Nafeh, John et al.

Patent Trials and Appeals Board

Nov 25, 2020

2019003638 (P.T.A.B. Nov. 25, 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.
11/893,017 08/13/2007 John Nafeh 4372US/4372/NADEX 3891
22830 7590 11/25/2020
CARR & FERRELL LLP
120 CONSTITUTION DRIVE
MENLO PARK, CA 94025
EXAMINER
MILEF, ELDA G
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
jsamson@carrferrell.com
patdocket@carrferrell.com
smather@carrferrell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JOHN NAFEH and KENTON K. YEE
____________________

Appeal 2019-003638
Application 11/893,0171
Technology Center 3600
____________________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL J. ENGLE, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–13 and 17–37, which are all of the claims
pending in this application. Claims 14–16 are 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. Appellant identifies HedgeStreet, Inc. as the real party in
interest. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
relating to “a method and apparatus for risk management and to a method
and apparatus for establishing and maintaining a market for initial and
secondary trading in risk management instruments.” Spec. ¶ 2.2
Independent claim 25 is representative of the subject matter on appeal
and reads as follows (with paragraph notations added):
25. A system, comprising:
(a) a redundant and load sharing computer-network based
coupons trading system featuring:
(b) two separate systems at a single location operating on
a same switched high speed local area network, each separate
system further comprising:
(c) a computer means;
(d) a trade engine configured for selling, over said trading
system, coupons, each coupon for a prespecified item of value;
(e) the trade engine further configured for reselling, over
said trading system, at least one of said coupons; and
(f) a clearance and settlement module configured for
settling the at least one of said coupons, and wherein said
prespecified item of value is provided as a regular recurring
occurrence and wherein the at least one of said coupons has a
time period from a sale thereof to an expiration thereof, which
partially overlaps a time period from a sale of another coupon
until the expiration of said another coupon, wherein each of the

2 Our Decision refers to the Final Office Action mailed Jan. 16, 2018
(“Final Act.”), Appellant’s Appeal Brief filed Dec. 12, 2018 (“Appeal Br.”)
and Reply Brief filed Apr. 6, 2019 (“Reply Br.”), the Examiner’s Answer
mailed Feb. 12, 2019 (“Ans.”), and the original Specification filed Aug. 13,
2007 (“Spec.”).
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coupons have different expiration dates and each of the coupons
are for a separate prespecified item of value.
Appeal Br. 22 (Claims App.).
Rejection on Appeal
Claims 1–13 and 17–37 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more. Final Act. 2–5.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments in the Briefs (Appeal Br. 7–18; Reply Br. 6–12) and are not
persuaded the Examiner erred. Unless otherwise indicated, we adopt as our
own the findings and reasons set forth by the Examiner in the Office Action
from which this appeal is taken (Final Act. 2–10) and in the Examiner’s
Answer (Ans. 3–7), and we concur with the conclusions reached by the
Examiner. For emphasis, we consider and highlight specific arguments as
presented in the Briefs.
A. Applicable Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Com’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
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. But the
Supreme Court has long recognized an implicit exception to this section:
“[l]aws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’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,
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the Court has set out a two-part framework. The 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
[the] 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.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim 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).
The Patent Office has issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”).3 Under the Revised Guidance, to
decide whether a claim is directed to an abstract idea, we evaluate whether
the claim (1) recites one of the abstract ideas listed in the Revised Guidance
(“Prong One”) and (2) fails to integrate the recited abstract idea into a
practical application (“Prong Two”). See Revised Guidance, 84 Fed. Reg. at
51, 54. If the claim is directed to an abstract idea, as noted above, we then
determine whether the claim has an inventive concept. The Revised
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,

