Ex Parte Olsson et al

Patent Trial and Appeal Board

Mar 20, 2018

14322049 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/322,049 07/02/2014
23117 7590 03/22/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Johan L. OLSSON
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-4010-284 5936
EXAMINER
LEMIEUX, JESSICA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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 JOHAN L. OLSSON, DANIEL JENSEN,
ULF AHLENIUS, and SVEN ALLEBRAND
Appeal2017-000354 1
Application 14/322,0492
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
February 22, 2016) and Reply Brief ("Reply Br.," filed September 28,
2016), and the Examiner's Answer ("Ans.," mailed August 10, 2016) and
Final Office Action ("Final Act.," mailed September 23, 2015).
2 Appellants identify Nasdaq Technology AB as the real party in interest.
App. Br. 2.
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Application 14/322,049
CLAIMED INVENTION
Appellants' claimed "invention relates to a method for matching
orders in an electronic trading system" (Spec. 1: 10-11 ).
Claims 1, 5, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method of matching data transaction processing
requests on an electronic data transaction processing
system, comprising:
transmitting to users, by electronic circuitry over a
data communications network, electronic messages
regarding a current status of data transaction processing
requests stored in a memory of the electronic data
transaction processing system including information
concerning identities of parties having placed data
transaction processing requests stored in the memory, the
current status being associated with a queue of data
transaction processing requests stored in the memory, each
stored data transaction processing request having
associated properties and an associated queue number,
where a higher queue number indicates a lower data
transaction processing priority than a lower queue number;
receiving, by electronic circuitry over a data
communications network, an electronic data transaction
processing request message selecting one of the data
transaction processing requests stored in the memory
having a queue number of two or higher over a lower
queue number data transaction processing request stored
in the memory,
where both the selected data transaction processing
request and the lower queue number data transaction
processing request have properties matching both the
selected data transaction processing request and the lower
queue number data transaction processing request; and
matching, by electronic circuitry, the received
electronic data transaction processing request message
with the selected data transaction processing request,
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wherein the lower queue number data transaction
processing request remains stored in the memory after the
matching.
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
Appellants argue claims 1-20 as a group (App. Br. 8-23). We select
independent claim 1 as representative. The remaining claims stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
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 (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 Corp., 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." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
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the elements of the claims are considered "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." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
We are not persuaded, as an initial matter, by Appellants' argument
that the Examiner failed to perform "a proper 101 analysis" (App. Br. 10).
Appellants charge that the rejection should be withdrawn because the Office
Action speaks only in generalities and contains no claim language analysis;
Appellants also ostensibly maintain that the rejection cannot be sustained
because the Examiner "concludes without any evidence" that the claims
"perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry" (id.). Neither of
these arguments is persuasive.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
analyzed the claims using the Mayo/Alice two-step framework, consistent
with the guidance set forth in the USPTO's "2014 Interim Guidance on
Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the Final Office Action was mailed. Specifically, the
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Examiner notified Appellants that "the claims are directed towards
electronic order matching" i.e., to an abstract idea; and that the additional
elements or combination of elements, other than the abstract idea, does not
provide meaningful limitations to transform the abstract idea into a patent-
eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself (Final Act. 5-6). The
Examiner, thus, set forth the statutory basis of the rejection in a sufficiently
articulate and informative manner as to meet the notice requirement of
35 U.S.C. § 132. And we find that, in doing so, the Examiner set forth a
proper rejection under§ 101 such that the burden shifted to Appellants to
demonstrate that the claims are patent-eligible. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (holding that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132).
Appellants argue that the claims cannot be properly characterized as
directed to "electronic order matching" because "the word 'order' is not used
in claim l" (App. Br. 11). But, there is no requirement that the Examiner's
formulation of an abstract idea must copy the claim language. Instead, the
Federal Circuit has explained 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."'
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(citing Internet Patents Corp., 790 F.3d at 1346).
The Examiner's determination here that the claims are directed to
"electronic order matching" is fully consistent with the Specification.
See Spec. Title ("METHODS OF MATCHING ORDERS ON AN
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ELECTRONIC TRADING SYSTEM AND AN ELECTRONIC TRADING
SYSTEM FOR MATCHING ORDERS"); see also id. at 1, 11. 10-11 ("The
present invention relates to a method for matching orders in an electronic
trading system."); id. at 2, 11. 33-34 ("In accordance with the invention[,] a
method of matching orders in an electronic trading system is achieved
through the steps of receiving an order to trade selecting an order from a
queue in an order book. .. and matching the received order with the selected
order.")).
