Ex Parte Sheldon

Patent Trials and Appeals Board

Apr 1, 2019

13046677 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/046,677 03/11/2011
88360 7590 04/03/2019
Richards Patent Law P.C.
233 S. Wacker Dr., 84th Floor
Chicago, IL 60606
FIRST NAMED INVENTOR
Adam Sheldon
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.
1043-006 5362
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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):
docketing@richardspatentlaw.com
eofficeaction@appcoll.com
robin@richardspatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM SHELDON 1
Appeal2018-000499
Application 13/046,677
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JASON M. REPKO, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 37-54, and 57-59. Claims 2-36 and
56 have been canceled, claim 55 has been withdrawn from consideration.
Final Act. 1-2; Br. 16, 18-19. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Bionic Trader Systems, LLC. ("Appellant") is the applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 3.
2 We refer to Appellant's Specification ("Spec.") filed March 11, 2011; and
Appeal Brief ("Br.") filed Apr. 27, 2017. We also refer to the Examiner's
Final Office Action ("Final Act.") mailed Oct. 27, 2016; and Answer
("Ans.") mailed Aug. 18, 2017.
Appeal2018-000499
Application 13/046,677
Appellant's Invention
The invention "relates generally to a risk management system and
method. More specifically, the present invention relates to a risk
management system and method for use within a trading environment."
Spec. ,r 1; see Spec. ,r,r 15--46; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. An order entry system for tractable instruments
compnsmg:
a controller; and
computer executable instructions that when executed by
the controller cause it to present a buying power limit constrained
order entry mechanism via a user interface through which a user
places orders using an input mechanism;
wherein the orders placed by the user are:
associated with a user account; and
constrained by a buying power limit, the buying power
limit defined as the maximum amount of one or more tractable
instruments that can be held in the user account;
wherein, without being in response to a specific order, a
model repetitively calculates a model output in response to input
data during the presentation of the buying power limit
constrained order entry mechanism, wherein the frequency of the
model calculation approximates real-time accuracy;
wherein the model is derived from a user's historical
trading performance data that is associated with any one of or
any combination of the following historical and/or
contemporaneously observed parameters:
one or more trends within the historical trading
performance;
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one or more market variables;
one or more biometric inputs; and
one or more calendar events;
further wherein the input data includes at least one
contemporaneously observed parameter from the following
parameters:
one or more trends within the historical trading
performance;
one or more market variables;
one or more biometric inputs; and
one or more calendar events;
wherein the controller automatically adjusts the buying
power limit in response to the model output from a first non-zero
value of the buying power limit to a second non-zero value of the
buying power limit.
Rejection on Appeal3
The Examiner rejects claims 1, 37-54, and 57-59 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
ISSUE
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding Appellant's claims were directed to
patent-ineligible subject matter, without significantly more, under 35 U.S.C.
§ 101?
3 The Examiner withdrew the 35 U.S.C. § 112, first paragraph (Written
Description) rejection as well as the 35 U.S.C. § 103 (Obviousness)
rejection. See Ans. 2. We, therefore, do not address Appellant's arguments
directed to the withdrawn rejections. See Br. 5, 11-13.
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ANALYSIS
The Examiner rejects claims 1, 37-54, and 57-59 as a group based on
claim 1 (see Final Act. 3-11) and concludes claim 1 is directed to patent-
ineligible subject because claim 1 is "directed to an abstract idea without
significantly more." Final Act 10; see Final Act. 3-11; Ans. 3-10.
Specifically, the Examiner finds the claims (claim 1 and its pending
dependent claims) are "directed to system for calculating model output at
frequent interval and automatically adjusting buying power in response to
the model output." Final. Act. 4 (italics omitted). The Examiner reiterates
the language of claim 1 and concludes the reiterated limitations of claim 1,
in particular, the "concept of calculating model output based on input to the
model as recited in the claim is a mathematical relationship/formula" similar
to Parker v. Flook and Gottschalk v. Benson "and/or a method of organizing
human activities and/or an idea []of itself' similar to Dietgoal Innovation v.
Bravo Media and SmartGene. 4 Final Act. 10; see Final Act. 6-7.
The Examiner again reiterates the limitations of claim 1 (see Final
Act. 7-8), explains that the recited additional elements (the order entry
system, controller, and user interface) are "recited at a high level of
generality" (Final Act. 8) and these additional elements ( computer
limitations "amount[] to mere instructions to implement abstract ideas on the
computer" (Final Act. 8). The Examiner concludes that "[t]hese additional
4 See Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S.
63 (1972); DietGoal Innovations LLC v. Bravo Media LLC, 33 F.Supp.3d
271 (S.D.N.Y. 2014), ajfd, 599 Fed. App'x. 956 (Fed. Cir. 2015);
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. App'x 950
(Fed. Cir. 2014).
