Romelia H. Flores et al.

Patent Trials and Appeals Board

Oct 1, 2019

12824712 - (D) (P.T.A.B. Oct. 1, 2019)

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.
12/824,712 06/28/2010 ROMELIA H. FLORES CHA920100010US1_8134-0125 1381
73109 7590 10/01/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROMELIA H. FLORES, CHARLET N. GIVENS, and
SHIJU MATHAI
____________

Appeal 2018-008429
Application 12/824,712
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 23–37, which constitute all of the claims pending
in this application. 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 the real party in interest as IBM
Corporation. Appeal Br. 1.
Appeal 2018-008429
Application 12/824,712

2
THE INVENTION
The disclosed and claimed invention is directed “to the field of
business process management and, more particularly, to a video-based
analysis workflow proposal tool.” Spec. ¶ 1.2
Claim 23, reproduced below, is illustrative of the claimed subject
matter:
23. A computer-implemented method, comprising:
receiving video data, generated by a video capture
device, representing a workflow;
analyzing the video data to identify a workflow pattern
including a series of steps;
analyzing the workflow pattern to generate performance
data for each of the steps within the workflow pattern;
comparing the analyzed video data with a pattern library
of workflows;
comparing, upon identifying a match within the pattern
library, the performance data of the workflow pattern with
performance data of the match;
identifying, based upon the comparison between the
performance data of the workflow pattern and the performance
data of the match, a workflow improvement; and
causing, using a computer hardware system, the
workflow improvement to be implemented.

2 We refer to the Specification filed June 28, 2010 (“Spec.”); Final Office
Action mailed Aug. 24, 2017 (“Final Act.”); Appeal Brief filed Apr. 5, 2018
(“Appeal Br.”); Examiner’s Answer mailed June 27, 2018 (“Ans.”); and the
Reply Brief filed Aug. 22, 2018 (“Reply Br.”).
Appeal 2018-008429
Application 12/824,712

3
REJECTIONS
Claims 23–37 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written-description requirement. Final Act. 4.
Claims 23–37 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 5.

ANALYSIS
35 U.S.C. § 112, First Paragraph, Rejection
The Examiner finds that “causing, using a computer hardware system,
the workflow improvement to be implemented,” as recited in claim 23, lacks
written description. Final Act. 4–5; see Ans. 4–5. Specifically, the
Examiner finds that the “disclosure does not demonstrate that the inventor
intended to describe implementing an improvement to a workflow, but rather
to reporting recommendations by generating a document based on an
analysis.” Id.
Appellant argues that Appellant “had possession of the additional
aspect of implementing an improvement to a workflow.” Appeal Br. 10.
Specifically, Appellant argues that the Specification describes “the workflow
proposal tool 115 making recommendations and being used to make
improvements.” Appeal Br. 10 (citing Spec. ¶ 26). According to Appellant,
the “claimed invention only requires that the computer-implemented tool
gives rise to an action (i.e., causes) the recommendation is implemented,”
and “the actual implementation of the recommendations is not being
claimed.” Reply Br. 3.
We are not persuaded by Appellant’s arguments. To satisfy the
written-description requirement, a patent specification must describe the
Appeal 2018-008429
Application 12/824,712

4
claimed invention in sufficient detail that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed
invention. See, e.g., Moba, B.V. v. Diamond Auto., Inc., 325 F.3d 1306,
1319 (Fed. Cir. 2003); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991). “[T]he test requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art,” where “the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The exact level of detail
required depends upon “the nature and scope of the claims and on the
complexity and predictability of the relevant technology.” Id. Factors for
“evaluating the adequacy of the disclosure” may include “the existing
knowledge in the particular field, the extent and content of the prior art, the
maturity of the science or technology, [and] the predictability of the aspect at
issue.” Id. (alteration in original) (quoting Capon v. Eshhar, 418 F.3d 1349,
1359 (Fed. Cir. 2005)).
Here, the claim recites “causing, using a computer hardware system,
the workflow improvement to be implemented.” As a result, the claim
requires that the improvement is implemented by the computer hardware
system. The Specification describes “defin[ing] a series of steps based on
analyzing video content,” which “correspond to patterns” and “can be
further analyzed to make recommendations, improvements, or to monitor
compliance of actual processes versus documented ones.” Spec. ¶ 26. We
agree with the Examiner that this passage supports making recommendations
for improvements, but does not support “using a computer hardware system”
Appeal 2018-008429
Application 12/824,712

