Ex Parte Toomey

Patent Trial and Appeal Board

Feb 13, 2019

13468440 (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/468,440 05/10/2012 Paul Toomey
48384 7590 02/15/2019
RAUB VOGEL LAW OFFICE
820 LAKEVIEW WAY
REDWOOD CITY, CA 94062
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.
GE0006 7811
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
02/15/2019 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):
PTO@RAUBVOGEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL TOOMEY
Appeal 2018-000511
Application 13/468,440 1
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1---6, 8, 9, 11-17, and 19-24, which are
all the claims pending in the application. Claims 7, 10, and 18 are cancelled.
App. Br. 29-31, Claims App'x. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM. 2
1 According to Appellant, Geographic Solutions, Inc. is the real party in
interest. App. Br. 3.
2 Our Decision refers to Appellant's Appeal Brief ("App. Br.") filed June
29, 2017; the Reply Brief ("Reply Br.") filed October 16, 2017; Examiner's
Answer ("Ans.") mailed September 1, 2017; Final Office Action ("Final
Act.") mailed November 18, 2016; and original Specification ("Spec.") filed
May 10, 2012.
Appeal 2018-000511
Application 13/468,440
STATEMENT OF THE CASE
Appellant's invention relates to "a computerized system for both
Workforce registration and the filing of unemployment claims." Spec. 1:4--
5. According to Appellant, the computerized system for accessing
unemployment insurance and workforce registration determines whether a
claimant should receive unemployment insurance benefits and may
automatically prevent payment of such benefits based on determining
whether the claimant (i) is not exempt from a work search requirement, (ii)
has not performed a job search, and/or (iii) has refused a job offer from a
potential employer. Spec. 11:16-20, 22:15-22, 23:3-14, 25:6-7, 28:1-5;
Abstract.
Claims 1 and 20 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below:
1. A system for accessing unemployment insurance and
workforce registration, comprising:
a storage device, configured to store a first database
comprising unemployment insurance benefit data;
a storage device, configured to store a second database
comprising workforce registration data;
a server comprising a software employment component,
the software employment component operatively coupled to the
first database and to the second database;
a first computer access terminal, operatively coupled to the
software employment component, the first computer access
terminal comprising:
a user input device configured to receive input from
a first user to enter data into the first database and further
configured to receive input from the first user to enter data
into the second database; and
an output device, configured to display a first
dashboard configured to allow the first user access to an
employment plan;
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wherein the software employment component is
configured to perform job searches in response to a job search
request from the first user;
wherein the software employment component is
configured to automatically determine whether the first user is
exempt from a work search requirement;
wherein the software employment component is
configured to, if the software employment component
determines that the first user is not exempt from the work search
requirement, verify whether the first user has conducted a job
search, and to determine whether the first user should receive
unemployment insurance benefits based on the verification;
wherein the software employment component is
configured to determine, based on user input, whether the first
user has refused a job offer from a potential employer, and to
automatically prevent payment of unemployment insurance
benefits to the first user based on whether the first user has
refused a job offer; and
wherein the output device is configured to output an
indication as to whether the first user should receive
unemployment insurance benefits.
App. Br. 27-33 (Claims App'x).
Examiner's Rejections & References
(1) Claims 1---6, 8, 9, 11-17, and 19-24 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to an abstract idea
without significantly more. Final Act. 2--4.
(2) Claims 1---6, 8, 9, 11-17, and 19-24 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Fischer et al. (US 7,974,857
Bl, issued July 5, 2011; "Fischer"), Ho et al. (US 6,213,780 Bl, issued Apr.
10, 2001; "Ho"), Kreindler (US 2012/0173528 Al, published July 5, 2012),
and Congressman J. Randy Forbes' Frequently Asked Questions on
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Unemployment Benefits (February 2, 2010) (hereinafter "Forbes")
(https://web.archive.org/web/20100202234629/http://forbes.house.gov/Cons
tituentServices/unemploymentF AQ .htm ). Final Act. 4--16.
ANALYSIS
35 U.S.C. § 101 Rejection of
Claims 1-6, 8, 9, 11-17, and 19-24
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step framework articulated in Alice Corp. Pty. Ltd.
v. CLS Bankint'l, 134 S. Ct. 2347 (2014). First, we determine whether the
claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 2354--55. If so, we then proceed to
the second step to consider the elements of the claims "individually and 'as
an ordered combination"' to determine whether there are additional elements
that "'transform the nature of the claim' into a patent-eligible application."
Id. at 2355. In other words, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Id. ( alteration in original).
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
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Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Because there is no single definition of an "abstract idea" under Alice
step 1, the Federal Circuit (1) has adopted the common law, analogy-driven
approach (a.k.a. "analogous claim" test) to determine whether a claim is
directed to an abstract idea, and (2) has instructed us "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." Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing
Elec. Power Grp., 830 F.3d at 1353-54; accordUSPTO Memorandum, July
2015 Update: Subject Matter Eligibility, 3 (July 30, 2015),
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (instructing examiners that "a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea").
The PTO has acknowledged that the Federal Circuit's common law,
analogy-driven approach (a.k.a. "analogous claim" test) was effective soon
after Alice, but recently concluded that approach has since become
impractical as the growing body of Federal Circuit precedent has become
increasing more difficult for the Office and Examiners to apply in a
predictable manner. In particular, the PTO has issued a new § 101
Memorandum that governs all patent-eligibility analysis under Alice and
§ 101 effective as of January 7, 2019. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, Jan. 7, 2019 ("PTO§ 101
Memorandum"). In this § 101 Memorandum, the PTO has synthesized, for
purposes of clarity, predictability, and consistency, key concepts identified
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by the courts as abstract ideas to explain that the "abstract idea" exception
includes the following three groupings:
( 1) Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(2) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
(3) 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).
PTO§ 101 Memorandum, 84 Fed. Reg. at 52. According to the PTO§ 101
Memorandum, " [ c] laims that do not recite [subject] matter that falls within
these enumerated groupings of abstract ideas should not be treated as
reciting abstract ideas," except in rare circumstances. Even if the claims
recite any one of these three groupings of abstract ideas, these claims are
still not "directed to" a judicial exception (abstract idea), and thus are patent-
eligible, if "the claim as a whole integrates the recited judicial exception into
a practical application of that uudicial] exception." See PTO§ 101
Memorandum, 84 Fed. Reg. at 53. "[I]ntegration into a practical
application" requires an additional element or a combination of additional
elements in the claim to apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the
exception. See PTO§ 101 Memorandum, 84 Fed. Reg. at 53-55.
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For example, limitations that are indicative of "integration into a
practical application" include:
1) Improvements to the functioning of a computer, or to any other
technology or technical field- see MPEP § 2106.05(a);
2) Applying the judicial exception with, or by use of, a particular
machine-see MPEP § 2106.05(b);
3) Effecting a transformation or reduction of a particular article to
a different state or thing-see MPEP § 2106.05(c); and
4) Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception - see MPEP § 2106.05( e ).
See PTO§ 101 Memorandum, 84 Fed. Reg. at 53-55.
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1) Adding the words "apply it" ( or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on
a computer, or merely uses a computer as a tool to perform an
abstract idea-see MPEP § 2106.05(±);
2) Adding insignificant extra-solution activity to the judicial
exception - see MPEP § 2106.05(g); and
3) Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP § 2106.05(h).
See PTO§ 101 Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two").
Examiner's Determination of Patent-Ineligibility
In rejecting claims 1---6, 8, 9, 11-17, and 19-24 under
35 U.S.C. § 101, the Examiner determines these claims are directed to
"determining eligibility to receive unemployment insurance benefits" using
collected "data (such as unemployment insurance benefit data, workforce
registration data and user input data) ... in combination with rules (such as
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work search requirements) in decision making," which is "a method of
organizing human activity and an abstract idea." Ans. 2-3; Final Act. 2-3.
The Examiner also determines the claims fail to amount to
"significantly more" than the abstract idea because they merely recite
generic "hardware components (server, storage devices, computer terminal)
perform[ing] routine and conventional functions (i.e., data transmission, data
storage, display)." Ans. 3; Final Act. 3. The Examiner finds "[t]he claims
do not recite an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment." Final Act. 3.
Alice/Mayo--Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellant argues claims
1 and 20 are not an abstract idea because the "claims are directed toward a
system, not a method" such as a "method of organizing human activity."
App. Br. 9. In particular, Appellant argues the claims "cannot be said to be
directed to abstract ideas" because they recite "human operation of a
machine" and "hardware components configured to perform numerous real-
world functions and operations," such as automatically preventing payment
of benefits based on the claimant's refusal of a job offer. Reply Br. 3--4;
App. Br. 10.
These arguments are not persuasive because "system claims are no
different from the method claims" and, as such, are treated the same way
under Alice. Alice, 134 S. Ct. at 2360. In particular, the Supreme Court has
long "warn[ ed] us against" interpreting § 101 "in ways that make patent
eligibility 'depend simply on the draftsman's art."' Mayo Collaborative
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Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 72 (2012) (quoting
Parker v. Flook, 437 U.S. 584, 593 (1978) ("[t]he concept of patentable
subject matter under§ 101 is not 'like a nose of wax, which may be turned
and twisted in any direction.'")). To hold otherwise would have exalted
"form over substance." Flook, 437 U.S. at 590. Like the claims in Alice,
Appellant's system claims reciting "human operation of a machine" and
"hardware components configured to perform numerous real-world
functions and operations" (see Reply Br. 4 and App. Br. 10) add nothing of
substance to the underlying abstract idea-these claims are also patent-
ineligible under § 101.
For example, Appellant's Specification and claims describe "a
computerized system for both Workforce registration and the filing of
unemployment claims," the system "allow[ing] qualified staff from both
workforce and unemployment insurance agencies to review the status of an
unemployed individual's efforts to find work," to set thresholds for the
individual's job search activity, and to review eligibility for unemployment
insurance benefits. Spec. 1:4--5, 8:18-20, 10:19-21. Appellant's system
presents questionnaires to claimants, and presents the claimants' responses
to staff at the unemployment insurance and workforce agencies. Spec.
21:11-22:22, Figs IA-IE. For example, Appellant's system may "verif[y]
whether the claimant is a member of a labor union which finds work for its
members" and "[i]f the claimant answers Yes, the No Work Search indicator
is set making the claimant exempt from the work search requirement."
Spec. 23:13-22. Thus, Appellant's system "provides staff the ability to
review an unemployed individual's Work Search Status" and "enforce work
search requirements," and "prevents payment [ of unemployment benefits]
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until [claimant's responses are] reviewed by staff." Spec. 11:8-11, 16:21-
22, 22:15-18 and 22, 23:5---6. In particular, Appellant's independent claims
1 and 20 recite a "system for accessing unemployment insurance and
workforce registration," the system's "software employment component"
being:
configured to perform job searches in response to a job
search request from the first user; ...
configured to automatically determine whether the first
user is exempt from a work search requirement; ...
configured to, if the software employment component
determines that the first user is not exempt from the work search
requirement, verify whether the first user has conducted a job
search, and to determine whether the first user should receive
unemployment insurance benefits based on the verification; ...
configured to determine, based on user input, whether the
first user has refused a job offer from a potential employer, and
to automatically prevent payment of unemployment insurance
benefits to the first user based on whether the first user has
refused a job offer.
App. Br. 27-33 (Claims App'x).
As correctly recognized by the Examiner (Ans. 2-3), collecting data
(such as unemployment insurance benefit data and workforce registration
data), and using the collected data in combination with rules (such as work
search requirements) to "determin[ e] eligibility to receive unemployment
insurance benefits," as claimed, describe subject matter that falls within the
three types of abstract ideas identified by the PTO § 101 Memorandum.
Particularly, claims 1 and 20 as a whole recite a judicial exception of a
method of organizing human activity by assessing eligibility for an
insurance product (unemployment insurance) and enforcing legal
obligations of claimants. Ans. 2-3; see PTO§ 101 Memorandum, 84 Fed.
Reg. at 52 ( describing an abstract idea category of"[ c ]ertain methods of
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organizing human activity-fundamental economic principles or practices
(including ... insurance[)] ... commercial or legal interactions (including
agreements in the form of contracts; legal obligations[)]").
In particular, Appellant's claims allow workforce agencies and
unemployment insurance agencies to determine a claimant's eligibility to
receive unemployment insurance benefits, and to enforce claimant's legal
obligations during participation in unemployment compensation programs.
See Spec. 1:4--5, 8:18-20, 10:19-21, 21:11-22:22, Figs IA-IE; Abstract;
see also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344--45 (Fed. Cir. 2013) (determining "system claims ... [that]
only contain generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer" to be
patent-ineligible); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1270, 1278, 1280 (Fed. Cir. 2012) (method and
system claims for managing a stable value protected life insurance policy by
performing calculations and manipulating the results held patent-ineligible);
In re Salwan, 681 F.App'x 938, 941 (Fed. Cir. 2017) (claims for organizing
patient health information, transferring patient health information to a
patient network, and billing insurance companies held patent-ineligible);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)
( creating a contractual relationship).
We discern no additional element ( or combination of elements)
recited in Appellant's claims 1 and 20 that may have integrated the judicial
exception into a practical application. See PTO § 101 Memorandum, 84
Fed. Reg. at 54--55 ("Prong Two"). For example, Appellant's claims 1 and
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20 do not (1) improve the functioning of a computer or other technology, (2)
are not applied using any particular machine, (3) do not effect a
transformation of a particular article to a different state, and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP § 2106.05(a}-(c), (e}-(h). Appellant's claims are not
directed to an improvement in computer-related or other technology, and
Appellant has not demonstrated the claims recite a specific improvement to
the way computers operate or to the way computers store and retrieve data in
memory. Ans. 4; see Enfzsh, 822 F.3d at 1336, 1339.
Appellant argues "it cannot be reasonably said that such a system [ as
claimed in claims 1 and 20], including such real-world components, could be
a 'method of organizing human activity[']." App. Br. 9. That is, Appellant
argues the claims "are directed toward a system, not a method" such as a
method of organizing human activity. Id. However, we do not see how the
recitation of a storage device, databases, server with a software component,
user input device, and output device, even in conjunction with the recited
functions, "ensure[ s] 'that the [claim] is more than a drafting effort designed
to monopolize the [abstract idea]."' Alice, 134 S. Ct. at 2357 (brackets in
original) ( quoting Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 566 U.S. 66, 77 (2012)). Claims 1 and 20 use generic computer and
peripheral hardware, i.e., databases, storage device, server, user input device,
and output device, as a tool to perform the abstract idea. See, e.g., Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017);
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir.
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2018) ("the recitation of a database structure slightly more detailed than a
generic database does not save the asserted claims at [Alice] step one," and
an "improvement to the information stored by a database is not equivalent to
an improvement in the database's functionality"); and In re TL! Commc 'ns
LLC Patent Litig., 823 F.3d 607, 611-13 (Fed. Cir. 2016) (claims held to be
an abstract idea despite the claims' recitation of telephone units and servers,
as "not every claim that recites concrete, tangible components escapes the
reach of the abstract-idea inquiry"). Thus, "claims are not saved from
abstraction merely because they recite components more specific than a
generic computer." BSG Tech, 899 F.3d at 1286.
Additionally, steps performed by the hardware recited in claims 1 and
20 automate actions that can be performed by humans ( e.g., staff at
unemployment insurance agencies) using pen and paper. For example, the
Specification explains that Appellant's computerized system collects
claimant's answers to a questionnaire (e.g., regarding potential exemption
from a work search requirement), and then presents the answers to agency
staff. Spec. 21: 11-22 :22, 23: 13-22, Figs 1 A-1 E. As recognized by the
Examiner, the claimed "automatically prevents payments of unemployment
insurance benefits ... is in response to a user [claimant] inputting answers to
questions that trigger this prevention only until the responses are reviewed
by staff." Ans. 3; see 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 Gottschalk v. Benson.").
For these reasons, we agree with the Examiner that Appellant's claims
1 and 20 are directed to an abstract idea that is not integrated into a practical
application.
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Alice/Mayo--Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellant argues claims 1 and
20 recite significantly more than a judicial exception for the reasons that: (1)
the claims "incorporate unconventional technology to solve existing
problems in the prior art" (App. Br. 13-14; Reply Br. 5); and (2) the claimed
"combination of elements does improve the technology of accessing, using,
and automating for accessing unemployment insurance and workforce
registration information" (App. Br. 13, 16).
Appellant's arguments are not persuasive. Under current Federal
Circuit precedent, an "inventive concept" under Alice step 2 can be
established by showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014));
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user" (see BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350
(Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (see Amdocs, 841 F.3d
at 1300, 1302).
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Similarly, as recognized by the PTO§ 101 Memorandum, an
"inventive concept" under Alice step 2 can also be evaluated based on
whether an additional element or combination of elements:
( 1) "adds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present;" or
(2) "simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present."
See PTO§ 101 Memorandum, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellant's claims 1 and 20 that contains any "inventive concept"
or adds anything "significantly more" to transform the abstract concept into
a patent-eligible application. Alice, 134 S. Ct. at 2357. For example,
Appellant's abstract idea of organizing human activity by assessing
eligibility for unemployment insurance and enforcing legal obligations of the
insured is not rooted in computer technology. Nor does it (1) provide any
technical solution to a technical problem as required by DDR Holdings; (2)
provide any particular practical application as required by BASCOM; or (3)
entail an unconventional technological solution to a technological problem
as required by Amdocs. Instead, Appellant's invention uses generically-
claimed computer components ( a storage device, databases, server, user
input device, and output device) to perform the abstract idea of assessing
eligibility for unemployment insurance and enforcing claimants' legal
obligations. Ans. 3; Final Act. 3--4. As our reviewing court has observed,
"after Alice, there can remain no doubt: recitation of generic computer
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limitations does not make an otherwise ineligible claim patent-eligible."
DDR, 773 F.3d at 1256 (citing Alice, 134 S. Ct. at 2358).
We are also not persuaded by Appellant's argument that the claimed
combination of elements "improve[ s] the technology of accessing, using,
and automating for accessing unemployment insurance and workforce
registration information." App. Br. 16. Appellant's claims and
Specification do not describe a technological improvement in data accessing
or manipulation, and Appellant has not shown any specific limitation in
claims 1 and 20 beyond the judicial exception that is not "well-understood,
routine, and conventional" in the field. See MPEP § 2106.05(d). Nor does
Appellant's Specification describe "unconventional technology" or
unconventional "interaction between the software employment component
of the server and other components," as Appellant argues. See App. Br. 14;
Reply Br. 5. Appellant also argues the claimed "functionality for
automatically preventing payment of unemployment insurance benefits in
certain circumstances" is "a significant improvement over prior systems and
technology that do not have any such capability for automatically preventing
payment." App. Br. 16 (emphasis added). Appellant's argument is not
persuasive because the Examiner has identified conventional technology for
automatically preventing benefit payments. 3
We are also unpersuaded that claimed elements "taken together,
provide distinct advantages that are not available when the elements are
3 For example, the Examiner has identified Kreindler discloses technology
"integrated with internal systems used by the government agency so as to
provide an automated determination of claimant eligibility and benefits
payment dissemination." See Kreindler ~ 172, Fig. 14.
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taken individually." See Reply Br. 5. Appellant has not identified
advantages that would be "significantly more" than the judicial exception.
As our reviewing court has observed, "the fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter." See Bancorp, 687 F.3d
at 1278; see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1095 (Fed. Cir. 2016) ("While the claimed system and method certainly
purport to accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose computer, rather
than the patented method itself."); OIP Tech., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) ("relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible").
Further, with respect to Appellant's preemption argument (App. Br.
16, 18; Reply Br. 6), we note preemption is a necessary clue for patent
eligibility, but it is not sufficient for patent eligibility. See Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) (explaining that the
court did not agree with Ultramercial "that the addition of merely novel or
non-routine components to the claimed idea necessarily turns an abstraction
into something concrete"). As the McRO court explicitly recognized, "the
absence of complete preemption does not demonstrate patent eligibility."
See McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1315
(Fed. Cir. 2016) ( quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015)). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter" under the Alice/Mayo
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framework, "preemption concerns are fully addressed and made moot."
Ariosa, 788 F.3d at 1379.
Because Appellant's claims 1 and 20 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
claims 1---6, 8, 9, 11-17, and 19-24 under 35 U.S.C. § 101.
§ 103(a) Rejection of Claims 1-6, 8, 9, 11-17, and 19-24
With respect to independent claim 1, the Examiner finds Fischer's
unemployment insurance management system (UI system 12), shown in
Figures 2 and 3, teaches a system for accessing unemployment insurance
and workforce registration, including: storage devices storing databases of
unemployment insurance benefit data and workforce registration data
(unified database 81 ); a server comprising a software employment
component ( computer 302 in computer system 300); first computer access
terminal ( access channels 20 including web self-service center 40) allowing
a user to enter data into databases; and output device having a dashboard
(web page interface 200 facilitating communication between UI system 12
and employers and claimants over the Internet), the output device configured
to output an indication as to whether a user should receive unemployment
insurance benefits (Fig. 15), as claimed. Final Act. 6-8 ( citing Fischer 1: 18-
26 and 53---64, 4:7-25, 11:3--42, 13:63-14:3, Abstract, Figs. 1-3, 6A---6K,
and 15).
To support the conclusion of obviousness, the Examiner relies on: (1)
Ho for teaching the claimed "dashboard configured to allow the first user
access to an employment plan"; (2) Kreindler for teaching the claimed
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software component configured to "performjob searches in response to a job
search request from the first user," "verify whether the first user has
conducted a job search, and ... determine whether the first user should
receive unemployment insurance benefits based on the verification," and
"automatically prevent payment of unemployment insurance benefits to the
first user"; and (3) Forbes for teaching determining "whether the first user is
exempt from a work search requirement" and "whether the first user has
refused a job offer," and "prevent[ing] payment of unemployment insurance
benefits to the first user based on whether the first user has refused a job
offer," as claimed. Final Act. 8-9 ( citing Ho Abstract; Kreindler ,r,r 151,
156, 168, 171, Fig. 14; Forbes 1-2).
Appellant disputes the Examiner's factual findings regarding Fischer,
Ho, Kreindler, and Forbes. In particular, Appellant argues "Ho makes no
mention of an employment plan, nor of any system that allows access to an
employment plan" comprising "job applications, resumes and a virtual
recruiter"-as the employment plan is defined in Appellant's Specification.
App. Br. 20-21 (citing Spec. 5:10-11, 18:16-17) (emphasis added); Reply
Br. 8. Appellant also argues Kreindler and Forbes do not disclose:
any system for determining whether a user is exempt from a
work search requirement, verifying whether a user has
conducted a job search, determining whether the user should
receive unemployment insurance benefits based on such
verification, or automatically preventing payment of
unemployment insurance benefits based on a determination that
the user has refused a job offer, as claimed herein.
App. Br. 22-24. Particularly, Appellant argues Kreindler's Figure 14
merely indicates "situations in which no payment should be made, without
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providing any teaching for automatically preventing payment from being
made," as claimed. Reply Br. 7 (citing Kreindler ,r,r 168, 171-172, Fig. 14).
We do not find Appellant's arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellant's arguments
supported by a preponderance of evidence. Ans. 4--5. Therefore, we adopt
the Examiner's findings and explanations provided therein. Id. For
additional emphasis, we note neither claim 1 nor Appellant's Specification
requires "all three of these elements [Gob applications, resumes, and a
virtual recruiter)] in an employment plan," as Appellant argues. See Reply
Br. 8 ( emphasis added). Rather, Appellant's Specification provides "[t ]he
employment plan can comprise job applications, resumes and a virtual
recruiter." See Spec. 5: 10-11 ( emphasis added). As recognized by the
Examiner, Ho's job training and counseling system allows a user to access
an employment plan comprising at least the user's resume (Ho 6:58---67) and
a virtual recruiter (Ho 16:56---67), to enable the user to get a particular job
and obtain learning materials for the job. Ans. 4 (citing Ho 6:58---67, 16:56-
67, Figs. 7 and 17).
We are also not persuaded by Appellant's argument that Kreindler's
Figure 14 merely indicates "situations in which no payment should be made,
without providing any teaching for automatically preventing payment from
being made," as claimed. Reply Br. 7 (citing Kreindler ,r,r 168, 171-172,
Fig. 14). As the Examiner observes, Kreindler teaches a software
component configured to "verify whether the first user has conducted a job
search," "determine whether the first user should receive unemployment
insurance benefits based on the verification," and "automatically prevent
payment of unemployment insurance benefits to the first user" as recited in
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claim 1. Ans. 4; Final Act. 8-9. Particularly, Kreindler discloses a server
containing a "reporting module" ("server comprising a software employment
component" as claimed). See Kreindler ,r,r 143, 153, 156, 168, 170-172.
Kreindler's reporting module may be used by a government agency to
"monitor[] a job seeker 512 for the purpose of determining eligibility for
employment (unemployment) insurance" by "determin[ing] claimant
eligibility based on an adherence to predefined or prescribed level of job
search activity targets (such as a required number of job applications and/or
networking events per day or per week)." See Kreindler ,r 171; see also
Kreindler ,r 172 ("the reporting module may be integrated with internal
systems used by the government agency so as to provide an automated
determination of claimant eligibility"). Then, "[t]hose claimants who
achieve the predetermined level of activity ... may be deemed eligible,
while those who do not maintain the required level of activity during the
predetermined timeframe may be deemed ineligible." Kreindler ,r 1 71.
Thus, Kreindler' software component (reporting module) is configured to
"verify whether the first user has conducted a job search" and "determine
whether the first user should receive unemployment insurance benefits based
on the verification," as claimed. Ans. 4.
Kreindler further discloses "the reporting module may be integrated
with internal systems used by the government agency so as to provide an
automated determination of claimant eligibility and benefits payment
dissemination." See Kreindler ,r 172 ( emphasis added). Thus, Kreindler
teaches and suggests the reporting module (software employment
component) is configured to automatically prevent payment of
unemployment insurance benefits, as claimed and described in Appellant's
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Specification. Ans. 4; see Spec. 11:10-11, 22:15-18, 25:6-11, 28:1-18
(system prevents payment until claimant's answers are reviewed by staff).
Appellant further argues "no mention is made in any of these cited
portions, nor in any other portion" ofKreindler and Forbes, of "any system
for determining whether a user is exempt from a work search requirement
... or automatically preventing payment of unemployment insurance
benefits based on a determination that the user has refused a job offer" as
claimed. App. Br. 22-24. Appellant's argument addresses Kreindler and
Forbes separately rather than the combination of teachings proposed by the
Examiner. Ans. 5; Final Act. 9. Particularly, the Examiner relies on (i)
Forbes for teaching the steps of "determin[ing] whether the first user is
exempt from a work search requirement" and "prevent[ing] payment of
unemployment insurance benefits to the first user based on whether the first
user has refused a job offer," and (ii) Kreindler for automating these steps.
Ans. 4; Final Act. 8-9 ( citing Kreindler ,r,r 151, 156, 168, 171, Fig. 14;
Forbes 1-2). The Examiner has also articulated sufficient reasoning (which
Appellant does not address) for including Forbes' workflow ( of confirming
claimant eligibility based on exemption status and job offer refusal
information) in Kreindler's automated determination of claimant eligibility
and benefits payment dissemination. Final Act. 9. Particularly, the
Examiner finds the skilled artisan would have combined Forbes and
Kreindler for providing a computer-aided method of "monitoring job seekers
and whether they meet target goals in order to take the appropriate corrective
action" described in Forbes. Final Act. 9; see Forbes 1. Where, as here, a
rejection is based on a combination of references, one cannot show non-
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obviousness by attacking references individually. In re Keller, 642 F .2d
413,426 (CCPA 1981).
Accordingly, Appellant's arguments have not persuaded us of error in
the Examiner's rejection of claim 1. As such, we sustain the Examiner's
obviousness rejection of claim 1, and similarly, independent claim 20 for
which Appellant provides the same arguments, and dependent claims 2-6, 8,
9, 11-17, 19, and 21-24 argued for their dependency. App. Br. 25.
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1---6, 8, 9, 11-17, and 19-24 under
35 U.S.C. § 101 and§ 103(a).
DECISION
As such, we AFFIRM the Examiner's rejections of claims 1---6, 8, 9,
11-17, and 19-24 under 35 U.S.C. §§ 101 and 103(a).
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).
AFFIRMED
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