Ex Parte Kao et al

Patent Trials and Appeals Board

Apr 23, 2019

11942300 - (D) (P.T.A.B. Apr. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/942,300 11/19/2007
37945 7590 04/25/2019
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
I-Lung Kao
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.
AUS920070773US 1 1350
EXAMINER
KOLOSOWSKI-GAGER, KATHERINE
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/25/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte I-LUNG KAO and DAH-HAUR LIN
Appeal2017-009420
Application 11/942,300
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
SCOTT C. MOORE, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
I-Lung Kao and Dah-Haur Lin (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1, 2, 5-13, and 15-20, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b ).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed March 7, 2017) and Reply Brief ("Reply Br.," filed June 23,
2017), and the Examiner's Answer ("Ans.," mailed June 1, 2017), and Final
Action ("Final Act.," mailed December 15, 2016).
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Application 11/942,300
The Appellants invented a way of using weighted condition primitives
to facilitate the description of a business policy. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer implemented method for
using weighted condition primitives in decision logic of a
business policy evaluation for providing a web service to a
user,
the computer implemented method comprising:
[ 1] responsive to a web service provider receiving a request for
the web service from the user,
[2]
the web service provider
obtaining a set of facts associated with the user
and
providing the set of facts to a rules engine;
[2a] obtaining, by the rules engine, a business policy
from a rule repository database comprising a plurality of
business policies
and
[2b] performing an evaluation of each weighted condition
primitive in the business policy using the set of facts
associated with the user to determine if the weighted
condition primitive is met based on the set of facts by:
[2b 1] identifying a weight value assigned to a
result of the evaluation of each weighted condition
primitive,
wherein the weight value assigned to the
result of the evaluation of each weighted
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condition primitive is based on an
importance of the weighted condition
primitive to the business policy evaluation;
[2b2] calculating a total weight value of the
identified weight values;
and
[2b3] comparing the total weight value against a
pre-defined business weight threshold condition;
[3a] responsive to a determination that the total weight
value satisfies the pre-defined business weight threshold
condition, providing by the web service provider the web
service to the user;
and
[3b] responsive to a determination that the total weight
value does not satisfy the pre-defined business weight threshold
condition, denying by the web service provider the request by
the user for the web service,
wherein the business policy comprises a plurality of
business rules that contain conditions and actions that
apply to an organization in achieving its business goals.
Claims 1, 2, 5-13, and 15-20 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without substantially more.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
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ANALYSIS
Initially we construe the limitation "web service" that is either
provided or denied by the claims according to its lexicographic definition in
the Specification.
A web service is an interface that describes a collection of
operations that are network accessible through standardized
extensible markup language (XML) messaging. A web service
fulfills a specific task or a set of tasks. A web service is
described using a standard format XML notation called its
service description, which provides all of the details necessary
to interact with the service, including message formats,
transport protocols, and location.
Spec. para. 35. Of note, a web service is not an action, which is the
most common type of service. Instead, a web service is an XML (i.e.
textual) interface. Thus the grant or denial of a web service is a grant or
denial to access a textual interface. As the textual interface is implemented
as XML, this means access to some text. The claims do not do anything
with the interface, so what the interface describes is of no weight.
STEP 12
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
2 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
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STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat else
is there in the claims before us? To answer that question, ...
consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014)
( citations omitted) ( citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims "apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." 2019 Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
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recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
Method claim 1 recites obtaining fact data, providing the fact data to a
rules engine, obtaining policy data, evaluating each weighted condition
primitive data in the policy by identifying weight value data, calculating
total weight value and comparing against a threshold data, and either
providing or denying some service based on the comparison. Thus, claim 1
recites receiving, analyzing, modifying, and transmitting data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts3, (2) certain methods of organizing
human activity4, and (3) mental processes5. Among those certain methods of
3 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
4 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
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organizing human activity listed in the Revised Guidance are commercial or
legal interactions. Like those concepts claim 1 recites a commercial
customer qualification practice. Specifically, claim 1 recites operations that
would ordinarily take place in advising one to qualify a customer by
weighting the value of various facts in selecting a policy based on criteria
encoded in rules and comparing a total weighting to a threshold in qualifying
a customer to access some XML text. The advice to qualify a customer by
weighting the value of various facts in selecting a policy based on criteria
encoded in rules and comparing a total weighting to a threshold in qualifying
a customer to access some XML text involves acquiring potential customers,
which is economic act, and qualifying those customers, which is a practice
ordinarily performed in the stream of commerce. For example, claim 1
recites "responsive to a web service provider receiving a request for the web
service from the user, the web service provider obtaining a set of facts
associated with the user," which is an activity that would take place
whenever one is gathering data for evaluating a potential customer.
Similarly, claim 1 recites "responsive to a determination that the total
weight value satisfies the pre-defined business weight threshold
condition, providing by the web service provider the web service to the
user" and "responsive to a determination that the total weight value does
not satisfy the pre-defined business weight threshold condition, denying
by the web service provider the request by the user for the web service,"
5 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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which are also characteristics qualifying a customer and granting or denying
service based on whether the customer is qualified.
The Examiner determines the claims to be directed to
Final Act. 4.
obtaining information (i.e. new information), obtaining
business policy (i.e. stored information) and using the
business policy to evaluate (i.e. compare) "each
weighted condition primitive in a business policy" (i.e.
stored information) and generating a result, and based on
the result either providing or not providing a service (i.e.
using rules to identify options). The independent claims
therefore are similar to "comparing new and stored
information and using rules to identify options," which is
a process that the Courts have previously identified as an
example of an abstract idea (SmartGene). In addition the
independent claims are directed to additional steps
detailing how rules are used to identify options, including
identifying a weight value resulting from the evaluation,
calculating a total weight value and comparing that
weight value to a threshold. While this process also
echo's the abstract idea indicated by the court in
SmartGene, these claim elements are additionally
directed to mathematical operations and calculations
which the courts have routinely identified as examples of
abstract ideas as well (Diehr, Flook, Digitech, Mackay
Radio, Benson, Alice).
The preamble to claim 1 recites that it is a method for using weighted
condition primitives in decision logic of a business policy evaluation for
providing a web service (XML text)6 to a user. The steps in claim 1 result in
6 See claim construction supra.
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providing or denying this web service based on weighted decision criteria
absent any technological mechanism other than a conventional computer for
doing so.
As to the specific limitations, limitations 1, 2a, and 2b 1 recite generic
receiving, analyzing, modifying, and transmitting of business policy data,
which advise one to apply generic computer operations to get to these
results. Limitations 2b2, 2b3, and 3a and 3b are the only steps associated
with performing what the claim produces and recite performing a calculation
and comparison, and then performing some undefined web service or not
accordingly, which is simply choosing to do something or not based on a
calculation. The limitations thus recite advice for weighting the value of
various facts in selecting policy based on criteria encoded in rules and
comparing a total weighting to a threshold in qualifying a customer to access
some XML text. To advocate weighting the value of various facts in
selecting policy based on criteria encoded in rules and comparing a total
weighting to a threshold in qualifying a customer to access some XML text
is conceptual advice for results desired and not technological operations.
The Specification at paragraph 1 recites that the invention relates to
using weighted condition primitives to facilitate the description of a business
policy. Thus, all this intrinsic evidence shows that claim 1 is directed to
using decision criteria in determining whether to provide customer access
to something, i.e. qualifying a customer. This is consistent with the
Examiner's determination. Again, the end result of the claims is to grant or
deny access to some text file, which in itself has no effect in the claims. The
real operation of the claims is to qualify the customer for such access.
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This in tum is an example of commercial or legal interactions as a
certain method of organizing human activity because qualifying a customer
is a necessary step in reaching a commercial sale transaction.
