Jean Christophe. Le

Patent Trials and Appeals Board

Apr 7, 2020

14658056 - (D) (P.T.A.B. Apr. 7, 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.
14/658,056 03/13/2015 Jean Christophe Le 44713.00001 1017
135149 7590 04/07/2020
Downey Brand LLP
621 Capitol Mall, 18th Floor
Sacramento, CA 95814
EXAMINER
KIM, KEVIN Y
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/07/2020 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):
mthomas@downeybrand.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN CHRISTOPHE LE

Appeal 2018-004473
Application 14/658,056
Technology Center 3700
Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
FREDERICK C. LANEY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21, 22, 25–33, and 35–40 under 35
U.S.C. § 101 as patent-ineligible. Claims 1–20, 23, 24, and 34 have been
canceled. 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(a). Appellant identifies the real party in interest as Jean Christophe
Le. Appeal Brief (“Appeal Br.”) 3, filed Oct. 24, 2017.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to game systems and
methods, and more particularly to fantasy or rotisserie sports and related
games.” Spec. ¶ 1. Claims 21, 32, and 36 are independent.
Claim 21 is illustrative of the claimed subject matter and recites:
21. A method of providing a skill based award to a user over
a network to a remote client computer, the method comprising:
providing a fantasy game application to the user for
installation on the remote client computer;
accepting user selections at a server system sent
from the remote client computer regarding the
management of a user fantasy team for play in a fantasy
game, the server system including a processor and a
memory that stores the user selections;
receiving additional fantasy game information at the
server system sent from at least one separate data source
over the network, wherein the additional fantasy game
information includes information regarding an actual
statistical performance of at least one player or activity,
and wherein the additional fantasy game information
further includes other predicted statistical performances of
the least one player or activity, the other predicted
statistical performances resulting from selections of other
users;
providing data to the user over the network
regarding the other predicted statistical performances, said
providing data taking place prior to the actual performance
taking place;
assigning automatically by the processor at least a
portion of a user score to the user for the fantasy game
based on the user selections; and
providing the skill based award to the user over the
network based on the skill of the user in making the user
selections to result in the user score for the fantasy game,
wherein said user selections include specific
statistical predictions forming a predicted statistical
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performance of the at least one player or activity on the
user fantasy team prior to the actual performance taking
place, and wherein the skill based award is provided based
on the accuracy of the predicted statistical performance in
comparison with the actual statistical performance.
Appeal Br. 16 (Claims App.).2
ANALYSIS
The Examiner determines that the claims are patent-ineligible under
35 U.S.C. § 101. Final Act. 2–4.3 Appellant contends that “[c]laims 21–22,
25–33, and 35–40 are all pending” and that “[t]he claims are all grouped
together as a single group for the purposes of this appeal.” Appeal Br. 7. As
Appellant argues claims 21, 22, 25–33, and 35–40 as a single group, we
select claim 21 as representative, and claims 22, 25–33, and 35–40 stand or
fall with claim 21. See 37 C.F.R. § 41.37(c)(1)(iv).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. Claim 21
falls within the literal scope of this provision because it recites a process.
The Supreme Court, however, has long recognized an implicit
exception to this section: “Laws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The

2 Claims Appendix (“Claims App.”), filed Dec. 11, 2017.
3 Final Office Action (“Final Act.”), dated Sept. 26, 2016.
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framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
Under the 2019 Eligibility Guidance, to decide whether a claim is
“directed to” an abstract idea, we evaluate whether the claim (1) recites an
abstract idea grouping listed in the guidance and (2) fails to integrate the
recited abstract idea into a practical application. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019)
(“2019 Eligibility Guidance”).4 Concepts that have been determined to be
abstract ideas, and thus patent-ineligible, include certain methods of
organizing human activity, such as fundamental economic practices (Alice,
573 U.S. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010));
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). 2019
Eligibility Guidance at 52.

4 An update to the 2019 Revised Patent Subject Matter Eligibility Guidance
issued in October 2019 (“October 2019 Update,” available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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If the claim is “directed to” an abstract idea, as noted above, we then
determine whether the claim recites an inventive concept. The guidance
explains that, when making this determination, we should consider whether
the additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” or “simply append[] well-understood, routine, conventional activities
previously known to the industry.” 2019 Eligibility Guidance at 56.
Step 2A, Prong One – Recitation of Judicial Exception
The Examiner determines that claim 21 of the subject invention is
“directed to an abstract idea of an organized human activity, the
management of a game, hedging, and fundamental economic practices.”
Final Act. 2. Appellant alleges, for example, “all claims recite unique
fantasy game details, as well as the provision of information and data
regarding the input of other users during the input process and prior to player
performances.” Appeal Br. 10.
The 2019 Eligibility Guidance provides that “[c]ertain methods of
organizing human activity” including “managing personal behavior or
relationships or interactions between people (including social activities,
teaching, and following rules or instructions)” are abstract ideas. 2019
Eligibility Guidance at 50, 52 (emphasis added). Here, we agree with the
Examiner that claim 21 of the subject invention recites such an abstract idea
of organizing human activity. Final Act. 2. In particular, claim 21 recites
steps of organizing human activity, i.e., (1) “providing a fantasy game
application to the user,” (2) “accepting user selections . . . for play in a
fantasy game,” (3) “receiving additional fantasy game [statistical
performance] information,” (4) “providing [statistical performance] data to
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the user . . . prior to the actual performance taking place,” and (5) “providing
the skill based award to the user.” See Appeal Br. 16 (Claims App.). These
limitations refer to providing a skill based award, which represents human
activity in the area of playing a fantasy game, and, thus, constitute a method
of organizing human activity under the 2019 Eligibility Guidance, and, thus,
an abstract idea.
The 2019 Eligibility Guidance further provides that “[m]ental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion)” are abstract ideas. 2019
Eligibility Guidance at 50, 52. Here, we agree with the Examiner that claim
21 of the subject invention also recites a method that “could be performed
either mentally or with pen and paper.” Final Act. 2. In particular,
limitations (1) through (5) listed above of claim 21 could be performed
either mentally or with pen and paper when playing a fantasy game. That
the claim requires steps to be performed by a “processor” does not remove
those limitations from properly being considered a mental process. See 2019
Eligibility Guidance at 52 n.14; see also Final Act. 5 (“The computer [of the
subject invention] is used to allow the ‘conversion’ of elements previously
performed by humans and pen and paper in the context of a computerized
format.”).
Step 2A, Prong 2 – Integrated Into a Practical Application
If a claim recites a judicial exception, then, in Prong 2, we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
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determine whether they integrate the exception into a practical application.
See 2019 Eligibility Guidance at 54–55. This evaluation requires an
additional element or a combination of additional elements in the claim to
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the exception. See id. at 54.
We note the 2019 Eligibility Guidance indicates that in the context of
Prong 2 of Step 2A, an exemplary consideration indicative that an additional
element (or combination of elements) may have integrated the exception into
a practical application is that an additional element reflects an improvement
in the functioning of a computer, or an improvement to other technology or
technical field. See 2019 Eligibility Guidance at 55.
Appellant contends that “[t]he claims of the pending application
improve the technical field of fantasy games by providing an entirely
different approach that has never been implemented or even considered.”
Appeal Br. 10; see also Reply Br. 65 (“[T]he pending claims do recite
something more than any abstract idea . . . such that they do ‘effect an
improvement in a technical field’ and thereby qualify as eligible subject
matter.”). According to Appellant, “the claims recite features and steps
whereby, contrary to known systems and methods, the approach and values
of a fantasy game are altered to reward the predictive statistical skills of a
user rather than the actual statistical performance of a player on the fantasy
team of the user” and that “[t]he claimed systems and methods overcome the
limited approach and varieties that are available for traditional fantasy

5 Reply Brief (“Reply Br.”), filed Mar. 19, 2018.
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games, and instead reward those users who are able to predict most
accurately how any specific player will perform.” Appeal Br. 11; see also
Reply Br. 6 (“[T]he pending claims improve the technical field of fantasy
games by providing an entirely different approach that involves awarding
accuracy for predicted statistical performance, as well as providing users
with information regarding the statistical predictions of other users prior to
the actual performances taking place.”).
We are not persuaded as we agree with the Examiner’s determination
that claim 21 of the subject invention does not recite additional elements
sufficient to elevate the abstract ideas of organizing human activity and
mental processes to a patent-eligible application. See Final Act. 2–4. In this
case, to the extent any new functions in the technical field of fantasy games
include providing a different award system (such as awarding accuracy for
predicted statistical performance), the use of awarding accuracy for
predicted statistical performance is part of the judicial exception of
managing interactions between people (i.e., organizing human activity).
Further, to the extent that any new functions in the technical field of fantasy
games involve automating interactions among humans that qualify as a
judicial exception, merely automating interactions that can traditionally be
performed by humans (i.e., mental processes) is not sufficient to transform
the judicial exception into a patent-eligible practical application.
As to Appellant’s contention that providing users with information
regarding the statistical predictions of other users prior to the actual
performances taking place is an improvement to the technical field of
fantasy games, the Examiner correctly points out that “[t]he act of making
predictions and being rewarded for correct predictions is akin to hedging and
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gambling, a fundamental economic practice [i.e., a method of organizing
human activity]” and that “the act of making predictions on sporting events
that have yet to occur (i.e. gambling or sports gambling) is considered a
fundamental economic practice [i.e., a method of organizing human
activity].” Final Act. 3. Thus, the improvement in making predictions
alleged by Appellant is not an improvement to a technical field, but, at best,
an improvement in one of certain methods of organizing human activity (i.e.,
a fundamental economic practice), which is an abstract idea. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(showing an advertisement before delivering free content is abstract); In re
Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009) (methods of organizing
business or legal relationships in the structuring of a sales force are abstract);
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir.
2017) (processing an application for financing a purchase is abstract);
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1348 (Fed. Cir. 2018)
(providing additional information without disrupting the ongoing provision
of an initial set of information is abstract); and Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1338 (Fed. Cir. 2013)
(generating tasks to be performed in an insurance organization is abstract);
see also the 2019 Eligibility Guidance at 52 (identifying “fundamental
economic principles or practices (including hedging, insurance, mitigating
risk)” as among the certain methods of organizing human activity that are
abstract ideas).
Appellant contends that claim 21 of the subject invention is analogous
to the claims in Research Corp. Tech. v. Microsoft Corp., 627 F.3d 859
(Fed. Cir. 2010). Appeal Br. 13. In particular, Appellant contends that “[i]n
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Research Corp. Tech., software patent claims were found to be statutory”
and similarly, “the pending claims do not simply describe ‘the abstract idea
of managing a game’”; rather, “the pending claims combine the steps of
providing a fantasy game application at a remote client, accepting user
selections, and providing a specifically determined skill based award in a
manner that has never been done before, and thus go beyond mere
instructions to apply any abstract idea.” Appeal Br. 13–14 (emphasis
omitted).
We do not agree with Appellant that claim 21of the subject invention
is analogous to the claims held to be patent eligible in Research Corp., 627
F.3d at 868, where the Court stated that the claimed invention “presents
functional and palpable applications in the field of computer technology.”
Here, as correctly noted by the Examiner, “[t]here are no limitations that are
directed to any improvement in the functioning of any of [the computer]
elements; rather, the claims are directed to an alleged new and improved
way of playing fantasy sports games.” Ans. 4–5.6 Stated differently, “any
improvement lies solely within the abstract ideas . . . , with the computer
aspects only serving as a vehicle for the abstract ideas. An improved or
otherwise different game implemented on standard computer hardware is not
considered . . . to be an improvement to computer-related technology.” Id.
at 5. For these same reasons, we also do not agree with Appellant that claim
21 of the subject invention is “similar to the stock viewer application

