Sankara NarayananDownload PDFPatent Trials and Appeals BoardAug 8, 201913798988 - (D) (P.T.A.B. Aug. 8, 2019) Copy Citation 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. 13/798,988 03/13/2013 Sankara Narayanan EMC-12-1019 8846 80167 7590 08/08/2019 Ryan, Mason & Lewis, LLP 48 South Service Road Suite 100 Melville, NY 11747 EXAMINER MARCUS, LELAND R ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 08/08/2019 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): jbr@rml-law.com nyoffice@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SANKARA NARAYANAN ____________ Appeal 2018-005254 Application 13/798,988 Technology Center 3600 ____________ Before JOSEPH P. LENTIVECH, NABEEL U. KHAN, and SCOTT RAEVSKY, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5, 7, 10–13, 15, 17, and 21–29. Claims 4, 6, 8, 9, 14, 16, and 18–20 have been canceled. See App. Br. 21– 27 (Claims Appendix). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 Appellant states “[t]he assignee of record, EMC IP Holding Company LLC, and the applicant, EMC Corporation, are direct or indirect subsidiaries of Dell Technologies” and “[e]ach of the foregoing may be deemed a real party in interest for the purposes of 37 C.F.R. 41.37(c)(l)(i).” App. Br. 2. Appeal 2018-005254 Application 13/798,988 2 STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention generally relates to “information processing techniques for leveraging competitive knowledge compiled by an entity.” Spec. 1:4–5. Claim 1, which is illustrative of the claimed invention, reads as follows: 1. A method comprising the steps of: obtaining a dataset representing competitive knowledge information associated with at least one business entity, wherein the competitive knowledge information comprises historical sales data of the business entity, product or service data of the business entity, and data associated with one or more competitors of the business entity; providing an interface module resident on a mobile device associated with one or more agents of the business entity, wherein the mobile device is connected to at least one server of the business entity over a network communication channel; receiving a query from the one or more agents of the business entity via the interface module resident on the mobile device, wherein the query specifies one or more fields including at least one of a product or service of the business entity, a segment associated with the product or service of the business entity, a price associated with the product or service of the business entity, a name of the one or more competitors of the business entity, and a product or service of the one or more competitors of the business entity; analyzing, in response to the query, at least a portion of the obtained dataset in real-time via a data analytics engine, wherein the data analytics engine comprises a dataset based analytics engine and wherein the analyzing comprises using the dataset based analytics engine to mine the competitive knowledge information based on the specified one or more fields in the query; Appeal 2018-005254 Application 13/798,988 3 generating, in response to the query, a predictive data model in real-time based on the analysis of the portion of the obtained dataset, wherein the predictive data model is usable to guide subsequent business actions of the business entity; generating, in response to the query, at least one of a probability model and a heat map based on the predictive data model; generating, in response to the query, a business threat probability graph based on at least one of the probability model and the heat map, wherein generating the business threat probability graph comprises identifying the one or more competitors of the business entity, and displaying a percentage chance that the business entity will lose business to the one or more competitors in connection with the product or service of the business entity; transmitting, in real-time, in response to the query, results yielded from the predictive data model over the network communication channel to the mobile device associated with the one or more agents of the business entity; converting the transmitted results into a mobile form; and displaying the transmitted results in the mobile form on the mobile device; wherein the transmitted results include the business threat probability graph and at least one of the probability model and the heat map; wherein the interface module resident on the mobile device enables the display of the transmitted results in the mobile form in real-time; wherein real-time comprises a time contemporaneous with one or more activities being performed by the one or more agents of the business entity; and wherein the steps of the method are executed via at least one processor device. Appeal 2018-005254 Application 13/798,988 4 Rejection Claims 1–3, 5, 7, 10–13, 15, 17, and 21–29 stand rejected under 35 U.S.C. § 101 because the claimed subject matter is judicially-excepted from patent eligibility under § 101. Final Act. 2–6. Issue on Appeal Did the Examiner err in finding that claims 1–3, 5, 7, 10–13, 15, 17, and 21–29 are directed to subject matter that is judicially-excepted from patent eligibility under § 101? ANALYSIS Appellant argues claims 1–3, 5, 7, 10–13, 15, 17, 21–23, 26, and 27 together as a group. See App. Br. 12–17. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select independent claim 1 as the representative claim for this group. Remaining claims 2, 3, 5, 7, 10–13, 15, 17, 21–23, 26, and 27 stand or fall together with claim 1. Appellant presents separate arguments for the patentability of claims 24 and 28 (App. Br. 17–18) and claims 25 and 29 (App. Br. 19), which we address below under separate sub- headings. Claims 1–3, 5, 7, 10–13, 15, 17, 21–23, 26, and 27 A. Section 101 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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and Appeal 2018-005254 Application 13/798,988 5 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 Court’s two-part 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.”). According to the Court, concepts determined to be abstract ideas and, thus, patent ineligible, include (1) certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); (2) mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and (3) mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In Diamond v. Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). Having said that, the 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. at 191 (citing Benson and Flook). Nevertheless, the Appeal 2018-005254 Application 13/798,988 6 Court noted that “[i]t 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.” Id. at 187; see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016) (Even if the individual components were known, “an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea” (emphasis added).). If the claim is “directed to” an abstract idea, we next “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. B. Office Patent Eligibility Guidance In an effort to achieve clarity and consistency in how the Office applies the Court’s two-part test, the Office published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).2 In Step One of our analysis, we 2 This guidance supersedes previous guidance memoranda. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 (“All Appeal 2018-005254 Application 13/798,988 7 look to see whether the claims, as written, fall within one of the four statutory categories identified in § 101. Id. at 53 (“Examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the criteria discussed in MPEP 2106, i.e., whether the claim is to a statutory category (Step 1) and the Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”). Under the guidance, we then look to whether the claim recites: (1) Step 2A – Prong One: 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) Step 2A – Prong Two: additional elements that integrate the judicial exception into a practical application (see MPEP3 §§ 2106.05(a)–(c), (e)–(h)). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 54–55 (“Revised Step 2A”). 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. USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.”). 3 All Manual of Patent Examining Procedure (“MPEP”) citations herein are to MPEP, Rev. 08.2017, January 2018. Appeal 2018-005254 Application 13/798,988 8 See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept.”). C. Step One – Claims Are Directed to Statutory Categories Appellant’s independent claim is directed to a method (i.e., “processes”). App. Br. 21–22 (Claims Appendix); see MPEP § 2106.03. Thus, claim 1 is directed to a recognized statutory category. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 53–54. D. Two-Part Alice/Mayo Test 1. Step 2A, Prong One – Claims Are “Directed To” Abstract Idea Applying the first part of the Alice/Mayo analysis (Step 2A), the Examiner finds claim 1 recites: an abstract idea which can be described as “certain methods of organizing human activity[,]” which includes concepts relating to interpersonal and intrapersonal activities, such as managing relationships or transactions between people, social activities, and human behavior; satisfying or avoiding a legal obligation; advertising, marketing, and sales activities or behaviors; and managing human mental activity. Final Act. 3. The Examiner also finds the claims recite the abstract ideas of mental processes and mathematical concepts. Id. We agree. Claim 1 recites: obtaining a dataset representing competitive knowledge information associated with at least one business entity, wherein the competitive knowledge information comprises historical sales data of the business entity, product or service data of the business entity, and data associated with one or more competitors of the business entity; . . . . Appeal 2018-005254 Application 13/798,988 9 receiving a query from the one or more agents of the business entity via the interface module resident on the mobile device, wherein the query specifies one or more fields including at least one of a product or service of the business entity, a segment associated with the product or service of the business entity, a price associated with the product or service of the business entity, a name of the one or more competitors of the business entity, and a product or service of the one or more competitors of the business entity; analyzing, in response to the query, at least a portion of the obtained dataset in real-time via a data analytics engine, wherein the data analytics engine comprises a dataset based analytics engine and wherein the analyzing comprises using the dataset based analytics engine to mine the competitive knowledge information based on the specified one or more fields in the query; [and] . . . . transmitting, in real-time, in response to the query, results yielded from the predictive data model over the network communication channel to the mobile device associated with the one or more agents of the business entity. App. Br. 21–22 (Claims Appendix). These limitations, as drafted, are processes that, under their broadest reasonable interpretation, are marketing or sales activities. See e.g., Spec. 1:8–19. Thus, we agree with the Examiner (Final Act. 3) that claim 1 recites certain methods of organizing human activity determined to be an abstract idea. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52. Claim 1 also recites: generating, in response to the query, a predictive data model in real-time based on the analysis of the portion of the obtained dataset, wherein the predictive data model is usable to guide subsequent business actions of the business entity; Appeal 2018-005254 Application 13/798,988 10 generating, in response to the query, at least one of a probability model and a heat map based on the predictive data model; [and] generating, in response to the query, a business threat probability graph based on at least one of the probability model and the heat map, wherein generating the business threat probability graph comprises identifying the one or more competitors of the business entity, and displaying a percentage chance that the business entity will lose business to the one or more competitors in connection with the product or service of the business entity. App. Br. 21 (Claims Appendix). We agree with the Examiner (Final Act. 3), that these limitations, as drafted, are processes that, under their broadest reasonable interpretation, recite mathematical concepts because the Specification describes these steps as a process of organizing information through mathematical correlations. Spec. 6:13–8:7, 12:14–23, Figs. 2–7; Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding that claims reciting a “process of organizing information through mathematical correlations” are directed to an abstract idea); 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52. Accordingly, we find claim 1 recites one or more abstract ideas. Appeal 2018-005254 Application 13/798,988 11 2. Step 2A, Prong Two – Abstract Idea Is Not Integrated Into Practical Application4 Under “Step 2A, Prong Two,” we determine whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. Memorandum, 84 Fed. Reg. at 54. Claim 1 recites the following additional elements: providing an interface module resident on a mobile device associated with one or more agents of the business entity, wherein the mobile device is connected to at least one server of the business entity over a network communication channel; . . . . converting the transmitted results into a mobile form; and displaying the transmitted results in the mobile form on the mobile device; wherein the transmitted results include the business threat probability graph and at least one of the probability model and the heat map; wherein the interface module resident on the mobile device enables the display of the transmitted results in the mobile form in real-time; wherein real-time comprises a time contemporaneous with one or more activities being performed by the one or more agents of the business entity; and 4 We acknowledge that some of the considerations at Step 2A, Prong Two, properly may be evaluated under Step 2 of Alice (Step 2B of the Office guidance). For purposes of maintaining consistent treatment within the Office, we evaluate those considerations under first part of the Alice/Mayo analysis (Step 2A of the Office guidance). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 nn.25, 27–32. Appeal 2018-005254 Application 13/798,988 12 wherein the steps of the method are executed via at least one processor device. App. Br. 21–22 (Claims Appendix). We find these additional limitations fail to integrate the judicial exception into a practical application. For example, the claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (except for a generic computer), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See Memorandum, 84 Fed. Reg. at 54–55; MPEP §§ 2106.05(a)–(c), (e)–(h). Rather, the additional elements simply refine the recited abstract idea, add insignificant extra-solution activity, or constitute generic computer components that are merely used as tools to automate the claimed process. See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1348 (Fed. Cir. 2016); see also Spec. 8:19–21 (“Examples of such mobile devices include, but are not limited to, a cellular phone or smartphone, a tablet, a laptop computer or other personal computer, and a personal digital assistant.”), 9:25–10:22 (describing server 202), 10:24–27 (“Such components can communicate with other elements of the system 200 over any type of network, such as a wide area network (WAN), a local area network (LAN), a satellite network, a telephone or cable network, or various portions or combinations of these and other types of networks.”). Appellant contends claim 1 “is directed to improvements in the functioning of a computer.” App. Br. 12. In this regard, Appellant argues Appeal 2018-005254 Application 13/798,988 13 the claims are similar to the claims in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). App. Br. 12–13. Appellant argues the claims “provide improvements in the functioning of mobile devices not configured to handle ‘big data’ by offloading processing to a server that is configured to mine competitive knowledge information in response to queries from interface modules resident on mobile devices.” App. Br. 13. Appellant further argues the claims are similar to the claims in McRO, Inc. v. Bandai Namco Games America, Inc. et al., 837 F.3d 1299 (Fed. Cir. 2016) because “similar to the claims at issue in McRO, [claim 1] recites features that represent ‘rules’ for a specific process of providing data to a mobile device for display” and “recites a particular solution to a problem.” App. Br. 14–15. Appellant argues claim 1, therefore, “is directed to improvements in computer-related technology, and thus is not directed to an abstract idea under the first step of the Alice analysis.” Id. Additionally, Appellant argues the claims are similar to the claims in