Ex Parte Van Heerden et al

Patent Trials and Appeals Board

Mar 19, 2019

14199476 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/199,476 03/06/2014 Lauren Van Heerden
22852 7590 03/21/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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.
l 1534.0005-00000 8538
EXAMINER
KLOBERG, PAUL R
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/21/2019 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAUREN VAN HEERDEN, GUNALAN NADARAJAH,
ORIN DEL VECCHIO, MICHAEL D. CUMMINS and
PRABAHARAN SIV ASHANMUGAM
Appeal2018-002154
Application 14/199 ,4 7 6
Technology Center 3600
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5-9, 11, 13, and 15-28. App. Br., Claim Appendix ii-v. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellants indicate the real party in interest is The Toronto-Dominion
Bank, a corporation. App. Br. 3.
Appeal2018-002154
Application 14/199,476
Illustrative Claims
Illustrative claims 1 and 3 under appeal read as follows ( emphasis,
formatting, and bracketed material added):
1. A computer-implemented method, comprising:
[A.] receiving, by one or more processors, transaction
information from a plurality of computing systems across
a communications network, the transaction information
identifying one or more prior financial transactions;
[B.] establishing, by the one or more processors, an existence of
a pattern within the collected transaction information, the
established pattern comprising at least one of[:]
(i) a sequential relationship between at least a portion of
the prior financial transactions or
(ii) a periodic characteristic exhibited by a portion of the
prior financial transactions;
[C.] identifying, by the one or more processors, an event
reflecting a deviation from the established pattern,
[(i)] the event being a nonoccurrence of a financial
transaction consistent with the established pattern,
and
[(ii)] the financial transaction being associated with an
expected transaction time;
[D.] receiving, by the one or more processors, application data
from a first device,
[(i)] the application data being generated by one or
more application programs executed by the first
device, and
[(ii)] the application data comprising calendar data
associated with at least one temporal interval that
includes the expected transaction time;
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[E.] determining, by the one or more processors, that the
identified event represents an unanticipated deviation
from the established pattern based on at least a portion of
the calendar data; and
[F.] in response to the determination, transmitting, by the one or
more processors, a negative event notification to the first
user device,
[(i)] the negative event notification comprising data that
identifies the event, and
[(ii)] the negative event notification causing at least one
of the executed application programs to present
at least a portion of the data through a display unit.
3. The method of claim 1, wherein identifying the event
comprises determining whether the financial transaction
occurs within a threshold time period of the expected
transaction time.
Rejection2
The Examiner rejected claims 1, 3, 5-9, 11, 13, and 15-28 under
35 U.S.C. § 101 because "the claimed invention is directed to non-statutory
subject matter," i.e., because the claimed invention is directed to patent-
ineligible subject matter. Final Act. 2.
We select independent claim 1 as representative. Separate
patentability, in compliance with 3 7 C.F .R. § 41.3 7 ( c )(iv), is not argued for
claims 2-6, 8-13, and 15-20 ("Under each heading identifying the ground of
rejection being contested, any claim(s) argued separately or as a subgroup
shall be argued under a separate subheading that identifies the claim( s) by
2 All citations to the "Final Action" are to the Final Action mailed on
January 11, 2017.
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number."). Except as they apply to representative claim 1, Appellants'
independent claim 11 and dependent claim argument( s) spanning at least
Appeal Brief pages 15-18, 20, and 23 do not comply with the rule and have
not been considered. Except for our ultimate decision, we do not discuss the
§ 101 rejection of claims 3, 5-9, 11, 13, and 15-28 further herein.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to patent-
ineligible subject matter?
ANALYSIS 3
We have reviewed the Examiner's rejections in light of Appellants'
Appeal Brief and Reply Brief arguments that the Examiner has erred.
A. Section 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
3 All Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." 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 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 formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. 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, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); 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
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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. ( citation omitted) ( 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 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 (quotation marks 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. ( alterations in original) ( 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.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. US PTO' s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that guidance, we first
look to whether the claim recites:
(1) (see Memorandum Step 2A - Prong One) 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
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(2) (see Memorandum Step 2A-Prong Two) additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.0S(a}-(c), (e}-(h)). 4
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
§ 2106.0S(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 Memorandum Step 2B.
C. Examiner's §101 Rejection -Alice/Mayo - Steps 1 and 2
C.1. Memorandum Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea.
Claim[ 1] recite[ s] ... a method directed to an abstract
idea of processing data related to collecting prior transaction
information associated with a user and determining a transaction
pattern based on the collected transaction information.
Processing data related to receiving transaction information
identifying one or more prior financial transactions,
establishing an existence of a pattern one of (i) a sequential
relationship or (ii) a periodic characteristic, identifying an event
4 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A of Office guidance).
See USPTO's January 7, 2019 Memorandum, "2019 Revised Patent
Subject Matter Eligibility Guidance."
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reflecting a deviation associated with an expected transaction
time, receiving application data comprising calendar data that
includes the expected transaction time, determining that the
identified event represents an unanticipated deviation and
transmitting a negative event notification. The concepts of
determining when an expected event does not ( or will not) occur
(e.g., a negative event), and for automatically providing alerts or
performing responsive processes based on the determined
negative event are similar to ideas found to abstract by the
courts as in creating a contractual relationship ( buySafe ); using
categories to organize, store and transmit information
( Cyberfone ); and comparing new and stored information and
using rules to identify options (SmartGene ). Additionally, the
claim is directed to the abstract idea of the administration of
financial accounts (Intellectual Ventures I v. Capital One) as
similar to the recited claim limitations of receiving, establishing,
identifying, receiving, determining and transmitting steps in
[ claim 1] as these relate to user transaction data.
Final Act. 4--5 (emphasis added).
C.2. Memorandum Step 2A - Prong Two
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes:
[T]he additional limitations in the claims do not improve the
functioning of the computer itself, or improve any other
technology or technical field. Use of a generic computer does
not transform an abstract idea into a patent-eligible invention.
Final Act. 7. Further, the Examiner determined:
The claims and the concept set forth in the specification
are not directed to solving a technical or network based problem.
Final Act. 7. Rather, the Examiner concluded:
[T]he claims solve a business problem rather than [being] an
improvement in computer related technology.
Final Act. 10.
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C.3. Memorandum Step 2B
Further applying step 2 of the Alice/Mayo analysis, the Examiner
concludes:
The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. The "non-transitory
computer readable medium", "microprocessor", "communica-
tions interface", "network interface" and "computing device( s )"
are recited at a high level of generality and are recited as
performing generic computer functions routinely used in
computer applications. Generic computer components recited as
performing generic computer functions that are well-understood,
routine and conventional activities amount to no more than
implementing the abstract idea with a computerized system. The
use of generic computer components to transmit information
through an unspecified interface does not impose any meaningful
limit on the computer implementation of the abstract idea. Thus,
taken alone, the additional elements do not amount to
significantly more than the above-identified judicial exception
(the abstract idea). Looking at the limitations as an ordered
combination adds nothing that is not already present when
looking at the elements taken individually.
Final Act. 5-6 ( emphasis added).
D. Appellants'§ 101 Arguments
D .1. Step 2A, Prong 1
D.1.a.
Appellants contend "the Examiner fails to provide sufficient reasoning
as to why each element of Appellant's independent and dependent claims is
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directed to an alleged abstract idea." App. Br. 14. Appellants particularly
contend:
Even assuming, however, that the Examiner's summary of
the "claimed invention" accurately reflects any of Applicant's
claims, which [it] does not, the Final Office Action provides no
analysis of the actual language recited by any of Appellant's
independent claims. Indeed, the quoted summary of the
Applicant's pending claims ignores certain elements recited by
Applicant's pending independent claims that extend beyond the
steps of "determining . . . a negative event . . . [ and]
automatically providing alerts or performing responsive
processes based on the determined negative event," or the steps
of "receiving, establishing, identifying, determining, and
transmitting ... user transaction data," each of which the
Examiner asserts correspond to ineligible concepts previously
identified by the courts.
For instance, independent claim [ 1] recites ... , among
other things:
App. Br. 15.
receiv[ e] application data ... generated by
one or more application programs executed by
the first device, and the application data
comprising calendar data associated with at least
one temporal interval that includes the expected
transaction time;
determin[ e] that the identified event
represents an unanticipated deviation from the
established pattern based on at least a portion of the
calendar data; and
in response to the determination, transmit[] a
negative event notification to the first device, ...
the negative event notification causing at least
one of the executed application programs to
present at least a portion of the data through a
display unit.
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D.1.b.
Claim 1 recites the following limitations:
(A) receiving ... transaction information identifying one or more
prior financial transactions;
(B) establishing ... an existence of a pattern within the collected
transaction information, the established pattern comprising at least
one of (i) a sequential relationship between at least a portion of
the prior financial transactions or (ii) a periodic characteristic
exhibited by a portion of the prior financial transactions;
(C) identifying ... an event reflecting a deviation associated with an
expected transaction time, the event being a nonoccurrence of a
financial transaction consistent with the established pattern, and
the financial transaction being associated with an expected
transaction time;
(D) receiving ... application data comprising calendar data that
includes the expected transaction time;
(E) determining . . . that the identified event represents an
unanticipated deviation from the established pattern based on at
least a portion of the calendar data; and
(F) transmitting ... a negative event notification.
In short, claim 1 recites a method of processing data related to collect prior
transaction information associated with a user and determine a transaction
pattern based on the collected transaction information. That is, we conclude
that Appellants' claimed process is mitigating the risk of negative events in
financial transactions.
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Appellants acknowledge that as to financial transaction systems:
These systems may employ known prediction algorithms that
predict a likelihood of an occurrence of an event based on stored
patterns of prior activities and transactions, and provide alerts
regarding the occurrence of the predicted event to combat fraud,
for example, such predictive notifications can be used to alert
fraud monitors and ensure obstacles are in place to help
prevent the occurrence of fraudulent activities.
Spec. ,r 3. By Appellants' acknowledgement, we conclude the identification
of a deviation from established financial transaction pattern is a known
fundamental economic practice to detect fraud (i.e. to manage risk) in
financial transactions. Thus, like the concept of mitigating settlement risk in
Alice, and the concept of hedging against risk in Bilski, the concept of
identifying a deviation in a financial transaction pattern recited in
Appellants' claims "is a fundamental economic practice long prevalent in
our system of commerce." Alice, 573 U.S. at 216 (citations and internal
quotation marks omitted).
Accordingly, we conclude that claim 1 recites a fundamental
economic practice, which is one of certain methods of organizing human
activity identified in the Revised Guidance (Memorandum), and thus an
abstract idea.
D.1.c.
Contrary to Appellants' argument supra that "the Final Office Action
provides no analysis of the actual language recited by any of Appellant's
independent claims" (id.), we determine that the Examiner's analysis at page
4 of the Final Action explicitly recites the actual language of Appellants'
independent claim 1. Further, we determine that the Examiner correctly
points out that Appellants' claimed financial transaction data processing
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claims are similar to the cited cases ( buySafe, Cyberfone, SmartGene, and
Intellectual Ventures Iv. Capital One). Final Act. 4--5.
Appellants' argument overlooks that the argued "application programs
executed by the first device" and "causing at least one of the executed
application programs to present at least a portion of the data through a
display unit" specifics of claim 1 are not part of the judicial exception
analysis. Rather, these specifics are part of determining whether, in addition
to the judicial exception, the claim includes an inventive concept. Alice, 573
U.S. at 217 ("First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask, '[w]hat else is
there in the claims before us?"' (Citations omitted)). Appellants also present
the same arguments contending the claim amounts to significantly more than
a patent upon the judicial exception itself. App. Br. 20. We address those
arguments infra.
D.2. Step 2A, Prong 2
Appellants also contend:
[The claims] represent a specific, technological improvement to
a prior-art problem that enhances a computer's basic ability to
interact with a client device within a networked computing
environment.
App. Br. 19 (emphasis added).
The Examiner's conclusion requires an impermissible
generalization of Appellant's claims, as it oversimplifies the
actual language recited by the Appellant's [sic] claims and
ignores those elements of Appellant's claims that, when taken as
an "ordered combination," extend beyond any well-understood,
routine, conventional, or human-performable activities, and
represent a specific, technological improvement to a prior-art
problem that enhances a computer's basic ability to interact with
a user device within a networked computing environment.
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Reply Br. 5---6 ( emphasis added).
Appellants' argument is not persuasive because we do not find any
explanation by Appellants of what they consider to be either the specific
"technological problem" or the "technological solution." This consideration
has also been referred to as the search for a technological solution to a
technological problem. See Amdocs (Israel), Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1300 (Fed. Cir. 2016)("[T]his claim entails an
unconventional technological solution ... to a technological problem .... ").
We agree with the Examiner that claim 1 "do[es] not include an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself [see MPEP 2106.0S(a)], or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment [see MPEP 2106.0S(h)]." In view of
Appellants' Specification, and consistent with the Examiner's
determinations, we conclude that claim 1 does not integrate the judicial
exception into a practical application. We determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
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See MPEP §§ 2106.0S(a}-(c), (e}-(h). We agree with the Examiner that
claim 1 is directed to a judicial exception.
D.3. Step 2B
As noted above, the Examiner also determined:
The "non-transitory computer readable medium", "microproc-
essor", "communications interface", "network interface" and
"computing device(s)" are recited at a high level of generality
and are recited as performing generic computer functions
routinely used in computer applications. Generic computer
components recited as performing generic computer functions
that are well-understood, routine and conventional activities
amount to no more than implementing the abstract idea with a
computerized system.
Final Act. 5 ( emphasis added).
Appellants contend "the Examiner's assertions are not based on a
detailed analysis of the actual language recited by Appellant's claims." App.
Br. 9. Appellants particularly contend:
[T]hese assertions are supported by an impermissible
mischaracterization and oversimplification of Appellant's
claims, which ignores certain claim elements that, when taken in
combination, establish the statutory nature of Appellant's claims.
For example, independent claim [1] ... to: "receiv[e]
application data . . . generated by one or more application
programs executed by the first device, and the application data
comprising calendar data associated with at least one temporal
interval that includes the expected transaction time;"
"determin[ e] that the identified event represents an unanticipated
deviation from the established pattern based on at least a portion
of the calendar data;" and "in response to the determination,
transmit[] a negative event notification to the first device, ... the
negative event notification causing at least one of the
executed application programs to present at least a portion
of the data through a display unit." (Emphases added).
App. Br. 20.
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Further, certain elements recited by Appellant's [sic]
independent and dependent claims, such as those quoted above,
represent meaningful limitations that extend beyond a general
linkage of any allegedly abstract idea . . . . When taken as an
ordered combination, these quoted elements provide
unconventional steps that confine the allegedly abstract idea to a
particular useful application and further, extend beyond any
allegedly performable manual or mental implementation.
App. Br. 23 (emphasis added).
We disagree with Appellants' assertion that the recited "application
programs executed by the first device" and "causing at least one of the
executed application programs to present at least a portion of the data
through a display unit" are not ( as the Examiner determines) generic
components recited at a high level of generality, but rather, are meaningful
limitations that confine the judicial exception to a particular useful
application.
Contrary to Appellants' argument, we determine that the "first device"
and "display unit" are the epitome of generic components. Further, the
"application programs" repeatedly are described by Appellants as merely
"software instructions" (Spec. ,r,r 24, 33, 41, 51-55, 73, 75-77, 99, 116, and
11 7) to achieve a stated result without further elaboration. We determine
that claim 1 does not "focus on a specific means or method that improves the
relevant technology," but is "directed to a result or effect that itself is the
abstract idea and merely invoke[s] generic processes and machinery."
McRO, 837 F.3d at 1314. This is not enough to transform an abstract idea
into patent-eligible subject matter. See, e.g., Alice, 573 U.S. at 225-26
( explaining that claims that "amount to 'nothing significantly more' than an
instruction to apply the abstract idea ... using some unspecified, generic
computer" "is not 'enough' to transform an abstract idea into a patent-
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eligible invention" (quoting Mayo, 566 U.S. at 77, 79)); Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017) ("[T]he claim language here provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it").
Although claim 1 recites "more" under step two of the Alice/Mayo
analysis, we conclude the "more" is not patentably significant. Rather, the
case law shows this "more" to be the epitome of a well-understood, routine,
conventional element/combination previously known in the industry. See
Alice, 573 U.S. at 227 ("[P]etitioner's ... media claims add nothing of
substance to the underlying abstract idea."); Fairwarning IP, Inc. v. Iatric
Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("Claims 15-17 ... add
nothing more than similar nominal recitations of basic computer hardware,
such as 'a non-transitory computer-readable medium with computer-
executable instructions' and a microprocessor.").
Because claim 1, in addition to the abstract idea, recites only a well-
understood, routine, conventional element/combination previously known in
the industry, we conclude the case law shows there is no genuine issue of
material fact regarding step two of the Examiner's Alice/Mayo analysis.
Therefore, we are unpersuaded by Appellants' argument that further
evidence is required. In view of Appellants' Specification, and consistent
with the Examiner's determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity m the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
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D.4. Other 101 Arguments
D.4.a.
Appellants contend:
Appellant's [sic] claims are not directed to an abstract idea
because they do not attempt to preempt every practical
application of "processing data related to [ collected] transaction
information associated with a user and determining a transaction
pattern based on the collected transaction information."
App. Br. 20 (emphasis added).
Appellants' argument is not persuasive because although "preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We are
instructed that "[ w ]here a patent's claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework ... , preemption
concerns are fully addressed and made moot." Id.
D.4.b.
Further, Appellants contend:
In this case, and for at least those reasons outlined below,
Appellant's [sic] claims, recite elements that distinguishes the
prior art of record, and in particular, Griffin, Clyne, Maskall, and
Kingdon. See Final Office Action, p. 10. Thus, Appellant's
claims involve an "inventive concept" under § 101 because the
claims recite features that exceed "well-understood, routine,
conventional activities" already known in the industry.
App. Br. 22 (additional emphasis added).
Appellants' "distinguishes the prior art of record" argument lacks
merit because, even though the Section 101 inquiry and the Section 102/103
inquiry might sometimes overlap, a novel and nonobvious claim directed to
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a purely abstract idea is, nonetheless, patent-ineligible. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. at 89 (rejecting the
suggestion that Sections 102, 103, and 112 might perform the appropriate
screening function and noting that in Mayo such an approach "would make
the 'law of nature' exception ... a dead letter").
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3, 5-9, 11, 13,
and 15-28 under 35 U.S.C. § 101, as being directed to patent-ineligible
subject matter.
(2) Claims 1, 3, 5-9, 11, 13, and 15-28 are not patentable.
DECISION
The Examiner's rejection of claims 1, 3, 5-9, 11, 13, and 15-28 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter, is
affirmed.
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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