Robert Y. Nonez et al.

Patent Trials and Appeals Board

Jan 31, 2020

14619786 - (D) (P.T.A.B. Jan. 31, 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.
14/619,786 02/11/2015 Robert Y. Nonez CA920140075US1 2946
45725 7590 01/31/2020
Walder Intellectual Property Law PC
1701 N. Collins Blvd.
Suite 2100
Richardson, TX 75080
EXAMINER
WAESCO, JOSEPH M
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
01/31/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT Y. NONEZ and ANGELA B. SHEN-HSIEH
Appeal 2019-000080
Application 14/619,786
Technology Center 3600
Before JAMES R. HUGHES, JOHN A. EVANS, and
JASON J. CHUNG, Administrative Patent Judges.
HUGHES, 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 rejecting claims 11–20. Claims 1–10 have been
canceled. See Final Act. 1–2.2 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 International
Business Machines Corporation. See Appeal Br. 3.
2 We refer to Appellant’s Specification (“Spec.”), filed Feb. 11, 2015;
Appeal Brief (“Appeal Br.”), filed July 6, 2018; and Reply Brief (“Reply
Br.”), filed Oct. 2, 2018. We also refer to the Examiner’s Final Office
Action (“Final Act.”), mailed Feb. 5, 2018; and Answer (“Ans.”) mailed
Aug. 7, 2018.
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CLAIMED SUBJECT MATTER
The invention generally relates to “business intelligence (BI) systems”
(Spec. ¶ 4), and more particularly, “to techniques, methods, systems,
devices, and computer program products for statistically and ontologically
correlated analytics in a business intelligence (BI) analytics system” (Spec.
¶ 5). “Business intelligence (BI) systems may be used to provide insights
into . . . collections of enterprise data,” and “a BI analytics system may
perform analysis on data in response to user queries, and present BI analytics
data responsive to the queries.” Spec. ¶ 4; see Spec. ¶¶ 2–9; Abstract.
Claims 11 and 16 are independent. Claim 11, reproduced below, is
illustrative of the claimed subject matter:
11. A computer program product for business
intelligence (BI) analytics, the computer program product
comprising a computer-readable storage medium having
program code embodied therewith, the program code executable
by a computing device to:
[A] perform an ontological analysis on data items in a
relevant data set defined for a BI analytics query to determine
one or more correlations of the data items in the relevant data set
with ontological concepts in an ontological concept subsystem;
[B] perform a first statistical analysis on a set of direct
analytics output data items from the relevant data set that are
included in a direct BI analytics output to rank the direct
analytics output data items in an order of influence on the direct
BI analytics output;
[C] perform a second statistical analysis on the data items
in the relevant data set relative to the direct analytics output data
items to determine one or more of the data items in the relevant
data set that influence the respective direct analytics output data
items;
[D] generate based on the second statistical analysis, a list
of key drivers from the data items in the relevant data set such
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that the list of key drivers has a ranking in an order of the
influence;
[E] revise the ranking of the list of key drivers based at
least in part on the correlations of the key drivers with the
ontological concepts by performing at least one of:
[E1] increasing a rank of a first key driver in
response to determining that the first key driver has at least
one respective correlated ontological concept in the
ontological concept subsystem, or
[E2] removing a second key driver from the list in
response to determining that the first key driver has at least
one respective correlated ontological concept in the
ontological concept subsystem; and[;]
[F] generate a correlated analytics output comprising
information on one or more of the key drivers based on the
ranking of the list of key drivers.
Appeal Br. 19–20 (Claims App.) (bracketed claim limitation designations
added).
REJECTION
The Examiner rejects claims 11–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. See Final Act. 4–8.
RELATED APPEAL
Appellant indicates that the instant appeal “may be related to” an
Appeal filed for a related patent application, U.S. Patent Application No.
15/082,352 (“’352 Appl.”). See Appeal Br. 3. The appeal for the ’352 Appl.
was assigned Appeal No. 2019-000065, and the instant Appeal is related to
Appeal No. 2019-000065. In the ’352 Appl. and Appeal No. 2019-000065,
Appellant incorporated by reference the instant application. See ’352 Appl.
Specification ¶ 1; see also Appeal Brief for Appeal No. 2019-000065 (dated
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July 6, 2018) at 3. In that decision (Appeal No. 2019-000065) (“Decision”)
mailed on January 2, 2020, the Board affirmed the Examiner’s 35 U.S.C.
