Ex Parte LAVALLE

Patent Trial and Appeal Board

Jun 18, 2018

13888445 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/888,445 05/07/2013
23117 7590 06/20/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
David LAVALLE
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.
JRL-4010-0261 2753
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID La VALLE
Appeal2017-003013
Application 13/888,445
Technology Center 3600
Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-8 and 36-41, which are all of the claims pending in this
application. Claims 9-3 5 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Nasdaq, Inc. as the real party in interest. App. Br. 3.
Appeal2017-003013
Application 13/888,445
STATEMENT OF THE CASE
Introduction
According to Appellant, the "invention relate[ s] to methods and
arrangements such as automated exchanges, trading engines, computers and
computer programs (software) for trading a financial instrument." Spec.
1:5-8. 2 The Specification explains that the term "'financial instruments'"
encompasses any tradable item-"securities, derivative or commodity, such
as stocks, bonds, cash, swaps, futures, foreign exchange, options, gas[,]
electricity and so forth, or group of items that is traded through
matching of counterparty orders (bid, offer)." Spec. 1: 19-23.
Claim 1 is representative and reproduced below:
1. A method of trading an Exchange Trade Product, ETP,
the method comprising:
receiving, by an order processing device, a data message
comprising an information element identifying an order to trade
the ETP, said order including a value indicative of a peg order
pnce,
receiving periodically at a predetermined interval, by an
Intraday Net Asset Value, INA V, monitoring device, data
messages from a data feed, the data messages comprising an
information element identifying a current Intraday Net Asset
Value, INAV;
reading, by the INA V monitoring device, said
information element;
2 Our Decision refers to the Final Office Action mailed Aug. 19, 2015
("Final Act."), Appellant's Appeal Brief filed Feb. 12, 2016 ("App. Br.")
and Reply Brief filed Dec. 20, 2016 ("Reply Br."), the Examiner's Answer
mailed Oct. 21, 2016 ("Ans."), and the original Specification filed May 7,
2013 ("Spec.").
2
Appeal2017-003013
Application 13/888,445
comparing, by a comparator, the read information
element including the current INA V to a previously read
information element identifying a previous INA V to check
whether the INAV has changed from a previous INAV;
transmitting, from the INA V monitoring device to the
order processing module, a data message comprising the
received and read information element, identifying the current
INA V, in response to a determination that the INA V has
changed;
determining, by the order processing device, that there is
a need of adjustment of the peg order price, and in response
thereto modifying, by the order processing device, the peg order
price in accordance with the current INA V received in the data
message comprising the information element identifying the
current INA V.
App. Br. 22 (Claims App'x).
Rejection on Appeal
Claims 1-8 and 36-41 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter.
ANALYSIS
We have reviewed the Examiner's rejection of claims 1-8 and 36-41
under 35 U.S.C. § 101 in light of Appellant's arguments in the Briefs (App.
Br. 7-20; Reply Br. 2-8). For the reasons discussed infra, we are not
persuaded by Appellant's arguments that the Examiner erred in rejecting the
claims under § 101. Instead, we agree with, and adopt as our own, the
Examiner's findings of facts and conclusions as set forth in the Office
Action from which this appeal is taken (Final Act. 2-3) and the Examiner's
Answer (Ans. 2-8). We provide the following explanation for emphasis.
3
Appeal2017-003013
Application 13/888,445
Applicable Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "Laws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014) (citation omitted).
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, 75-77 (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 the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. For
example, abstract ideas 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. The
"directed to" inquiry asks not whether "the claims involve a patent-ineligible
concept," but instead whether, "considered in light of the specification, ...
'their character as a whole is directed to excluded subject matter.'" Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citations
omitted). In that regard, we determine whether the claims "focus on a
specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (citation omitted).
4
Appeal2017-003013
Application 13/888,445
If, at the first stage of the Alice analysis, we conclude that the claim is
not directed to a patent-ineligible concept, it is considered patent-eligible
under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v. CellzDirect,
Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'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).
In other words, the second step is to "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."' Id. (brackets in original) ( quoting Mayo, 566
U.S. at 72-73). The prohibition against patenting an abstract idea "'cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted).
Appellant's Arguments3
Appellant argues that the Supreme Court's implicit exception to the
broad scope of subject matter eligibility set forth in 35 U.S.C. §§ 101 and
100, as discussed in Alice, should be narrowly applied, but the Examiner's
rejection applies "an impermissibly broad ineligibility analysis." App. Br.
3 Appellant argues claims 1-8 and 36-41 as a group. App. Br. 7-20; Reply
Br. 2-8. We consider method claim 1 to be representative of the claimed
subject matter on appeal and, therefore, we decide the§ 101 rejection of
claims 1-8 and 3 6-41 on the basis of representative claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
5
Appeal2017-003013
Application 13/888,445
7-9. According to Appellant, the claims here are not directed to a patent-
ineligible concept and, therefore, step two of Alice is moot; however, even
assuming the claims are directed to a patent-ineligible abstract idea, the
claims require features that transform the alleged abstract idea into a patent-
eligible application. Id. at 10.
Regarding Alice step one, Appellant argues the Examiner's rejection is
(1) conclusory, (2) fails to take into account that an order processing device
"receiving," and an INAV monitoring device "transmitting," are physical
steps, (3) "so broad as to be meaningless," ( 4) fails to consider the claim as a
whole, and ( 5) fails to address "the detailed technical features recited in the
claim." Id. at 11; Reply Br. 3-5. Appellant also argues that "[i]gnoring over
98% of the words in claims 1 and 5 is a clear legal error." Reply Br. 3.
Appellant further argues the claims are more like those in DDR Holdings,
which recognized that a claim directed to solving a business problem was
patent-eligible because it was rooted in computer technology to solve a
problem in the realm of computer networks. App. Br. 12. In that regard,
Appellant argues the claims relate to a performance problem in automated
trading exchanges-"a predominance of unfavorable or low quality
ETP/ETF executions ... because the executions varied significantly from
the National Best Bid and Offer (NBBO)"-which was solved by a
technological solution "by linking the INAV to the computer-implemented
order entry/execution process." Id. at 13. Appellant further argues claim 1
makes clear the claimed solution is technical and specific and "one that is
necessarily rooted in computer technology." Id. at 14.
Regarding Alice step two, Appellant argues, even if the claims are
directed in some general way to "organization and comparison of data," as
6
Appeal2017-003013
Application 13/888,445
the Examiner finds (Final Act. 3), they set forth "significantly more than
these generalized concepts." App. Br. 15-16. In particular, Appellant
argues claim 1 recites two receiving steps----one implemented by an order
processing device and the other by an INAV monitoring device-that
"cannot be viewed as simply or generically receiving information." Id. at
16. Appellant also argues that the technical details of claim 1 "amount to
significantly more than comparing and transmitting information" and that
the Examiner "completely ignores the determining and modifying steps."
Id. at 16-17. According to Appellant, another factor demonstrating claim 1
amounts to significantly more is that the Examiner "withdrew all prior art
rejections and found that the claims are not anticipated or obvious over the
prior art." Id. at 17. Appellant further argues that, although a claim is
related to finance or economics, it can still be patent-eligible. Id. ( citing
Trading Technologies Int'!, Inc. v. CQG, Inc., 2015 WL 774655, at *4 (N.D.
Ill. Feb. 24, 2015). Appellant challenges the Examiner's finding that the
method of claim 1 could be "performed mentally" by arguing that the
Examiner does not explain how that could be done and that there is simply
too much information that is changing in fractions of a second to achieve the
result achieved by claim 1. Id. at 18. Appellant also argues the example of
the "Transmission ofl] Stock Quote Data" ( example 21) in the July 2015
Interim Guideline "corroborates that the instant claims recite significantly
more than the alleged abstract idea." Id. at 18-19. Appellant additionally
argues that the scope of the claimed subject matter is sufficiently specific
"that the preemption concern that 'undergirds' 35 U.S.C. §101 jurisprudence
is not an issue." Id. at 19.
7
Appeal2017-003013
Application 13/888,445
In the Reply Brief, Appellant cites Bascom as holding that "an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." Reply Br. 5-6 ( citing Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016)). Appellant argues that the Examiner fails to update the
§ 101 rejection in light of Enfzsh, Bascom, McRO, and Amdocs, all of which
found patent-eligible subject matter. Id. at 7. According to Appellant,
comparing the system claim in Amdocs with claims 1 and 5, it is apparent
that claims 1 and 5 are significantly more detailed and describe "computer
components that operate in an unconventional manner, as evidenced by the
lack of a prior art rejection." Id. at 8.
Alice Step One
The Examiner concludes claims 1-8 and 36-41 are directed to an
abstract idea-trading an exchange trade product. In particular, the
Examiner finds the claims
are directed to a method of trading an exchange trade product
that includes the steps of receiving, reading, comparing,
transmitting, etc. These steps are similar to the concepts of
obtaining and comparing intangible data ( Cybersource) and
comparing new and stored information and using rules to identify
options (SmartGene) that the courts have previously found to be
abstract.
Final Act. 2 ( emphasis added).
The preamble of claim 1 recites "[a] method of trading an Exchange
Trade Product, ETP." Claim 1 also recites the steps of: ( 1) "receiving, by an
order processing device, a data message ... identifying an order to trade the
ETP, said order including a value indicative of a peg order price"; (2)
"receiving ... , by an Intraday Net Asset Value, INAV, monitoring device,
8
Appeal2017-003013
Application 13/888,445
data messages ... comprising an information element identifying a current
... INAV;" (3) "reading, by the INAV monitoring device, said information
element;" (4) "comparing, by a comparator, ... the current INAV to ... a
previous INAV to check whether the INAV has changed ... ;" (5)
"transmitting, from the INAV monitoring device to the order processing
module, ... the current INAV, in response to a determination that the INAV
has changed;" (6) "determining, by the order processing device, that there is
a need of adjustment of the peg order price, and in response thereto"; and,
(7) "modifying, by the order processing device, the peg order price in
accordance with the current INAV .... "
Considering the focus of claim 1 as a whole, we agree with the
Examiner's conclusion that claim 1 is directed to an abstract idea-the
fundamental economic practice of trading an exchange trade product. We
see no meaningful difference in claim 1 and similar or analogous claims in
other cases that our reviewing court has concluded are directed to an abstract
idea. See, e.g., Alice, 134 S. Ct. at 2356 (holding the concept of
intermediated settlement is an abstract idea directed to a "fundamental
economic practice long prevalent in our system of commerce" ( citation
omitted)); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353-54
(Fed. Cir. 2014) (citing cases where contractual relations at issue constituted
fundamental economic practices, and noting that forming or manipulating
economic relations may involve an abstract idea); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) ("'automatic
pricing method and apparatus for use in electronic commerce'"); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (explaining that claims directed to "the mere
9
Appeal2017-003013
Application 13/888,445
formation and manipulation of economic relations" and "the performance of
certain financial transactions" have been held to involve abstract ideas).
Consistent with the Examiner's conclusions, we conclude that steps
( 1) - ( 5) of claim 1 recite "receiving, reading, comparing, [ and] transmitting
trade information." See Final Act. 3. Although the Examiner did not
expressly state, as Appellant argues, that the "receiving" function was
performed by "an order processing device" in step (1) and by "an INAV
monitoring device" in step (2), we are not persuaded of reversible error
because the function of "receiving" trade information is performed in both
steps, regardless of the device receiving the information. 4 It is well
established that gathering, analyzing, manipulating, and presenting
information of a specified content are within the realm of abstract ideas. See
Content Extraction, 776 F.3d at 1347 ("The concept of data collection,
recognition, and storage is undisputedly well-known."); Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (claims
focus on the abstract idea of collecting information, analyzing it, and
displaying certain results of the collection and analysis); Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir.
2017) (holding that the claimed invention is directed "to the abstract concept
of collecting, displaying, and manipulating data of particular documents").
4 Although Appellant argues these two receiving steps "cannot be viewed as
simply or generically receiving information" (see App. Br. 16), this
argument is not persuasive because ( 1) claim 1 does not recite any particular
technical details for performing the "receiving" functions and (2) Appellant
does not explain why receiving information from an order processing device
and an INA V monitoring device is anything other than simply or generically
"receiving" information.
10
Appeal2017-003013
Application 13/888,445
We also agree with the Examiner's conclusion that the "comparing"
step, is analogous to the abstract idea of comparing new and stored
information and using rules to identify options. Final Act. 2 ( citing
SmartGene). In SmartGene, Inc. v. Advanced Biological Laboratories, SA,
555 F. App'x 950, 954 (Fed. Cir. 2014), the Federal Circuit concluded the
claims were patent-ineligible because they did "no more than call on a
'computing device,' with basic functionality for comparing stored and input
data and rules, to do what doctors do routinely." Here, the comparator of
claim I merely compares the current INAV to a previous INAV to determine
whether the INAV has changed, in which event the current INAV is
transmitted from the INAV monitoring device to the order processing
module.
Although the Examiner did not specifically mention the "determining"
and "modifying" steps of claim 1 in the Final Office Action ( as Appellant
argues (see App. Br. 17)), in the Answer, the Examiner finds that, in
performing these steps, "[t]he order processing device is performing generic
computer functions." Ans. 6. We agree with the Examiner. In addition, we
conclude that the steps of "determining" and "modifying" merely involve
collecting and analyzing information. See Electric Power, 830 F.3d at 1353.
In these steps, the order processing device receives the current INAV and
"determines" there is a need to adjust the peg order price and in response
thereto, "modifies" the peg order price in accordance with the current INAV.
Claim 1 fails to recite any technical details for performing the "determining"
and "modifying" functions. We also conclude that these steps could be
performed by a human with pen and paper and involve mathematical
calculations. In that regard, our reviewing court has held that "analyzing
11
Appeal2017-003013
Application 13/888,445
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category." See id.; see also Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016). We are not persuaded by
Appellant's argument there is "too much information" that is changing
quickly to achieve the results of claim 1 mentally (see App. Br. 18) because
"[u]sing a computer to accelerate an ineligible mental process does not make
that process patent-eligible." Bancorp Servs., LLC v. Sun Life Assurance
Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012).
Merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) ( determining the pending claims were directed to a combination of
abstract ideas). Thus, the fact that claim 1 combines abstract ideas that are
analogous to ( 1) collecting, analyzing, manipulating, and presenting
information, (2) "comparing new and stored information and using rules to
identify options," and (3) "analyzing information by steps people go through
in their minds, or by mathematical algorithms" does not render claim 1 any
less abstract.
We are not persuaded by Appellant' arguments attacking the
Examiner's rejection as conclusory, overly broad, failing to consider the
claim as a whole, and using a "conclusory mantra" and "reductionist
analysis." See App. Br. 11; Reply Br. 3-7. As discussed supra, in
concluding that claim 1 is directed to an abstract idea, the Examiner
12
Appeal2017-003013
Application 13/888,445
analyzed claim 1 in accordance with established precedent of the Supreme
Court and our reviewing court. In doing so, the Examiner considered the
different functions recited in claim 1 and, in doing so, considered the related
limitations of claim 1 as a whole.
We also are not persuaded by Appellant's arguments that the claims
here are more like those in DDR Holdings and that the claimed solution is
technical and specific and "one that is necessarily rooted in computer
technology." App. Br. 12-14; Reply Br. 4---6. In DDR Holdings, the Federal
Circuit explained that the patent-eligible claims specified "how interactions
with the Internet are manipulated to yield a desired result ... that overrides
the routine and conventional sequence of events ordinarily triggered by the
click of a hyperlink." DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d
1245, 1258 (Fed. Cir. 2014). The court reasoned that those claims recited a
technological solution "necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks." Id. at 1257. That is not the case here.
Appellant argues the claims relate to a performance problem in
automated trading exchanges, which was solved by a technological solution
"by linking the INA V to the computer-implemented order entry/execution
process." App. Br. 13. This argument is not persuasive, however, because
Appellant does not provide technical evidence or reasoning, including any
citation to the Specification, explaining how "linking" the INA V to the order
entry/execution process is implemented with a technological advance or
improvement. 5 Claim 1 does not recite "linking" the INA V, but merely
5 Similarly, Appellant's arguments that the Examiner fails to address the
technical features in the claims are unpersuasive because Appellant does not
13
Appeal2017-003013
Application 13/888,445
recites receiving the current INA V, comparing the current INAV to a
previous INAV to check whether the INAV has changed, transmitting the
current INAV in response to a determination that the INAV has changed, and
determining whether there is a need of adjustment of the peg order price, and
in response thereto, modifying the peg order price in accordance with the
current INAV In other words, claim 1 recites routine processes performed
with generic devices. Thus, contrary to Appellant's arguments, claim 1 does
not recite a specific technical solution to the problem identified by Appellant
or one that is rooted in computer technology. See Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013)
( admonishing that "the important inquiry for a § 101 analysis is to look to
the claim"; "the complexity of the implementing software or the level of
detail in the specification does not transform a claim reciting only an
abstract concept into a patent-eligible system or method").
We also are not persuaded by Appellant's argument that the scope of
the claim is sufficiently specific that "the preemption concern ... is not an
issue." App. Br. 19. "While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility .... Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., 788 F.3d at 1362---63 ("that the claims do not preempt
identify any such technical features in the claims or refer to any descriptions
of such features in the Specification. See App. Br. 11; Reply Br. 3---6.
14
Appeal2017-003013
Application 13/888,445
all price optimization or may be limited to price optimization in the e-
commerce setting do[ es] not make them any less abstract").
Thus, for these reasons, we conclude claim 1 is directed to the patent-
ineligible abstract idea of trading an exchange trade product and, contrary to
Appellant's argument, step two of Alice is not moot. See App. Br. 10.
Alice Step Two
Regarding step two of the Alice analysis, the Examiner finds the
claims do not "include additional elements that are sufficient to amount to
significantly more than the judicial exception because the generically recited
computer elements do not add a meaningful limitation to the abstract idea
because they would be routine in any computer implementation." Final Act.
2. For the reasons stated by the Examiner, we agree with the Examiner's
findings and conclusions.
Appellant argues that the "technical details" of claim 1 amount to
"significantly more" than comparing and transmitting information and that
the Examiner ignores the "determining" and "modifying" steps. See App.
Br. 16-17. This argument is not persuasive because it is conclusory and
fails to identify any "technical details" in claim 1 or any description in the
Specification of how any claim element provides a technological advance or
improvement over the generic functions recited in the claims, including the
"determining" and "modifying" steps. Contrary to Appellant's arguments,
claim 1 does not "focus on a specific means or method that improves the
relevant technology," but is "directed to a result or effect that itself is the
abstract idea and merely invoke[ s] generic processes and machinery."
McRO, 837 F.3d at 1314 (citation omitted). This is not enough to transform
an abstract idea into patent-eligible subject matter. See, e.g., Alice, 134 S.
15
Appeal2017-003013
Application 13/888,445
Ct. at 2360 ( explaining that claims that "amount to 'nothing significantly
more' than an instruction to apply the abstract idea ... using some
unspecified, generic computer" "is not 'enough' to transform an abstract
idea into a patent-eligible invention" (quoting Mayo, 566 U.S. at 77, 79));
Intellectual Ventures, 850 F.3d at 1342 ("[T]he claim language here provides
only a result-oriented solution, with insufficient detail for how a computer
accomplishes it. Our law demands more.").
We also are not persuaded by Appellant's arguments that a factor
demonstrating claim 1 amounts to "significantly more" is that the Examiner
finds the claims are not anticipated or obvious over the prior art. See App.
Br. 17. A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "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., 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72-73).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89
(1981) ("The 'novelty' of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
16
Appeal2017-003013
Application 13/888,445
a claim falls within the § 101 categories of possibly patentable subject
matter").
We also are not we persuaded by Appellant's references to Trading
Technology, Bascom, Enfish, McRO, Amdocs, and example 21
(Transmission of Stock Quote Data) in the July 2015 Interim Guideline
because Appellant has not demonstrated that the claims in any of those cases
or example are similar or analogous to claim 1 or that the holding in any of
such cases is controlling here. See App. Br. 17-19; Reply Br. 5-8. Instead,
Appellant merely makes the conclusory statements that example 21
"corroborates" that the claims here recite "significantly more" (see App. Br.
18-19) and by comparing the system claim in Amdocs with claims 1 and 5, it
is "apparent" the claims here are more detailed and operate in an
unconventional manner (see Reply Br. 8) without comparing the claim
elements and explaining why the claims are similar. We do not disagree
with Appellant that the court in Bascom noted that "an inventive concept can
be found in a non-conventional and non-generic arrangement of known,
conventional pieces" (see Reply Br. 5---6). See Bascom, 827 F.3d at 1350.
However, the claims here are distinguishable from those in Bascom. In
Bascom, the system claims were directed to a "content filtering system for
filtering content retrieved from an Internet computer network," which the
court held were directed to an abstract idea. Id. at 1348--49. The court
further held the claims included an inventive concept in the ordered
combination of system components, including a local client computer and a
remote ISP server connected to the client computer and Internet computer
network providing for "the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
17
Appeal2017-003013
Application 13/888,445
specific to each end user." Id. at 1350. Claim 1 does not involve a similar
or analogous arrangement or "ordered combination" of components.
Thus, we see nothing in the limitations of claim 1, considered "both
individually and as an ordered combination," that transforms the claimed
abstract idea of claim 1 into patent-eligible subject matter.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claim 1, and grouped claims 2-8 and 36-41, under
§ 101.
DECISION
We affirm the Examiner's decision rejecting claims 1-8 and 36-41
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). See 37 C.F.R.
§ 1.136(a)(l)(iv)(2016).
AFFIRMED
18