BASCOM and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). App. Br. 15–16. Appellant argues like the claims in BASCOM, “claim 1 recites an inventive concept including but not limited to transforming the allegedly abstract idea ‘into a particular, practical application of that abstract idea’” and “claim 1 provides specific improvements in the functioning of mobile devices, specifically in providing real-time processing of ‘big data’ competitive knowledge information.” App. Br. 15. Appellant argues claim 1 is similar to the claims in DDR because claim 1 solves a problem (the “difficulties of handling ‘big data’ or competitive knowledge information in devices with limited computing Appeal 2018-005254 Application 13/798,988 14 resources, such as mobile devices”) that is necessarily rooted in computer technology. App. Br. 15–16. We do not find Appellant’s arguments persuasive. Appellant neither claims nor describes any technological improvement that carries out the functionality of offloading processing to a server that is configured to mine competitive knowledge information in response to queries from interface modules resident on mobile devices may provide an improvement in the functioning of mobile devices not configured to handle “big data.” Rather, Appellant merely claims a desired result without specifying how that result is to be achieved. For example, claim 1 does not require the analyzing and generating steps to be performed by a server that is configured to mine competitive knowledge information in response to queries from interface modules resident on mobile devices. In fact, claim 1 does not require these steps to be performed by any particular device. Neither does claim 1 require offloading the processing of big data to a server. Instead, claim 1 merely recites “obtaining [e.g., by a server configured to mine competitive knowledge information in response to queries from interface modules resident on mobile devices] a dataset representing competitive knowledge information associated with at least one business entity.” By contrast, in DDR, the Federal Circuit determined “the claimed solution amount[ed] to an inventive concept for resolving [a] particular Internet-centric problem,” i.e., a challenge unique to the Internet. DDR, 773 F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR Holdings, we held that claims ‘directed to systems and methods of generating a composite web page that combines certain visual elements of a “host” website with content of a Appeal 2018-005254 Application 13/798,988 15 third-party merchant’ contained the requisite inventive concept”). The Federal Circuit explained that the patent-eligible claims specified “how interactions with the Internet are manipulated to yield a desired result . . . that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” DDR, 773 F.3d at 1258. The court reasoned that those claims recited a technological solution “necessarily rooted in computer technology” that addressed a “problem specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1257. We are also not persuaded that the claims are similar to the claims in BASCOM. In BASCOM, the court found “the patent describes how its particular arrangement of elements is a technical improvement,” and, when construed in favor of BASCOM, the claims may be read to improve an existing technological process. BASCOM, 827 F.3d at 1350. Here, claim 1 does not improve an existing technological process, but rather uses existing technology to perform the abstract idea or merely claims a desired functional goal. Additionally, unlike the arrangement of elements (i.e., installation of a filtering tool at a specific location) in BASCOM, claim 1 does not recite a non-conventional and non-routine arrangement of known elements. See id. at 1349–50. We also disagree that claim 1 is similar to the claims found eligible in McRO and Enfish. The claims in McRO—unlike the claims here—recited a “specific . . . improvement in computer animation” using “unconventional rules” that related “sub-sequences of phonemes, timings, and morph weight sets” to automatically animate lip synchronization and facial expressions for three-dimensional characters that only human animators could previously produce. McRO, 837 F.3d at 1302–03, 1307–08, 1313–15. In McRO, “the Appeal 2018-005254 Application 13/798,988 16 incorporation of the claimed rules” improved an existing technological process. Id. at 1314. In contrast, claim 1 does not improve an existing technological process. See Enfish, 822 F.3d at 1335–36 (distinguishing between claims wherein the focus of the claims is on an improvement in computer capabilities and those that invoke a computer as a tool). As drafted, claim 1, under its broadest reasonable construction, does not require that the claimed steps be performed by any particular device but, instead, merely claim using any known technology to perform its known function of executing software applications as a tool to process data and output a result. See Alice, 573 U.S. at 222 (using a computer to perform known processes is not enough to supply an inventive concept). For the foregoing reasons, we conclude claim 1 does not integrate the recited judicial exceptions into a practical application. As such, claim 1 is directed to the recited judicial exceptions. 