5
to “caus[e] . . . the workflow improvement to be implemented” as recited in
claim 23. Appeal Br. 26 (Claim App.) (emphasis added).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claims 23–37.
35 U.S.C. § 101 Rejection
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
Appeal 2018-008429
Application 12/824,712

6
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.
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 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
Appeal 2018-008429
Application 12/824,712

7
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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Memorandum”). 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, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); 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.
08.2017 Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54–55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then look 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.
See id. at 56.
Furthermore, the Memorandum “extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the abstract
idea exception includes the following groupings of subject matter, when
Appeal 2018-008429
Application 12/824,712

8
recited as such in a claim limitation(s) (that is, when recited on their own or
per se)”:
(a) Mathematical concepts—mathematical
relationships, mathematical formulas or equations,
mathematical calculations;

(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and

(c) Mental processes—concepts performed in the
human mind (including an observation, evaluation, judgment,
opinion).
Id. at 52 (footnotes omitted).
USPTO Step 2A, Prong 1
The Examiner determines that the claims are directed to “collecting
information, analyzing it, and displaying certain results of the collection and
analysis.” Final Act. 6 (citing Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016)); see Final Act. 5; Ans. 5.
Appellant contends that the Examiner overgeneralizes the claimed
invention and does not address Appellant’s arguments of record. Appeal
Br. 18; see Reply Br. 5. Specifically, Appellant contends that the claimed
“causing, using a computer hardware system, the workflow improvement to
be implemented” is “beyond merely ‘the collection, analysis, and display of
available information in a particular field.’” Appeal Br. 14; see Reply Br. 6.
According to Appellant, there is “no explanation as to how the invention, as
Appeal 2018-008429
Application 12/824,712

9
claimed, can be performed as a mental process.” Reply Br. 8.
We are not persuaded by Appellant’s arguments that the Examiner
erred.
Representative claim 23—with emphasis added—is reproduced
below:
23. A computer-implemented method, comprising:
receiving video data, generated by a video capture
device, representing a workflow;
analyzing the video data to identify a workflow pattern
including a series of steps;
analyzing the workflow pattern to generate performance
data for each of the steps within the workflow pattern;
comparing the analyzed video data with a pattern library
of workflows;
comparing, upon identifying a match within the pattern
library, the performance data of the workflow pattern with
performance data of the match;
identifying, based upon the comparison between the
performance data of the workflow pattern and the performance
data of the match, a workflow improvement; and
causing, using a computer hardware system, the
workflow improvement to be implemented.
As relevant here, the Memorandum explains that mental processes
include “concepts performed in the human mind,” such as “an observation,
evaluation, judgment, [or] opinion.” Memorandum, 84 Fed. Reg. at 52.
The emphasized limitations above are steps of observation,
evaluation, and judgment that can be practically performed by a human,
either mentally or with the use of pen and paper. Specifically, the claim
limitations identified above are directed to (i) receiving captured video data
(collecting information), (ii) analyzing the video data and the resulting
Appeal 2018-008429
Application 12/824,712

10
workflow patterns, generating performance data, comparing the analyzed
video data with a pattern library and comparing performance data for the
matched video data (comparing the collected information against stored
information, algorithms, and rules), and (iii) based on the comparison of the
performance data, identifying a workflow improvement to be implemented
(using rules to identify to improve a workflow).
Each of those steps, both individually and as a combination, can be
performed by a human, either mentally or with the aid of paper and pencil,
which is similar to the claims found patent ineligible as mental processes in
SmartGene. See SmartGene, Inc. v. Advanced Biological Labs., SA, 555
F. App’x 950, 955 (Fed. Cir. 2014) (“[T]he claim at issue here involves a
mental process excluded from section 101: the mental steps of comparing
new and stored information and using rules to identify medical options” and
“calls on a computer to do nothing that is even arguably an advance in
physical implementations of routine mental information-comparison and
rule-application process”); see also CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“Thus, claim 3’s steps can all be
performed in the human mind. Such a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101. Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with claiming mental
method steps as part of a process containing non-mental steps, but rather
because computational methods which can be performed entirely in the
human mind are the types of methods that embody the ‘basic tools of
scientific and technological work’ that are free to all men and reserved
exclusively to none.”) (quoting Benson, 409 U.S. at 67) (footnote omitted));
Appeal 2018-008429
Application 12/824,712

