Ex Parte Goel et al

Patent Trial and Appeal Board

Oct 23, 2018

14139877 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/139,877 12/24/2013
124871 7590 10/25/2018
Hickman Palermo Becker Bingham/ Quotient
1 Almaden Boulevard, Floor 12
San Jose, CA 95113
FIRST NAMED INVENTOR
DeepakGoel
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.
60202-0296 9405
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEEP AK GOEL, KA VEL PATEL, and
SAJJIT THAMPY
Appeal2017-006298
Application 14/139,877
Technology Center 3600
Before ST. JOHN COURTENAY III, JOHN D. HAMANN, and
SCOTT E. BAIN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final rejection2 of
claims 1-14 and 16-30. Claim 15 is cancelled. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Quotient Technology
Inc., which is the assignee of the present application. App. Br. 1.
2 We herein refer to the Specification, filed Dec. 24, 2013 ("Spec."); Final
Office Action, mailed Feb. 12, 2016 ("Final Act."); Appeal Brief, filed Jun.
30, 2016 ("App. Br."); and the Examiner's Answer, mailed Dec. 9, 2016
("Ans.").
Appeal2017-006298
Application 14/139,877
STATEMENT OF THE CASE
Introduction
Embodiments of Appellants' invention "relate generally to
determining, on behalf of a coupon provider and based on multiple factors, a
value for a coupon." Spec. ,r 2.
Exemplary Claim
1. A method performed by a coupon distributor that is
different from a coupon provider, the method comprising, prior
to distributing a coupon:
using a first computing device of a coupon distributor,
sending, to a web browser of a second computing device of the
coupon provider, a webpage that is addressed by a particular
uniform resource locator (URL);
using the first computing device of the coupon distributor
to receive, within a hypertext transfer protocol (HTTP) request
from the web browser of the second computing device of the
coupon provider that provides a product or service to which the
coupon pertains, budget data that indicates an amount to spend,
by the coupon provider, on coupon services relating to the
issuance of the coupon;
using the first computing device, receiving, from the
second computing device, redemption data that indicates a
number of anticipated redemptions of the coupon and a
plurality of attributes of a coupon campaign that is to be
initiated by the coupon provider; and
using the first computing device, and based on a subset of
said plurality of attributes of the coupon campaign as a lookup
key, selecting, from said first database table, a particular
redemption rate function from a plurality of redemption rate
functions that occupy said first database table, wherein each
redemption rate function of said plurality of redemption rate
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functions calculates a redemption rate based on a possible
coupon value;
using the first computing device, applying the particular
redemption rate function to a possible coupon value to calculate
an estimated redemption rate;
using the first computing device, computing, based on
the estimated redemption rate, the budget data, and the
redemption data, a particular value of the coupon;
using the first computing device storing in a second
database table the particular value as the value of the coupon in
the coupon campaign;
using the first computing device to activate the coupon
campaign.
App. Br. 24 (Claims Appendix).
Rejection
Claims 1-14 and 16-30 are rejected under 35 U.S.C. § 101, as being
directed to a judicial exception, without significantly more. 3 Final Act. 2.
Issue on Appeal
Did the Examiner err in rejecting claims 1-14 and 16-30 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
3 See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 706.03(a) (9th
Ed., Rev. 08.2017, Jan. 2018).
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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
Mayo/Alice Analysis
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. 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. Id. at 2355-57.
If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
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409 U.S. 63, 71-72 (1972). "'Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work."' In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Benson, 409 U.S.
at 67). Moreover, if a method can be performed by human thought alone, or
by a human using pen and paper, it is merely an abstract idea and is not
patent eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
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).
Otherwise, the inquiry proceeds to the second step, in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two, whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfish, 822 F.3d at 1336.
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The Examiner's Rejection under 35 US.C. § 101
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes that claims 1-14 and 16-3 0 are directed to a judicial exception,
i.e., an abstract idea, because the claims are directed "to either of the abstract
idea of determining the value of a coupon, similar to the patent found
ineligible in OIP Technologies, Inc. v. Amazon.com, Inc. 4 (the computing the
value of a coupon step) or of comparing and organizing information." Final
Act. 2. 5
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that amount to
significantly more than the judicial exception, because:
The claims recite the additional elements of computing devices,
storage media and instructions. These elements are recited at a
high level of generality and only perform generic computer
functions of manipulating information and sharing information
among computers. Generic computers performing generic
computer functions, without an inventive concept, do not
amount to significantly more than the abstract idea. The Internet
limitations (use of URLs, HTTP and so forth) are simply a field
of use that attempts to limit the abstract idea to a particular
4 The Examiner is referring to OIP Technologies, Inc. v. Amazon.com, Inc.,
788 F.3d 1359 (Fed. Cir. 2015). We agree with the Examiner that
Appellants' claimed method for computing the particular value of a coupon
(based on various factors) is similar to the claimed method for pricing a
product for sale that the OIP court considered to be an "abstract idea of
offer-based price optimization [that] lacks an 'inventive concept' sufficient
to 'transform' the claimed subject matter into a patent-eligible application of
that idea." Id. at 1364.