Appellants would seemingly characterize the claims more broadly
than the Examiner, i.e., as directed to matching electronic data transaction
processing requests, rather than merely electronic trading orders (App.
Br. 11-12). But, the difference between Appellants' characterization and
Examiner's relates only to the level of abstraction. An abstract idea can be
expressed at various levels of abstraction. See Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That the Examiner articulates the
abstract idea at a different level of abstraction than do Appellants is an
insufficient basis for finding that the claims are not directed to an abstract
idea.
As for Appellants' charge that the rejection cannot be sustained
because the Examiner has failed to provide certain evidence, we note that
there is no requirement that an examiner provide evidentiary support in
every case before a conclusion can be made that a claim is directed to
patent-ineligible subject matter. Evidence may be helpful, e.g., where facts
are in dispute. But, Appellants have put forth no evidence here that the
claim elements or a combination of elements is not well-understood, routine,
and conventional. Appellants' bare assertion that evidence is needed,
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without any supporting reasoning, is insufficient to require the Examiner to
provide evidentiary support.
We also are not persuaded by Appellants' argument that claim 1 is not
directed to an abstract idea because the claim recites "extensive technical
details" (App. Br. 12). The mere presence of technical elements in a claim
does not preclude a claim from being directed to an abstract idea at least
because the Court has instructed that the significance of these elements is
determined in step two of the Mayol Alice framework. The claims in Alice,
for example, were not devoid of technical elements. Yet, those claims are
determined to be directed to an abstract idea. Cf In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) ("[N]ot every claim that
recites concrete, tangible components escapes the reach of the abstract-idea
inquiry.").
It also is significant here, as the Examiner observes (Final Act. 3), that
although claim 1 recites that the method steps are performed by "electronic
circuitry," these steps all involve acts that can be performed in the human
mind, without the use of any machine, or by a human using pen and paper.
Appellants argue that it is "not plausible" for a human to perform the
claimed method because a human cannot transmit or receive information "by
electronic circuitry over a data communications network" (App. Br. 17).
But, Appellants cannot reasonably deny that information, e.g., transaction
processing request messages, could be communicated via written
correspondence. The storing of information, as called for in claim 1, also
could be performed through the use of pen and paper, as could the
"matching" of transaction requests.
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"[A] method that can be performed by human thought alone 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); see also
Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("[p]henomena of nature ... ,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work."). Moreover,
mental processes remain unpatentable even when automated to reduce the
burden on the user of what once could have been done with pen and paper.
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 Gottschalkv. Benson.").
Turning to the second step of the Mayo/Alice framework, the
Examiner found, and we agree, that the claims do not include additional
elements or a combination of elements sufficient to transform the abstract
idea into patent-eligible subject matter. (Final Act. 3-6; see also Ans. 4-6).
Appellants argue that claim 1 "does not generically recite 'one or more sets
of processors' or 'electronic circuitry' because the electronic circuitry is
specifically configured to perform detailed operations that a generic
processor or generic circuitry is not configured to perform" (App. Br. 17).
And Appellants charge that the Examiner "wrongly skips over the specific
limitations recited in claim l" (App. Br. 16); "wrongly characterizes the
steps as performed by 'the generically recited one or more sets of
processors"' (id. at 17); and "makes broad statements about generic
processors unconnected to the specific language of each and every claim
feature" (id. at 18). Yet, we find nothing in the Specification, nor do
Appellants point us to anything in the Specification to indicate that the
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particular operations recited in claim 1 require any specialized computer
hardware or other inventive computer components, invoke any assertedly
inventive programming, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible."). In fact, as the Examiner observes (Ans. 10-11), the
Specification explicitly discloses that "essentially any combination of
hardware and software" can be used for performing the claimed functions
(Spec. 4, 11. 13-15).
Appellants further argue that, as in DDR Holdings, claim 1 solves a
technical problem in conventional electronic data transaction processing
systems, i.e., the inflexibility of matching only the highest priority request
messages, and that claim 1 is, therefore, "'necessarily rooted in' computer
technology," (App. Br. 14). But, we are not persuaded that matching
transaction request messages is a technical problem rather than a business
problem. We also are not persuaded that providing the flexibility to permit
the selection and matching of lower priority transaction requests is a
technical solution, not a commercial solution. Indeed, it is telling in this
regard that the Specification discloses that the purpose of matching
transactions is to create "trades," i.e., contractual relationships,3 and
describes the purported flexibility in terms of its effect in allowing a party to
3 See Spec. 4, 11. 36-37 ("Any matching orders found by the matching
unit 109 are formed into a trade and forwarded to a deal capture unit 112 for
finalising the trade.")