§ 101 rejection of claims 1–7, 9, and 10. The scope of the claims in the
instant application are substantially similar to the at-issue claims in the ’352
Appl.
ANALYSIS
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws 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)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
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, 566 U.S. at 78, 79). That is, we examine the
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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 recently published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(hereinafter “Step 2A, prong 2”).3
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent

3 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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eligible under 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg.
at 54.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(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.4
See 2019 Revised Guidance, 84 Fed. Reg. at 56. With these principles in
mind, we turn to the merits of the § 101 rejection. The Examiner rejects
Appellant’s claims 11–20 as being directed to patent-ineligible subject
matter. See Final Act. 4–8; Ans. 3–6. Appellant does not separately argue
the claims with specificity and, instead, argues the claims together for this
rejection. See Appeal Br. 15, 17–18. Accordingly, we address the
Examiner’s rejection of independent claim 11 and the claims not separately
argued by Appellant as a group based on claim 11, as permitted by 37 C.F.R.
§ 41.37(c)(1)(iv).

4 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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Statutory Subject Matter
Claim 11 recites a “computer program product” “comprising a
computer-readable storage medium having program code embodied
therewith, the program code executable by a computing device.” A
computer-readable storage medium with computer-executable code is a
“statutory product,” specifically an “article of manufacture,” which is a
statutory category of invention (subject matter) (USPTO’s Step 1). See
Examination Guidelines for Computer-Related Inventions, 61 Fed. Reg.
7478, 7481–83, 7489 (February 28, 1996) (“Guidelines”) (citing Diamond v.
Chakrabarty, 447 U.S. 303, 308 (1980)); see also In re Lowry, 32 F.3d
1579, 1582 (Fed. Cir. 1994) (“The Board found that [the] claims [were]
directed to a memory containing stored information, as a whole, [which]
recited an article of manufacture.”). We “evaluate the underlying process
the computer will perform in order to determine the patentability of the
product.” Guidelines, 61 Fed. Reg. at 7482.
Abstract Idea
The Examiner rejects Appellant’s claim 11 as being directed to patent-
ineligible subject matter. See Final Act. 4–8; Ans. 3–6. Specifically, the
Examiner concludes “the claimed invention is directed to a judicial
exception (. . . an abstract idea) without significantly more” and claim 11 (as
well as the other pending claims) is “directed to the abstract idea of an idea
of itself in that it recites” steps including ontological and statistical analysis
(Final Act. 4; see Final Act. 5) and mathematical relationships (see Final
Act. 5). The Examiner also concludes the claim is drawn to “a collection of
abstract ideas, specifically collecting, storing, analyzing, and transmitting
information,” which amount to mental processes similar to Electric Power
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Group. Ans. 3 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016)); see Ans. 3–6.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 8–17;
Reply Br. 4–8. Specifically, Appellant contends, with respect to the first
step of the Alice analysis, that the claims (in particular claim 11) “are not
directed to an abstract idea” (Appeal Br. 8; see Appeal Br. 8–12), and that
the Examiner improperly interpreted the claims (in particular claim 11) (see
Appeal Br. 8–12). See Appeal Br. 8–12; Reply Br. 4–7. Appellant further
contends the claims (in particular claim 11) embody a technical
improvement—“independent claim 11 is inextricably tied to the computer
technology of business intelligence analytics” (Appeal Br. 12 (emphasis
omitted)), and “Appellant’s specification identifies a technological
improvement to the functioning of business intelligence analytics computing
systems” (Appeal Br. 13). See Appeal Br. 12–15; Reply Br. 7. Appellant
also contends the recited features of claim 11 (and the other pending claims)
provide “technical improvements” that “are described in Appellant’s
specification,” and are analogous to claims found eligible in Enfish. Reply
Br. 7 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016)); see Appeal Br. 12–15; Reply Br. 7.
For the reasons discussed below, we conclude Appellant’s claim 11
(as well as the other pending claims) recites abstract ideas, these abstract
ideas are not integrated into a practical application, nor do they include an
inventive concept. In view of the 2019 Revised Guidance, we clarify and
expand the Examiner’s reasoning as follows.