3. Step 2B – Not Significantly More Than the Abstract Idea Because we find that claim 1 is directed to a judicial exception, we next consider whether the claim includes additional limitations, such that the claim amounts to significantly more than the abstract idea. Applying the second part of the Alice/Mayo test, the Examiner concludes the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of the claim are: “(i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional Appeal 2018-005254 Application 13/798,988 17 activities previously known to the pertinent industry, such as data entry, collection, display, or reporting.” Final Act. 5. We agree. Claim 1 fails to recite specific limitations (or a combination of limitations) that are not well-understood, routine, and conventional. Rather, the additional elements are generic computer components recited at a high level of generality or basic computer functions, none of which recite limitations beyond what was well-understood, routine, and conventional in the art. See Berkheimer Memo5 § III.A.I; Spec. 6:12–20, 12:14–23; see also Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer components such as an “interface,” “network,” and “database” fail to satisfy the inventive concept requirement). Appellants argue, because there are no prior art rejections of claim 1, the elements of claim 1 amount to significantly more than the identified abstract idea. App. Br. 16–17. This argument improperly conflates the test for § 101 with the separate tests for §§ 102 and 103. See, e.g., Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“[U]nder 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 5 “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” at 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer- 20180419.PDF (explaining that a specification that describes additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional). Appeal 2018-005254 Application 13/798,988 18 that discovery for the inventive concept necessary for patent eligibility.”); see also Diamond 450 U.S. at 188–89 (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). As the Federal Circuit has explained, it is not “enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018); Synopsys, 839 F.3d at 1151 (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016). Thus, we agree with the Examiner that the additional limitations in claim 1, individually or as an ordered combination, do not amount to significantly more than an abstract idea. For the above reasons, Appellant has not persuaded us of Examiner error, and we sustain the Examiner’s rejection of claims 1–3, 5, 7, 10–13, 15, 17, 21–23, 26, and 27 under 35 U.S.C. § 101. Claims 24 and 28 Claim 24 depends from claim 1 and recites, “wherein the dataset based analytics engine performs parallel processing of large amounts of data in real-time.” Claim 28 depends from claim 11 and recites corresponding limitations. Regarding these claims, Appellant argues “the ‘parallel processing of large amounts of data in real-time’ . . . provides improvement in the functioning of a computer as in Enfish and improvements in Appeal 2018-005254 Application 13/798,988 19 computer-related technology as in McRO.” App. Br. 18. Appellant’s conclusory statement amounts to little more than a paraphrasing of the claim language and a general statement that the claims are similar to the claims in Enfish and McRO, and thus is unpersuasive to rebut the Examiner’s prima facie case of patent ineligibility. Cf. 37 C.F.R. § 41.37(c)(iv); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Accordingly, we are not persuaded the Examiner erred in rejecting claims 24 and 28. Claims 25 and 29 Claim 25 depends from claim 1 and recites, “wherein the dataset comprises data whose size is beyond an ability of a standard data software tool to process the data within real-time.” Claim 29 depends from claim 11 and recites corresponding limitations. Regarding these claims, Appellant argues, “the ability to analyze the dataset having a size beyond the ability of standard data software tools to process within real-time provides a solution to a problem that is necessarily rooted in computer technology.” App. Br. 19. Appellant further argues: [T]he “problem” is in handling “big data” (e.g., the recited dataset whose size is beyond an ability of a standard data software tool to process within real-time) in devices with limited computing resources (e.g., the recited mobile device). The solution in illustrative embodiments is to offload mining of competitive knowledge information from the mobile device to servers (e.g., the recited at least one processor device) of an entity with the servers returning results of mining the competitive knowledge information in mobile form in real-time in response to queries. Thus, claim 25 is similar to the claims at issue in DDR Holdings, which the Federal Circuit held were directed to statutory subject matter under § 101. Appeal 2018-005254 Application 13/798,988 20 Id. Additionally, Appellant argues the claims provide “improvement in the functioning of a computer as in Enfish and improvements in computer- related technology as in McRO” for the reasons discussed above with respect to claim 1. Id. We do not find Appellant’s arguments persuasive. As discussed above with respect to claim 1, the claimed “analyzing,” is part of the abstract idea to which the claim is directed. Thus, the limitations recited in claims 25 and 29 merely serve to further narrow the abstract idea. The abstract idea itself cannot supply the inventive concept, “no matter how groundbreaking the advance.” SAP Am., Inc., 898 F.3d at 1171. We are not persuaded that the claims are similar to the claims in DDR, Enfish, and McRO for the reasons discussed above with respect to claim 1. Accordingly, we are not persuaded the Examiner erred in rejecting claims 25 and 29. DECISION We affirm the Examiner’s rejection of claims 1–3, 5, 7, 10–13, 15, 17, and 21–29 under 35 U.S.C. § 101. 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). AFFIRMED Copy with citationCopy as parenthetical citation