6 Examiner’s Answer (“Ans.”), dated Jan. 18, 2018.
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referenced in Example 21,” as set forth in the July 2015 Update7 to the
Guidance. See Appeal Br. 11–13.
Appellant also contends that claim 21 of the subject invention is
analogous to the claims in McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016). Reply Br. 6. In particular, Appellant
contends that “[a]s in McRO, the rules recited in the claim limitations
involving software are important, as these rules distinguish over that which
is done in the prior art.” Id. Appellant contends that “the fantasy game
being claimed pioneers a different aspect to fantasy gaming in that it
requires analytical input relating to accuracy,” in that “[u]sers are rewarded
for their analytical skills regarding accuracy in predicting player
performances,” and that the claimed method “provide[s] a more extensible
gaming experience where users can now quantify their expectations of
player performances. This is significantly different and more varied than
traditional fantasy gaming systems where users only rely on players to
perform well in order to score more points.” Id. at 6–7. Thus, according to
Appellant, “the success and joy of winning” in the claimed fantasy method is
“mainly dependent on the analytical skills of users in accurately predicting
player performance.” Id. at 7.
We do not agree with Appellant that claim 21 of the subject invention
is analogous to the claims held to be patent eligible in McRO. In McRO, the
claimed invention recited “specific rules” or algorithms for a computer to
“achieve an improved technological result” in computer animation,

7 July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July
30, 2015).

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redirecting the animator’s process from subjective determinations to
specific, limited mathematical rules. McRO, 837 F.3d at 1314–16. As a
result, the Federal Circuit concluded that the claimed invention in McRO
went “beyond merely ‘organizing [existing] information into a new form’ or
carrying out a fundamental economic practice,” and instead used specific
rules to render information in a specific format used to create desired results.
Id. at 1315.
Here, as discussed above, claim 21 of the subject invention is directed
to a method of organizing human activity, wherein the steps of (1)
“providing a fantasy game application to the user,” (2) “accepting user
selections . . . for play in a fantasy game,” (3) “receiving additional fantasy
game [statistical performance] information,” (4) “providing [statistical
performance] data to the user . . . prior to the actual performance taking
place,” and (5) “providing the skill based award to the user” (see Appeal Br.
16 (Claims App.)), refer to providing a skill based award, which represents
human activity in the area of playing a fantasy game, and, thus, constitute a
method of organizing human activity under the 2019 Eligibility Guidance,
and, thus, an abstract idea.
Additionally, as noted above, the Examiner correctly points out that
“[t]he act of making predictions and being rewarded for correct predictions
is akin to hedging and gambling, a fundamental economic practice [i.e., a
method of organizing human activity]” and that “the act of making
predictions on sporting events that have yet to occur (i.e. gambling or sports
gambling) is considered a fundamental economic practice [i.e., a method of
organizing human activity].” Final Act. 3. Thus, the improvement in
making predictions alleged by Appellant is not an improvement to a
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technical field, but, at best, an improvement in one of certain methods of
organizing human activity (i.e., a fundamental economic practice), which is
an abstract idea. The Examiner also correctly points out that “the means by
which one would quantify the quality or enjoyment of a game (i.e.[,] ‘fun
factor’) is highly subjective and [cannot be] reliably [] measured in a way
that would allow for an accurate [measurement] of an ‘improvement’ as
argued by Appellant.” Ans. 7–8.
Accordingly, the additional elements of claim 21 of the subject
invention discussed above do not integrate the judicial exception into a
practical application. For these reasons, claim 21 is directed to an abstract
idea, which is a judicial exception to patent-eligible subject matter under 35
U.S.C. § 101.
Step 2B – Well-Understood, Routine, Conventional Activity
Having determined that claim 21 of the subject invention recites a
judicial exception, and does not integrate that exception into a practical
application, under Step 2B we consider whether the claim adds a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field.
Appellant contends that the “receiving” step of claim 21 of the subject
invention is “directed toward providing users with information regarding the
predicted statistical performance of other users[,] requires the use of a
network,” which defeats the Examiner’s determinations that the pending
claims are only concerned with game rules and management and that “[b]y
reciting steps regarding receiving and providing information regarding the
selections of others, such that users can access this data prior to making their
own selections, the claims recite significantly more than mere game rules.”
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Reply Br. 7. As such, Appellant concludes that claim 21 of the subject
invention “recite[s] ‘significantly more’ than any alleged abstract idea. In
particular, the steps [of claim 21] recite significantly more than ‘well-
understood, routine, and conventional activities previously known to the
pertinent industry.’” Id.
As an initial matter, regarding Appellant’s contention to the
Examiner’s determination that the “receiving” step of claim 21 is “only . . .
concerned with game rules and management” (see Reply Br. 6), as discussed
above, the Examiner correctly determines that “[t]he act of making
predictions and being rewarded for correct predictions is akin to hedging and
gambling, a fundamental economic practice [i.e., a method of organizing
human activity]” and that “the act of making predictions on sporting events
that have yet to occur (i.e. gambling or sports gambling) is considered a
fundamental economic practice [i.e., a method of organizing human
activity].” Final Act. 3. Appellant does not apprise us of error as to these
determinations by the Examiner. See Appeal Br. and Reply Br., passim. As
further discussed above, the improvement in making predictions alleged by
Appellant is not an improvement to a technical field, but, at best, an
improvement in one of certain methods of organizing human activity (i.e., a
fundamental economic practice), which is an abstract idea.
Regarding the requirement of the use of a network, the Examiner
correctly points out that limitations directed to implementing the claim steps
in “a computerized environment (e.g. a network, server, memory, processor,
etc.) are not viewed as necessities that enable what would otherwise be
considered impossible to be carried out manually by humans, but merely
computer analogs to steps previously performed by humans utilizing pen and
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paper, or mentally” (Ans. 7) and that “[p]redicting performances of
selections of other players[’] amounts to more elements that could be
performed either mentally or on pen and paper,” such that “[t]he inclusion of
a network is not a step that is considered significantly more, as it amounts to
the inclusion of technology and steps that are routine and conventional to
those of ordinary skill” (Final Act. 4). We agree with the Examiner that
“[t]he computer [of the subject invention] is used to allow the ‘conversion’
of elements previously performed by humans and pen and paper in the
context of a computerized format” and that “[t]here are no improvements to
the functionality of the computer claimed, and as such, these computing
components can only be seen as generic, and therefore, not significantly
more than the abstract idea.” Final Act. 5.
As such, the claimed use of a “processor” to carry out the abstract idea
“simply appends well-understood, routine, conventional activities previously
known to the industry.” See 2019 Eligibility Guidance at 56. Indeed, the
Specification suggests that the processor is well-known, routine, and
conventional. See, e.g., Spec. ¶ 54 (describing “processor 202” as “e.g., a
central processing unit (CPU), a graphics processing unit (GPU) or both”).
Accordingly, claim 21 of the subject invention does not add any
inventive concept.
Appellant additionally contends that claim 21 of the subject invention,
as well as the additional claims, does not preempt the judicial exception.
Appeal Br. 8 (“[T]hese new claims overcome recent concerns regarding
patenting ‘abstract ideas’ in any event, since these recent concerns are
motivated by patent claims not carrying a ‘risk of pre-emption.’”); see also
id. at 9; Reply Br. 4–5. However, as our reviewing court has explained, “the
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principle of preemption is the basis 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).
Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.” Id.
Moreover, “[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.; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Appellant’s argument as to absence of preemption does not
apprise us of error in the Examiner’s rejection.
Appellant also additionally contends that “[i]ndeed, the Examiner has
withdrawn all previous § 102 and § 103 rejections during prosecution, since
the current combination of detailed claim elements has rendered the pending
claims as novel and nonobvious in view of all other references in the
crowded field of gaming arts.” Reply Br. 4–5; see also id. at 7–8 (“No other
fantasy game or system in any of the recited references provides a skill
based award to a user based upon the relative accuracy of a user in
predicting statistical performance, rather than simply racking up gross
statistics from the statistical performance.”); Appeal Br. 14.
However, we note that the patent eligibility analysis is not an
evaluation of novelty or non-obviousness. “[A] claim for a new abstract idea
is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
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1138, 1151 (Fed. Cir. 2016). Whether the claimed concept is
“[g]roundbreaking, innovative, or even brilliant . . . does not by itself satisfy
the § 101 inquiry.” Ass’n for Molecular Pathology, 569 U.S. at 591.
Consequently, an abstract idea does not transform into an eligible inventive
concept just because the Examiner has not found prior art that discloses or
suggests it. 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.” Diamond v. Diehr, 450 U.S. 175, 188–89
(1981). A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90–91.

Conclusion
For the reasons set forth above, after applying the 2019 Eligibility
Guidance, we sustain the Examiner’s decision to reject claims 21, 22, 25–33,
and 35–40 under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21, 22, 25–
33, 35–40
101 Eligibility 21, 22, 25–
33, 35–40

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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