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We begin our analysis by broadly but reasonably construing
Appellant’s claim 11. See Appeal Br. 19–20 (Claims App.). Claim 11
recites “computer program product” “comprising a computer-readable
storage medium” with “program code embodied therewith, the program code
executable by a computing device,” where the executable code “perform[s]
an ontological analysis on data items in a relevant data set” “to determine
one or more correlations of the data items in the relevant data set with
ontological concepts.” In other words, claim 11 recites executing code (a
computing device executing code stored on a computer-readable storage
medium) to perform a process—data/information analysis (characterized as
ontological analysis) on data items in a set of data in order to determine
correlations among the data and “ontological concepts.” See Spec. ¶¶ 7, 18,
38, 59, 60. The limitation recites a “computer-readable storage medium”
with “program code” that is “executable by a computing device” such that
the code causes the computing device to perform the analysis. See Spec.
¶¶ 67–68; Fig. 7. Hereinafter we refer to this limitation as “Step A.”
Claim 11 also recites the executable code causing the computing
device to “perform a first statistical analysis” “on a set of direct analytics
output data items from the relevant data set” “to rank the direct analytics
output data items in an order of influence on the direct BI analytics output.”
That is, the computer-executable process includes performing a statistical
analysis on a set of data characterized as “direct analytics output” in order to
rank the data by their (in the order of) influence (effect) on the direct BI
analytics output. Claim 11 further recites program code executable by a
computing device to “perform a second statistical analysis on the data items
in the relevant data set” “relative to the direct analytics output data items”
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“to determine one or more of the data items in the relevant data set that
influence the respective direct analytics output data items.” In other words,
the computer-executable process includes performing a second statistical
analysis on the set of data in order to determine data that influence (have an
effect on) the data characterized (in step B) as direct BI analytics output.
See Spec. ¶¶ 7, 18, 39, 59, 60. Hereinafter, we refer to these limitations as
“Step B” and “Step C,” respectively.
Claim 11 additionally recites program code executable by a
computing device to generate a list of key drivers (data determined in step C
relative to step B) ranked in an order of the influence based on the second
statistical analysis. That is generating an ordered list of data (key drivers).
See Spec. ¶¶ 7, 39, 60. Hereinafter we refer to this limitation as “Step D.”
Claim 11 also recites program code executable by a computing device to
revise (adjust or change the order of) the ranking of the list (of key drivers)
based on the correlations of the key drivers with the ontological concepts
(results of step A). Hereinafter we refer to this limitation as “Step E.” See
Spec. ¶¶ 7, 40–42, 60–61. The revising step (Step E) further includes sub-
processes (the revising sub-process), which may include increasing a rank of
a data item (a first key driver) responsive to the correlation (step A). See
Spec. ¶¶ 7, 40–42, 60–61. Hereinafter we refer to this limitation as “Step
E1.” The revising sub-process may alternately remove a data item (a second
key driver) from the list responsive to determining the first key driver
correlation (step A). See Spec. ¶¶ 7, 40–42, 60–61. Hereinafter we refer to
this limitation as “Step E2.” Claim 11 also recites program code executable
by a computing device to generate an output—a correlated analytics output
that includes information on the key drivers based on the ranking of the list
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of key drivers (i.e., the ranking list of key drivers). See Spec. ¶¶ 7, 40–42,
60–61. Hereinafter we refer to this limitation as “Step F.”
In summary, the system recited in claim 11 includes non-abstract
elements (physical structure) that perform (cause a computing device to
perform) the delineated functions, that is: the computer-readable storage
medium and the computing device. When the code is extracted from the
computer-readable medium and executed by the computing device, the
computing device performs business intelligence (BI) analytics functions
(processes) of information (data) analysis—an ontological analysis (“Step
A”), a first statistical analysis (“Step B”), and a second statistical analysis
(“Step C”)—to generate a list of key drivers ranked in an order of the
influence (“Step D”), which is manipulation of analyzed data. The code
executed by the computing device further performs business intelligence
(BI) analytics process (functions) of manipulating the analyzed data—
changing (revising) the order of the ranked list (of key drivers) based on the
correlations with the ontological concepts (Steps E, E1, and E2) to produce
(generate) an output—the revised ranked list of key drivers (“Step F”).
Hereinafter, we refer to this process as the “BI analytics process.”
This is consistent with Applicant’s description of the process—
“[i]ndependent claim 11 is directed to ‘a computer program product for
business intelligence (BI) analytics . . . comprising a computer-readable
storage medium having program code embodied therewith, the program
code executable by a computing device’” that includes various functions
(processes) to be performed by (executable by) the computing device.
Appeal Br. 11–12. See also Spec. ¶ 60—“a statistically and ontologically
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correlated analytics process . . . executing on one or more computing
devices.”
