric
and the assigned business metric, and converting the produced
correlation into a heat map, wherein the heat map is a graphical
user interface to visually display a strength of the correlation
between the social media metric and the assigned business
metric;
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analyzing data represented in the heat map, including
receiving one or more observations associated with the selected
element;
dynamically adjusting the business architecture in
response to the analysis, wherein the adjustment includes:
changing a business metric target based on the received
observations; and
activating an application and instructing the application
for effecting modifications to the business architecture; and
executing, by the application, the modifications to the
business architecture.
App. Br. 27 (Claims Appendix) (Contested limitations
emphasized).
Rejections
A. Claims 1-3, 6-9, 12-15, 18, 19, and 24--27 are rejected under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more. Final Act. 6-9.
B. Claims 7-9, 12, and 25 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter-i.e., a program listing per se
and/or a signal per se. Final Act. 3-5.
Issues on Appeal
Did the Examiner err in rejecting claims 1-3, 6-9, 12-15, 18, 19, and
24--27 under 35 U.S.C. § 101, as being directed to a judicial exception,
without significantly more?
Did the Examiner err in rejecting claims 7-9, 12, and 25 under
35 U.S.C. § 101, as covering a program listing per se and/or a signal per se?
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ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
35 USC§ 101
Principles of Law
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. 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
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mental processes ( Gottschalk v. 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, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
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 that "[a]
claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula." Diehr, 450
U.S. at 176; see also id. at 192 ("We view respondents' claims as nothing
more than a process for molding rubber products and not as an attempt to
patent a mathematical formula."). Having said that, the Supreme Court also
indicated that a claim "seeking patent protection for that formula in the
abstract ... is not accorded the protection of our patent laws, ... and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment." Id. (citing Benson and
Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we 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
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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.
USPTOJanuary 7, 2019 Revised Section 101 Memorandum
The USPTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). This new guidance is applied
in this opinion. Under the 2019 Memorandum guidance, we first look to
whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain methods of
organizing human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions between
people); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure ("MPEP")
§§ 2106.05(a}-(c), (e}-(h)). 2 Memorandum, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.
2 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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Memorandum, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under § 101. Id.
Only if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. Memorandum at 56; Alice,
573 U.S. at217-18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Memorandum, 84 Fed. Reg. at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
2. Mental processes- concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
3. 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,
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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).
According to the Memorandum, "claims that do not recite [subject]
matter that falls within these enumerated groupings of abstract ideas should
not be treated as reciting abstract ideas," except in rare circumstances. Even
if the claims recite any one of these three groupings of abstract ideas, these
claims are still not "directed to" a judicial exception (abstract idea), and thus
are patent eligible, if "the claim as a whole integrates the recited judicial
exception into a practical application of that judicial exception." See
Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
1. Improvements to the functioning of a computer, or to any other
technology or technical field-see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine -see MPEP § 2106.05(b );
3. Effecting a transformation or reduction of a particular article to
a different state or thing-see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception-see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on
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a computer, or merely uses a computer as a tool to perform an
abstract idea-see MPEP § 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception - see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two").
Rejection A-35 USC§ 101
The Judicial Exception
The Examiner concludes claims 1-3, 6-9, 12-15, 18, 19, and 24--27
are directed to a judicial exception, because the claims are directed to:
"documenting and communicating a current situation of the underlying
business in order to drive business actions, which is considered an idea of
itself, and is thus an abstract idea." Final Act. 6. 3
The Examiner finds the claims do not include additional elements that
amount to significantly more than the judicial exception, because:
the claims do not amount to an improvement to another
technology or technical field; the claims do not amount to an
improvement to the functioning of a computer itself; the claims
do not move beyond a general link of the use of an abstract idea
to a particular technological environment; the claims merely
amount to the application or instructions to apply the abstract
idea on a computer; and the claims amount to nothing more than
requiring a generic computer to perform generic computer
functions that are well-understood, routine and conventional
activities previously known to the industry.
3 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
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Final Act. 6.
For the aforementioned reasons, the Examiner concludes that claims
1-3, 6-9, 12-15, 18, 19, and 24--27 are not patent eligible under 35 U.S.C.
§ 101.
Under the revised USPTO January 7, 2019 Section 101 policy
Memorandum, we consider the following points of law:
Memorandum (1 ): Are the claims directed to any judicial exceptions,
including certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human interactions such as a fundamental
economic practice, or mental processes)?