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enter into a preferred contractual relationship, without the restrictions
imposed by priority rules (see Spec. 5-6). The only portion of claim 1 that
can reasonably be considered "technological" is the generic computer
components, e.g., the claimed "electronic circuitry," used to implement the
claimed invention, which is not enough to confer subject matter eligibility.
See Alice Corp., 134 S. Ct. at 2358 ("[I]f 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.") (alterations in
original) (internal citations omitted).
Appellants attempt to further analogize claim 1 to the claims held
patent-eligible in DDR Holdings, arguing that "[t]he claimed technology
also overrides the normal matching priority operations where the highest
priority transaction requests are automatically matched" and that this is "'a
result that overrides the routine and conventional sequence of events' in
known electronic data transaction processing systems that match electronic
data transaction processing request messages" (App. Br. 22 (quoting DDR
Holdings, 773 F.3d at 1258)). But we find no parallel between claim 1 and
the claims at issue in DDR Holdings.
In DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host's website after "clicking"
on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d
at 1257. The Federal Circuit, thus, held that the claims were directed to
patent-eligible subject matter because they claim a solution "necessarily
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rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." Id.
No such technological advance is evident in the present invention.
Unlike the situation in DDR Holdings, Appellants do not identify any
problem particular to computer networks and/or the Internet that claim 1
allegedly overcomes. Instead, claim 1 merely employs generic computer
components to perform generic computer functions, i.e., transmitting,
receiving, and matching information. For example, the claimed "memory"
performs its expected function of storing data. The claimed "data
communications network" also performs its expected function, namely
transmitting and receiving data (messages), without any asserted
improvement to its functionality. 4 Cf Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015) ("The patent claims
here do not address problems unique to the Internet, so DDR has no
applicability."). Unlike the improvement to computer functionality in DDR
Holdings, claim 1 is "directed to nothing more than the performance of an
abstract business practice ... using a conventional computer. Such [a claim
is] not patent-eligible." See DDR Holdings, 773 F.3d at 1256.
We also cannot agree that Appellants' claim 1 is similar to claim 2 of
the USPTO's Example 21 in the "July 2015 Update Appendix 1: Examples"5
4 See Spec. 4, 11. 9-11 ("The communication link 107 may consist of any
means or combination of means of creating a signal flow, i.e.,
communication wires, optic fibres, Internet, Ethernet, LAN, etc.")
5 Exemplary claim 2, which appears at pages 2-3 of Appendix 1 of the
July 2015 Update (available at https://www.uspto.gov/sites/default/files
/documents/ieg-july-2015-app l .pdf), reads:
2. A method of distributing stock quotes over a network to a remote
subscriber computer, the method comprising:
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and, therefore, patent-eligible, because "[t]he extensive limitations in instant
claim 1 add more than just linking matching to generic processing circuitry"
(App. Br. 18-19).
Exemplary claim 2 was not found patent-eligible merely because it
provided "extensive limitations"; nor would that alone have been sufficient
for patent-eligibility. Cf Mayo, 566 U.S. at 88-89 ("[O]ur cases have not
distinguished among different laws of nature according to whether or not the
principles they embody are sufficiently narrow"). Instead, exemplary
claim 2 was deemed patent-eligible because it addressed an Internet-centric
providing a stock viewer application to a subscriber for installation on
the remote subscriber computer;
receiving stock quotes at a transmission server sent from a data source
over the Internet, the transmission server comprising a microprocessor
and a memory that stores the remote subscriber's preferences for
information format, destination address, specified stock price values, and
transmission schedule, wherein the microprocessor
filters the received stock quotes by comparing the received stock
quotes to the specified stock price values;
generates a stock quote alert from the filtered stock quotes that
contains a stock name, stock price and a universal resource locator
(URL), which specifies the location of the data source;
formats the stock quote alert into data blocks according to said
information format; and
transmits the formatted stock quote alert over a wireless
communication channel to a wireless device associated with a
subscriber based upon the destination address and transmission
schedule,
wherein the alert activates the stock viewer application to cause the
stock quote alert to display on the remote subscriber computer and to
enable connection via the URL to the data source over the Internet when
the wireless device is locally connected to the remote subscriber computer
and the remote subscriber computer comes online.
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challenge, i.e., alerting a subscriber with time sensitive information when the
subscriber's computer is offline. Appellants have not demonstrated that
claim 1 addresses any comparable Internet-centric challenge.