11
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person’s mind.”).
Accordingly, we conclude that claim 23 recites a method of
observation, evaluation, and judgment that can be practically performed in
the human mind, which is a mental process identified in the Memorandum,
and thus an abstract idea.
USPTO Step 2A, Prong 2
In determining whether claim 23 is “directed to” the identified
abstract ideas, we next consider whether claim 23 recites additional elements
that integrate the judicial exception into a practical application. For the
reasons set forth below, we discern no additional element (or combination of
elements) recited in claim 23 that integrates the judicial exception into a
practical application. See Memorandum, 84 Fed. Reg. at 54–55.
The Examiner concludes that the claimed additional elements (i.e., “a
hardware processor and a machine-readable storage medium executed on a
hardware computer system”) are each “a general-purpose device performing
its usual computer function,” and are “generic and used in a conventional
manner that [does] not impose meaningful limitations on the claimed
invention.” Final Act. 7. The Examiner further concludes that there is “no
indication that the combination of elements improves the functioning of a
Appeal 2018-008429
Application 12/824,712

12
computer or improves any other technology,” and that the “collective
functions merely provide conventional computer implementation of the
abstract concepts.” Final Act. 7–8. The Examiner determines that “the
language is broad enough to cover actions ranging from conveying the
improvements to be implemented, recoding a workflow process in a
workflow system, or physically managing the implementation of workflow
by human actors.” Ans. 7.
Appellant contends that the “the claimed invention recites that a
computer hardware system causes the identified workflow improvement,”
which is an “improvement to technology” and “not . . . directed to an
abstract idea.” Appeal Br. 16; see Appeal Br. 17. Appellant also argues that
the “claims require specific tools (e.g. a video capture device) and most of
the claimed limitations necessarily involve the use of a computer system,”
and are “not steps that can be performed in the human mind alone.” Appeal
Br. 17.
Claim 23 does not constitute an improvement to computer technology;
rather, it merely adapts the abstract idea of analyzing video data and
comparing the video data to the data in a pattern library to identify and
implement workflow improvements to an execution of steps performed by
computers. See Spec. ¶¶ 25–36 (the “workflow proposal tool 115 can
represent a software application configured to process the workflow video
data 110 for a workflow process into one or more workflow proposal
documents” and “define a series of steps based on analyzing the video
content” that “correspond to patterns, which can be further analyzed to make
recommendations, improvements, or to monitor compliance.”).
Appeal 2018-008429
Application 12/824,712

13
Relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible. See Alice, 573
U.S. at 224 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not sufficient to confer
patent eligibility); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer “employed only
for its most basic function . . . does not impose meaningful limits on the
scope of those claims”); MPEP § 2106.05(f)(2) (“Use of a computer or other
machinery in its ordinary capacity for economic or other tasks (e.g., to
receive, store, or transmit data) or simply adding a general purpose computer
or computer components after the fact to an abstract idea (e.g., a
fundamental economic practice or mathematical equation) does not provide
significantly more.”). Moreover, the “mere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology.” Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044, 1055 (Fed. Cir. 2017).
Appellant further analogizes the claims here to the claims in Enfish.
Appeal Br. 16 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016)). Specifically, Appellant contends that the limitations “link
the claimed invention to an improvement being implemented on an existing
process (i.e., workflow).” Appeal Br. 19.
Appellant misplaces its reliance on Enfish. In Enfish, the Federal
Circuit decided that the claims satisfied § 101 under Mayo/Alice step one
because they recited a “specific improvement to the way computers
operate,” i.e., an improved database configuration that permitted faster and
more efficient searching. Enfish, 822 F.3d at 1330–33, 1336, 1339. Further,
Appeal 2018-008429
Application 12/824,712

14
the Federal Circuit has explained that the claims in Enfish “did more than
allow computers to perform familiar tasks with greater speed and efficiency”
and “actually permitted users to launch and construct databases in a new
way.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir.
2018); see also Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d
905, 910 (Fed. Cir. 2017) (explaining that the claims in Enfish “focused on
an improvement to computer functionality itself”).
Unlike the claims in Enfish, the claims here do not improve computer
functionality itself. See Final Act. 7–8; Ans. 6–7. For instance, the claims
do not recite an advance in hardware or software that causes a memory itself
or a processor itself to operate faster or more efficiently. As the Examiner
properly reasons, the claimed additional elements (i.e., “a hardware
processor and a machine-readable storage medium executed on a hardware
computer system”) are each “a general-purpose device performing its usual
computer function,” and are “generic and used in a conventional manner that
[does] not impose meaningful limitations on the claimed invention.” Final
Act. 7. Instead, the claims utilize a “computer hardware system [that]
merely applies instructions to implement the judicial exception on a
computer.” Ans. 6.
Accordingly, we are not persuaded of error in the Examiner’s
determination that claim 23 is directed to an abstract idea, and we find the
claimed additional elements do not integrate the abstract idea into a practical
application.
USPTO Step 2B
Turning to step 2B of the USPTO Guidance, we look to whether
claim 23 (a) adds a specific limitation or combination of limitations that are
Appeal 2018-008429
Application 12/824,712