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elements are well-understood, routine and conventional." Final Act. 8; see
Final Act. 7-10; Ans. 7-10.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Br. 6-11.
Specifically, Appellant contends claim 1 (and the other pending claims) is
not similar to the claims in Parker v. Flook-"[i]n contrast to Parker v.
Flook, the claims ... include additional limitations and integrate the model
calculations into a specific process, thereby improving the relevant technical
field" (Br. 6) and, "[t]herefore, the claims at issue improve the technological
field of risk management within a trading environment" (Br. 7). Appellant
further contends claim 1 does "not amount to a method of organizing human
activity or an idea 'of itself ( a mental process that can be performed by the
human mind)" (Br. 7) and is not similar to the claims in Dietgoal Innovation
and SmartGene. See Br. 7-8. Appellant explains that "the claims ... are
substantially more than the mental steps of merely allowing selection and
comparison of data as in Dietgoal Innovation, or of comparing new and
stored information and using rules to identify medical options as described
in the claims of SmartGene." Br. 7-8.
Additionally, Appellant contends the instant claims are similar to
those in Diamond v. Diehr (Diamond v. Diehr, 450 U.S. 175 (1981)) and
"[t]aking all the claim elements both individually and as an ordered
combination, the claim as a whole amounts to significantly more than the
abstract ideas." Br. 10 (quotations omitted); see Br. 9-10. Appellant also
reiterates the limitations of claim 1 (see Br. 10) and contends "[t]aking all
the claim elements both individually and as an ordered combination, the
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claim as a whole amounts to significantly more than the abstract ideas." Br.
11; see Br. 10-11.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (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, 573 U.S. at
217. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. See Alice, 573 U.S. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk."). Concepts determined to be abstract
ideas, and thus patent ineligible include, but are not limited to, certain
methods of organizing human activity, such as fundamental economic
practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical
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formulas (Parker v. Flook, 437 U.S. at 594--95); and mental processes
(Gottschalkv. Benson, 409 U.S. at 67). Concepts determined to be patent
eligible include physical and chemical processes, such as "molding rubber
products" (Diamond v. Diehr, 450 U.S. at 191); "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 176; 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."). The
Supreme Court continued by qualifying its findings, indicating 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 to a known structure or process may well be deserving
of patent protection.").
If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
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elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
This second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ineligible concept] itself."' Id. at 217-218 ( alteration in original)
( quoting Mayo, 566 U.S. at 72-73). "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]."' Alice, 573 U.S.
at 221 (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 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. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance").
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 activities such as a fundamental economic practice, or mental
processes) (hereinafter "Step 2A, prong 1 "); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h))
(hereinafter "Step 2A, prong 2").
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:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 106.05(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. 5
See 2019 Revised Guidance.
Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfish, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, 837 F.3d at 1312 (quoting
O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)).
The Examiner determines independent claim 1 is "directed to [a]
system for calculating model output ... and automatically adjusting buying
power in response to the model output" (Final. Act. 4 (italics omitted)),
which is an abstract idea similar to a number of precedential cases. See
Non-Final Act. 3-11; Ans. 3-10. Here, in rejecting the claims (in particular
5 Items (3) and ( 4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
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claim 1) 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 rejection was
made, i.e., on Oct. 27, 2016.
For the reasons discussed below, we conclude the abstract ideas
recited in Appellant's claim 1 ( and the other pending claims) are not
integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we clarify and expand the
Examiner's reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant's claim 1. Claim 1 recites "[a]n order entry system for tractable
instruments comprising: a controller; and computer executable instructions
that when executed by the controller cause it to present a buying power limit
constrained order entry mechanism via a user interface through which a user
places orders using an input mechanism." That is, an order entry system for
processing tractable instrument ( e.g., tradable securities) orders that includes
a controller ( computer-see Spec. ,r 209) executing instructions for
providing a user interface for entering orders (see Spec. ,r 76) where the
interface includes an order constraint (limit-specifically, a buying power
limit).
Claim 1 further recites "wherein the orders placed by the user are:
associated with a user account; and constrained by a buying power limit, the
buying power limit defined as the maximum amount of one or more
tractable instruments that can be held in the user account." That is, the
system associates user orders with a user account (based on unspecified
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criteria, processes, and/ or algorithms) and limits (constrains) orders in
accordance with a maximum limit (the buying power limit-the maximum
amount of tractable instruments that can be held in the user account) (see
Spec. ,r,r 1--4, 7-9, 77). We note the buying power limit may also be a risk
limitation (see id.). Additionally, claim 1 recites "wherein, without being in
response to a specific order, a model repetitively calculates a model output
in response to input data during the presentation of the buying power limit
constrained order entry mechanism, wherein the frequency of the model
calculation approximates real-time accuracy." In other words, a model
calculates a model output, in approximately real-time, based on (responsive
to) input data (see Spec. ,r,r 23, 170) (based on unspecified criteria,
processes, and/or algorithms).
Claim 1 also recites additional limitations with respect to the model:
"wherein the model is derived from a user's historical trading performance
data ... associated with ... the following historical and/or
contemporaneously observed parameters: one or more trends within the
historical trading performance; one or more market variables; one or more
biometric inputs; and one or more calendar events." That is, the model is
derived from historical data (trading performance data) including historical
trading trends, market variables, biometric information, and calendar events.
The model input data also includes current ( contemporaneous-i.e.,
happening at the same time) data. Claim 1 recites "further wherein the input
data includes at least one contemporaneously observed parameter from the
following parameters: one or more trends within the historical trading
performance; one or more market variables; one or more biometric inputs;
and one or more calendar events." In other words, currently occurring data
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including trading performance, market variables, biometric information, and
calendar events. The system (the controller) then automatically adjusts the
buying power limit responsive to the model output-"wherein the controller
automatically adjusts the buying power limit in response to the model output
from a first non-zero value of the buying power limit to a second non-zero
value of the buying power limit" ( claim 1 ).
In summary, claim 1 recites a computer ( controller) executing
instructions for providing a user interface for entering tractable instrument
orders, where the orders are constrained by a buying power limit (risk
limitation). A model calculates a model output in approximately real-time
responsive to input data and adjusts the buying power limit responsive to the
model output. More simply, claim 1 describes a tradable instrument order
interface having a buying power limit (risk limit) automatically adjusted in
approximately real-time. Hereinafter, we refer to this system as the "buying
power limit constrained order entry interface system" or "order entry
interface system."
Claim 1 also includes additional elements-a controller and a user
interface. These additional elements consist of structural elements that,
while necessary to perform the functionality of the order entry interface
system, do not limit how the functionality is actually performed. For
example, the claim processing method recites a "controller" executing
"computer executable instructions," to "present a buying power limit
constrained order entry mechanism via a user interface" ( claim 1 ). The
claim does not recite how the controller performs any of the order
processing functionality. Further, Appellant's Specification explains that the
controller is "implemented by one or more programmable data processing
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devices" and the "hardware elements operating systems and programming
languages of such devices are conventional in nature." Spec. ,r 208. Further
still, Appellant's Specification explains that the controller "may be a PC
based implementation of a central control processing system." Spec. ,r 209.
Similarly, Appellant's Specification describes the user interface:
the user interface 104 is adapted to provide the end user with an
order entry mechanism 110. The order entry mechanism 110
may be embodied in any of numerous forms, but most commonly
includes trader activated buy and sell commands used to buy and
sell tradable instruments. The order entry mechanism 110
described with reference to Fig. 1 is an order entry mechanism
110 provided through trading software, as will be recognized by
one of ordinary skill in the art. The order entry mechanism 110
may include a GUI and be primarily driven by mouse-clicks,
touch-screen presses, or other methods ....
Spec. ,r 7 6 ( emphasis added).
We find that claim 1 recites a system including hardware (supra)
executing a process utilizing instructions. In particular, a process for
providing and updating/varying/adjusting a buying power limit. A process is
a statutory category of invention (subject matter) (USPTO's Step 1).
Utilizing our interpretation of claim 1 (supra), we analyze whether the claim
is directed to an abstract idea (USPTO's Step 2A).
Here, Appellant's claims generally, and independent claim 1 in
particular ( as summarized, supra), recite a system/process for providing a
tradable instrument order interface having a buying power limit
automatically adjusted in approximately real-time. This is consistent with
how Appellant describes the claimed invention. See Spec. ,r,r 1, 2, 15
("[T]he present invention relates to a risk management system ... for use
within a trading environment" (Spec. ,r 1 ), "[t]raders may place orders
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through trading software" and "[w]ithin [the] trading software [a trader] is
typically given limited buying power" (Spec. ,r 2), the present system
"allow[s] conditions related to a trader's buying power limits within an order
entry system to be automatically adjustable" (Spec. ,r 15).). Providing a
tradable instrument order interface with a buying power limit recites
operations that ordinarily take place in trading securities and using trading
software providing an order interface. See Spec. ,r,r 1--4, 9, 10, 12; and our
claim construction (supra).
Appellant's contentions focus on the model and providing near real-
time updates to the buying power limit. See supra. Claim 1, however,
recites no substantive limitations on the how the model operates (the
algorithms by which it calculates an output), or how the controller
automatically adjusts the buying power limit (responsive to the model
output). The only recited limitations with respect to the model are with
respect to the input data-that the model is "derived" from data "associated"
with historical and/or contemporaneously observed parameters and also that
the input data include a contemporaneously observed parameter-and the
calculation frequency ("frequency of the model calculation approximates
real-time accuracy" (claim 1)). In other words the buying power limit is
automatically adjusted (in near real-time) based on historical and
contemporaneous data-in essence this is a typical margin account limit,
with the exception that the recited buying power limit is not responsive to a
specific order ("wherein, without being in response to a specific order"
(claim 1)) and is adjusted on a real-time basis. See Spec. ,r,r 3, 4, 10, 12.
Appellants' claim 1 recites a judicial exception (USPTO' s Step 2A,
Prong 1; see 2019 Revised Guidance). Specifically, claim 1 recites a
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process (system) for providing and updating/adjusting a buying power limit
in the buying power limit constrained order entry interface system discussed
supra. The process for providing a tradable instrument order interface with
an automatically adjusted buying power limit is a method of organizing
human activity, in particular, a fundamental economic practice (mitigating
risk and sales activities).
Processing brokerage trades (tractable or tradable instrument orders
(sales)) and mitigating risk in securities trading are well-known economic
(business) practices that are not patent eligible. See Alice, 573 U.S. at 219
(the "claims involve a method of exchanging financial obligations ... using
a third-party intermediary to mitigate settlement risk," "the claims at issue
here are directed to an abstract idea" and, in particular, "the concept of
intermediated settlement is a fundamental economic practice long prevalent
in our system of commerce" ( quotations omitted)); Bilski, 561 U.S. at 599
( claims describing a commodity transaction method "to hedge risk" (id. at
599) (i.e., a tractable instrument trading process to hedge risk) are directed to
"an abstract idea" (id. at 609) and describe "the basic concept of hedging, or
protecting against risk ... [which] is a fundamental economic practice long
prevalent in our system of commerce" (id. at 611 ( quotations omitted)));
Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364,
1371-72 (Fed. Cir. 2017) ("Taken together, the Asserted Claims are directed
to the formation of financial transactions in a particular field ... and data
collection related to such transactions," which is "an abstract idea under
Alice step one."); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'! Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (summarizing
precedent in which "claims directed to the performance of certain financial
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transactions" involve abstract ideas and holding that claims drawn to the
abstract concept of financial transaction-related "data collection, recognition,
and storage is undisputedly well-known.").
Eligibility Analysis-Revised Guidance Step 2A, Prong 2
Appellant's claim 1 also recites additional elements beyond the
abstract process for providing a tradable instrument order interface having a
buying power limit automatically adjusted in approximately real-time (the
judicial exception) (supra). These elements include, as previously discussed
(supra), the controller and the user interface. We evaluate these additional
elements to determine whether the additional elements integrate the abstract
buying power limit constrained order entry interface process/system (the
judicial exception) into a practical application of the exception (USPTO's
Step 2A, Prong 2; see 2019 Revised Guidance).
Appellant contends (supra) that "the claims ... integrate the model
calculations into a specific process, thereby improving the relevant technical
field" (Br. 6) and, "improve the technological field of risk management
within a trading environment" (Br. 7). See Br. 6-8. In other words,
Appellant contends the claims recite meaningful limitations that sufficiently
limit the practical application of the alleged abstract idea. Appellant's
contention corresponds to the reasoning in MPEP § 2106.0S(a) and McRO
(see McRO, 837 F.3d at 1314), where additional elements integrate the
judicial exception into a practical application. We disagree. Appellant's
additional elements ( or the combination of the additional elements) do not
apply or use the buying power limit constrained order entry interface process
(the judicial exception) in a manner that imposes a meaningful limit on the
judicial exception, such that it is more than a drafting effort designed to
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monopolize the exception. See Alice, 573 U.S. at 221-24 (citing Mayo, 566
U.S. at 78-85). Rather, Appellant's claims recite computers (the controller)
and data structures (the user interface) that are utilized as tools to provide the
buying power limit to a user and automatically adjusted the buying power
limit (the abstract idea). Utilizing a computer as a tool to perform the
abstract idea does not impose a meaningful limit on the abstract idea. See
MPEP § 2106.05([); see also Alice, 573 U.S. at 223 ("if [the] recitation of a
computer amounts to a mere instruction to implement an abstract idea on a
computer that addition cannot impart patent eligibility" ( quotations and
internal citations omitted)).
Appellant's claims can be distinguished from patent-eligible claims
such as those in McRO, Enfish, Bascom (Bascom Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)) and DDR Holdings
(DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014))
that are directed to "a specific means or method that improves the relevant
technology" (McRO, 837 F.3d at 1314), or "a specific improvement to the
way computers operate" (Enfish, 822 F.3d at 1336), solving a technology-
based problem (BASCOM, 827 F.3d at 1349-52), or a method "rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]" (DDR Holdings, 773 F.3d at 1257).
Contrary to Appellant's arguments, claim 1 is not a technological
improvement or an improvement in a technology. Appellant's claim 1 does
not "improve the functioning of the computer itself' or "any other
technology or technical field." Alice, 573 U.S. at 225. Nor, does it provide
a technological solution to a technological problem. See DDR Holdings, 773
F.3d at 1257. See MPEP § 2106.05(a). Rather, Appellant's claims and, in
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particular, the above-identified additional elements are similar to the claims
in Alice (see Alice, 573 U.S. at 225-26) and Versata Dev. Group, Inc. v. SAP
America., Inc., 793 F.3d 1306, 1333-34 (Fed. Cir. 2015) in that the instant
claims implement a known business practice utilizing a general purpose
computer.
In summary, "the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016); see also MPEP § 2106.05(±) (instructing Examiners
to consider "[ w ]hether the claim invokes computers or other machinery
merely as a tool to perform an existing process" in determining whether the
claim recites mere instructions to apply the exception), cited in 2019
Revised Guidance, 84 Fed. Reg. at 51, n.30. Thus, we conclude the claims
are directed to an abstract idea that is not integrated into a practical
application.
Step 2B Analysis-"Significantly More"
Having concluded Appellant's claims are directed to an abstract idea
under the 2019 Revised Guidance Step 2A analysis, we next address
whether the claims add significantly more to the alleged abstract idea. As
directed by our reviewing court, we search for an "'inventive concept'
sufficient to 'transform the nature of the claim into a patent-eligible
application."' McRO, 837 F.3d at 1312 (quoting Alice, 573 U.S. at 217).
The implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (alteration in original) ( quoting Alice, 573 U.S. at 225). The "inventive
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concept" "must be significantly more than the abstract idea itself, and cannot
simply be an instruction to implement or apply the abstract idea on a
computer." Bascom, 827 F.3d at 1349 ( citation omitted).
Here, the Examiner determined that Appellant's claims do not add
significantly more. Specifically, the Examiner reiterated the limitations of
claim 1 (see Final Act. 7-8), explained that the recited "additional elements
are well-understood, routine and conventional." Final Act. 8; see Final Act.
7-10; Ans. 7-10.
Appellant also reiterates the limitations of claim 1 (see Br. 10) and
contends "[t]aking all the claim elements both individually and as an ordered
combination, the claim as a whole amounts to significantly more than the
abstract ideas" (Br. 11). See Br. 8-11.
Appellant fails to persuade us of error in the Examiner's rejection
with respect to the second Alice step. We agree with the Examiner that
Appellant's claim 1 ( and the other pending claims) does not evince an
"inventive concept" that is significantly more than the abstract idea itself. In
particular, Appellant fails to explain how the additional elements (above)
add specific limitations beyond the judicial exception that are not well-
understood, routine, and conventional in the field.
As previously discussed, claim 1 ( and the other pending claims)
merely recites additional non-abstract elements ( above }--specifically the
controller and the user interface-to provide the buying power limit to a user
and automatically adjusted the buying power limit (the abstract idea). As
previously explained, Appellant's Specification describes the controller and
user interface as conventional (generic) computers and computer functions.
See, e.g., Spec. ,r,r 76, 72, 74, 75, 208 (the controller is "implemented by one
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or more programmable data processing devices" that "are conventional in
nature" ( emphasis added)), 209.
Accordingly, Appellant's Specification itself describes the additional
elements as being well-understood, routine, and conventional. Such
conventional computer processes operating on conventional computer
hardware "do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016)(citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under § 101 of independent claim 1 and dependent
claims 37-54, and 57-59, which were not separately argued with specificity.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims 1,
37-54, and 57-59 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1, 37-54, and 57-59.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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