Responding to the Examiner's Answer, Appellants charge in their
Reply Brief that the Examiner oversimplified the claims as directed to
electronic order matching; and Appellants argue that, like the claims in
McRO, the present claims are directed to a patentable, technological
improvement over existing electronic data transaction processing request
techniques (Reply Br. 4-8). That argument similarly fails.
In McRO, the claim recited "[a] method for automatically animating
lip synchronization and facial expression of three-dimensional characters"
McRO, 837 F.3d at 1307. The court found that the claim required "a
combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results: a sequence of
synchronized, animated characters." Id. at 1315. The court, thus, concluded
that the claim, when considered as a whole, was directed to a technological
improvement over the existing, manual 3-D animation techniques and used
limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice. Id. at 1316.
Appellants have not identified any similar improvement attributable to
the claimed invention, as recited in claim 1. Appellants assert that
"[ c ]laim 1 uses the particular configured electronic data transaction
processing system 'in a process specifically designed to achieve an improved
technological result in conventional industry practice' which in this case is
the convention[ al] industry practice of matching higher priority requests
over lower priority ones" (Reply Br. 7-8). But not all inventions that depart
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from some conventional industry practice are patent-eligible. Here,
matching transactions without regard to priority may allow the creation of
previously unavailable contractual relationships, i.e., it may improve a
business process; but it does not achieve "an improved technological result,"
analogous to the situation in McRO.
We also are not persuaded by Appellants' argument that the Examiner
failed to perform a proper analysis under the second step of the Mayo/Alice
framework (Reply Br. 8-10).
Appellants charge that the Examiner failed to cite any evidence to
support the Examiner's assertion that "[a ]ny problems which are addressed
do not appear to require a technical, but rather an administrative business
solution or a business plan enhanced by common generic hardware" (id. at 8
(alteration in original) (quoting Ans. 11)). In fact, the Examiner cited record
evidence, namely Appellants' Specification, to support that assertion (see,
e.g., Ans. 11 ("[T]he specification does not contribute any specific computer
algorithm or code, but rather merely states that the claimed steps may be
performed by the generic modules with the expectation that one of ordinary
skill in the art would be capable of implementation without further
instruction.")). Appellants have offered no evidence to the contrary.
Appellants' attempt to analogize the present claims to those in
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) also fails (see Reply Br. 9). In Bascom, the court
determined that "an inventive concept can be found in the non-conventional
and non-generic arrangement of known, conventional pieces." Bascom,
827 F.3d at 1350. Specifically, Bascom's content filter could be "installed
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remotely in a single location" and "[this] particular arrangement of elements
is a technical improvement over the prior art ways of filtering." Id.
Appellants argue that the present claims "recite 'a non-conventional
and non-generic arrangement of known, conventional pieces,' and therefore,
recite an inventive step" (Reply Br. 9). But, Appellants merely paraphrase
the limitations of claim 1 and assert that "[t]hese features [i.e., the
"associating" and "matching" features called for in claim 1, for example6]
are non-conventional and non-generic" (id.), without directing us to what is
alleged to be the "non-conventional and non-generic arrangement of known,
conventional pieces."
Appellants further argue that "[t]he fact that no prior art is applied
against any claims in the Answer is a clear indication that the claims include
features that amount to significantly more than merely performing electronic
matching using generic computer devices" (Reply Br. 9-10; see also, App.
Br. 18). A finding of novelty or non-obviousness, however, 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
6 Claim 1 recites that "each stored data transaction processing request ...
[has] an associated queue number"; "receiving ... an electronic data
transaction processing request message selecting one of the data transaction
processing requests ... having a queue number of two or higher over a
lower queue number data transaction processing request"; and "matching ...
the received electronic data transaction processing request message with the
selected data transaction processing request."
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice Corp., 134 S. Ct. at 2355 (alteration in original).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'n.for 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
a claim falls within the § 101 categories of possibly patentable subject
matter.").
Finally, we are not persuaded of Examiner error by Appellants'
argument that "the independent claims do not preempt all approaches that
match received electronic data transaction processing request messages."
(Reply Br. 10; see also App. Br. 22). There is no dispute that the Supreme
Court has described "the concern that drives [the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption." Alice Corp.,
134 S. Ct. at 2354. But characterizing preemption as a driving concern for
patent eligibility is not the same as characterizing preemption as the sole test
for patent eligibility. "The Supreme Court has made clear that the principle
of preemption is the basis for the judicial exceptions to patentability" and
"[f]or this reason, questions on preemption are inherent in and resolved by
the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354).
"[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility." Id.
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We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of independent claim 1. We also sustain the
Examiner's rejection of claims 2-20, which fall with claim 1.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 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)(l )(iv).
AFFIRMED
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