Appellant contends (supra) that the claims (in particular claim 11) are
not abstract, and that the Examiner erred by improperly interpreting the
claims (in particular claim 11). See Appeal Br. 8–12. Here, in rejecting the
claims (in particular claim 11) under 35 U.S.C. § 101, the Examiner
analyzed the claims using the Mayo/Alice two-step framework, consistent
with the guidance set forth in the USPTO’s 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the rejection was made on February 5, 2018. The
Examiner notified Appellant of the reasons for the rejection “together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of . . . [the] application.” 35 U.S.C. § 132.
See Final Act. 4–7. In doing so, the Examiner set forth a prima facie case of
unpatentability such that the burden of production shifted to Appellant to
demonstrate that the claims are patent eligible.
Appellant also contends (supra) the at-issue claims (in particular
claim 11) demonstrate a technical improvement. See Appeal Br. 12–15;
Reply Br. 7. Claim 11, however, recites no substantive limitations on how
the BI analytics process performs the various information analysis steps (the
ontological correlation and statistical analyses), or how the analyzed data is
manipulated (how the process generates the ranked list of key drivers,
changes the rank, and generates the revised ranked list of key drivers). That
is, claim 11 does not recite what the technical features of data analysis and
manipulation entail. The limitations are entirely functional in nature, or
characterize various data (e.g., a data set defined for a BI analytics query and
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direct analytics output data items). The recited computer-readable storage
medium and computing device do not actually perform the delineated
processes or function and, in any event, constitute additional elements that
are not part of the abstract idea analysis.
Although Appellant contends the claims describe purported
technological improvements or advances provided by BI analytics process,
claim 11 (and the other pending claims) does not explicitly recite any
specific improvements to technology, i.e., the computing device performing
any improved processing or analysis. Claim 11, instead, simply recites
analyzing data, generating results from the analyzed data, and revising the
results (data manipulation) to generate a ranked list of data elements (key
drivers).
A person can practically perform the function of Limitations A–F
mentally, or by using pen and paper. Nowhere does Appellant point to
specific claim limitations that distinguish over a human process. Further, the
revised guidance explains that “mental processes” include acts that people
can perform in their minds or using pen and paper, even if the claim recites
that a generic computer component performs the acts. See 2019 Revised
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”)
Because each of the limitations discussed above encompasses an act that
people can perform in their minds or using pen and paper, claim 11 recites
mental processes. Appellant’s arguments have not persuaded us otherwise.
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To the extent Appellant argues utilizing devices (e.g., the computer-
readable storage medium and the computing device) to perform the recited
functionality is not abstract, Appellant misconstrues the inquiry. As we
explain supra, the computing device is an additional element that is not part
of this part of the abstract idea analysis. The relevant inquiry is whether the
processes (functionality) recited in the claims (in particular claim 11) are
abstract.
We construe claim 11 (supra) as reciting analyzing and manipulating
data (BI analytics information). Claims that recite performing information
analysis (e.g., statistical analyses and correlating ontological information), as
well as the collection and manipulation of information related to such
analysis, have been determined by our reviewing court to be an abstract
concept that is not patent eligible. See SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1165, 1167–68 (Fed. Cir. 2018) (Claims reciting “[a] method for
providing statistical analysis” (id. at 1165) were determined to be “directed
to an abstract idea” (id. at 1168). “As many cases make clear, even if a
process of collecting and analyzing information is limited to particular
content or a particular source, that limitation does not make the collection
and analysis other than abstract” (id. at 1168 (internal quotation marks
omitted)). See also Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of
collecting, displaying, and manipulating data); Elec. Power Grp., 830 F.3d
at 1354 (characterizing collecting information, analyzing information by
steps people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas); Content Extraction &
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Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345,
1347 (Fed. Cir. 2014) (finding the “claims generally recite . . . extracting
data . . . [and] recognizing specific information from the extracted data” and
that the “claims are drawn to the basic concept of data recognition”);
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 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.”). Indeed, even if the
analysis requires one to access and gather data from a database or memory,
or utilize a pen and paper in the analysis, such analysis may still be an
abstract mental process. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011) (“[E]ven if some physical steps are
required to obtain information from the database . . . such data-gathering
steps cannot alone confer patentability.” A claim focused on verifying credit
card transaction information is directed to “unpatentable mental processes”
because the claim’s steps “can be performed in the human mind, or by a
human using a pen and paper.”).
