Ex Parte Pei

Patent Trials and Appeals Board

Jul 5, 2019

14218319 - (D) (P.T.A.B. Jul. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/218,319 03/18/2014
23446 7590 07/09/2019
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Jinxiang Pei
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.
25802US02 8592
EXAMINER
GLASS, RUSSELLS
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/09/2019 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINXIANG PEI
Appeal2018-004535
Application 14/218,319 1
Technology Center 3600
Before KARA L. SZPONDOWSKI, SCOTT B. HOW ARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-18, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Sears Brands, L.L.C. ("Appellant") is the Applicant under 37 C.F.R. § 1.46
and is identified as the real party in interest. App. Br. 2.
Appeal2018-004535
Application 14/218,319
THE INVENTION
The disclosed and claimed invention is directed to "the pickup and
delivery of products for a customer order," and more specifically to "vehicle
routing with respect to picking-up products for customer orders." Spec. ,i 1.2
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method comprising:
forming, from a plurality of customer orders, a first
collection of products to be acquired from a plurality of
suppliers;
generating a set of first routes for acquiring the first
collection of products from the plurality of suppliers via a first
mode of transportation;
assigning a subset of first routes to one or more shoppers
that use the first mode of transportation;
forming a second collection of products by removing,
from the first collection, products to be acquired via the
assigned subset of first routes;
generating a set of second routes for acquiring the second
collection of products from the plurality of suppliers via a
second mode of transportation;
assigning a subset of second routes to one or more
shoppers that use the second mode of transportation; and
instructing the shoppers to acquire products from the
plurality of suppliers per their assigned routes and their
respective mode of transportation.
2 We refer to the Specification filed Mar. 18, 2014 ("Spec."); Final Office
Action mailed May 4, 2017 ("Final Act."); Appeal Brief filed Oct. 2, 2017
("App. Br."); Examiner's Answer mailed Jan. 26, 2018 ("Ans."); and the
Reply Brief filed Mar. 26, 2018 ("Reply Br.").
2
Appeal2018-004535
Application 14/218,319
REJECTION
Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
ANALYSIS
Section 1 OJ Rejection
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title."
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
573 U.S. 208, 215-17 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is
patent ineligible subject matter, an application of the abstract idea may be
patent eligible subject matter. Alice, 573 U.S. at 217. Thus, we must
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." Id. (quoting Mayo,
566 U.S. at 79, 78). The claim must contain elements or a combination of
elements that are "sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ abstract idea] itself." Id. ( quoting
Mayo, 566 U.S. at 72-73).
3
Appeal2018-004535
Application 14/218,319
The Supreme Court set forth a two-part "framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Id.
at 217.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo, 566 U.S. at 75-
77]. If so, we then ask, "[ w ]hat else is there in the claims before
us?" Id. ... To answer that question, we 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. Id. [ at 79,
77-78]. We have 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." Id. [ at 72-73].
Id. at217-18.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). There is no definitive rule to determine what constitutes an
"abstract idea." Rather, the Federal Circuit has explained that "both [it] ...
and the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfish, 822 F.3d at 1334; see also Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent ineligible under § 101, "the decisional
4
Appeal2018-004535
Application 14/218,319
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski v. Kappas, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63,
69 (1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as "molding rubber products" (Diamond v. Diehr,
450 U.S. 175, 191 (1981)); "tanning, dyeing, making water-proof cloth,
vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267-68 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
5
Appeal2018-004535
Application 14/218,319
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") § 2106.05(a)-(c), (e)-(h) (9th ed., Rev.
08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 55-56. Only if a claim (1) recites
a judicial exception and (2) does not integrate that exception into a
practical application, do we then look to whether the claim:
6
Appeal2018-004535
Application 14/218,319
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56.
Furthermore, the Memorandum "extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the abstract
idea exception includes the following groupings of subject matter, when
recited as such in a claim limitation(s) (that is, when recited on their own or
per se )":
(a) Mathematical concepts-mathematical
relationships, mathematical formulas or equations,
mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes-concepts performed in the
human mind (including an observation, evaluation, judgment,
opinion).
Id. at 52 (footnotes omitted).
USPTO Step 2A, Prong 1
The Examiner determines the claimed invention is directed towards
"the abstract idea of routing shoppers ... and comparing known
information," and is "similar to collecting information, analyzing it, and
7
Appeal2018-004535
Application 14/218,319
displaying certain results of the collection and analysis." Ans. 3 ( citing Elec.
Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
Appellant does not dispute the Examiner's determination. We agree
with the Examiner's conclusion that the claim is directed to an abstract idea.
Representative claim I-with emphasis added-is reproduced below:
1. A computer-implemented method comprising:
forming, from a plurality of customer orders, a first
collection of products to be acquired from a plurality of
suppliers;
generating a set of first routes for acquiring the first
collection of products from the plurality of suppliers via a first
mode of transportation;
assigning a subset of first routes to one or more shoppers
that use the first mode of transportation;
forming a second collection of products by removing,
from the first collection, products to be acquired via the
assigned subset of first routes;
generating a set of second routes for acquiring the
second collection of products from the plurality of suppliers via
a second mode of transportation;
assigning a subset of second routes to one or more
shoppers that use the second mode of transportation; and
instructing the shoppers to acquire products from the
plurality of suppliers per their assigned routes and their
respective mode of transportation.
The emphasized limitations are steps that can be practically performed
by a human, either mentally or with the use of pen and paper. Specifically,
the claim limitations identified above are directed to (i) forming collections
of products to be acquired from suppliers and collecting mode-of-
transportation information ( collecting and organizing information), and (ii)
generating and assigning routes for shoppers to acquire the products from
8
Appeal2018-004535
Application 14/218,319
suppliers using respective modes of transportation. Each of those steps, both
individually and as a combination, can be practically performed by a human,
either mentally or with the aid of paper and pencil, which is similar to the
claims found patent ineligible as mental processes in CyberSource and
Intellectual Ventures. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1373 (Fed. Cir. 2011) ("Thus, claim 3's steps can all be
performed in the human mind. Such a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101. Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with claiming mental
method steps as part of a process containing non-mental steps, but rather
because computational methods which can be performed entirely in the
human mind are the types of methods that embody the 'basic tools of
scientific and technological work' that are free to all men and reserved
exclusively to none.") ( quoting Benson, 409 U.S. at 67) (footnote omitted));
Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) ("[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper."); see also Versata
Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person's mind."). Accordingly, we conclude the claim recites a
9
Appeal2018-004535
Application 14/218,319
method that can be performed in the human mind, which is a mental process
identified in the Memorandum, and thus an abstract idea. 3
USPTO Step 2A, Prong 2
In determining whether claim 1 is "directed to" the identified abstract
ideas, we next consider whether claim 1 recites additional elements that
integrate the judicial exception into a practical application. For the reasons
set forth below, we discern no additional element ( or combination of
elements) recited in claim 1 that integrates the judicial exception into a
practical application. See Memorandum, 84 Fed. Reg. at 54-55.
The Examiner concludes "nothing in the asserted claims purports to
improve the functioning of the computer itself or effect an improvement in
any other technology or technical field" and the additional elements amount
to "no more than implementing the abstract idea on a generic computer
system." Ans. 3. 4
Appellant contends the "claims 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." App. Br. 18. Specifically, Appellant argues the claims "are directed
to a particular concrete, technical solution to the problem of acquiring
3 Additionally, the same limitations identified recite the steps that result in
assigning routes for shoppers to acquire the products from suppliers using
respective modes of transportation, and instructing the shoppers to acquire
the products using their assigned routes, which is a method of organizing
human activity-specifically, commercial sales activity-identified in the
Memorandum, and thus an abstract idea. See Memorandum, 84 Fed. Reg.
at 52.
4 The pagination in the Answer appears to be off by 1. That is, page 2 is
labeled page 3 and so on. For the purposes of clarity, we used the pagination
printed in the Answer and not the actual page number.
10
Appeal2018-004535
Application 14/218,319
products for a plurality of customer orders from a plurality of suppliers."
App. Br. 28. According to Appellant, the claims "do not merely review,
collect, or compare data ... , but further apply the results of such
processing" (App. Br. 27), and the claims "are not merely directed to
gathering, analyzing, and presenting information, but are instead directed to
a particular implementation or solution for acquiring products for a plurality
of customer orders from a plurality of suppliers" (App. Br. 28). 5
Claim 1 does not constitute an improvement to computer technology;
rather, it merely adapts the abstract idea of organizing product and mode-of-
transportation information, generating and assigning routes for shoppers to
acquire the products from suppliers using respective modes of
transportation, and instructing shoppers to follow assigned routes to acquire
the products from suppliers, which can be performed mentally or manually,
to an execution of steps practically performed by a computer. See Spec.
,i,i 19-21 ("the e-commerce platform 150 may present the determined routes
to shoppers and/or drones which are tasked with carrying out collecting
products per the determined routes").
Relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible. See Alice, 573
U.S. at 224 ("use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions" is not an inventive
concept); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (a computer "employed only for its most
5 Appellant has not argued the claim is directed to a particular machine or
results in a transformation or reduction of a particular article to a different
state or thing. See MPEP § 2016.05(b), (c); Memorandum, 84 Fed. Reg.
at 54.
11
Appeal2018-004535
Application 14/218,319
basic function ... does not impose meaningful limits on the scope of those
claims"); MPEP § 2106.05(±)(2) ("Use of a computer or other machinery in
its ordinary capacity for economic or other tasks (e.g., to receive, store, or
transmit data) or simply adding a general purpose computer or computer
components after the fact to an abstract idea (e.g., a fundamental economic
practice or mathematical equation) does not provide significantly more.").
Even if the instructing limitation (i.e., "instructing the shoppers to
acquire products from the plurality of suppliers per their assigned routes and
their respective mode of transportation") could not be practically performed
by a human mentally or with pen and paper, it constitutes an insignificant
extra-solution activity. See, e.g., Mayo, 566 U.S. at 79; Bilski, 561 U.S.
at 611-12; Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir.
2016); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363-64 (Fed.
Cir. 2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370,
1375 (Fed. Cir. 2011); In re Grams, 888 F.2d 835, 839-40 (Fed. Cir. 1989).
As an example of insignificant extra-solution activity, in Flook the
Supreme Court decided that adjusting an alarm limit according to a
mathematical formula was "post-solution activity" and insufficient to satisfy
§ 101. Parker v. Flook, 437 U.S. 584, 590, 596-98 (1978). Similarly, the
Federal Circuit has held that printing menu information constituted
insignificant post-solution activity. Apple, 842 F.3d at 1241-42. Consistent
with those decisions, the MPEP identifies printing "to output a report" as an
example of insignificant post-solution activity. MPEP § 2106.05(g).
Here, the instructing limitation requires "instructing the shoppers to
acquire products from the plurality of suppliers" of the collections of
12
Appeal2018-004535
Application 14/218,319
products formed "per their assigned routes and their respective mode of
transportation" from the routes generated and assigned based on the product
and mode-of-transportation information. Just as printing menu information
in Apple constituted insignificant post-solution activity, instructing shoppers
to acquire the products using the generated and assigned routes here
constitutes insignificant post-solution activity. The instructing limitation
requires no particular tool and nothing unconventional or significant.
Hence, the instructing limitation does not help integrate the recited abstract
ideas into a practical application.
Appellant further argues that the claims "are sufficiently narrow to
avoid preempting an entire field of innovation and are thus directed to
significantly more than the abstract idea itself." App. Br. 23; see App. Br.
20-22; Reply Br. 5. According to Appellant, the claims "do not preempt the
entire field of 'routing shoppers to products based on their mode of
transportation,"' and instead each claim is "directed to a practical
embodiment or implementation of how to acquire products for a plurality of
customer orders from a plurality of suppliers." App. Br. 23; see App.
Br. 24-25. Although the extent of preemption is a consideration, the
absence of complete preemption is not dispositive. See, e.g., Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.");
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
("[T]he Supreme Court has stated that, even if a claim does not wholly pre-
empt an abstract idea, it still will not be limited meaningfully if it contains
only insignificant or token pre- or post-solution activity-such as identifying
13
Appeal2018-004535
Application 14/218,319
a relevant audience, a category of use, field of use, or technological
environment.") ( citations omitted), vacated and remanded, WildTangent,
Inc. v. Ultramercial, LLC, 573 U.S. 942 (2014) (remanding for consideration
in light of Alice). Therefore, even if the claims do not preempt the abstract
idea, that alone is not enough to render the claims patent eligible.
Accordingly, we are not persuaded of error in the Examiner's
determination that claim 1 is directed to an abstract idea, and we find the
claimed additional elements do not integrate the abstract idea into a practical
application.
USPTO Step 2B
Turning to step 2B of the USPTO Guidance, we look to whether
claim 1 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. Memorandum, 84 Fed. Reg. at 56.
The Examiner determines that the claimed additional elements amount
to "no more than implementing the abstract idea on a generic computer
system." Ans. 3.
Appellant argues the claimed invention is "an inventive, non-
conventional manner of acquiring products for a plurality of customer orders
from a plurality of suppliers," and there is "nothing in the record to show
that the claimed activities, when viewed as a whole, are conventional and/or
well-understood in the field" including that "all substantive art rejections
have been overcome." Reply Br. 4.
14
Appeal2018-004535
Application 14/218,319
We are not persuaded by Appellant's argument that the Examiner
erred. As discussed above, claim 1 is directed to organizing product and
mode-of-transportation information, generating and assigning routes for
shoppers to acquire the products from suppliers using respective modes of
transportation, and instructing shoppers to follow assigned routes to acquire
the products from suppliers, which can be performed mentally or manually.
Similarly, the additional elements in the claim amount to no more than mere
instructions to apply the abstract idea using generic computer components,
which is insufficient to provide an inventive concept. Specifically, the
Specification describes the computer elements as generic computer
elements, including an "e-commerce platform 150 that comprises one or
more web servers 154, one or more database servers 156, and one or more
application servers 152" that "may be interconnected, and may singly or as a
group be connected to Internet 105 via communication link 107, which may
employ any suitable combination of wired or wireless data communication
links." Spec. ,-J 8. The Specification further describes the system as
including "personal computers (PCs) 110, 115, which are connected to the
Internet 105 by communications links 108, 109" and "may be any of, for
example, a desktop computer, a laptop computer, a notebook computer, a
netbook computer, a tablet computer, or any other electronic device having
capabilities suitable for accessing the Internet 105." Spec. ,-J 10.
Accordingly, we agree with the Examiner that the additional claim
limitations besides the abstract idea are well-understood, routine, and
conventional elements.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
15
Appeal2018-004535
Application 14/218,319
understood, routine, and conventional functions, such as receiving and
organizing information, and analyzing the information to generate and
assign routes, and output instructions for the routes. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer
receives and sends the information over a network-with no further
specification-is not even arguably inventive"); In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data,
extracts classification information from the received data, and stores the
digital images insufficient to add an inventive concept); Alice, 573 U.S. at
225-26 (receiving, storing, sending information over networks insufficient
to add an inventive concept); Cy her Source Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011) (use of Internet to verify credit-card
transaction does not add enough to abstract idea of verifying the
transaction); see also MPEP § 2106.05(d) ("Courts have held computer-
implemented processes not to be significantly more than an abstract idea
(and thus ineligible) where the claim as a whole amounts to nothing more
than generic computer functions merely used to implement an abstract idea,
such as an idea that could be done by a human analog (i.e., by hand or by
merely thinking.").
Further, Appellant's argument that the pending claims are patent
eligible because they are otherwise novel and non-obvious (see Reply Br. 4
(there is "nothing in the record to show that the claimed activities, when
viewed as a whole, are conventional and/or well-understood in the field"
including that "all substantive art rejections have been overcome")) is not
persuasive because it improperly conflates the requirements for eligible
subject matter(§ 101) with the independent requirements of novelty(§ 102)
16
Appeal2018-004535
Application 14/218,319
and obviousness (§ 103). Although the second step in the Alice framework
is termed a search for an "inventive concept," the analysis is not an
evaluation of novelty or non-obviousness. Alice, 573 U.S. at 217-18. A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. 66 at 78-79. Further,
"under the Mayo/Alice framework, a claim directed to a newly discovered
law of nature ( or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016).
Conclusion on Section 1 OJ Re;ection
Accordingly, we sustain the Examiner's rejection of claim 1 as being
directed to patent-ineligible subject matter, as well as independent claims 7
and 13 with commensurate limitations, and dependent claims 2-6, 8-12, and
14-18, not separately argued.
DECISION
We affirm the Examiner's § 101 rejection of claims 1-18.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
17