Regarding Memorandum ( 1 ), our view is that the Examiner did not err
in concluding that each of claims 1-3, 6-9, 12-15, 18, 19, and 24--27 on
appeal is directed to at least a method of organizing human behavior that
selects and collects business metric data for correlation with social metric
data (statistical measures), which are analyzed and displayed in a heat map
that may be dynamically adjusted in response to the analysis to effect
modifications to the business architecture, which may be performed as
mental steps. Final Act. 6. As explained by the Examiner:
Each of these steps amounts to an activity that could be
performed manually (e.g., generating an instruction or
modification notification with pen and paper) or
mentally ( e.g., selecting, integrating, creating, assigning,
producing, analyzing, adjusting, changing, activating,
executing) by a human operator. Further, the overall
thrust of the claim manages activities to determine and execute
a modification to the business architecture (i.e., receiving and
processing data). Accordingly, the claim is directed to an idea
of itself.
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Final Act. 8 ( emphasis added).
To the extent Appellants advance arguments regarding Alice step one,
which also fall under Memorandum (2) (covering MPEP §§ 2106.05(a}-(c)
and (e}-(h)), we address these arguments infra.
Integration of the Judicial Exception into a Practical Application
Regarding Memorandum (2), and for the reasons which follow, we
conclude that Appellants' claims 1-3, 6-9, 12-15, 18, 19, and 24--27 do not
integrate the judicial exception into a practical application. See MPEP
§§ 2106.05(a}-(c) and (e}-(h). Applying the revised 101 Memorandum
guidance, we address these "practical application" MPEP sections seriatim.
MPEP § 2106.05(a) "Improvements to the Functioning of a Computer
or to Any Other Technology or Technical Field"
This section of the MPEP guides: "In determining patent eligibility,
examiners should consider whether the claim 'purport( s) to improve the
functioning of the computer itself or 'any other technology or technical
field.' ... While improvements were evaluated in Alice Corp as relevant to
the search for an inventive concept (Step 2B), several decisions of the
Federal Circuit have also evaluated this consideration when determining
whether a claim was directed to an abstract idea (Step 2A)."
The MPEP instructs: "Thus, an examiner may evaluate whether a
claim contains an improvement to the functioning of a computer or to any
other technology or technical field at Step 2A or Step 2B, as well as when
considering whether the claim has such self-evident eligibility that it
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qualifies for the streamlined analysis." MPEP § 2106.05(a) ( emphasis
added).
Regarding the purported improvements offered by the claimed
invention, Appellants contend:
Appellant's claims are similar in structure to the claims in
McRO. In McRO, "[i]t is the incorporation of the claimed rules,
not the use of the computer, that 'improved [the] existing
technological process' by allowing the automation of further
tasks."[] Like McRO, Appellant's claims provide a specific
method (e.g.[,] rules) for improving the existing technology that
does not cover all permutations of performing modification to
the business architecture. For instance, operators in the prior art
do not rely on Appellant's social media metric or creation of a
heat map. Instead, operators in the prior art rely on subjective
determinations which leads to inconsistent and difficult to
replicate results. [J Appellant, instead, improves the existing
technology by automating modifications to business
architecture based on observations derived from a heat map to
create consistent and easily to repeat results. Appellant's
claims are directed towards a specific method for automating
and improving modifications to a business architecture and not
just a business architecture modification itself. Therefore,
Appellant's claims are similar to the claims held eligible in
McRO. Accordingly, Appellant's claims are not directed to an
abstract idea or any other judicial exception.
App. Br. 17-18 (emphasis added).
In response, the Examiner disagrees, and further explains the basis for
the rejection:
These claims are directed to an abstract idea. The claims merely
amount to analyzing data and presenting the analyzed data. The
claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception
because the claims do not amount to an improvement to another
technology or technical field; the claims do not amount to an
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improvement to the functioning of a computer itself; the claims
do not move beyond a general link of the use of an abstract
idea to a particular technological environment; the claims
merely amount to the application or instructions to apply the
abstract idea on a computer; and the claims amount to nothing
more than requiring a generic computer to perform generic
computer functions that are well-understood, routine and
conventional activities previously known to the industry.
Ans. 7-8 (emphasis added).
We do not find persuasive Appellants' attempt to analogize the claims
to the subject claims considered by the court in McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). Br. 14.
We note the subject claim considered by the McRO court concerned a
method for automatically animating lip synchronization and facial
expressions. McRO, 837 F.3d at 1303. The McRO court concluded the
subject claims did not recite an abstract idea because the computer animation
improved the prior art through the use of rules, rather than artists, to set
morph weights and transitions between phonemes. Id. at 1308. Thus, the
claimed invention in McRO allowed for computer performance of animation
steps that previously had to be performed by human animators. Id. at 1309.
The subject claims in McRO used "limited rules in a process specifically
designed to achieve an improved technological result" over "existing,
manual 3-D animation techniques." Id. at 1316 (emphasis added).
Here, Appellants' claimed invention does not apply positively recited
rules, per se. The invention under appeal merely adapts to a technological
setting ( comprising generic processors, and storage and memory devices) the
concept of selecting and gathering business metrics for correlation with
created social metrics ( statistical measures), which are analyzed and
displayed in a heat map that may be dynamically adjusted in response to the
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analysis to effect modifications to the business architecture, which we
conclude could be alternatively performed essentially as mental steps, with
the aid of pen and paper. See independent claim 1, and independent claims
7, 13, and 19, which recite similar language of commensurate scope. See
Final Act. 8 (mental steps).
Thus, we agree with the Examiner (Final Act. 6; Ans. 8) that
Appellants' claims merely implement generic computer components to
perform the recited functions. We emphasize that McRO also guides that
"[t]he abstract idea exception prevents patenting a result where 'it matters
not by what process or machinery the result is accomplished."' 837 F .3d at
1312 (quoting O'Reillyv. Morse, 56 U.S. 62, 113 (1854))(emphasis added).
In reviewing the record, we find the claims on appeal are silent
regarding specific limitations directed to an improved computer system,
processor, memory, network, database, or Internet. Therefore, we find
Appellants' 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) (emphasis added).
MPEP § 2106.05(b) Particular Machine, and
MPEP § 2106.05(c) Particular Transformation
Section 2106.05(c) of the MPEP guides: "Another consideration
when determining whether a claim recites significantly more is whether
the claim effects a transformation or reduction of a particular article to a
different state or thing." "[T]ransformation and reduction of an article 'to a
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different state or thing' is the clue to patentability of a process claim that
does not include particular machines." Bilski v. Kappas, 561 U.S. 593, 658
(2010) (quoting Gottschalk v. Benson, 409 U.S. 63, 70, 175 (1972)). If such
a transformation exists, the claims are likely to be significantly more than
any recited judicial exception. Bilski emphasizes that although the
transformation of an article is an important clue, it is not a stand-alone test
for eligibility. MPEP § 2106.05(c).
Regarding Memorandum (2), we note Appellants advance no
arguments in the Briefs that are directed to the Bilski machine-or-
transformation test, which would only be applicable to the method (process)
claims on appeal.
To the extent Appellants may contend that the claims on appeal
transform data by converting correlated business and social metrics into data
representing a heat map, our reviewing court guides that "[t]he mere
manipulation or reorganization of data, however, does not satisfy the
transformation prong." CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) (emphasis added). Therefore, we conclude
method claim 1 fails to satisfy the transformation prong of the Bilski
machine-or-transformation test. See MPEP § 2106.05(c) "Particular
Transformation."
Nor do Appellants argue that the method claims on appeal are tied to a
particular machine. See MPEP § 2106.05(b) "Particular Machine."
Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
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MPEP § 2106.05(e) Other Meaningful Limitations
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment. 450
U.S. 175, 209 USPQ 1 (1981). In Diehr, the claim was directed
to the use of the Arrhenius equation ( an abstract idea or law of
nature) in an automated process for operating a rubber-molding
press. 450 U.S. at 177-78, 209 USPQ at 4. The Court evaluated
additional elements such as the steps of installing rubber in a
press, closing the mold, constantly measuring the temperature in
the mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184, 187,
209 USPQ at 7, 8. In contrast, the claims in Alice Corp. v. CLS
Bank International did not meaningfully limit the abstract idea of
mitigating settlement risk. 573 U.S. 134 S. Ct. 2347, 110
USPQ2d 197 6 (2014 ). In particular, the Court concluded that the
additional elements such as the data processing system and
communications controllers recited in the system claims did not
meaningfully limit the abstract idea because they merely linked
the use of the abstract idea to a particular technological
environment (i.e., "implementation via computers") or were
well-understood, routine, conventional activity.
MPEP § 2106.05(e) (emphasis added).
The Examiner finds "there are no meaningful limitations in the claim
that transform the exception into a patent eligible application such that the
claim amounts to significantly more than the exception itself .... " Final
Act. 13 (emphasis added).
Appellants advance no arguments in the Appeal Brief or Reply Brief
pertaining specifically to purported claimed meaningful limitations. Based
upon our review of the record, it is our view that Appellants' claims do not
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add meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment.
MP EP §2106. 05 (f) Mere Instructions to Apply an Exception
The Examiner concludes "the claims merely amount to the application
of instructions to apply the abstract idea on a computer; and the claims
amount to nothing more than requiring a generic computer to perform
generic computer functions that are well-understood, routine and
conventional activities previously known to the industry." Final Act. 3
( emphasis added).
In the Reply Brief, Appellants respond: "The Examiner appears to be
operating under the mistaken understanding that the ability to implement the
invention on a generic computer preordains the claim." Reply Brief 2. In
support, Appellants cite to Enfzsh, LLC v. Microsoft Corp. (822 F.3d 1327,
1338 (Fed. Cir. 2016)). Appellants urge:
The Court of Appeals for the Federal Circuit has addressed this
specific issue in Enfzsh, stating, "[ m ]oreover, we are not
persuaded that the invention's ability to run on a general-
purpose computer dooms the claims."[] Appellant points
out that the claims recited in Enfish can be executed using
generic computing elements. At the same time, the claims in
Enfzsh were found to solve a technological problem.
Reply Br. 2.
In response to Appellants' argument analogizing the claims before us
on appeal to the subject claim in Enfish, we note the Enfzsh court concluded
"the claims at issue in this appeal are not directed to an abstract idea within
the meaning of Alice. Rather, they are directed to a specific improvement to
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the way computers operate, embodied in the self-referential table." Enfish,
822 F.3d at 1336 (emphasis added).
Thus, the Enfzsh court concluded the self-referential logical table was
a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Id. at 1339. Because the analysis stops
if there is no abstract idea under Alice step 1, the Enfzsh court concluded the
subject claims were patent eligible. Id.
Here, Appellants have not persuasively shown that any features of the
claimed invention improve the way the recited generic computer components
store and retrieve data in a manner analogous to that found by the court in
Enfzsh. Moreover, Appellants' claims 1-3, 6-9, 12-15, 18, 19, and 24--27
are silent regarding any mention of a database, much less a self-referential
database table similar to the specific type of logical-table arrangement the
Enfzsh court found was designed to improve the way a computer stores and
retrieves data in memory. See Enfish, 822 F.3d at 1336.
Therefore, we are not persuaded that Appellants' claimed invention
improves the functionality or efficiency of the recited generic computer
components, or otherwise changes the way the computer components
function, at least in the sense contemplated by the Federal Circuit in Enfzsh.
For the reasons discussed above, we conclude Appellants' claims 1-3,
6-9, 12-15, 18, 19, and 24--27 invoke generic computer components merely
as a tool in which the computer instructions apply the judicial exception.
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MP EP § 2106. 05 (g) Insignificant Extra-Solution Activity
Appellants advance no specific arguments in the Briefs contending the
claims do not recite insignificant extra-solution activity.
However, we conclude the claimed steps or functions which collect
business and social media metric data are directed to data gathering. Data
gathering, as performed by the steps or functions recited in Appellants'
claims, is a classic example of insignificant extra-solution activity. See, e.g.,
In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd sub nom,
Bilski v. Kappas, 561 U.S. 593 (2010).
The Supreme Court guides that the "prohibition against patenting
abstract ideas 'cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
Applying this guidance here, we are of the view that Appellants'
claims do not operate the recited generic computer components in an
unconventional manner to achieve an improvement in computer
functionality, as discussed above.
MPEP § 2106.05(h) Field of Use and Technological Environment
"[T]he Supreme Court has stated that, even if a claim does not wholly
preempt an abstract idea, it still will not be limited meaningfully if it
contains only insignificant or token pre- or post-solution activity-such as
identifying a relevant audience, a category of use,field of use, or
technological environment." Ultramercial Inc. v. Hulu LLC, 722 F.3d 1335,
1346 (Fed. Cir. 2013) (citations omitted) (emphasis added).
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Appellants advance no specific arguments in the Briefs contending the
claims describe a field of use that limits the abstract idea to a particular
technological environment, such that there is purportedly no preemption.
We note our reviewing court guides: "While preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); Ultramercial, 722 F.3d at 1346.
In light of the foregoing, we conclude, under the USPTO Revised 101
Guidance (Memorandum), that each of Appellants' claims 1-3, 6-9, 12-15,
18, 19, and 24--27, considered as a whole, is directed to a patent-ineligible
abstract idea that is not integrated into a practical application.
The Inventive Concept
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
Appellants' Reply Brief was filed almost four months earlier, on October 10,
2017. We note the PTO issued the memorandum titled "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter
"Berkheimer Memorandum"), 4 on April 19, 2018, which provided specific
requirements for an Examiner to support with evidence any allegation that
claim elements (or combination of elements) are well-understood, routine, or
4 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
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conventional. In reviewing the prosecution history, we recognize that
Appellants have not yet had an opportunity to advance arguments based
upon the change in the law effected by Berkheimer.
In the Reply Brief, Appellants argue:
Appellant respectfully maintains that the claim is directed to
patent eligible subject matter for a number of additional reasons
as articulated in the previously filed Appeal Brief. The
Examiner asserts that the claims "merely amount to the
application or instructions to apply the abstract idea on a
computer; and the claims amount to nothing more than
requiring a generic computer to perform generic computer
functions that are well-understood, routine and conventional
activities previously known to the industry."[] The Examiner
appears to be operating under the mistaken understanding that
the ability to implement the invention on a generic computer
preordains the claim.
Reply Br. 2 ( emphasis added).
We reproduce below the substantive changes to prior examination
practice, as set forth in the Berkheimer Memorandum:
A. Formulating Rejections: In a step 2B analysis, an
additional element (or combination of elements) is not well-
understood, routine or conventional unless the examiner finds,
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). A
specification demonstrates the well-understood, routine,
conventional nature of additional elements when it
describes the additional elements as well-understood or
routine or conventional ( or an equivalent term), as a
commercially available product, or in a manner that
indicates that the additional elements are sufficiently
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well-known that the specification does not need to
describe the particulars of such additional elements to
satisfy 35 U.S.C. § 112(a). A finding that an element is
well-understood, routine, or conventional cannot be
based only on the fact that the specification is silent with
respect to describing such element.
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 ).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). An appropriate publication could include a
book, manual, review article, or other source that
describes the state of the art and discusses what is well-
known and in common use in the relevant industry. It
does not include all items that might otherwise qualify as
a "printed publication" as used in 35 U.S.C. § 102.
Whether something is disclosed in a document that is
considered a "printed publication" under 35 U.S.C. § 102
is a distinct inquiry from whether something is well-
known, routine, conventional activity. A document may
be a printed publication but still fail to establish that
something it describes is well-understood, routine,
conventional activity. See Exergen Corp., 2018 WL
1193529, at *4 (the single copy of a thesis written in
German and located in a German university library
considered to be a "printed publication" in Hall "would
not suffice to establish that something is 'well-
understood, routine, and conventional activity previously
engaged in by scientists who work in the field"'). The
nature of the publication and the description of the
additional elements in the publication would need to
demonstrate that the additional elements are widely
prevalent or in common use in the relevant field,
comparable to the types of activity or elements that are so
well-known that they do not need to be described in
detail in a patent application to satisfy 35 U.S.C.
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§ 112(a). For example, while U.S. patents and published
applications are publications, merely finding the
additional element in a single patent or published
application would not be sufficient to demonstrate that
the additional element is well-understood, routine,
conventional, unless the patent or published application
demonstrates that the additional element are widely
prevalent or in common use in the relevant field.
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s). This option should be used only
when the examiner is certain, based upon his or her
personal knowledge, that the additional element( s)
represents well-understood, routine, conventional activity
engaged in by those in the relevant art, in that the
additional elements are widely prevalent or in common
use in the relevant field, comparable to the types of
activity or elements that are so well-known that they do
not need to be described in detail in a patent application
to satisfy 35 U.S.C. § 112(a). Procedures for taking
official notice and addressing an applicant's challenge to
official notice are discussed in MPEP § 2144.03.
Berkheimer Memorandum 3--4 (footnote omitted). 5
After reviewing record before us, we find the Examiner has not
provided sufficient evidence of any of the four enumerated types of factual
5 We note that whether something is "well understood, routine, and
conventional" is evaluated under step 2 of Alice/Mayo. See Mayo, 566 U.S.
at 73 ("We find that the process claims at issue here do not satisfy these
conditions. In particular, the steps in the claimed processes ( apart from the
natural laws themselves) involve well-understood, routine, conventional
activity previously engaged in by researchers in the field. At the same time,
upholding the patents would risk disproportionately tying up the use of the
underlying natural laws, inhibiting their use in the making of further
discoveries.") ( emphasis added).
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evidence, as set forth in the Berkheimer Memorandum, with respect to the
following "well-understood, routine, and conventional" (WURC) findings,
as set forth in the Final Action and Answer. We reproduce the Examiner's
unsupported findings below:
the claims merely amount to the application or instructions to
apply the abstract idea on a computer; and the claims amount to
nothing more than requiring a generic computer to perform
generic computer functions that are well-understood, routine
and conventional activities previously known to the industry.
Final Act. 6 ( emphasis added).
The Examiner proffers additional unsupported findings:
The claim does recite various technological elements as
performers of the claim steps:
A processor in communication with memory
A heat map, wherein the heat map is a graphical user
interface to visually display
However, each of the module elements merely represents
a software module of a generic "processor" within a generic
"server". These modules serve to automate mental tasks ( see
analysis above) or perform electronic recordkeeping ( e.g.,
selecting and integrating data), both of which have been
deemed well-understood, routine, and conventional computer
functions (see page 7 of July 2015 Update). Accordingly, they
are not directed to anything more than a generic computer
performing generic computer functions that are well-
understood, routine, and conventional in the field.
Final Act. 8-9 ( emphasis added).
the claims amount to nothing more than requiring a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
Ans. 3, 8 (emphasis added).
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the computer functions performed of selecting an element,
integrating data, creating a metric, assigning a metric,
producing a correlation, analyzing data, dynamically adjusting
the business architecture, changing a metric, activating an
application, and executing the modifications are merely generic
computer functions that are well-understood, routine and
conventional in the industry.
Ans. 6-7 (emphasis added).
Based upon our review of the record, we find the statements in the
record by the Examiner as to what is purportedly well-known, routine, and
conventional, without more, do not provide any of the four specific types of
factual evidence required by the USPTO Berkheimer Memorandum (at 3--4),
which implemented the controlling guidance of Berkheimer, 881 F.3d at
1369.
In summary, the case law and the PTO's policy pertaining to§ 101
have evolved during the period subsequent to Appellants' filing of the Reply
Brief. Therefore, in applying the controlling guidance of the US PTO
Berkheimer Memorandum (at 3--4), we are constrained on this record to
reverse the Examiner's rejection of all claims 1-3, 6-9, 12-15, 18, 19, and
24--27, as being directed to patent-ineligible subject matter.
Rejection B-35 USC§ 101
The Examiner also rejected claims 7-9, 12, and 25 under 35
U.S.C. § 101 as being directed to non-statutory subject matter-i.e., a
program listing per se and/or a signal per se. Final Act. 3-5. In the
"Response to Arguments" section of the Final Action ( 10-11 ), and regarding
the computer program product and associated medium of independent claim
7, the Examiner suggests that Appellants add the term "non-transitory" to
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the claim. Final Act. 11. The Examiner further indicates that
"[a]ltematively or additionally, positive recitation of physical structure such
as computer hardware elements would also likely overcome this rejection
under 35 U.S.C. 101." Id. See also Ans. 11-12.
In reviewing the record, we agree with Appellants' contention that
because "claim 7 does not recite a computer readable medium, but rather
recites a computer readable hardware storage medium" that the scope of
claim 7 under BRI excludes transitory mediums (e.g., signals or carrier
waves) and disembodied computer programs or code per se. App. Br. 25
(emphasis added). Accordingly, we also reverse the Examiner's Rejection B
under 35 U.S.C. § 101, of claims 7-9, 12, and 25.
CONCLUSIONS
The Examiner erred in rejecting claims 1-3, 6-9, 12-15, 18, 19, and
24--27, under 35 U.S.C. § 101, as being directed to a judicial exception,
without significantly more.
The Examiner erred in rejecting claims 7-9, 12, and 25 under
35 U.S.C. § 101, as being directed to non-statutory subject matter-i.e., a
program listing per se and/or a signal per se.
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DECISION
We reverse the Examiner's decision rejecting claims 1-3, 6-9, 12-15,
18, 19, and 24--27 under 35 U.S.C. § 101.
REVERSED
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