15
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. Memorandum, 84 Fed. Reg. at 56.
The Examiner concludes that the claimed “video capture, recognition,
and storage using a generic camera device and processing devices and video
extraction software are . . . well-understood, routine and conventional
activities common in the industry.” Final Act. 7.
Appellant argues that the “claims require specific tools (e.g., a video
capture device) and most of the claimed limitations necessarily involve the
use of a computer system.” Appeal Br. 17. Specifically, Appellant argues
that the “claimed video capture device” is “a specific tool” and the “video
capture device is not a generic computing device.” Reply Br. 8.
We are not persuaded by Appellant’s argument that the Examiner
erred. As discussed above, claim 23 is directed to analyzing video data and
comparing the video data to the data in a pattern library to identify and
implement workflow improvements to an execution of steps practically
performed by computers. Similarly, the additional elements in the claim
amount to no more than mere instructions to apply the abstract idea using
generic computer components, which is insufficient to provide an inventive
concept. Specifically, the Specification describes the computer elements as
generic computer elements, including “video capture devices” that “can
represent a variety of electronic devices capable of video recording, such a
video camera.” Spec. ¶ 25. The Specification further describes that the
“workflow proposal tool 115 can represent a software application,” and the
“workflow proposal engine 120 can correspond to a software component of
Appeal 2018-008429
Application 12/824,712

16
the workflow proposal tool.” Spec. ¶¶ 26, 30. As another example, the
“data store 125 can be a physical or virtual storage space configured to store
digital information” and “can be physically implemented within any type of
hardware” as a “stand-alone storage unit as well as a storage unit formed
from a plurality of physical devices.” Spec. ¶ 38. The computer includes a
“processor” and can be “a general purpose computer, special purpose
computer, or other programmable data processing apparatus.” Spec. ¶ 21.
Accordingly, we agree with the Examiner that the additional claim
limitations besides the abstract idea are well-understood, routine, and
conventional elements.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving
information (i.e., receiving video data), and analyzing the information to
identify workflow improvements to be implemented (i.e., analyzing the
video data and subsequently identified workflow pattern to generate
performance data, comparing the analyzed video data with a library,
comparing the performance data of matched workflows, and identifying
workflow improvements based on the comparison of the performance data).
See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(“That a computer receives and sends the information over a network—with
no further specification—is not even arguably inventive.”); In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that
receives data, extracts classification information from the received data, and
stores the digital images insufficient to add an inventive concept); Alice, 573
U.S. at 225–26 (receiving, storing, sending information over networks
Appeal 2018-008429
Application 12/824,712

17
insufficient to add an inventive concept); CyberSource Corp., 654 F.3d at
1370 (use of Internet to verify credit card transaction does not add enough to
abstract idea of verifying the transaction); see also MPEP § 2106.05(d)
(“Courts have held computer‐implemented processes not to be significantly
more than an abstract idea (and thus ineligible) where the claim as a whole
amounts to nothing more than generic computer functions merely used to
implement an abstract idea, such as an idea that could be done by a human
analog (i.e., by hand or by merely thinking).”).
Further, Appellant’s argument that the pending claims are patent
eligible because they are otherwise novel and non-obvious (see Reply Br. 5–
6) is not persuasive because it improperly conflates the requirements for
eligible subject matter (§ 101) with the independent requirements of novelty
(§ 102) and non-obviousness (§ 103). Although the second step in the Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness. Alice, 573 U.S. at 217–18. A
novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 78–79. Further,
“under the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016).
Conclusion on Section 101 Rejection
Accordingly, we sustain the Examiner’s rejection of claim 23 as being
directed to patent-ineligible subject matter, as well as independent claims 28
Appeal 2018-008429
Application 12/824,712

18
and 33 with commensurate limitations, and dependent claims 24–27, 29–32,
and 34–37, not separately argued.

DECISION
We affirm the Examiner’s § 101 rejection of claims 23–37.
We affirm the Examiner’s § 112, first paragraph, rejection of claims
23–37.
In summary:
Claims
Rejected
Basis Affirmed Reversed
23–37 § 101 23–37
23–37 § 112, first paragraph 23–37
Overall Outcome 23–37
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