5 "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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technological environment. Mathematical calculations such as
those of Claim 7 are per se unpatentable and are not rendered
patentable by their being performed by generic computers. The
type of information being manipulated or statements as to who
owns or provides the information does not impose meaningful
limitations or render the idea less abstract. Looking at the
elements as an ordered combination does not add anything
more than the elements analyzed individually.
Final Act. 3. 6
For the aforementioned reasons, the Examiner concludes that all
claims 1-14 and 16-30 on appeal are not patent eligible under 35 U.S.C.
§ 101.
Mayo/Alice Analysis -Step 1
Regarding Alice Step 1, Appellants contend:
none of the pending claims has been analyzed as a whole. The
Federal Circuit has directly abrogated this approach in
commenting that " ... the 'directed to' inquiry applies a stage-
one filter to claims, considered in light of the specification,
based on whether 'their character as a whole is directed to
excluded subject matter."' Enfzsh, supra; emphasis added. In
other words, the courts have already settled that ineligibility
cannot be concluded unless a claim is analyzed as a whole.
App. Br. 6.
6 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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In response, the Examiner further explains the basis for the rejection:
Looking at the claims as a whole, which the appellant
complains that the Examiner has not done, necessarily requires
looking at the individual parts - that can't be ignored - and then
looking at the interaction between the parts. The type of
computers involved and the role they play is most typically
analyzed at step 2B, and the Examiner considered those
elements at that time. Looking at the rest of the claim, the
interaction between the abstract steps is simply chronology and
the passing of data from one step to the next: first, data is sent
somewhere; second, additional data (in this case, budget
information) is received from the target of the original data;
third, yet more data (in this case, redemption data) is received;
fourth, a mathematical rule is chosen from among several
possible such rules based upon the data; fifth, the mathematical
rule is used to compute a numerical quantity ( a coupon value)
with an intermediate step of computing another value
( estimated redemption rate) used in the final computation;
sixth, the final result is stored; seventh, some barely-specified
action ("using the first computer device to activate the coupon
campaign") is performed. How any of this is supposed to go
beyond the stated abstractions - comparing and organizing data
for transmission, and making mathematical computations to
determine a value - is unclear to the Examiner.
Ans. 3.
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). Further,
"[E]xaminers 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.
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Contrary to Appellants' contentions, we find the Examiner has
considered the claims as a whole. See Final Act. 2-7; Ans. 3. We note the
court in Enfish held that the subject claims "are not directed to an abstract
idea within the meaning of Alice. Rather, they are directed to a specific
improvement to the way computers operate, embodied in the self-referential
table." Id. 822 F.3d at 1336. ( emphasis added). We emphasize the self-
referential database table considered by the court in the Enfish was found to
be a specific type of data structure that was designed to improve the way a
computer stores and retrieves data in memory. Enfzsh, 822 F.3d at 1339.
Here, Appellants have not shown that any features of the claims
before us on appeal improve the way the recited generic first and second
computing devices store and retrieve data, in a manner analogous to that
found by the court in Enfish. See Appellants' independent claims 1, 13, 16,
and 28. We find Appellants' recited first and second database tables are
nothing more than conventional relational database tables that may be
accessed with a conventional lookup key. 7 Id.
Therefore, on this record, we are not persuaded that Appellants'
claimed invention improves the recited computer device, processor,
database, or storage media functionality or efficiency, or otherwise changes
the way the claimed generic computer components function, at least in the
sense contemplated by the Federal Circuit in Enfzsh.
7 Appellants' claimed "said first database table" appears to have no positive
antecedent basis in each of independent claims 1, 13, 16, and 28. (emphasis
added). In the event of further prosecution, we leave it to the Examiner to
consider a rejection under pre-AIA 35 U.S.C. § 112, second paragraph, of all
claims 1-14 and 16-30.
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Moreover, data gathering, as 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 Federal Circuit 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); see also Smart Sys. Innovations, LLC v. Chicago Transit Auth.,
873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the
collection, storage, and recognition of data are directed to an abstract idea");
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
( the collection of information and analysis of information are abstract ideas).
But for the recitation of generic recited computer devices, and/or a
processor, database, and storage media memory (claims 1, 13, 16, 28), we
agree with the Examiner (Ans. 5) that the recited steps, acts, or functions
could be performed as mental steps, or with the aid of pen and paper. See
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir.