In summary, we conclude Appellant’s claim 11 recites a judicial
exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance).
Specifically, claim 11 recites a process of information analysis—ontological
analysis and statistical analysis—to generate a ranked list, revising the
ranked list based on ontological analysis, and generating the revised ranked
list as discussed supra. The BI analytics process consists of mental
processes that can be practically performed in the human mind (or utilizing
pen and paper) including observation, evaluation, or judgment. See 2019
Revised Guidance, 84 Fed. Reg. at 52, 53 (listing “[m]ental processes—
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concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)” as one of the “enumerated groupings of
abstract ideas” (footnote omitted)).
Practical Application
We next consider whether claim 11 integrates the abstract idea into a
practical application (USPTO’s Step 2A, Prong 2). See 2019 Revised
Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are
any additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.” 2019 Revised Guidance, 84 Fed. Reg. at 54–55.
Claim 11 recites additional elements beyond the abstract BI analytics
process (the judicial exception) (supra). The additional elements in claim 11
are the computer-readable storage medium and computing device that is
capable of performing the recited functions or processes. See Spec. ¶ 62
(describing a “computing device . . . that may be used to execute statistically
and ontologically correlated analytics program code”); Fig. 7. Initially, we
note that neither the computer-readable storage medium nor the computing
device actually executes the functionality. Appellant’s Specification
describes the computing device as capable of performing the functionality—
“may be used to execute . . . [the] program code.” Spec. ¶ 62. Additionally,
Appellant’s Specification describes the computing device “may be a server”
or the “computing device may operate as all or part of a real or virtual
server, and may be or incorporate a workstation, server, mainframe
computer, notebook or laptop computer, desktop computer, tablet,
smartphone, feature phone, or other programmable data processing
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apparatus of any kind.” Spec. ¶ 62. Appellant’s Specification describes the
computing device at a high level of generality.
In summary, Appellant’s written description does not portray the
computing device (or the computer-readable storage medium) as anything
but standard computer components. Nor does Appellant’s written
description portray these components as operating in a new way. See, e.g.,
Spec. ¶¶ 44–53, 60–61. Instead the written description depicts these
components as generic components operating in their accustomed manner.
Appellant’s written description does not describe these additional
elements as performing in any way other than their accustomed functions
utilizing standard techniques. Accordingly, Appellant’s written description
shows that additional elements are generic. See Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A]
patent need not teach, and preferably omits, what is well known in the art.”);
Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331
(Fed. Cir. 2017) (“The claimed mobile interface is so lacking in
implementation details that it amounts to merely a generic component
(software, hardware, or firmware) that permits the performance of the
abstract idea, i.e., to retrieve the user-specific resources.”).
Appellant contends claim 11 (and the other pending claims) provides
technical improvement similar to the claims in Enfish. See Appeal Br. 12–
15; Reply Br. 7. In other words, Appellant contends the claims recite a
technological improvement that amounts to more than simply utilizing a
computer as a tool to accomplish the BI analytics process.
Appellant’s contentions correspond to the reasoning in MPEP
§ 2106.05(a)–(c), where additional elements integrate the judicial exception
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into a practical application. We, however, disagree with Appellant’s
contentions. Appellant’s additional elements do not apply or use the BI
analytics process (the judicial exception) in a manner that imposes a
meaningful limit on the judicial exception, such that it is more than a
drafting effort designed to monopolize the exception. See Alice, 573 U.S. at
221–24 (citing Mayo, 566 U.S. at 78–85). Rather, Appellant’s claim recites
generic computer elements (e.g., the processing device) that are utilized as
tools to carry out the information analysis to generate the revised ranked list
of key drivers as discussed supra. Utilizing computers as tools to perform
common data information analysis and data manipulation functions that can
be mental processes (an abstract idea) does not impose a meaningful limit on
the abstract idea. See MPEP § 2106.05(f); see also Alice, 573 U.S. at 223
(finding “if [the] recitation of a computer amounts to a mere instruction to
implement an abstract idea on a computer that addition cannot impart patent
eligibility” (internal quotation marks, citations, and ellipses omitted)).
