Opower, Inc.

Patent Trials and Appeals Board

Sep 30, 2020

2020002243 (P.T.A.B. Sep. 30, 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.
14/700,590 04/30/2015 Alexandra Liptsey-Rahe OP-0055 5186
51444 7590 09/30/2020
Kraguljac Law Group/Oracle
P.O. Box 507
Cleveland, OH 44017
EXAMINER
EL-HAGE HASSAN, ABDALLAH A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
DDay@KragLaw.com
MPusti@KragLaw.com
PTOMail@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDRA LIPTSEY-RAHE, TOM MERCER,
ALESSANDRO ORFEI, and ALEX KINNIER
____________

Appeal 2020-002243
Application 14/700,5901
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MICHAEL R. ZECHER, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–5, 7–15, and 17–25. Final Act. 1.2 Claims 6 and
16 have been cancelled. Id. at 2. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Oracle International Corporation as the
real party in interest. Appeal Br. 2.
2 All references to the Final Office Action under appeal refer to the Final
Office Action entered March 12, 2019.
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant states the invention “generally relates to behavioral demand
response using substation meter data.” Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method performed by a
computing system including at least one processor, the method
comprising:
identifying, by the at least one processor, a first
substation from a plurality of substations, and assigning
the first substation as a treatment group, wherein the first
substation is configured to provide a resource to a first
plurality of customers, and comprises one or more meters
for measuring first meter data comprising an aggregate
quantity of the resource supplied by the first substation to
the first plurality of customers, as a group;
identifying, by the at least one processor, a second
substation from the plurality of substations, and assigning
the second substation as a control group, wherein the
second substation is configured to provide the resource to
a second plurality of customers, and comprises one or
more meters for measuring second meter data comprising
an aggregate quantity of the resource supplied by the
second substation to the second plurality of customers, as
a group;
transmitting, via a communication network, a pre-
event notification to a plurality of remote devices, each
of the remote devices being associated with one of the
first plurality of customers in the treatment group,
wherein the pre-event notification is part of a campaign
and includes information regarding a demand response
event and a request to reduce usage of the resource
during the demand response event; and
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at a time after the demand response event:

receiving the first meter data measured by
the one or more meters for the first substation in
the treatment group during the demand response
event;
receiving the second meter data measured by
the one or more meters for the second substation in
the control group during the demand response
event;
measuring an efficacy of the campaign by:
(i) determining an actual usage for the first
substation in the treatment group during the
demand response event based on the received first
meter data measured by the one or more meters
provided to the first substation, (ii) determining an
actual usage for the second substation in the
control group during the demand response event
based on the received second meter data measured
by the one or more meters provided to the second
substation, and (iii) comparing an aggregate of the
actual usage for the first substation in the treatment
group, with an aggregate of the actual usage for the
second substation in the control group to determine
a change in actual usage of the resource between
the treatment group and the control group caused
by the pre-event notifications; and
transmitting a comparison result to a third
party device to indicate the efficacy of the
campaign to cause changes in a subsequent
demand response campaign.
Appeal Br. 37–39 (Claims Appendix).
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

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Name Reference Date
Synesiou US 7,873,441 B2 Jan. 18, 2011
Platt US 8,375,068 B1 Feb. 12, 2013
Matsuoka US 9,807,099 B2 Oct. 31, 2017
Li US 2015/0066594 A1 Mar. 5, 2015
The following rejections are before us for review.
Claims 1–5, 7–15, and 17–25 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more.
Claims 1–5 and 7–12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Matsuoka in view of Li, in further view of Synesiou and
in further view of Platt.
Claims 13–15 and 17–25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Matsuoka in view of Synesiou and in further view of Platt.

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth in the
Final Office Action and in the Examiner’s Answer, concerning
both the 35 U.S.C. § 101 and the 35 U.S.C. § 103 rejections.
2. The Examiner (at Final Act. 15) found Matsuoka discloses:
receiving the first meter data measured by the one
or more meters for the first substation in the
treatment group during the demand response event;
…[Matsuoka, column 20 lines 53-58, Matsuoka
teaches “Processing engine 406 can include engines
configured to receive data from a set of devices
(e.g., via the Internet or a hubbed network), to index
the data, to analyze the data and/or to generate
statistics based on the analysis”].
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3. Li discloses: “In a randomized experiment, a study
sample can be divided into two groups: one receiving the
intervention being studied (e.g. the treatment group) and the
other not receiving it (e.g. the control group).” Li ¶ 146.
4. Synesiou discloses:
In sum, the system may provide a user
interface that presents to a user reporting options to
derive reports from data stored in the system
databases including: resource consumption
measured for loads, resource consumption
measured for groups of loads, rates of resource
consumption for loads, rates of resource
consumption for groups of loads.
Id. at col. 38, ll. 46–51.

5. The Examiner (at Final Act. 18.) cites to:
[Platt, column 9 lines 47-55, Platt teaches a user is
able to select a baseline period to compare against,
based on previous usage period. Comparison can
be reduction (difference)].

ANALYSIS
35 U.S.C. § 101 REJECTION
We affirm the Examiner’s rejection of claims 1–5, 7–15, and 17–25
under 35 U.S.C. § 101.
The Appellant argues claims 1–5, 7–15, and 17–25 as a group. We
select claim 1 as the representative claim for this group (Appeal Br. 13), and
so the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2019).
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An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. 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 id. 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
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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. (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,
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.
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In January 2019, 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)
(“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 1.4
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 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 MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed.,
Rev. 10.2019, June 2020)) (“Step 2A, Prong Two”).5

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 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.pdf).
4 The Guidance supersedes MPEP § 2106.04 and also supersedes all
versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying
Abstract Ideas.” See 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.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO 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
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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 claim:
(3) adds 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 appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, 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 claims 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 Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two
prong test: (1) evaluate whether the claim recites a judicial exception,
and (2) if the claim recites a judicial exception, evaluate whether the
claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a
manner that imposes a meaningful limit on the judicial exception,

determine whether the claim, as a whole, integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53; see
also MPEP §§ 2106.04–2106.05.
Accordingly, we find:
The Specification states:
Peak resource consumption events or “peak events” can
occur multiple times per year for a given resource (e.g.,
electricity, gas, or water). For example, a peak event for a utility
may occur during one or more hot days due to heavy air-
conditioning loads. During a peak event, a resource provider
(e.g., utility) may have difficulty meeting demand, which may
result in a blackout, higher utility rates, and/or a need to put one
or more additional electric power generators online.
Id. ¶ 23.
To address this problem, resource providers (e.g., utility
company) may initiate a demand response event to reduce
resource demand during a peak event. A demand response event
may refer to actions that are taken to reduce resource energy
demand during a peak event. A demand response event may
involve implementing a demand response campaign or program,
in which communications are sent to utility customers (e.g., via
electronic mail, regular mail, etc.) before the peak event. Each
communication may inform the respective customer of the
upcoming peak event and ask the customer to reduce usage
during the peak event. After the peak event, each customer may
receive a post-event notification providing the customer with
feedback on how much energy he/she saved during the peak
event (e.g., compared to a previous peak event and/or other
customers).
Id. ¶ 24.
After the groups are formed, customers in the treatment
group are enrolled in the demand response campaign (e.g.,
receive pre-event notifications) while customers in the control
group are not. After the peak event, usage data for the control
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group during the peak event may be compared with usage data
for the treatment group to measure the efficacy of the campaign.
For example, the usage data for the treatment group and control
group may be used to determine whether the treatment group
reduced usage during the peak event compared to the control
group. Thus, the efficacy of the demand response campaign can
be measured using usage data collected at the substation level.
Id. ¶ 30.
Understood in light of the Specification, claim 1 recites, in pertinent
part,
identifying, . . . a first substation from a plurality
of substations, and assigning the first substation as a treatment
group, wherein the first substation is configured to provide a
resource to a first plurality of customers, and comprises one or
more meters for measuring first meter data comprising an
aggregate quantity of the resource supplied by the first substation
to the first plurality of customers, as a group;
identifying, . . . a second substation from the plurality of
substations, and assigning the second substation as a control
group, wherein the second substation is configured to provide the
resource to a second plurality of customers, and comprises one
or more meters for measuring second meter data comprising an
aggregate quantity of the resource supplied by the second
substation to the second plurality of customers, as a group;
transmitting, . . . a pre-event notification to . . . one of the
first plurality of customers in the treatment group, wherein the
pre-event notification is part of a campaign and includes
information regarding a demand response event and a request to
reduce usage of the resource during the demand response event;
and
at a time after the demand response event:
receiving the first meter data measured by the one
or more meters for the first substation in the treatment
group during the demand response event;
receiving the second meter data measured by the
one or more meters for the second substation in the
control group during the demand response event;
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measuring an efficacy of the campaign by: (i)
determining an actual usage for the first substation in the
treatment group during the demand response event based
on the received first meter data measured by the one or
more meters provided to the first substation,
(ii) determining an actual usage for the second substation
in the control group during the demand response event
based on the received second meter data measured by the
one or more meters provided to the second substation,
and (iii) comparing an aggregate of the actual usage for
the first substation in the treatment group, with an
aggregate of the actual usage for the second substation in
the control group to determine a change in actual usage
of the resource between the treatment group and the
control group caused by the pre-event notifications; and
transmitting a comparison result to a third party
device to indicate the efficacy of the campaign to cause
changes in a subsequent demand response campaign.
Appeal Br. 37–39 (Claims Appendix).
The Examiner found claim 1 recites,
advertising, marketing or sales activities or behaviors, and
business relations[, and a] mental grouping. A human can
use the claimed method to compare meter data of the
treated group and the meter data of the control group to
find the efficacy of a utility campaign without using a
computer. This is a mental process that can be performed
using a pen and a paper.
(Final Act. 11.)
Accordingly, we find that claim 1 recites measuring an efficacy of a
campaign targeted to a treatment group which receives a pre-event
notification, as compared to that of a control group not receiving the
notification, to determine a change in actual usage of a resource between the
treatment group and the control group caused by the pre-event notifications.
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We thus agree with the Examiner that claim 1 recites, inter alia, a mental
process. Claim limitations such as,
measuring an efficacy of the campaign by: (i)
determining an actual usage for the first substation in the
treatment group during the demand response event based
on the received first meter data measured by the one or
more meters provided to the first substation, (ii)
determining an actual usage for the second substation in
the control group during the demand response event
based on the received second meter data measured by the
one or more meters provided to the second substation,
and (iii) comparing an aggregate of the actual usage for
the first substation in the treatment group, with an
aggregate of the actual usage for the second substation in
the control group to determine a change in actual usage
of the resource between the treatment group and the
control group caused by the pre-event notifications,
are concepts performed in the human mind as mental processes. These steps
are akin to the steps of receiving, transmitting, storing, and analyzing data
mimic human thought processes of observation, evaluation, judgment, and
opinion, perhaps with paper and pencil, where the data interpretation is
perceptible only in the human mind. See In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016), see also Guidance, 84
Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “at least one processor” and “a communication
network.” These components are described in the specification at a high
level of generality. See Spec. ¶¶ 31, 36, 38, 39, Fig. 1, items 140, 155. We
fail to see how the generic recitations of these most basic computer
components and/or of a system so integrates the judicial exception as to
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“impose[] a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification,
nor does Appellant direct us to any indication, that the operations recited in
claim 1 invoke any assertedly inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or 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.”).
Thus, we find that the claims recite the judicial exception of a mental
process that is not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to resource usage, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that 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.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
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Concerning this step the Examiner found the following:
The[] additional elements are recited at a high-level of generality
such that it amounts no more than mere instructions to apply the
exception using computer component, or merely uses a computer
as a tool to perform an abstract idea - see MPEP 2106.05(f).
Accordingly, these additional elements do not integrate the
abstract idea into a practical application because they do not
impose any meaningful limits on practicing the abstract idea. The
claims are directed to an abstract idea with no significantly more
elements.
Final Act. 12. We agree with the Examiner. “[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea . . . on a generic computer.” Alice, 573 U.S.
at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). In short, each step does no more than require a generic
computer to perform generic computer functions. The claims do not, for
example, purport to improve the functioning of the computer itself. In
addition, as we stated above, the claims do not effect an improvement in any
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other technology or technical field. The Specification spells out different
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of information access under different scenarios. (See, e.g., Spec.
¶¶ 31, 36, 38, 39,Fig. 1, items 140, 155). Thus, the claims at issue amount to
nothing significantly more than instructions to apply the abstract idea using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–226.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (i.e.,
identify, transmit, receive, measure, determine, transmit) and store is equally
generic and conventional or otherwise held to be abstract. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that
sequence of data retrieval, analysis, modification, generation, display, and
transmission was abstract), Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
processing, routing, controlling, and monitoring was abstract). The ordering
of the steps required by claim 1 is, therefore, ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent-eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (Appeal Br. 13–36, Reply Br. 2–6.) We find that
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our analysis above substantially covers the substance of all the arguments,
which have been made. But, for purposes of completeness, we will address
various arguments in order to provide individual rebuttals.
Appellant argues: “The claim limitations cannot reasonably or
practically be performed in the mind. The human mind cannot implement
demand response campaigns to limit demand for energy during a peak
event.” (Appeal Br. 16.) Appellant further argues,
the claims cannot be interpreted to be performed in the human
mind because such an interpretation is not reasonable and
inconsistent with the both the specification and the explicitly
recited limitations in the claim. Nothing in the present
specification suggests in any way that the invention can be
performed in the human mind.

(Id. at 17.)
As early as Parker v. Flook, the Supreme Court held that calculations,
while “primarily useful for computerized calculations producing automatic
adjustments in alarm settings,” “can [still] be made by pencil and paper
calculations.” Parker, 437 U.S. at 586. As such, the Supreme Court did not
deem the alleged primacy of computer implementation to be persuasive in its
35 U.S.C. § 101 analysis. Appellant here has not produced evidence
showing that the claimed computations cannot be made by human
interaction using a pen and paper. Instead, Appellant appears to be relying
on attorney argument alone. It is well settled that merely using a computer
to perform more efficiently what could otherwise be accomplished manually
does not confer patent-eligibility. See Bancorp Servs. v. Sun Life Assur., 687
F.3d 1266 at 1279 (Fed. Cir. 2012) (“Using a computer to accelerate an
ineligible mental process does not make that process patent-eligible.”);
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MySpace v. Fox Audience Network, 672 F.3d 1250 at 1267 (Fed. Cir. 2012)
(“While running a particular process on a computer undeniably improves
efficiency and accuracy, cloaking an otherwise abstract idea in the guise of a
computer-implemented claim is insufficient to bring it within section 101.”).
Although we agree with Appellant that the claims must be read, as a
whole (Appeal Br. 18–19), we nevertheless find, on balance, that claim 1 is
directed to at least a mental process for the reasons specified above with
respect to our “directed to” findings. As we found supra, claim 1 only
includes the following generically recited device limitations: “at least one
processor” and “a communication network.” What remains in the claim
after disregarding these device limitations, are abstractions, such as:
measuring an efficacy of the campaign by: (i)
determining an actual usage for the first substation in the
treatment group during the demand response event based
on the received first meter data measured by the one or
more meters provided to the first substation, (ii)
determining an actual usage for the second substation in
the control group during the demand response event
based on the received second meter data measured by the
one or more meters provided to the second substation,
and (iii) comparing an aggregate of the actual usage for
the first substation in the treatment group, with an
aggregate of the actual usage for the second substation in
the control group to determine a change in actual usage
of the resource between the treatment group and the
control group caused by the pre-event notifications.
“[A] claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo,
566 U.S. at 90).
The question of what the claims, as a whole, are directed to may be
distilled down to two components, i.e., do the claims “focus on a specific
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means or method that improves the relevant technology,” or are they
“directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.” McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, claim 1, as a
whole, is focused on measuring an efficacy of a campaign to a treatment
group which receives a pre-event notification, as compared to that of a
control group not receiving the notification, to determine a change in actual
usage of the resource between the treatment group and the control group
caused by the pre-event notifications. In other words, nothing in claim 1
purports to improve computer functioning or “effect an improvement in any
other technology or technical field.” Alice, 550 U.S. at 225.
Appellant further argues: “The Examiner has failed to answer or
show why these are not improvements to a computer and/or technological
processes of a computer. The Examiner’s conclusory opinion that the
invention is not a technological improvement has no legal merit.” (Appeal
Br. 22.)
We disagree with Appellant. Although Appellant lists various
excerpts from the Specification as examples of purported improvements to a
power grid system (Appeal Br. 21–22), it does so without providing
evidence that they are improvements in the computer that controls the grid
as contrasted with advancing a campaign to effect human behavior
consumption of the grid system. Although the “at least one processor” and
“a communication network” are by definition in some sense technological,
their use has become so notoriously settled that merely invoking them is no
more than abstract conceptual advice to use well known technology for its
intended purpose. See In re TLI Commc’ns, 823 F.3d at 612–613 (Using a
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generic telephone for its intended purpose was a well-established “basic
concept” sufficient to fall under Alice step 1.)
Appellant also argues, “[t]he recited combination of elements is not
well-understood, routine, and conventional. The §101 rejection is not
supported by the Examiner with any proper evidence to refute this fact.”
(Appeal Br. 25.)
We disagree with Appellant. As described above, the only claim
elements beyond the abstract idea are “least one processor” and “a
communication network.” Appellant cannot reasonably deny that the
operation of a “computer processor” and a “communication network” is
well-understood, routine, or conventional. Indeed, the Federal Circuit, in
accordance with Alice, has “repeatedly recognized the absence of a genuine
dispute as to eligibility” where claims have been defended as involving an
inventive concept based “merely on the idea of using existing computers or
the Internet to carry out conventional processes, with no alteration of
computer functionality.” Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed.
Cir. 2018) (Moore, J., concurring) (citations omitted); see also BSG Tech
LLC, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
The Federal Circuit in Berkheimer made clear that “not every § 101
determination contains genuine disputes over the underlying facts material to
the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir.
2018). In fact, the Federal Circuit in Berkheimer did not require evidentiary
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support for the involved claim, i.e., independent claim 1, because “[t]he
limitations [of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components.”
Id. at 1370.
We fail to see Appellant’s view that its claims are similar to those
found eligible in Thales Visionix v. United States, 850 F.3d 1343 (Fed. Cir.
2016). (Appeal Br. 27–30). In Thales, the Federal Circuit reasoned, “[j]ust
as the claims in Diehr reduced the likelihood that the rubber molding
process would result in ‘overcuring’ or ‘undercuring,’ id. at 187, 101 S.Ct.
1048, the claims here result in a system that reduces errors in an inertial
system that tracks an object on a moving platform.” Id. at 1348. Looking
back at Diehr, the Federal Circuit found “[t]hat respondents’ claims involve
the transformation of an article, in this case raw, uncured synthetic rubber,
into a different state or thing cannot be disputed.” Diehr, 450 U.S. at 184.
No such transformation of matter to a different state occurs in Appellant’s
claims. The claims recite steps which merely move data through the steps of
identifying, transmitting, receiving, determining, measuring and comparing.
Through these steps, the content of the data remains unchanged.
Likewise unpersuasive is Appellant’s argument that:
The operations performed to measure the efficacy of the
campaign in the present claims reflect the location of the meters
at the substations, as opposed to at a location of the individual
customers. As in Thales, the present claims are directed to a
novel application of the measured meter data aggregated at the
substation to measure the efficacy of a program to reduce
resource demand during a demand response event, which is
unconventional, and patent eligible.
(Appeal Br. 30.)
Although the second step in the Mayo/Alice framework is termed a search
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for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but rather, a search for “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 217–218. Even still, Appellant’s asserted novel aspect is the
collection of group data at the substation level. (Spec. ¶ 28.) Such an
approach is conventional because it involves placing a sensor where the data
for the desired grouping is already collectively measured.
Appellant argues, “[t]he patent-eligible claim in Thales simply recites
a computer method that processes data to determine an orientation of an
object. The computer makes this determination ‘based on signals from’ two
inertial sensors. The claim processes data from a data source, nothing
more.” (Appeal Br. 29.)
We disagree with Appellant. Claim 1 in Thales results in
“determin[ing] an orientation of the object relative to the moving reference
frame based on the signals received from the first and second inertial
sensors.” No such result which reflects spatial orientations is determined in
Appellant’s claim 1 before us here.
We likewise are unpersuaded by Appellant’s argument that BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016), is applicable here. (Appeal Br. 32). To the extent that Appellant
argues that the use of “at least one processor” and “a communication
network” makes the claims analogous to the claims at issue in BASCOM, we
disagree. That is, in BASCOM the technology at issue was a
filtering system . . . located on a remote ISP [Internet Service
Provider] server that associates each network account with (1)
one or more filtering schemes and (2) at least one set of filtering
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elements from a plurality of sets of filtering elements, thereby
allowing individual network accounts to customize the filtering
of Internet traffic associated with the account.
BASCOM Global Internet, 827 F.3d at 1346.
Thus, in BASCOM, it was the location of the filtering element within
an ISP server which was controlling, whereas in the instant claims there is
no such specific location of ordered combination elements. In contrast, all
that the claims before us cover is using a known computer system for
working an assigned task without a device improvement.
Appellant asserts, “[t]he Examiner did not consider the other elements
of the claim in combination with whatever elements he believes are
additional elements.” (Appeal Br. 33.)
We disagree with Appellant. Our review of the Final Office Action
on pages 10–13 shows that the Examiner enumerated, and thus considered,
all the elements of the independent claims, together with those of the
dependent claims as well, and then concluded that the claims “when
analyzed as a whole, are not sufficient to transform the abstract idea into a
patent eligible invention.” (Final Act. 13.)
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 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.”))).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s prima facie case of patent ineligibility of the
rejected claims. Therefore, we sustain the Examiner’s § 101 rejection of
claims 1–5, 7–15, and 17–25.
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35 U.S.C. § 103 REJECTIONS
We affirm the Examiner’s rejection of claims 1–5 and 7–12 under 35
U.S.C. § 103.
The Appellant argued claims 1–5 and 7–12 as a group. (Appeal Br.
33–34.) We select claim 1 as the representative claim for this group, and the
remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant argues,
[t]he Office Action correctly acknowledges that the
combination of Matsuoka, Synesiou and Li fails to teach such
limitations. The portions of Platt cited as teaching such a
limitation, describe a user in a social network community
comparing his/her individual energy usage with that of another
user within the social network. Comparing an individual's
energy usage with that of another user described by Platt is not a
comparison of actual usage for a group measured at a substation,
and is not used to measure an efficacy of a campaign to reduce
resource supply during a demand response event as claimed in
amended claim 1.
(Appeal Br. 34.)
This argument is misplaced because the Appellant is attacking the
Platt reference individually when the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young,
403 F.2d 754, 757–58 (CCPA 1968). Here the Examiner combines the
teachings of Matsuoka, Li, Synesiou, and Platt to meet the limitations of
claim 1. (Final Act. 14–19.) More particularly, claim 1’s requirement of:
determining an actual usage for the first substation in the
treatment group during the demand response event based on the
received first meter data measured by the one or more meters
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provided to the first substation, (ii) determining an actual usage
for the second substation in the control group during the demand
response event based on the received second meter data
measured by the one or more meters provided to the second
substation.
(Id. at . 14–16.)
The Examiner finds that Matsuoka teaches a ‘[p]rocessing engine 406
can include engines configured to receive data from a set of devices (e.g.,
via the Internet or a hubbed network), to index the data, to analyze the data
and/or to generate statistics based on the analysis or as part of the analysis.”
(FF 2.) Thus, the Examiner presents sufficient evidence to support a finding
that a substation connected to plural customer devices is known in the art.
The Examiner then relies on Synesiou to disclose “deriving rates of
resource consumption for groups of loads.” (Final Act. 16, FF 4.) Thus,
Synesiou meets the limitation of dividing the devices in Matsuoka into
groups, each associated with a given substation, to determine consumption
for the devided groups.
The Examiner also relies on Li to further teach “a study sample can be
divided into two groups: one receiving the intervention being studied (e.g.
the treatment group) and the other not receiving it (e.g. the control group).”
(FF. 3).
The Examiner relies on “[Platt, column 9 lines 47-55, [that] Platt
teaches a user is able to select a baseline period to compare against, based on
previous usage period. Comparison can be reduction (difference)].” (FF.5).
The Examiner thus determines that it would have been obvious to
modify Matsuoka in view of Li and the teachings of Synesiou and Platt to
meet the determining limitation listed above for the reasons set forth in the
Final Action on pages 17–19, which we adopt as our own finding herein.
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That Platt discloses comparing an individual’s usage with that of
another user and not a comparison of actual usage for a group, is of no
consequence because, as noted above, both Synesiou and Li disclose
comparisons of individuals’ consumption by group data.
We thus find no error in the Examiner’s obviousness rejection. As
noted above, the Examiner provided articulated reasoning with some rational
underpinning to support the obviousness conclusion as to each and every
claim limitation. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Absent
specific, technical arguments as to why the motivation is insufficient or why
the proposed combination is more than the predictable use of prior art
elements according to their established functions, we find Appellant’s
argument unpersuasive. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416.
We also affirm the Examiner’s rejection of claims 13–15 and 17–25
under 35 U.S.C. § 103.6
Appellant’s arguments to these claims are similar to those made for
claims 1–5 and 7–12 above, i.e, “Platt, in combination with Matsuoka and
Synesiou, fails to teach or render obvious generating a comparison of
aggregate usage of the resource supplied by substations during the demand
response event.” (Appeal Br. 35.) We are unpersuaded for the same reasons
set forth above concerning the similar argument made regarding the alleged

6 These claims were rejected under 35 U.S.C. § 103 as being obvious over
Matsuoka, Synesiou, and Platt. (Final Act. 35).
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deficiency in Platt. Appellant’s other arguments also are not persuasive
because the mere allegation of differences between the prior art and the
claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the issue is “whether the difference between the prior
art and the subject matter in question ‘is a differen[ce] sufficient to render
the claimed subject matter unobvious to one skilled in the applicable art.’”
Dann, 425 U.S. at 228 (internal citation omitted).

CONCLUSION
We conclude the Examiner did not err in rejecting claims 1–5, 7–15,
and 17–25 under 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 1–5, 7–15,
and 17–25 under 35 U.S.C. § 103.

DECISION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–15,
17–25
101 Eligibility 1–5, 7–15,
17–25

1–5, 7–12 103 Matsuoka, Li,
Synesiou, Platt
1–5, 7–12
13–15, 17–25 103 Matsuoka,
Synesiou, Platt
13–15, 17–
25

Overall
Outcome
1–5, 7–15,
17–25

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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