2016) ("While the Supreme Court has altered the § 101 analysis since
CyberSource in cases like Mayo and Alice, we continue 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."' (brackets in original) (quoting Elec. Power Grp.,
830 F.3d at 1354)); see also CyberSource, 654 F.3d at 1375 ("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.");
see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental
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processes----or processes ofhmnan thinking-standing alone are not
patentable even if they have practical application.").
Further, we conclude Appellants' calculation of a redemption rate
(claims 1, 13, 16, 28) and the calculation of value of the coupon (e.g., claims
7 and 22) are comparable to computing alarm limits in a catalytic conversion
process using a mathematical formula, which was held a patent ineligible
abstract idea in Parker v. Flook, 437 U.S. 584 (1978). See Alice, 134 S.Ct.
at 2355.
"[M]erely selecting information, by content or source, for collection
[ and] analysis ... does nothing significant to differentiate a process from
ordinary mental processes .... " Elec. Power Grp., 830 F.3d at 1355. Data
gathering, such as receiving and analyzing ( or identifying data), by itself,
does not transform an otherwise-abstract process or system of information
collection and analysis. See id.
Appellants advance no further substantive arguments regarding Alice
Step 1. Therefore, on this record, we conclude Appellants' claims 1-14 and
16-30 are directed to an abstract idea, which is similar to the abstract ideas
identified by our reviewing courts, as discussed above, which could
additionally be performed as mental steps, albeit with the aid of pen and
paper.
Mayo/Alice Analysis-Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Final Act. 2-7;
Ans. 2---6), we tum to the second part of the Alice/ Mayo analysis. We
analyze the claims to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claims amount to
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"significantly more" than the abstract idea. Alice, 134 S. Ct. at 2357
(internal quotations and citation omitted).
Regarding Alice Step 2, Appellants address the purported inventive
concept of the claims. App. Br. 7. In support, Appellants urge that the
claims are directed:
to a specific improvement to the way computers operate,
embodied in the database table that maps coupon campaign
attribute values to stored redemption rate functions
programmed to calculate redemption rates based on possible
coupon values, as well as process steps and sequences of
instructions that receive budget data, redemption data,
campaign attribute values, apply a particular redemption rate
function selected from the table to the data and values to
calculate an estimated redemption rate and to compute coupon
values to be used in a campaign.
App. Br. 7 (emphasis added).
In response, the Examiner further explains the basis for the rejection:
"the steps of the method are all abstract, and do not amount to significantly
more than themselves. The computers are in fact generic and the appellant
has not made any attempt to argue otherwise, except for the typical argument
that the computers have been programmed to perform the business function,
but the same was true of Ultramercial." 8 Ans. 7 (emphasis added).
8 The Examiner is referring to Ultramercial Inc. v. Hulu LLC, 722 F.3d
1335, 1346 (Fed. Cir. 2013) ("[T]he Supreme Court has stated that, even if a
claim does not wholly pre-empt 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."), vacated and remanded, WildTangent,
Inc. v. Ultramercial LLC, 134 S. Ct. 2870 (2014) (remanding for
consideration in light of Alice, 134 S. Ct. 2347).
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Appellants further contend:
to properly assess whether a limitation that relates to the
operation of a computing device is "significantly more", it is
necessary to understand what is meant by the term "generic
computer function". The courts have been clear that "generic
computer function" does not mean "any operation that a general
purpose computer, with the proper programming, would be able
to perform". Such an interpretation of "generic computer
function" would render all computer implemented inventions
patent-ineligible per-se. With proper programming, a general
purpose computer can perform every computer-implemented
invention, including those that have been held patent-eligible by
the courts ...
For example, the novel limitations of Diamond v. Diehr (patent
eligible) involved performing repetitive calculations (a category
in the list), while all operations performed in DDR Holdings
(patent eligible) fall under "receiving, processing, storing data
and receiving" (a category in the list) or "transmitting data over
a network" ( a category in the list) and the Enfzsh claims (patent
eligible) could be deemed "electronic recordkeeping" ( also a
category).
App. Br. 14.
We, however, 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," as considered by the court in DDR Holdings LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (emphasis added).
Further, regarding the use of the recited generic "processor" ( claim
15), "the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at
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2358; see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an Internet
computer network' or on a generic computer is still an abstract idea"). On
this record, we find that Appellants' claims do not operate the recited
generic computer components in an unconventional manner to achieve an
improvement in computer functionality.
Our reviewing court provides additional guidance: See FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use
of generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter."); OIP Techs, 788 F.3d at 1363 (claims reciting, inter alia, sending
messages over a network, gathering statistics, using a computerized system
to automatically determine an estimated outcome, and presenting offers to
potential customers found to merely recite "'well-understood, routine
conventional activities"' by either requiring conventional computer activities
or routine data-gathering steps) (internal citation omitted); see also Elec.