The concept of qualifying a customer by weighting the value of
various facts in selecting a policy based on criteria encoded in rules and
comparing a total weighting to a threshold in qualifying a customer to access
some XML text is an idea for how to apply some heuristics to a customer
situation. The steps recited in claim 1 are part of the process of coordinating
customer and sale force members in establishing what is to be sold.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Intellectual Ventures I LLC v. Erie
Indemnity Company, 850 F.3d 1315, 1326-27 (Fed. Cir. 2017) (creating
XML data); Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1338 (Fed. Cir.2013) (generating rule-based tasks).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
modifying, and transmitting data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data retrieval, analysis,
modification, and transmission and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims
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not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 1 is directed to receiving, analyzing,
modifying, and transmitting data, and not a technological implementation or
application of that idea.
From this we conclude that at least to this degree, claim 1 is directed
to qualifying a customer by weighting the value of various facts in selecting
policy based on criteria encoded in rules and comparing a total weighting to
a threshold in qualifying a customer to access some XML text.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[ A Jpplication[ s ]" of such
concepts " 'to a new and useful end,' " we have said, remain
eligible for patent protection. Accordingly, in applying the
§ 101 exception, we must distinguish between patents that
claim the " 'buildin[g] block[ s]' " of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] its elf."
Alice, 573 U.S. at 223-24 ( citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1, 2a, and 2b 1 are pure data
gathering steps. Limitations describing the nature of the data do not alter
this. Steps 2b2 and 2b3 recite generic computer processing expressed in
terms of results desired by any and all possible means and so present no
more than conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process
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physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellants' claim 1 simply recites the concept of
qualifying a customer by weighting the value of various facts in selecting
policy based on criteria encoded in rules and comparing a total weighting to
a threshold in qualifying a customer to access some XML text as performed
by a generic computer. This is no more than conceptual advice on the
parameters for this concept and the generic computer processes necessary to
process those parameters, and do not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 28 pages of specification spell out
different generic equipment8 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of qualifying a customer under different scenarios.
They do not describe any particular improvement in the manner a computer
functions. Instead, claim 1 at issue amounts to nothing significantly more
than an instruction to apply qualifying a customer by weighting the value of
various facts in selecting policy based on criteria encoded in rules and
comparing a total weighting to a threshold in qualifying a customer to access
some XML text using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225-26.
8 The Specification describes personal computers or network computers.
Spec. para. 20.
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None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, that
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
uses 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.
We conclude that claim 1 is directed to achieving the result of
qualifying a customer by advising one to weighting the value of various
facts in selecting policy based on criteria encoded in rules and comparing a
total weighting to a threshold in qualifying a customer to access some XML
text as distinguished from a technological improvement for achieving or
applying that result. This amounts to commercial or legal interactions,
which fall within certain methods of organizing human activity that
constitute abstract ideas. The claim does not integrate the judicial exception
into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
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modifying, and transmitting data amounts to electronic data query and
retrieval-one of the most basic functions of a computer. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming."). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellants do not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-transmission is equally generic and conventional. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
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transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 10 l "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
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methods of organizing human activity as exemplified by qualifying a
customer by advising one to weighting the value of various facts in selecting
policy based on criteria encoded in rules and comparing a total weighting to
a threshold in qualifying a customer to access some XML text, without
significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 3-6 and Answer 2-6 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that "the Board does
have both the discretion and authority to enter new grounds of rejection."
Reply Br. 2. This follows Appellants' Appeal Br. 12 argument that the
PTAB's failure to enter a new ground of rejection was evidence that there is
no issue regarding eligibility. That a discretionary action was not performed
earlier does not negate or diminish the present analysis.
We are not persuaded by Appellants' argument that the steps are not
performed by the human mind. Reply Br. 2-3. As we determine supra, all
of the steps consist of data reads, writes, and analysis, save for the steps of
granting or denying access. Such steps are performable in the human mind.
Thus this argument reduces to that the claims are in the context of a
computer performing what the mind could otherwise do. Such contextual
limitations are not determinative. The limitation of granting access to XML
text is also unhelpful as the use of XML is conventional, and granting access
is so broad as to encompass conventional presenting for use.
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IV' s characterization, however, does not change the result.
Although IV correctly observes that the '081 patent applies to
XML documents in particular (rather than any other type of
document), at best, this limits the invention to a technological
environment for which to apply the underlying abstract concept.
But such limitations do not make an abstract concept any less
abstract under step one. Intellectual Ventures I, 792 F.3d at
1366. As the specification recognizes, companies have
frequently employed XML documents in routine business
transactions. '081 patent col. 1 11. 28-36. Thus, the patent's
recitation of XML documents specifically, does little more than
restrict the invention's field of use. Such limitations do not
render an otherwise abstract concept any less abstract.
Intellectual Ventures I LLC v. Capital One Financial Corporation, 850 F.3d
1332, 1340 (Fed. Cir. 2017).
We are not persuaded by Appellants' argument that Electric Power is
inapplicable for the reasons we determine supra. Reply Br. 3. Appellants'
contention that claim 1 "is directed to using special weighted condition
primitives to facilitate the evaluation of a business policy that is used to
conditionally approve or deny user requests for service(s) using the
synergistic interplay between: (1) a web service provider, (2) a rules engine
and (3) a rule repository" (Reply Br. 4) is also unpersuasive as the use of
weights in an algorithm is a mathematical formula, another of the judicial
exceptions. "Adding one abstract idea ... to another abstract idea ... does
not render the claim non-abstract." RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (2017). As to the suggestion there is some
synergistic interplay, this is conclusory. The Specification and other parts of
the record provide no analysis or description of such interplay and why it is
synergistic and this contention was not put forth until the Appeal Brief.
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We are not persuaded by Appellants' argument that there is no
preemption. Reply Br. 5. "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo [/Alice] 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).
We are not persuaded by Appellants' argument that
As to the newly cited cases that describe collecting and
analyzing/comparing known data, the present claims are
substantially different in that they recite a business policy, a set
of facts associated with a user, a rules engine, and business
rules that contain conditions and actions that apply to an
organization - where an evaluation is performed on each
weighted condition primitive in the business policy using a
user-associated set of facts to determine if the weighted
condition primitive is met in order to conditionally provide a
service to such user.
Reply Br. 5-6. This argument simply recites the limitations without
explaining why they overcome the rejection. This is insufficient to act as a
separate argument under 3 7 C.F .R. § 41.3 7. As our reviewing court held,
we hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). This holding is equally
applicable in the context of eligibility given the scope of 37 C.F.R. § 41.37.
This also applies to the subsequent argument regarding Prior Case
Analogy/Repeating Limitations. Reply Br. 6.
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Appeal2017-009420
Application 11/942,300
We are not persuaded by Appellants' argument that "the judicial
decision cited by the Examiner when alleging the recitation of an 'abstract
idea' (1) is not a parallel concept to what is recited in the claims, and (2) is
not a precedential judicial decision." Reply Br. 6. Such precedential
decisions of parallel concepts are applied supra.
We are not persuaded by Appellants' argument that
[t]he improvements to 'any other technological or
technical field' were also identified on page 11 of the Appeal
Brief, whereby use of the specific characteristics of the policy
that specially includes weighted condition primitives allows the
assignment of a weight value to such weighted condition
primitives to advantageously overcome issues with more
traditional IF /THEN constructs.
Reply Br. 7. Appellants argue the use of a programming technique
alternative, which is itself a mental concept and so an abstraction. At best,
this amounts to using a more efficient mathematical algorithm, but again a
mathematical algorithm is an abstraction.
We are not persuaded by Appellants' argument that the Examiner
faulted the Appellants for using the claim limitations themselves in analysis.
Reply Br. 7-8. Appellants contend the Examiner is in error because it is
appropriate to do so. While we agree that it is appropriate to rely on the
actual claim limitations in arguments, this is not the thrust of the Examiner's
determination. Instead, the Examiner determines that the claim limitations
are entirely conventional and so unhelpful to Appellants' argument.
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Appeal2017-009420
Application 11/942,300
CONCLUSIONS OF LAW
The rejection of claims 1, 2, 5-13, and 15-20 under 35 U.S.C. § 101 as
directed to a judicial exception without substantially more is proper.
DECISION
The rejection of claims 1, 2, 5-13, and 15-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l)(iv) (2011).
AFFIRMED
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