3 See also USPTO, October 2019 Patent Eligibility Guidance Update (Oct.
17, 2019), https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
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conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we first analyze whether claim 25 is
directed to an abstract idea.4
B. Abstract Idea
The Examiner determines that the limitations of claims 1, 25, and 32,
excluding the recited generic computer components, are directed to “a
coupons trading system accessible by traders” that under its broadest
reasonable interpretation “covers certain methods of commercial or legal
interactions that fall under certain methods for organizing human activity.”
Ans. 3–4; see also Final Act. 3. In particular, the Examiner determines “the
claims are directed to transferring an item of value[,] i.e., coupons, between
users in an exchange system—a fundamental economic practice, i.e., a
method of organizing human activity and therefore an abstract idea.” Ans.
4. The Examiner also determines that the claims are similar to claims found
by the courts to be directed to the abstract idea of risk hedging in Bilski v.
Kappos, 561 U.S. 593 (2010), and the abstract idea of the creation of a
contractual relationship in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350
(Fed. Cir. 2014). Final Act. 3.
Appellant contends claim 25 is not directed to an abstract idea, but
instead to “new uses of a known machine.” Appeal Br.7; see also Reply Br.
10. In particular, Appellant asserts claim 25 recites “a computer system in

4 Asserting that “[i]ndependent claims 25 and 32 are currently under
appeal,” Appellant does not argue claim 1 in the Briefs. Appeal Br. 4.
Appellant argues claims 25 and 32 together. Appeal Br. 4–16. Thus, we
decide the appeal based on representative claim 25. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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the form of an electronic trading exchange” in which “several different
computers or processors are used in combination in a new way to improve
the technical operation of electronic trading exchanges.” Appeal Br. 7–8.
According to Appellant, claim 25 is similar to the patent–eligible claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014). Id. at 13; Reply Br. 9. Appellant argues that, like the claims in DDR,
“[t]he prevention of data loss and optimization of computing resources by”
claim 25’s “‘redundant and load sharing system featuring: two separate
systems at a single location operating on a same switched high speed local
area network[]’ is a ‘claimed solution[] necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.’” Appeal Br. 13 (citing DDR, 773 F.3d at 1257).
Appellant further contends that claim 25 is not directed to an abstract idea
because the Examiner improperly examined claim 25 “‘in part’ . . . , and not
as a whole.” Id. at 7.
1. USPTO Step 2A, Prong One
Beginning with Prong One of the first step of Alice, we must
determine “whether the claims at issue are directed to one of those patent-
ineligible concepts,” including the abstract ideas enumerated in the Revised
Guidance. Alice, 573 U.S. at 217. One of the subject matter groupings
identified as an abstract idea in the Revised Guidance is
[c]ertain methods of organizing human activity—fundamental
economic principles or practices (including . . . mitigating risk);
commercial . . . interactions (including agreements in the form
of contracts; . . . sales activities or behaviors; business
relations); managing personal behavior or relationships or
interactions between people (including . . . following rules or
instructions).
See Revised Guidance, 84 Fed. Reg. at 52.
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For our prong one analysis, we set aside, for consideration below, the
technological elements recited in claim 25: (a) “redundant and load sharing
computer network based . . . system;” (b) “switched high speed local area
network;” (c) “a computer means;” (d) “a trade engine configured for;” (e)
“the trade engine further configured for;” and (f) “a clearance and settlement
module configured for.” Apart from these elements, claim 25 recites a
system comprising:
(a) a . . . coupons trading system featuring:
(b) two separate systems at a single location . . . , each
separate system further comprising:
. . .
(d) . . . selling, over said trading system, coupons, each
coupon for a prespecified item of value;
(e) . . . reselling, over said trading system, at least one of
said coupons; and
(f) . . . settling the at least one of said coupons, and wherein
said prespecified item of value is provided as a regular recurring
occurrence and wherein the at least one of said coupons has a
time period from a sale thereof to an expiration thereof, which
partially overlaps a time period from a sale of another coupon
until the expiration of said another coupon, wherein each of the
coupons have different expiration dates and each of the coupons
are for a separate prespecified item of value.
The activities or functions performed in limitations (a), (b), and (d)–
(f) of claim 25 are “methods of organizing human activity.” In particular,
limitations (a) and (b) together recite a “coupons trading system featuring”
“two separate systems at a single location,” which is akin to the
court-identified abstract concept of “backing up data.” Intellectual Ventures
I LLC v. Symantec Corp., 725 F. App’x 976, 978 (Fed. Cir. 2018). “[C]ourts
have frequently found that claims directed to copying and storing
information for backup purposes are directed to abstract ideas.” WhitServe
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LLC v. Dropbox Inc., 2019 WL 3342949, at *4 (D. Del. July 25, 2019). The
activities of “selling, over said trading system, coupons, each coupon for a
prespecified item of value,” as recited in limitation (d), and “reselling, over
said trading system, at least one of said coupons,” as recited in limitation (e),
are fundamental economic practices involving commercial interactions,
which pertain to the long-standing, abstract concepts of forming and
managing contracts between parties. See Revised Guidance, 84 Fed. Reg. at
52 n.13 (citing buySAFE, 765 F.3d at 1355). Limitation (f) recites “settling
the at least one of said coupons . . . wherein each of the coupons have
different expiration dates and each of the coupons are for a separate
prespecified item of value.” This limitation pertains to commercial activities
or behaviors based on business rules, which courts have identified as a
method of organizing human activity and, thus, an abstract idea. See
Revised Guidance, 84 Fed. Reg. at 52 n.13.5 Limitation (f) is also abstract
because it recites common, long-standing practices in contract formation and
management. See Revised Guidance, 84 Fed. Reg. at 52, 52 n.13 (citing
buySAFE, 765 F.3d at 1355).

5 See also KomBea Corp. v. Noguar L.C., 73 F. Supp. 3d 1348, 1352–53 (D.
Utah 2014), aff’d, 656 F. App’x 1022 (Fed. Cir. 2016) (affirming district
court ruling that claims directed to basic sales techniques executed with the
aid of a computer to create efficiencies were fundamental economic
practices, methods of organizing human activity, and, thus, abstract ideas);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1317 (Fed.
Cir. 2016) (concluding that claims directed to keeping and applying business
rules defining actions to be taken regarding certain received information to
be a method of organizing human activity and, thus, an abstract idea); Parus,
677 F. App’x at 682 (affirming district court ruling that claims directed to
organizing business functions based on rules provided by a user were a
method of organizing human activity, and thus, an abstract idea).
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Based on the analysis above, we determine that claim 25 recites
abstract ideas in the “methods of organizing human activity” grouping. See
Revised Guidance, 84 Fed. Reg. at 52. We note that merely combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(“Adding one abstract idea . . . to another abstract idea . . . does not render
the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1094 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).
Contrary to Appellant’s argument, the Examiner did not improperly
examine claim 25 “in part.” Appeal Br. 7. Rather, the Examiner’s § 101
rejection makes clear that the Examiner considered each and every element
of claim 25, both individually and as an ordered combination. See Final Act.
3–5. The Examiner also finds that the features and concepts set forth in
claim 25 “relate to economic practices in which monetary transactions
between people are managed.” Id. at 3; see also Ans. 3 (“[T]he claims are
directed to transferring an item of value[,] i.e., coupons, between users in an
exchange system—a fundamental economic practice, i.e., a method of
organizing human activity and therefore an abstract idea.”). The Examiner’s
approach here is consistent with USPTO guidance and case law precedent,
which support reasonably synthesizing the claim language when identifying
a recited abstract idea. See, e.g., Bilski, 561 U.S. at 611 (“Claims 1 and 4 in
[P]etitioners’ application explain the basic concept of hedging, or protecting
against risk. . . . The concept of hedging, described in claim 1 and reduced to
a mathematical formula in claim 4, is an unpatentable abstract idea, just like
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the algorithms at issue in Benson and Flook.”).6 Also consistent with
USPTO guidance and case law precedent, the second part of the Examiner’s
§ 101 analysis identifies the additional elements of claim 25 and considers
them both individually and as an ordered combination with the other
elements of the claim. See Final Act. 3–5.
Appellant’s arguments that the claims are directed to “new uses of a
known machine” and are similar to the claims in DDR are also
unconvincing. The Examiner finds, and we agree, that “[t]he focus of the
claims is not on such an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools.” Ans. 6.
Regarding DDR, the method claim in DDR addressed a technological
problem “particular to the internet.” DDR, 773 F.3d at 1257. In DDR, as
the Examiner finds,
instead of the computer network operating in its normal,
expected manner by sending the website visitor to the third-party
website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
visitor to [a] hybrid web page that presents product information
from the third-party and visual ‘look and feel’ elements from the
host website.
Id. Here, however, as the Examiner also finds, claim 25 is “directed to a
trading system for selling and reselling coupons, and settling the
transactions.” Id. Although claim 25 uses computer and networking
technology as tools for performing these activities, the claimed activities

6 See also Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364,
1371 n.8 (Fed. Cir. 2017) (concluding that the district court did not err in
determining that claims covered the abstract concept of paying for a subway
or bus ride with a credit card: “[t]he District Court here, as we have
instructed, looked to the language of the claims to discern the character of
the patent.”).
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themselves are not “particular to” or “necessarily rooted in” a certain
technology, nor do they require the use of such technology.
Appellant further argues that the claims “improve the technical
operation of electronic trading exchanges,” by using several different
computers or processors in combination “in a new way.” Appeal Br. 7–8.
This argument is not persuasive because it is conclusory and unsupported.
Appellant does not identify any persuasive evidence in the claims or the rest
of the Specification to support this argument. It is true that the claimed
invention’s use of a computer networking system may achieve more
accurate results in a shorter amount of time, but “relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015).7
Appellant also asserts that “the claims are novel and non-obvious, but
somehow allegedly directed to an abstract idea.” Appeal Br. 8. This
assertion is unavailing because novelty and non-obviousness are of no
relevance in determining patentable subject matter. See Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(quoting Diehr, 450 U.S. 175, 188–89 (1981) (“‘novelty’ . . . is of no
relevance in determining . . . patentable subject matter”); Mayo, 566 U.S. at

7 See also Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”); Alice, 573 U.S. at 224
(concluding that “the use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions” was not an
inventive concept).
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91 (rejecting “the Government’s invitation to substitute §§ 102, 103,
and 112 inquiries for the better established inquiry under § 101”).
2. USPTO Step 2A, Prong Two
Because we determine that claim 25 recites an abstract idea, we turn
to the USPTO’s Prong Two of the analysis. See Revised Guidance, 84 Fed.
Reg. at 51. In doing so, we consider whether there are any additional
elements beyond the recited abstract idea(s) that, individually or in
combination, “integrate the [abstract idea(s)] into a practical application,
using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit.”8 Id. at 54–55.
The Examiner finds that the claims recite the additional elements of
a computer network based trading system . . . , an interactive user
interface, a communications interface, a processor system, and a
redundant and load sharing computer network based coupon
trading system comprising two separate systems at a single
location operating on a same switched high speed local area
network, each separate system further comprising a computer
means.
Final Act. 3–4. The Examiner also finds that the “Specification
demonstrates the well-understood, routine, conventional nature of the
additional elements, i.e., computer-network based coupons trading system, a
processor system.” Ans. 4. In particular, the Examiner cites a portion of
paragraph 269 of the Specification, which states:
The above description of an apparatus according to present
invention illustrates and describes a computer-based system in

8 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A, Prong Two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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terms of functional block diagrams and website page structures.
One of skill in the art will appreciate that once the desired
functionality of the computer system is defined (as has been
outlined above), and/or the basic contents of the web pages have
been identified (as has been outlined above), the acts of
programming one or more computers or computer systems to
perform these functions is considered to be within the ordinary
skill in the art for computer programmers.
Id. at 4–5.
We agree with the Examiner that the additional elements of claim 25
recite no more than generic computer and computer-network elements
performing generic computing and computer-network functions. See, e.g.,
Spec. Section II (pages 61–74), ¶¶ 236, 237, 254, 269; Fig. 1. Accordingly,
we determine that claim 25 does not integrate the judicial exception into a
practical application, and thus is directed to the judicial exception. See
Revised Guidance, 84 Fed. Reg. at 55 (explaining that courts have identified
“merely us[ing] a computer as a tool to perform an abstract idea” as an
example of when a judicial exception may not have been integrated into a
practical application). In particular, we determine claim 25 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant asserts that claim 25 recites features that go beyond, are
significantly more than, and amount to a meaningful application of the
alleged abstract idea. Appeal Br. 13–15; Reply Br. 10–11. According to
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Appellant, “[c]laim 25 recites features that amount to more than a mere
recitation of the alleged abstract idea coupled with a generic instruction to
‘do it on a computer’ or ‘apply it.’” Appeal Br. 13.
Appellant’s assertions are not persuasive because they are conclusory
and unsupported by the claim, the Specification, or other persuasive
evidence or technical reasoning. Appellant has failed to demonstrate that
claim 25 recites or requires any inventive programming, any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, or that the claimed invention is performed using other
than generic computer or computer-network components.9 It is true that the
invention’s ability to run on a general-purpose computer does not
necessarily “doom[] the claims” for purposes of subject matter eligibility.
See id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016)). But the fact remains that claim 25 fails to recite an element, or
combination thereof, that amounts to “significantly more” than the recited
abstract idea. Nor has Appellant identified any disclosure in the
Specification of any inventive techniques or specialized computer or
computer-network components to perform the recited activities and
functions of claim 25.

9 Similarly, Appellant’s argument that “[t]he interactive user interfaces in
the present case are no different [than the interface for mobile devices in
Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356
(Fed. Cir. 2018)] and therefore patent eligible” is conclusory and
unsupported because Appellant has not provided persuasive evidence or
technical reasoning explaining how or why the claimed interfaces are “no
different” than those in Core Wireless. Appeal Br. 14–15.
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3. USPTO Step 2B – Inventive Concept
We now consider whether claim 25 has an inventive concept, that is,
whether any additional claim elements “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate 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, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56. “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018).
Here, the Examiner finds that the additional claim elements recite
“[g]eneric computer components . . . performing generic computer functions
that are well-understood, routine and conventional activities” and “amount
to no more than implementing the abstract idea with a computerized
system.” Final Act. 3–4; Ans. 4–5 (finding “[A]ppellant[’]s Specification
demonstrates the well-understood, routine, conventional nature of the
additional elements” (citing Spec. ¶ 269)). The Examiner also finds that
“taken alone, the additional elements do not amount to significantly more
than the above-identified judicial exception.” Final Act. 4. The Examiner
further finds that “[l]ooking at the limitations as an ordered combination
adds nothing that is not already present when looking at the elements taken
individually. . . . Their collective functions merely provide conventional
computer implementation.” Id. at 4–5.
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Appellant argues the Examiner failed to provide substantial evidence
under Berkheimer that the additional claim elements and their ordered
combination provide well-understood, routine, and conventional elements
and functionality. Appeal Br. 9–15; Reply Br. 10–11.
Appellant’s argument does not persuade us that the Examiner erred.
First, the Examiner’s findings that the additional elements of claim 25 are
well-understood, routine, and conventional are amply supported by, and
fully consistent with, the Specification, which describes Appellant’s
invention in a manner that requires no more than a general-purpose
computer with generic computing and computer-network elements.
See, e.g., Spec. Section II (pages 61–74), ¶¶ 236, 237, 254, 269; Fig. 1.
Second, Appellant has not established that the instant patent eligibility
inquiry contains an underlying issue of fact. It is true that the court
in Berkheimer held that “[t]he patent eligibility inquiry may contain
underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting Mortgage
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed.
Cir. 2016) (“[T]he § 101 inquiry ‘may contain underlying factual issues.’”)).
The court also held, however, that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). Here, although Appellant asserts that
certain limitations have not been shown as well-understood, routine, and
conventional, Appellant does not explain specifically why these limitations
are not well-understood, routine, and conventional, nor does Appellant
identify any passages from the Specification that support its assertions.
Thus, the record fails to show that any material, factual issues exist
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regarding a claim element’s well-understood, routine, or conventional nature
in light of Berkheimer.
In view of the foregoing, considering claim 25 as a whole, we
determine that the additional claim elements do not provide “a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field.” Revised Guidance, 84 Fed. Reg.
at 56. Rather, these elements do no more than “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Id. Accordingly, we agree
with the Examiner that claim 25 does not have an inventive concept.
4. Additional Arguments
In regard to dependent claims 2–13, 17–24, 26–31, and 33–37,
Appellant additionally argues the Examiner has not provided an explanation
as to why each of these claims as a whole is not patent-eligible. Appeal Br.
16–17. We do not agree.
Contrary to Appellant’s argument, we determine the Examiner’s § 101
analysis adequately addresses each of dependent claims 3, 5–8, 12, 21, and
24 as a whole and explains why the additional elements of these claims do
not render them patent-eligible. Final Act. 5; see also Ans. 6–7. The
Examiner finds, and we agree, that the additional recited limitations of the
dependent claims fail to establish that the claims are not directed to an
abstract idea. Final Act. 5. The Examiner also finds, and we agree, that
“[t]he additional limitations of the dependent claim(s) when considered
individually and as an ordered combination do not amount to significantly
more than the abstract idea.” Id.
Moreover, we note for emphasis that § 101 case law is replete with
instances where the court designated and focused only on one or more
Appeal 2019-003638
Application 11/893,017
18
independent claims as representative of the entire claim set in conducting the
§ 101 analysis. See, e.g., Ultramercial, 772 F.3d 709, 712 (Fed. Cir. 2014)
(“As the other claims of the patent are drawn to a similar process, they suffer
from the same infirmity as claim 1 and need not be considered further.”).
This is especially the case where, as here, Appellant does not make separate
and particular arguments beyond the independent claims. See, e.g.,
CyberFone Sys., LLC v. Cellco P’ship, 885 F. Supp. 2d 710, 716 n.6 (D.
Del. 2012), aff’d sub nom. Cyberfone, 558 F. App’x 988 (Fed. Cir. 2014)
(“In its brief, plaintiff focuses solely on how claim 1 is patent-eligible under
§ 101 . . . . No argument is made with respect to claims 13 or 18 despite
defendants raising the ineligibility of those claims. Given plaintiffs focus,
the court deals only with claim 1.”).
5. Conclusion
Because we determine that claim 25 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 25 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner’s rejection of independent claim 32 under § 101. With respect to
independent claim 1, we pro forma sustain the Examiner’s rejection under
§ 101 because, as stated supra, Appellant does not argue claim 1 in the
Briefs. Alternatively, we sustain the Examiner’s rejection of claim 1 for the
same reasons discussed in regard to claim 25. Lastly, for the same reasons
discussed in regard to claim 25, as well as those discussed above in response
to Appellant’s additional arguments (Appeal Br. 16–17), we sustain the
Examiner’s rejection under § 101 of dependent claims 2–13, 17–24, 26–31,
and 33–37.
Appeal 2019-003638
Application 11/893,017
19
CONCLUSION
We affirm the Examiner’s rejection of claims 1–13 and 17–37 under
35 U.S.C. § 101.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R.
§ 41.50(f).

In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)
/Basis
Affirmed Reversed
1–13, 17–37 101 Eligibility 1–13, 17–37

AFFIRMED