Power Grp., 830 F.3d at 1355 ("We have repeatedly held that such
invocations of computers and networks that are not even arguably inventive
are 'insufficient to pass the test of an inventive concept in the application' of
an abstract idea" (quoting buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1353, 1355 (Fed. Cir. 2014))); Intellectual Ventures I LLC v. Capital One
Financial Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims
recite both a generic computer element-a processor-and a series of
generic computer 'components' that merely restate their individual functions
.... That is to say, they merely describe the functions of the abstract idea
itself, without particularity. This is simply not enough under step two").
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The Supreme Court additionally 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).
To the extent Appellants argue that the claims on appeal avoid "all
ways of practicing the identified abstract idea" (App. Br. 16), our reviewing
court provides applicable guidance: "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, Inc. v. Hulu LLC, 722
F.3d 1335, 1346 (Fed. Cir. 2013); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Global Servs. v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013).
In the Reply Brief (1) Appellants urge that"[ c ]laims providing 'an
unconventional solution that was an improvement over the prior art' have
been held to recite eligible subject matter," citing in support Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016), as an
intervening authority (decided by the Federal Circuit on November 1, 2016,
after the (corrected) Appeal Brief was filed on August 29, 2016).
We note the Amdocs court found claim 1 :
entails an unconventional technological solution ( enhancing
data in a distributed fashion) to a technological problem
(massive record flows which previously required massive
databases). The solution requires arguably generic components,
including network devices and "gatherers" which "gather"
information. However, the claim's enhancing limitation
necessarily requires that these generic components operate in an
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unconventional manner to achieve an improvement in computer
functionality.
Id. at 1300--01 (emphasis added).
However, in contrast with Amdocs, here Appellants do not present,
nor do we find, a specific technical improvement provided by the claims
before us on appeal. For the reasons discussed above, we find Appellants'
claims do not operate the recited generic computer components in an
unconventional manner to achieve an improvement in computer
functionality.
We additionally note the claims considered by the court in Amdocs are
further distinguished from Appellants' claims on appeal, because the
Amdocs court performed significant claim construction of the word
"enhance" regarding the last recited '065 patent claim 1 function "of "using
the accounting information ... to enhance the first network accounting
record." (emphasis added). As noted by the Amdocs court:
In Amdocs I, we construed "enhance" as being dependent
upon the invention's distributed architecture. 761 F.3d
at 1338--40 (quoting '065 patent at 7:51-57, 10:45-50,
7:7-8). We construed "enhance" as meaning "to apply a
number of field enhancements in a distributed fashion."
Id. at 1340. We took care to note how the district
court explained that "[i]n this context, 'distributed' means
that the network usage records are processed close to
their sources before being transmitted to a centralized
manager." Id. at 1338. And we specifically approved of
the district court's "reading the 'in a distributed fashion'
and the 'close to the source' of network information
requirements into the term 'enhance.' "Id. at 1340.
As explained by the patent, this distributed enhancement
was a critical advancement over the prior art:
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Importantly, the distributed data gathering, filtering and
enhancements performed in the system 100 enables load
distribution. Granular data can reside in the peripheries of the
system 100, close to the information sources. This helps avoids [
(sic) ] reduce congestion in network bottlenecks but still allows
the data to be accessible from a central location. In previous
systems, all the network information flows to one location,
making it very difficult to keep up with the massive record flows
from the network devices and requiring huge databases. '065
patent at 4:33--42.
In other words, this claim entails an unconventional
technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record
flows which previously required massive databases).
The solution requires arguably generic components,
including network devices and "gatherers" which "gather"
information. However, the claim's enhancing limitation
necessarily requires that these generic components operate
in an unconventional *1301 manner to achieve an
improvement in computer functionality.
Amdocs at 1300--01 ( emphasis added).
Here, Appellants have not persuasively shown that the instant claims
on appeal entail applying "an unconventional technological solution
( enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)," as
found by the court in Amdocs at 1300.
Because we find Appellants have not established that claims 1-14 and
16-30 are directed to an improvement in the recited generic computer
devices, processor, databases, and/or storage media (claims 1, 13, 16, and
28), we conclude that none of the claim limitations, viewed both individually
and as an ordered combination, amount to significantly more than the
judicial exception in order to sufficiently transform the nature of the claims
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Application 14/139,877
into patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellants' claims 1-14 and 16-30, considered as a whole, is
directed to a patent-ineligible abstract idea (under step one), and under step
two, does not recite something significantly more to transform the nature of
the claim into a patent-eligible application.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1-14 and 16-30, as
being directed to a judicial exception, without significantly more. 9
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief 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. § 41.41(b)(2).
CONCLUSION
The Examiner did not err in rejecting claims 1-14 and 16-30 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
9 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
18
Appeal2017-006298
Application 14/139,877
DECISION
We affirm the Examiner's decision rejecting claims 1-14 and 16-30
under 35 U.S.C. § 101.
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. § 4I.50(f).
AFFIRMED
19