Appellant’s claim 11 (and the other pending claims) can be
distinguished from patent eligible claims such as those in McRO, Enfish,
BASCOM, and DDR Holdings that are directed to “a specific means or
method that improves the relevant technology” (McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)), or “a
specific improvement to the way computers operate” (Enfish, 822 F.3d at
1336), solving a technology-based problem (BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016)), or a
method “rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer [technology]” (DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Contrary to
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Appellant’s arguments, claim 11 is not a technological improvement or an
improvement in a technology. Appellant’s claim 11 does not “improve the
functioning of the computer itself” or “any other technology or technical
field.” Alice, 573 U.S. at 225. Nor does it provide a technological solution
to a technological problem. See DDR Holdings, 773 F.3d at 1257; MPEP
§ 2106.05(a). Appellant fails to explain sufficiently and persuasively how
the instant claim(s) is directed to an improvement in the way computers
operate, nor has Appellant identified any technical advance or improvement
or specialized computer components. See Appeal Br. 12–15; Reply Br. 7.
As discussed supra, nothing in claim 11 precludes a human from
performing the BI analytics process. Performing such information
processing functionality is the reason computers exist. The mere automation
of a process that can be performed by a human is not sufficient to show an
improvement in computer functionality, and the fact that a computer may
increase efficiency—be more efficient by the “statistically and ontologically
correlated analytics” process providing the user with better or unexpected
results (Appeal Br. 10–11, 13 (citing Spec. ¶¶ 5, 6, 54)—does not change the
abstract-idea analysis. See Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (holding that “merely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea”); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016).
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In summary, “the 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.” Elec. Power Grp., 830 F.3d at 1354; see also MPEP
§ 2106.05(f) (emphasis omitted) (instructing Examiners to consider
“[w]hether the claim invokes computers or other machinery merely as a tool
to perform an existing process” in determining whether the claim recites
mere instructions to apply the exception), cited in 2019 Revised Guidance,
84 Fed. Reg. at 55, n.30. Thus, we conclude the claims are directed to an
abstract idea that is not integrated into a practical application.
Inventive Concept
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance (Step 2A analysis), we consider whether
claim 11 has an inventive concept, that is, whether the claim has additional
elements that “‘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). As
discussed above, 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.” 2019 Revised
Guidance, 84 Fed. Reg. at 56.
The Examiner determined that Appellant’s claim 11 (and the other
pending claims) “does not include additional elements that are sufficient to
amount to significantly more than the judicial exception” “because the
additional elements” “are generic computer components claimed to perform
their basic functions of storing, retrieving, sending, and processing data, and
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do[] not add meaningful limits to practicing the abstract idea,” which are
“recited as performing generic computer functions that are well-understood,
routine, and conventional activities [that] amount to no more than
implementing the abstract idea with a computerized system.” Final Act. 5–
6; see Ans. 5–6.
Appellant contends, with respect to the second step of the Alice
analysis, that claim 11 (and the other pending claims) recites technical
improvements that are additional features which “amount to significantly
more than the . . . alleged judicial exception.” Appeal Br. 15; see Appeal Br.
15–17. Appellant fails to persuade us of error in the Examiner’s rejection
with respect to the second Alice step (USPTO’s Step 2B). We agree with the
Examiner that Appellant’s claim 11 (and the other pending claims) does not
evince an “inventive concept” that is significantly more than the abstract
idea itself. In particular, Appellant fails to explain how the additional
elements (above) add specific limitations beyond the judicial exception that
are not well-understood, routine, and conventional in the field.
As previously discussed, claim 11 (and the other pending claims)
merely recites additional non-abstract elements—the computing device
(above)—that perform the BI analytics process. We conclude that these
additional elements, individually and as an ordered combination, are generic
computer components that carry out common information analysis and
manipulation functions recited in the BI analytics process (the abstract idea).
See, e.g., Spec. ¶¶ 44–53, 60–62. Such conventional computer functionality
and processes operating on conventional computer hardware “do not alone
transform an otherwise abstract idea into patent-eligible subject matter.”
FairWarning, 839 F.3d at 1096 (citing DDR Holdings, 773 F.3d at 1256).
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For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 11 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under § 101 of independent claims 11 and 16, and
dependent claims 12–15 and 17–20, which depend from claims 11 and 16,
respectively, and which were not separately argued with specificity.
CONCLUSION
For the reasons discussed above, we determine that claims 11–20 are
directed to an abstract idea and do not demonstrate an inventive concept.
Appellant has not shown that the Examiner erred in rejecting claims
11–20 under 35 U.S.C. § 101. We therefore sustain the Examiner’s rejection
of claims 11–20.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
11–20 101 Eligibility 11–20
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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED