Ishikawa, Brendon

Patent Trials and Appeals Board

Jun 18, 2020

14093375 - (D) (P.T.A.B. Jun. 18, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/093,375 11/29/2013 Brendon Ishikawa 1956
120317 7590 06/18/2020
Brendon Ishikawa
1409 L Street
Davis, CA 95616
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
06/18/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRENDON ISHIKAWA
____________

Appeal 2018-007639
Application 14/093,375
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–4, 6, 7, and 14–24. The
Appellant appeared for Oral Argument on June 4, 2020. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies inventor Brendon Ishikawa as the
real party in interest. Appeal Br. 5.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “relates to valuating civil legal cases and
disputes, and more particularly, to computer-implemented systems and
methods for valuating civil legal cases and disputes.” Spec. ¶ 1.
Claims 1 and 14 are the independent claims. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below (with added bracketing
for reference):
1. A computer implemented method, comprising:
[(a)] communicating over a data or internet connection
between two or more users collaborating on civil legal case
valuation, wherein all users can provide input into the
computations;
[(b)] generating a decision tree for the flow of litigation to
possible outcomes based on whether the valuation pertains to a
case before judgment, after judgment, or for the entirety of a case
before and after judgment, wherein the type of case is identified
by data input from a user device or server;
[(c)] computing a valuation for each outcome resulting
from issues of law terminating the litigation based on input-
specified percentage odds of prevailing and dollar amounts
expected to be gained or lost in the scope of attorney fees and
costs relating to issues of law;
[(d)] adjusting the valuation of each outcome for issues of
law branches by adding input-specified expense of attorney fees
and costs expended on establishing or defeating the legal
viability of claims, and optionally further adjusting based on
whether attorney fees and costs are reciprocal, one-way shifting,
or not subject to any shifting;
[(e)] computing the valuation for each outcome resulting
from questions of fact resolving issues related to witness
credibility, document authenticity, relative weights of evidence,
and other strength or weakness of the evidentiary proof,
including high, low, and optionally any additional applicable
estimates of money damages;
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[(f)] adjusting the valuation of each outcome for questions
of fact to account for input-specified expense of attorney fees and
costs expended to prove or disprove factual claims, and
optionally further adjusting based on whether attorney fees and
costs are reciprocal, one-way shifting, or not subject to any
shifting; and
[(g)] computing the final expected value as the sum of
expected, adjusted values of all possible outcomes.
Appeal Br. 47 (Claims App.).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Derry et al. (“Derry”) US 2005/0203814 A1 Sept. 15, 2005
Biederman Sr., et al.
(“Biederman”)
US 2005/0240578 A1 Oct. 27, 2005
Porter et al. US 2014/0058960 A1 Feb. 27, 2014

REJECTIONS
Claims 1–4, 6, 7, and 14–24 stand rejected under 35 U.S.C. § 112(b)
as being indefinite.
Claims 1–4, 6, 7, and 14–24 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.
Claims 1, 2, 4, 6, 14, 15, 17–19, and 21–24 stand rejected under
35 U.S.C. § 103 as being unpatentable over Porter.
Claims 3 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Porter and Biederman.
Claims 7 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Porter and Derry.
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OPINION
35 U.S.C. § 112(b) – Indefiniteness2
The Examiner rejects independent claims 1 and 14 (and thus also their
dependent claims) under 35 U.S.C. § 112(b) because the phrase “other
strength or weakness of the evidentiary proof, including high, low, and . . .
any additional applicable estimates” is confusing and renders the scope of
the claims unclear. Final Act. 2 (emphasis omitted). Specifically, the
Examiner finds
[t]he terms “strength or weakness”, “high or low” are not defined
by the claim, the Specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the
art would not be reasonably apprised of the scope of the
invention. Specifically, it is not clear how strong or weak the
evidentiary proof would need to be in order to infringe the
claimed invention.
Ans. 24 (emphasis omitted). The Examiner thus finds that the boundaries of
the claims are unknown and “the language is vague and unclear.” Id.
at 24–25. Conversely, the Appellant argues that one of ordinary skill in the
art would understand the terms. See Appeal Br. 35; Reply Br. 9.
Claims 1 and 14 recite limitation (e) of “computing the valuation for
each outcome resulting from questions of fact resolving issues related to
witness credibility, document authenticity, relative weights of evidence, and
other strength or weakness of the evidentiary proof, including high, low, and
optionally any additional applicable estimates of money damages.” Appeal
Br. 47–49 (Claims App.). Although the Specification provides specific
definitions for a number of terms (see Spec. ¶¶ 11–32), there are no

2 The rejections are addressed in the order presented in the Final Action.
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definitions or examples provided for the strength or weakness of evidentiary
proof or for high or low damages.
The Appellant’s argument that one of ordinary skill in the art would
understand the terms because they are “well-known and universally used
metrics of trial attorneys—high, low, and most likely damages—and reflects
that these are determined by the evidentiary strength or weakness of the
evidence” (Appeal Br. 35) is not adequately supported. In the Reply Brief,
the Appellant introduces new evidence into the record of the non-patent
literature Dwight Golann, Mediating Legal Disputes: Effective Strategies for
Neutrals and Advocates at 163 (ABA 2009) for providing specific numerical
values for a good chance of avoiding liability, a most likely award, and a
high award. Reply Br. 9. However, “[a] reply brief shall not include any
new or non-admitted amendment, or any new or non-admitted affidavit or
other Evidence.” 37 C.F.R. 41.41(b)(1). Even were we inclined to review
this new evidence, the Appellant does not submit the evidence but merely
quotes the book. Without having the evidence, we cannot review and assess
its contents. Thus, it is not clear that one of ordinary skill in the art would
readily understand, based on the claim in light of the Specification, what
values for the strength, weakness, high, and low factors are claimed.
Based on the foregoing, we sustain the indefiniteness rejection of the
independent claims 1 and 14, and of the associated dependent claims, on the
basis discussed above.
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Patentable Subject Matter
35 U.S.C. § 101 Framework
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 U.S. 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 Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus 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. Kappos, 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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 Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (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 turn 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,
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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
In January 2019, after the Appellant’s Briefs were filed and the
Examiner’s Answer mailed, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1. The 2019 Revised Guidance, by its
terms, applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019. 84 Fed. Reg. at 50.4
Under the 2019 Revised Guidance and the October 2019 Update, 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

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 The 2019 Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”). Thus, the
Appellant’s arguments related to prior guidance (see, e.g., Appeal Br. 19–25;
Reply Br. 4–5) will not be considered.
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human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. Id. Among the considerations in determining
whether the additional elements, individually or in combination, amount to
significantly more than the exception itself, we look to whether they: (3) add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Id. at 52–56.
Failure to Apply the Mayo/Alice Framework
We first address the Appellant’s arguments that the Examiner fails to
make a prima facie case and fails to follow Federal Circuit “guidance.”

5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2),
84 Fed. Reg. 54–55.
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Appeal Br. 8–10; see also Reply Br. 1–2. We are not persuaded of
Examiner error by these arguments.
Here, the Examiner applies the Supreme Court’s two-step framework,
described in Mayo and Alice, and considers Federal Circuit jurisprudence
and USPTO guidelines (in effect at the time) in that application. See Final
Act. 3–14; Ans. 14–24. Specifically, the Examiner notifies the Appellant to
what abstract idea the Examiner considers the claims recite and why the
claims are directed to that abstract idea. See Final Act. 3–5; Ans. 4–7. The
Examiner further considers the claimed elements individually and as an
ordered combination and notifies the Appellant why the claims do not
provide an inventive concept that transforms the abstract idea into a patent-
eligible invention. See Final Act. 5–7; Ans. 7–11. Thus, the Examiner has
notified the Appellant of the reasons for the rejection in a sufficiently
articulate and informative manner as to meet the notice requirement of
35 U.S.C. § 132. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
determines that independent “[c]laim 1 recites a method of computing the
final expected value as the sum of expected, adjusted values of all possible
outcomes of litigation, said outcomes including terminating the litigation,
adjusting the valuation of each outcome for various fees, costs interests,
discounts, and estimates of money damages,” which is a “method [that]
simply describes the concept of gathering, combining and outputting data by
reciting steps of communicating, generating, computing, and adjusting
data.” Final Act. 3. The Examiner characterizes this as “similar to the basic
concept of manipulating information using mathematical relationships . . .,
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which has been found by the courts to be an abstract idea” (id. at 3–4) that
can be performed mentally (Ans. 5). When viewed through the lens of the
2019 Revised Guidance, the Examiner’s analysis depicts the claimed subject
matter as a “[m]ental process[]—[a] concept[] performed in the human mind
(including an observation, evaluation, judgment, opinion)” under Prong One
of Revised Step 2A. 84 Fed. Reg. at 52 (footnote omitted).
The Examiner further determines that the elements of the claim do not
recite an improvement to technology (Final Act. 5; see also Ans. 6–7), that
“the recited steps represent implementing the abstract idea on a generic
computer, or ‘reciting a commonplace business method aimed at processing
business information despite being applied on a general purpose computer’”
(Final Act. 6 (citations omitted); see also Ans. 7, 9–10), and that “there is no
transformation recited in the claim as understood in view of 35 USC 101”
(Final Act. 6). When viewed through the lens of the 2019 Revised
Guidance, Prong Two of Revised Step 2A, the Examiner’s determinations
indicate that the claim’s additional elements do not integrate the judicial
exception into a practical application because they “merely use[] a computer
as a tool to perform an abstract idea.” 84 Fed. Reg. at 52.
The Appellant contends that “[t]he claimed invention does not fall
into any of the categories of abstract ideas set forth by the United States
Supreme Court,” that the Appellant characterize as “(1) something that could
‘be performed in the human mind, or by a human using a pen and paper,’
(2) ‘fundamental economic practices long prevalent,’ (3) methods of
organizing human activity, or (4) mathematical formulas.” Appeal Br. 10
(emphases omitted) (quoting Zak v. Facebook, Inc., 206 F. Supp. 3d 1262
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(E.D. Mich. 2016) 6). The Appellant also argues that the claim recites “a
technological solution to geographically distributed negotiations with more
than one user and which can produce a legally enforceable product.” Appeal
Br. 10. When viewed through the lens of the 2019 Revised Guidance, the
Appellant argues that claim 1 does not recite an abstract idea under Prong
One of Step 2A, and that the claim “integrate[s] a judicial exception into a
practical application” because it includes elements that “reflect[] an
improvement in the functioning of a computer, or an improvement to other
technology or technical field” under Prong Two of Step 2A. 84 Fed. Reg.
at 52, 55.
We first determine to what claim 1 is directed. The Federal Circuit
has explained that “the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claim is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, including the claim language, that
claim 1 is directed to an abstract idea, and does not focus on any
improvement to technology and/or a technical field.

6 We note that we are not bound by this non-precedential decision of a
judicial tribunal that is not our reviewing court.
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Reciting a Judicial Exception
The Specification provides for “VALUATION OF CIVIL LEGAL
CASES AND DISPUTES.” Spec., Title. In the “Field of Invention”
section, the Specification discusses that “[t]he present disclosure relates to
valuating civil legal cases and disputes, and more particularly, to computer-
implemented systems and methods for valuating civil legal cases and
disputes.” Id. ¶ 1. In the “Description of Related Art” section, the
Specification discusses that despite challenges in evaluating the economic
impacts of possible outcomes in civil legal actions, “parties are compelled at
least to guess about case valuation in order to determine whether to file,
settle, settle in part, abandon, or continue with the litigation.” Id. ¶¶ 6–7.
To provide “valuation of a case,” most attorneys “rely on hunches,
anecdotes, personal history, and speculation” and use “vague estimates [as a]
substitute for any logical process to determine the present value of a case.”
Id. ¶ 7. Thus, “there is a great need to determining the value of a civil legal
case on appeal.” Id. The invention addresses this need by providing “a
system and computer implemented process for determining the value of a
civil legal case without requiring a legal education, degree in finance, or
advanced mathematics skills” (id.) and “a tool for rational, visual,
quantitative analysis of what a civil legal case is worth” (id. ¶ 9). By doing
so, the invention “eliminates probability theory pitfalls, such as that which
occur by dividing the litigation into separate hearings or motions, even
though the probable outcomes of most hearings and motions have high
correlation to each other.” Id. Specifically, the invention uses a decision-
tree analysis. Id. ¶ 10.
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Consistent with this disclosure, claim 1 recites “[a] computer-
implemented method, comprising:” the steps of (1) communicating over a
data or internet network, i.e.,
(a) communicating over a data or internet connection between
two or more users collaborating on civil legal case valuation,
wherein all users can provide input into the computations;
(2) generating a decision tree, i.e.,
(b) generating a decision tree for the flow of litigation to possible
outcomes based on whether the valuation pertains to a case
before judgment, after judgment, or for the entirety of a case
before and after judgment, wherein the type of case is identified
by data input from a user device or server;
(3) computing valuations for each outcome resulting from an action, i.e.,
(c) computing a valuation for each outcome resulting from issues
of law terminating the litigation based on input-specified
percentage odds of prevailing and dollar amounts expected to be
gained or lost in the scope of attorney fees and costs relating to
issues of law; and
(e) computing the valuation for each outcome resulting from
questions of fact resolving issues related to witness credibility,
document authenticity, relative weights of evidence, and other
strength or weakness of the evidentiary proof, including high,
low, and optionally any additional applicable estimates of money
damages;
(4) adjusting the valuations, i.e.,
(d) adjusting the valuation of each outcome for issues of law
branches by adding input-specified expense of attorney fees and
costs expended on establishing or defeating the legal viability of
claims, and optionally further adjusting based on whether
attorney fees and costs are reciprocal, one-way shifting, or not
subject to any shifting; and
(f) adjusting the valuation of each outcome for questions of fact
to account for input-specified expense of attorney fees and costs
expended to prove or disprove factual claims, and optionally
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further adjusting based on whether attorney fees and costs are
reciprocal, one-way shifting, or not subject to any shifting; and
(5) adding the adjusted values, i.e.,
(g) computing the final expected value as the sum of expected,
adjusted values of all possible outcomes.
Although the preamble states the method is “computer-implemented,” none
of the functions are recited as being performed by a computer. The
Specification describes a generic computing device as capable of performing
the claimed functions. See Spec. ¶¶ 60–62, Fig. 1.
When considered collectively and under the broadest reasonable
interpretation of the claim’s limitations, the claim recites a method for
valuating civil legal cases and disputes by generating a tree and performing
computations.7 Limitations (b) through (f) of generating a decision tree,
computing the valuations, and adjusting the valuations are functionally
recited without any detail regarding how the results are accomplished, i.e., in
what way(s) technologically or by what algorithm, and can all be performed
mentally and manually.
Valuating civil legal cases and disputes is similar to the concepts of
personal management, resource planning, and forecasting in In re Downing,
754 F. App’x 988, 993 (Fed. Cir. 2018), collecting, analyzing, and
displaying the results in Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016), and of calculating, analyzing, and displaying
investment data to aid in forecasting the behavior of financial markets in

7 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163–67 (Fed. Cir. 2018).
Accordingly, we conclude the claim recites a way of valuating civil legal
cases and disputes, which is a concept performed in the human mind, i.e., a
mental process as identified in the 2019 Revised Guidance (84 Fed. Reg.
at 52), as well as a method of organizing human activity of the fundamental
economic practice of legal interactions (id.) and thus, an abstract idea. As
such, we disagree with the Appellant’s contentions that the claim does not
recite an abstract idea (see Appeal Br. 10–11) and that “[t]he Examiner has
parsed the claimed invention in a manner that violates even the Alice Court’s
concerns” (id. at 16 (bolding omitted); see also id. at 17; Reply Br. 4).
We further disagree that the claim does not recite a mental process
because “[a] person cannot perform the claimed invention with his or her
mind because it necessarily involves negotiations between multiple people
and communications among them via technology that cannot simply be
calculated alone. Indeed, distributed multi-party negotiation is the antithesis
of a single-person mental calculation.” Appeal Br. 11. We note that the
claim does not recite any step of negotiating, but merely recites users
communicating over a generically claimed data or internet connection to
collaborate and provide input. See id. at 47 (Claims App.). Communicating
over a network is itself an abstract idea. See ChargePoint, Inc. v.
SemaConnect Inc., 920 F.3d 759, 766 (Fed. Cir. 2019) (“communicating
requests to a remote server and receiving communications from that server,
i.e., communication over a network” is an abstract idea), and Cellspin Soft,
Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir. 2019) (“capturing and
transmitting data from one device to another” is an abstract idea), cert.
denied sub nom. Garmin USA, Inc. v. Cellspin Soft, Inc., 140 S. Ct. 907
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(2020). To the extent the communication obtains data, this is an extra-
solution activity. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en
banc) (characterizing data gathering steps as insignificant extra-solution
activity), aff’d sub nom. Bilski v. Kappos, 561 U.S. 593.
The claim does not provide details on how the steps are performed
such that they would be so complicated that the human mind cannot perform
them. The Specification discusses that generating a tree involves processing
data from a query to determine nodes. See Spec. ¶¶ 62, 106, Fig. 10
(“1002”). Computing values for each issue of law and question of fact
involves the multiplication of odds by dollar value of outcome. See id.
¶¶ 67, 68, 70–73, Fig. 10 (“1004”, “1012”). Adjusting those values involves
changing the numerical fee values, for example to zero or double, or adding
other fees and costs. See id. ¶¶ 66, 67, 108–110, 112–114, Fig. 10 (“1008”,
“1010”, “1014”, “1016”, “1018”). As such, we find that the limitations of
generating a decision tree, computing valuations, adjusting those valuations,
and summing the adjusted valuations comprise analyses and mathematical
computations that can practically be performed in the human mind. See
Elec. Power Grp., 830 F.3d at 1354 (“[W]e have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes . . . .”).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, in determining whether the claim is directed to this abstract
idea, we next consider whether the claim recites additional elements that
integrate the judicial exception into a practical application.
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Integration into a Practical Application
Under Step 2A, Prong Two of the 2019 Revised Guidance, 84 Fed.
Reg. at 54, we look to whether the claims “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 judicial exception,” i.e., whether the claim “integrates a
judicial exception into a practical application.” Here, the only additional
elements recited in claim 1 beyond the abstract idea are the “data or internet
connection,” and “a user device or server” — elements that, as the Examiner
observes (see Ans. 7), are recited at a high level of generality and described
in the Specification as generic computer elements. For example, the
Specification discusses that the terms generating, computing, adjusting, and
valuating “may refer to the action and processes of a computer system, or
other electronic device, that process data represented as physical (electronic,
magnetic, or optical) quantities within some electrical device's storage,
transmission, or display devices.” Spec. ¶ 59. The apparatus to perform the
method “may comprise general-purpose computers selectively activated or
reconfigured by computer program or code.” Id. ¶ 60. The connection is a
generic network. Id. ¶ 61, Fig. 1 (“106”). The user device (“102”) “may be
any computer, mobile electronic device, any device capable of transmitting
and/or receiving data, or electronic display device with user input” and the
server (“110”) is a generic server. Id.
We find no indication in the Specification, nor does the Appellant
direct us to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any asserted inventive programming, or
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that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
The Appellant contends that claim 1 recites “a technological solution
to geographically distributed negotiations with more than one user and
which can produce a legally enforceable product.” Appeal Br. 10; see also
id. at 11–15; Reply Br. 3, 5. The Appellant similarly argues that “[t]he
claimed invention solves the current impossibility of decision tree valuation
for civil appeals when one or more parties want to have simultaneous input
into the valuation. Without the claimed invention it is currently not possible
to negotiate civil case valuation with decision tree analysis except in face-to-
face negotiations.” Appeal Br. 21; see also id. at 19, 20, 22–25.8 When
viewed through the lens of the 2019 Revised Guidance, the Appellant
contends that under Prong Two, the elements of the claim integrate the
abstract idea into a practical application because the combination of the
elements “reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” 84 Fed. Reg. at 55.
We disagree.
The Appellant does not provide reasoning or evidence, and we do not
see from the claim, how the limitations claim a technological solution to

8 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of 2019 Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate them under Step 1 of Alice (Step 2A of 2019 Revised Guidance).
See 2019 Revised Guidance, 84 Fed. Reg. at 55.
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computer-based problem, i.e., a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR Holdings, 773 F.3d at 1257; cf. Appeal Br. 12.
As discussed above, and as the Examiner discusses (see Ans. 21), the
invention addresses the challenge of “determining the value of a civil legal
case without requiring a legal education, degree in finance, or advanced
mathematics skills” (Spec. ¶ 7) and allows for users to collaborate remotely
(id. ¶ 39). The problems of having appropriate information, i.e., information
related to attorney fees and fee-shifting (see Appeal Br. 12) to make
decisions or analyses/valuations without advanced skill or degrees, and
communicating remotely are not ones “specifically arising in the realm of
computer networks” (DDR Holdings, 773 F.3d at 1257), but are business
problems that existed prior to computers and the Internet (such as by phone).
See Spec. ¶¶ 4–8 (discussing existing problems regarding valuating cases).
Further, the purported solution comprises, at best, a generic computer
operating in its ordinary and conventional capacity. See supra; see also
Alice, 573 U.S. at 224–26. The Appellant does not contend that they
invented any of those components or their basic functions or that those
components, claimed generally, were unknown in the art as of time of the
invention. Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d
1266, 1270 (Fed. Cir. 2016). The “focus” of the claim is not “on the specific
asserted improvement in computer capabilities” (Enfish, 822 F.3d at 1336),
but rather on using a computer to implement the abstract idea of determining
civil litigation expenditures in the particular field of online communications.
See Alice, 573 U.S. at 223 (holding that attempting to limit the use of an
abstract idea to a particular technological environment does not make a
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claim patent-eligible) (quoting Bilski, 561 U.S. at 610–11); Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016)
(“merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claim[] any less abstract”).
The Appellant’s arguments that “the legally enforceable outcome
removes the claimed invention from the realm of mere abstract ideas”
(Appeal Br. 11–12) is also unpersuasive. The purported “distributed
solution of the claimed invention [that] allows all parties to simultaneously
collaborate on case valuation” (id. at 13) is simply communicating over a
network. The Appellant does not contend to have improved the technical
nature of communicating. Further, the Appellant does not, and cannot, claim
to have invented the use of the network, user device, or sever itself. Any
improvement in “adjust[ing] the final expected value according to additional
input by the parties” is in the abstract idea, not to any technological
improvement. Further, that “[t]he claimed invention dramatically improves
on the accuracy of the civil case valuation when compared to the prior art”
(Appeal Br. 12 (emphases omitted)) and that “each party can use the legally
enforceable product of the claimed invention if the case goes to trial” (id.
at 13–14) are unsupported arguments and would be improvements in the
abstract idea, not to any technology. See BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1287–88 (Fed. Cir. 2018).
Regarding the Appellant’s references to BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (see
Appeal Br. 8–12, 14, 17–19; Reply Br. 1–6, 8), the Appellant does not show
how the claim here is similar to BASCOM’s “particular arrangement of
elements [that] is a technical improvement over prior art ways of filtering
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such content” (827 F.3d at 1350). See Ans. 11–14. The patent at issue in
BASCOM “claim[ed] a technology-based solution (not an abstract-idea-
based solution implemented with generic technical components in a
conventional way) to filter content on the Internet that overcomes existing
problems with other Internet filtering systems.” Id. at 1351. The court
determined that “[b]y taking a prior art filter solution (one-size-fits-all filter
at the ISP server) and making it more dynamic and efficient (providing
individualized filtering at the ISP server), the claimed invention represents a
‘software-based invention[ ] that improve[s] the performance of the
computer system itself.’” Id. Here, there is no such improvement.
Although the claim recites the structural element of a network and user
device, as discussed above, there is no claimed technological improvement
to this structure or arrangement of any structures. Any improvement in the
lies in the abstract idea itself, i.e., valuation of civil legal cases.
We also disagree with the Appellant’s contention that claim 1 is
similar to USPTO guidance Examples 1 and 5 of the July 2015 Update on
Subject Matter Eligibility Appendix 1 (July 30, 2015) (“July 2015
Examples”) (see Appeal Br. 19–25) for reasons similar to the Examiner’s
(see Final Act. 8–9, 11–12; Ans. 18–19). The Appellant’s Example 1
corresponds to hypothetical example “21: Transmission of Stock Quote
Data,” and the Appellant’s Example 5 correspond to hypothetical example
“25. Rubber Manufacturing.” July 2015 Examples 1, 14.
Claim 1 of hypothetical Example 21 was considered ineligible, and
claim 2 was considered eligible. Claim 1 recited “comparing and formatting
information for transmission,” which could be performed mentally, and thus
directed to an abstract idea. July 2015 Examples 3. The additional
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limitations of hypothetical claim 1 did not amount is significantly more than
the abstract idea. Id. at 4. Conversely, hypothetical claim 2 of Example 21
was similarly directed to an abstract idea (id.), but the limitations related to
“transmitting [an] alert over a wireless communication channel to activate
the stock viewer application, which causes the alert to display and enables
the connection of the remote subscriber computer to the data source over the
Internet when the remote subscriber computer comes online” were
considered by the USPTO to “add more than generally linking the use of the
abstract idea (the general concept of organizing and comparing data) to the
Internet, because they solve an Internet-centric problem with a claimed
solution that is necessarily rooted in computer technology, similar to the
additional elements in DDR Holdings.” Id. Here, claim 1 contains no
comparable limitation as hypothetical claim 2 and is similar to hypothetical
claim 1. Further, as discussed above, claim 1 does not solve a problem
specifically arising in the realm of computer networks with a solution
necessarily rooted in computer technology.
Example 25 is based on Diehr, which involved the use of
mathematical equations in operation of a rubber molding press to cure raw
rubber into a product that retains its shape. In Diehr, the claimed invention
improved the operation of a rubber molding press by taking measurements,
and feeding those measurements into a digital computer that repeatedly
recalculates the cure time based on the Arrhenius equation, resulting in a
transformation of raw rubber to a molded, rubber product. Diehr, 450 U.S.
at 177–179, 184. The Appellant contends that claim 1 here similarly “uses
an algorithm to provide valuations for civil cases . . . [and] makes possible a
result not possible before or in the absence of the computer-implemented
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and data network supported solution described by the specification.” Appeal
Br. 24. However, merely using an algorithm for a computer-based
engagement and valuation (see id.) is not transforming the data from one
form to another, such as a molded product, and is not patent eligible, as the
Supreme Court made clear in Benson, 409 U.S. at 71–72. In contrast to the
situation in Diehr, applying the Appellant’s claimed steps (e.g.,
communicating, generating, computing, and adjusting data) does not result
in any analogous transformation of matter from one state (i.e., raw rubber) to
another (i.e., a molded product) or to an improvement in a technical field
(i.e., precision rubber molding). Simply outputting the users’ input into a
printout or electronic file (see Appeal Br. 25) does not transform the data,
but is a post-solution activity of outputting of the results of calculations. See
Bilski, 561 U.S. at 610–11 (“Flook stands for the proposition that the
prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant postsolution activity.’”) (quoting
Diehr, 450 U.S. at 191–92); Elec. Power Grp., 830 F.3d at 1354 (“[W]e
have recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.”).
Regarding the Appellant’s references to McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (see Appeal Br. 12–13,
17–19; Reply Br. 1–6, 8), the claims there are directed to a specific
improvement in computer technology. The recited steps in claim 1 are
distinguishable from the steps in McRO found to make the claim patent
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eligible. In McRO, the court found that, while the McRO claims involved
the manipulation of data, e.g., generating morph weight sets to animate lip
and facial expressions of three-dimensional characters, the claimed
“automation goes beyond merely ‘organizing [existing] information into a
new form’ or carrying out a fundamental economic practice.” McRO, 837
F.3d at 1315 (citation omitted). Instead, the court found that the “claimed
process uses a combined order of specific rules that renders information into
a specific format that is then used and applied to create desired results: a
sequence of synchronized, animated characters.” Id. McRO found that the
recited rules “are limiting in that they define morph weight sets as a function
of the timing of phoneme sub-sequences.” Id. at 1313. The claims were
found to be directed to a “technological improvement over the existing,
manual 3-D animation techniques.” Id. at 1316. In finding the claims
patent-eligible, McRO noted that the “abstract idea exception has been
applied to prevent patenting of claims that abstractly cover results where ‘it
matters not by what process or machinery the result is accomplished.’
[O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)]; see also Mayo, 132
S. Ct. at 1301 [566 U.S. at 85].” McRO, 837 F.3d at 1314. Here, the steps
are not limited to how they are accomplished, but rather recite the result of
whatever process is used to communicate, generate, compute, and adjust
data of litigation valuation. As discussed above, these limitations say little
about how these functions are performed. Cf. SAP Am., 898 F.3d at 1167
(explaining that the claims in McRO “avoided being ‘abstract’ in another
sense reflected repeatedly in our cases” because “they had the specificity
required to transform a claim from one claiming only a result to one
claiming a way of achieving it”). Further, as discussed above, there is no
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such improvement to technology or a technological process. And, the
Appellant does not direct our attention to anything in the Specification to
indicate that the invention provides a technical improvement in the
communicating, generating, computing, or adjusting of data or that claim 1
incorporates rules to automate a subjective task of humans for an
improvement to a technical field, similar to those in McRO.
Similarly, the Appellant’s reliance on Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (see Appeal Br. 14) is
misplaced. In Amdocs, the Federal Circuit held the claim was patent eligible
because the claim entailed an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).
Although the solution required generic components, the court adopted the
district court’s interpretation of the claim term “enhance,” stating, it
approved “reading the ‘in a distributed fashion’ and the ‘close to the source’
of network information requirements into the term ‘enhance,’” and
determined that “the claim’s enhancing limitation necessarily requires that
these generic components operate in an unconventional manner to achieve
an improvement in computer functionality” and that the “enhancing
limitation depends not only upon the invention’s distributed architecture, but
also depends upon the network devices and gatherers––even though these
may be generic––working together in a distributed manner.” Amdocs, 841
F.3d at 1300–01. Here, there is no similar evidence that the architecture of a
data or internet connection and a user device or server is comparable to the
components in Amdocs or otherwise establishes that the connection or
device operates in an unconventional manner.
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Accordingly, we conclude claim 1 does not contain an element that
imposes a meaningful limit on the abstract idea that integrates the abstract
idea into a practical application.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to
Step 2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that claim 1’s limitations, taken individually or as an ordered
combination, do not amount to significantly more than the judicial
exception. Final Act. 5–14; Ans. 21–22.
The Appellant contends that claim 1 includes an inventive concept in
providing a technological solution to a problem. See Appeal Br. 9, 10, 12,
16, 18–19, 22, 25. When viewed through the lens of the 2019 Revised
Guidance, the Appellant argues that claim 1 recites additional elements that
amount to significantly more than the abstract idea. See 84 Fed. Reg. at 56.
For the reasons discussed above, we disagree that claim 1 provides a
technological solution to a technological problem.
We note that, as discussed above, the claim simply recites the
functional results to be achieved and that the method is “computer-
implemented,” but does not recite the functions being performed by a
computer. The claim “provides only a result-oriented solution[] with
insufficient detail for how a computer accomplishes it. Our law demands
more.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1342 (Fed. Cir. 2017). Taking the claimed elements separately, the
functions that could be performed by a computer are purely conventional.
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The computer that would implement the method is a conventional
computing device (see supra) and operates in its ordinary and conventional
capacities to perform the well-understood, routine, and conventional
functions of communicating over a network, generating a data tree,
computing a valuation, and adjusting the valuations. See Elec. Power Grp.,
830 F.3d at 1355 (receiving , sending, monitoring, analyzing, selecting, and
presenting information does not transform the abstract process into a patent-
eligible invention); SAP Am., 898 F.3d at 1167, 1169–70 (“selecting certain
information, analyzing it using mathematical techniques, and reporting or
displaying the results of the analysis” were “basic functions” of a computer);
Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”).
Considered as an ordered combination, the components of the
Appellant’s claim add nothing that is not already present when the steps are
considered separately. The sequence of receiving data (i.e., communicating
data), organizing data (i.e., generating a decision tree), and analyzing the
data (i.e., computing and adjusting the valuations) is equally generic and
conventional or otherwise held to be abstract. See Elec. Power Grp., 830
F.3d at 1354–56 (holding that the sequence of receiving and analyzing data,
and displaying the results in real-time was abstract); SAP Am., 898 F.3d
at 1170 (holding that selecting information, analyzing it, and displaying the
results of the analysis was abstract).
To the extent the Appellant argues that the claim is significantly more
than the abstract idea because the claim is novel (see Appeal Br. 13–15 (“the
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claimed invention enables new legal solutions”, “the inventive concept is a
new system organizing inputs”)), an abstract idea does not transform into an
inventive concept just because it may be novel. See Mayo, 566 U.S. at 78.
Further, “[g]roundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, “[t]he ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S.
at 188–89; see also Mayo, 566 U.S. at 91 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the better
established inquiry under § 101”).
We also find unpersuasive of error the Appellant’s arguments that
here, the claim is so narrow that even if the patent were granted,
there would be no infringement when others use probability
theory and other approaches to case valuation (such as averaging
past results of similar causes of action), no infringement by using
communicative technologies to negotiate and mediate cases, and
no infringement by having a decision tree case valuation offer for
purposes of legal settlement
(Appeal Br. 13) and “no current business practice that would be prohibited
or covered if the patent were here granted” (id. at 15). Although the
Supreme Court has described “the concern that drives this exclusionary
principle [i.e., the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption,” (see Alice, 573 U.S. at 216), characterizing
pre-emption as a driving concern for patent eligibility is not the same as
characterizing pre-emption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
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for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216–17). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id. The aforementioned concept is not
sufficiently limiting so as to fall clearly on the side of patent-eligibility.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 1 do not transform the claims into significantly
more than the abstract idea. For the same reasons, we also are not persuaded
of error in the Examiner’s rejection of independent claim 14. See Appeal
Br. 29 (relying on the arguments presented for claim 1); Alice, 573 U.S.
at 226 (the system and medium claims “are no different from the method
claims in substance”).
For dependent claims 2–4, 6, 7, and 15–24, the Appellant relies on the
arguments presented for claim 1 (see Appeal Br. 26–34), that are not
persuasive of Examiner error. The Appellant further recites the limitations
of each claim and argues that each claim adds elements that allow the
claimed invention to “pass statutory muster” or “muster under the federal
appellate court’s guidance.” Id. at 26–34. Dependent claims 2, 4, 7, 15, 17,
and 20–24 further narrow the analysis of and data used in the computations
of valuations. Dependent claims 3, 6, 18, and 19 add further functions of
displaying the decision tree, results of the computations, and timeline data
(claims 3 and 16), of determining statistics (claims 6 and 19), and of
presenting examples, eliciting input, and comparing data (claim 18). None
of these provides a technological improvement, but further elaborate on the
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abstract idea. Any improvements are in the abstract idea itself. See, e.g.,
Appeal Br. 26, 30 (claims allow parties and showing computations to
demonstrate good faith efforts in negotiations), 27 (“[b]y incorporating the
intermediate and final calculations, a record is made to facilitate approval by
the district court and affirmance by the appellate court”), 28–29 (claims
allow parties to see the view underlying the offer), 29 (“certain types of
claims or causes of action can be determined to have certain values and
probability outcomes”), (claim “allows valuation of cases with claims and
counter-claims”), 33 (claim “adds the ability to more accurately value cases
in jurisdictions involving high rates of prejudgment or postjudgment
interest”), 34 (claim “extends the ability of parties to collaborate to settle the
claims to any interest rate environment”).
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claims 1 and 14 and of dependent
claims 2–4, 6, 7, and 15–24.

Obviousness
Claims 1, 2, 4, 6, 14, 15, 17–19, and 21–24
The Appellant appears to group claims 1, 2, 4, 6, 14, 15, 17–19, and
21–24 together. See Appeal Br. 37–40, 43–44 (summarizing arguments for
claims 1 and 14). We thus group these claims together and select claim 1 as
representative of this group, with claims 2, 4, 6, 14, 15, 17–19, and 21–24
standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
The Appellant first contends that the Examiner’s rejection of claim 1
as obvious over Porter is in error because Porter’s description is non-
enabling. See Appeal Br. 37–39; see also Reply Br. 8. However, “[w]hile a
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reference must enable someone to practice the invention in order to
anticipate under § 102(b), a non-enabling reference may qualify as prior art
for the purpose of determining obviousness under § 103.” Symbol Techs.,
Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991); see also Amgen
Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003)
(“Under § 103, however, a reference need not be enabled; it qualifies as a
prior art, regardless, for whatever is disclosed therein.”). Thus, we are not
persuaded of Examiner error in this argument.
The Appellant further contends that “Porter does not teach or suggest
a collaborative process by which negotiators, mediators, attorneys, clients,
and insurance adjustors can reach a consensus on case valuation, regardless
of the procedural posture of the case and even if all participants are
geographically or physically dispersed.” Appeal Br. 39. Specifically, the
Appellant argues that “Porter expressly contemplates a single user for the
valuation process” (id. (citing Porter ¶ 25)) and that “Porter does not account
for appeals or remands following appeals . . . [and thus,] does not even
purport to be applicable to every stage of a civil legal proceeding as the
currently claimed invention can” (id. at 40). After careful review of the
arguments presented in the Appeal and Reply Briefs, we disagree.
Instead, we agree with, and adopt, the Examiner’s findings and
rationales as our own. See Final Act. 15–18; Ans. 26–30. We add the
following discussion for emphasis.
The Examiner finds that Porter teaches the limitations of claim 1 of
communicating over a network between two or more users who can provide
input, generating a decision tree, computing a valuation for each outcome
resulting from issues of law and various other issues, adjusting the
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valuations, and computing a final expected value. See Final Act. 15 (citing
Porter ¶¶ 3, 15, 16, 19, 20, 23, 24, 26, 27, 30, 34, 42, Figs. 3, 4A, 4B). The
Examiner acknowledges that although Porter teaches a user adding
additional dollar amounts, “e.g., sunk costs,” Porter does not expressly teach
the adjusting including expenses of attorney fees and costs and the optional
limitation of whether the fees are reciprocal, shifting, or not subject to
shifting, and issues related to credibility, authenticity, weights of evidence,
and estimates of money damages. Id. However, the Examiner finds that
Porter teaches a decision tree with various nodes corresponding to different
scenarios, such as ones in which the defendant is liable, the defendant is not
liable, and the case is dismissed. Id. at 17 (citing Porter ¶ 31). The
Examiner also finds that “Porter further teaches considering various type of
damages, including Economic Damages (e.g., Past/Future Medical
Expenses); Non-Economic Damages (e.g., Pain and Suffering); and Punitive
Damages,” that ranges for each type of damage may be “captured and used
to calculate case value,” and that “[d]amage questions may be customized by
the user to include past wages, attorney fees, etc.” Id. (citing Porter ¶ 33).
The Examiner further finds that Porter teaches “that it may be necessary to
change the formula used to calculate the case value based on the types of
damages” (id. (citing Porter ¶ 35)), determining that Porter “thereby
suggest[s] various additional issues for which the final outcome can be
adjusted and calculated” (id.). The Examiner determines that it would have
been obvious to one of ordinary skill to modify Porter’s adjustments to
include the specific recited variables, “as suggested in Porter, because it
would advantageously allow to analyze a litigation case and calculate a case
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value for the litigation case based on the plurality of estimated financial
damages, as specifically disclosed in Porter (Abstract).” Id.
We determine the Examiner has established a prima facie case of
obviousness as the Examiner has provided articulated reasoning with
rational underpinning to support a legal conclusion of obviousness. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Therefore, the burden
shifts to the Appellant to rebut the Examiner’s prima facie case by distinctly
and specifically pointing out the supposed errors in the Examiner’s action, as
well as the specific distinctions believed to render the claims patentable over
the applied references.
The Appellant does not present specific argument why the Examiner’s
findings and reasoning as described in the Answer are incorrect. For
example, the Appellant does not address why the Examiner’s findings that
Porter teaches: (1) rules governing case valuation (see Ans. 26–27); (2) the
required limitations “that various users can communicate over the Internet to
provide input into the legal case valuation process” (id. at 28–30); and (3) “a
collaborative process in which various users can communicate over the
Internet to provide input to the legal case valuation process at any stage of
the litigation” (id. at 30) are incorrect. Rather, the Appellant simply asserts
“the Answer does not identify any prior art that (1) even purports to value a
civil case at any stage of the legal proceedings, (2) dramatically improves on
the accuracy of the valuations by accounting for the time value of money,
attorney fee-shifting provisions, litigation and appeal bonds, or requirements
for settling class action lawsuits, or (3) yields a legally enforceable result,”
without further explanation. Reply Br. 8. We note that claim 1 does not
recite limitations of improving the accuracy or yielding an enforceable
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result, and the Appellant does not argue against the Examiner’s finding that
Porter values civil legal cases. See Final Act. 15–16; Porter ¶ 15 (noting the
application to personal injury and patent litigation).
As such, we are not persuaded that the Examiner erred in the
rejection claim 1 as obvious of Porter. Thus, we sustain the
obviousness rejection of independent claim 1 and of claims 2, 4, 6, 14,
15, 17–19, and 21–24, the rejection of which stands with claim 1.
Claims 3 and 16
The Appellant contends that the Examiner’s rejection of claims 3
and 16 is in error because “[t]he proposed modification of Porter by
Biederman would render Porter unsatisfactory for its intended purpose, with
the result that there is no motivation to modify Porter with Biederman.”
Appeal Br. 40. Specifically, the Appellant argues that Biederman’s mention
of a timeline is indefinite and “serves the purpose of listing documents and
events for a database management system so that it does not correspond to
factors that determine the probabilistic and collaborative valuation of cases
in this invention.” Id.; see also id. at 41–42. We disagree.
Instead, we agree with, and adopt, the Examiner’s findings and
rationales as our own. See Final Act. 22–23; Ans. 30–32. We add the
following discussion for emphasis.
The Appellant does not present specific argument why the Examiner’s
findings and reasoning are incorrect. Although the Appellant argues that
Biederman is only a database management system that “involves a timeline
of litigation that has nothing to do with risk analysis or case valuation”
(Reply Br. 8), the Appellant does not provide reasoning why the Examiner’s
explanations as to how and why Biederman relates to and can be combined
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with Porter to teach the claimed invention (see Ans. 30–31) are in error.
And we note that Biederman is in the same field of endeavor as the claimed
invention of managing and evaluating litigation expenses. See Biederman,
Abstract.
As such, we are not persuaded that the Examiner erred in the rejection
claims 3 and 16 as obvious of Porter and Biederman. Thus, we sustain the
obviousness rejection dependent claims 3 and 16
Claims 7 and 20
The Appellant contends that the Examiner’s rejection of claims 7
and 20 is in error because “[t]he proposed modification of Porter by Derry
would render Porter unsatisfactory for its intended purpose, with the result
that there is no motivation to modify Porter with Derry.” Appeal Br. 42.
Specifically, the Appellant argues that Derry’s system of managing costs of
litigation “does not provide any information or acknowledgment of how the
filing of a pleading might affect case valuation.” Id.; see also id. at 43. We
disagree.
Instead, we agree with, and adopt, the Examiner’s findings and
rationales as our own. See Final Act. 23–24; Ans. 32–34. We add the
following discussion for emphasis.
The Appellant does not present specific argument why the Examiner’s
findings and reasoning are incorrect. Although the Appellant argues that
“Derry provides nothing more than a system to manage the litigation by
providing the user with steps to take in filing legal documents and reducing
litigation costs” (Reply Br. 8), the Appellant does not provide reasoning why
the Examiner’s explanation as to how and why Derry relates to and can be
combined with Porter to teach the claimed invention (see Ans. 32–34) is in
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error. And we note that Derry is in the same field of endeavor as the
claimed invention of managing and evaluating litigation expenses. See
Derry, Abstract.
As such, we are not persuaded that the Examiner erred in the rejection
claims 7 and 20 as obvious of Porter and Derry. Thus, we sustain the
obviousness rejection dependent claims 7 and 20.
CONCLUSION
The Examiner’s decision to reject claims 1–4, 6, 7, and 14–24 is
sustained.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7,
14–24
112(b) Indefiniteness 1–4, 6, 7,
14–24

1–4, 6, 7,
14–24
101 Eligibility 1–4, 6, 7,
14–24

1, 2, 4, 6,
14, 15, 17–
19, 21–24
103 Porter 1, 2, 4, 6,
14, 15, 17–
19, 21–24

3, 16 103 Porter, Biederman 3, 16
7, 20 103 Porter, Derry 7, 20
Overall Outcome 1–4, 6, 7,
14–24

Appeal 2018-007639
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38
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED