SMITH, Jason

Patent Trials and Appeals Board

Oct 26, 2021

2020004436 (P.T.A.B. Oct. 26, 2021)

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.
14/786,244 10/22/2015 Jason Smith IRM P300US2-UTL 6964
104082 7590 10/26/2021
Mitchell Intellectual Property Law, PLLC
PO Box 794
Ada, MI 49301-0794
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
10/26/2021 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):
svanholstyn@mitchelliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON SMITH
Appeal 2020-004436
Application 14/786,244
Technology Center 3600
Before JOHN C. KERINS, MICHELLE R. OSINSKI, and
MICHAEL L. WOODS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant1 filed a request for rehearing under 37 C.F.R. § 41.52
(hereinafter “Request” or “Req. Reh’g”), dated August 25, 2021, of our
Decision on Appeal (hereinafter “Decision” or “Dec.”) dated July 1, 2021.
In the Decision, we affirmed the Examiner’s decision to reject claims 1‒13
and 15–36 under 35 U.S.C. § 101 as being directed to patent ineligible

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 Jason Smith.
Appeal Br. 1.
Appeal 2020-004436
Application 14/786,244

2
subject matter. Rehearing is limited to matters overlooked or
misapprehended by the Board in rendering the initial decision.
OPINION
Appellant argues that the Board failed to consider each claim as a
whole, and instead merely determined that each of the discrete elements of
each claim is not patent-eligible. Req. Reh’g 2–6. Appellant states:
It is respectfully submitted that the Board considered [the
claimed] steps as a whole, only in that they considered all eight
of them. However, they considered them only in the context of
each individual step without appreciating how they are integrated
to provide “something more” which distinguishes them from “an
abstract idea.”
Id. at 6 (emphasis omitted). Appellant continues that various tables of data
relating to product/service purchase and asset management “have been
combined in such a way to facilitate a streamlined consortium software
enabling interaction between vendors and purchasers without having to deal
with additional post purchase software.” Id. at 7. Appellant asserts that
“‘[s]omething [m]ore’ has been achieved through this integration.” Id.
More particularly, Appellant explains that “[n]o longer does a
customer have to separately enter inventory data into a separate software
program” and “[n]o longer does a customer have to enter asset management
data into a separate asset management software.” Req. Reh’g 7. Appellant
further explains that “[t]his is a huge advantage, since obviously the extra
steps required to enter inventory and asset management information into
separate software often leads to neglect of said steps.” Id. According to
Appellant, rather than the current practice where customers need (i) software
in which purchased depreciable assets are managed; and (ii) software for
inventory tracking, and where vendors need (i) software for customer
Appeal 2020-004436
Application 14/786,244

3
tracking; and (ii) software for facilitating purchases of its products, both
customers and vendors would have “mutual access to a common consortium
software.” Id. at 6–7.
In response to Appellant’s contention that we did not properly
consider each claim as a whole, we disagree in that we explicitly stated in
our Decision that we considered claim 1 “as a whole.” Dec. 9. In
considering the claim “as a whole,” we determined that it related to the
“purchase of vendor products and services by customers and asset
management of such purchased products and services by storing,
associating, and retrieving information in the form of vendor/customer data
and product data.” Id. Appellant points to the combination of various tables
of data relating to product/service purchase and asset management as taking
the claim outside of the realm of an abstract idea. Req. Reh’g 7. We
considered the combination of various tables of data, but were not persuaded
that such combination precludes a determination that the claims are directed
to an abstract idea. Rather, we determined that even the combination of
various tables of data (i.e., “involv[ing] ‘multiple data tables and multiple
links’ and ‘sophisticated linking of data’”) “solely relates to the storage,
organization, and display (e.g., retrieval) of data, which has consistently
been held by the Federal Circuit to constitute an abstract idea.” Dec. 10
(quoting Appeal Br. 14–15). We explained that the steps of storing,
organizing, and displaying (e.g., retrieving) data “fall under the organization
of commercial interactions and/or sales activities, which in turn fall within
the abstract idea exception subgrouping of certain methods of organizing
human activity.” Id. at 9 (citing 2019 Revised Patent Subject Matter
Appeal 2020-004436
Application 14/786,244

4
Eligibility Guidance, 84 Fed. Reg. 50, 52 (USPTO Jan. 7, 2019) (“Revised
Guidance”)).2
As to Appellant’s additional contention that there are benefits to the
combination of various tables of data (i.e., avoiding the need for additional
post purchase software and preventing the potential neglect of data entry)
(Req. Reh’g 7), we were not persuaded that the combination integrated the
abstract idea into a practical application. Dec. 15 (citing MPEP
§ 2106.05(a)). In particular, we were not persuaded that the combination of
data tables identified by Appellant, and their identified benefits, provided an
improvement in the functioning of a computer, or an improvement to
technology or a technical field. Id. We understand that “[s]oftware can
make non-abstract improvements to computer technology, just as hardware
improvements can.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). For example, in Enfish, the claims included a self-
referential database structure. Id. at 1336. The court in that case held that
the self-referential database structure was an improvement to computer
functionality, and not an abstract idea. Id. at 1337. In particular, the court
stated that the claims were directed to “a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory” (id. at 1339), and that the patent described in its specification how
its claims were an improvement over, and functioned differently from,
existing database table formats, with the claimed improvement providing

2 The USPTO current eligibility guidance is found in the Ninth Edition,
Revision 10.2019 (revised June 2020) of the Manual of Patent Examination
Procedure (MPEP), and particularly within Sections 2103 through
2106.07(c).
Appeal 2020-004436
Application 14/786,244

5
“increased flexibility, faster search times, and smaller memory
requirements” (id. at 1337).
In another example, in Trading Techs. Int’l Inc. v. CQG, Inc.,3 the
patents at issue in that case described a trading system in which a graphical
user interface “display[s] the market depth of a commodity traded in a
market, including a dynamic display for a plurality of bids and for a plurality
of asks in the market for the commodity and a static display of prices
corresponding to the plurality of bids and asks.” U.S. Patent No. 6,772,132,
3:11–16; U.S. Patent No. 6,766,304, 3:15–20. “The claims require[d] a
specific, structured graphical user interface paired with a prescribed
functionality directly related to the graphical user interface’s structure that is
addressed to and resolves a specifically identified problem in the prior state
of the art,” namely, allowing traders the ability to more efficiently and
accurately place trades on an electronic trading system. Trading Techs.
Int’l, 675 F. App’x at 1004. As such, the panel in that case found the
“claimed subject matter is ‘directed to a specific improvement to the way
computers operate,’ . . . for the claimed graphical user interface method
imparts a specific functionality to a trading system ‘directed to a specific
implementation of a solution to a problem in the software arts.”’ Id. at 1006.
In contrast to Enfish and Trading Techs., in the present case,
Appellant does not explain, nor is it readily apparent, how the claims recite a
specific structure that improves the functioning of a computer or provides an
improvement in the functioning of technology. Appellant appears to
acknowledge that “each table in the software may be viewed as an individual

3 Trading Techs. Int’l Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017).
Appeal 2020-004436
Application 14/786,244

6
building block of human endeavor—an abstract idea.” Req. Reh’g 7. What
Appellant appears to be pointing to as being non-abstract and/or a practical
application is the linking of data of different, known database tables in a
consortium software, such that users need not rely on their own software nor
need to store each different, known database table in its own respective
software. Appellant’s Specification states that “the consortium management
software is written in an entry related database such as ERD, and converted
to MySQL and PHP.” Spec. ¶ 11. The Specification explains that
information contained in certain tables “is related to other relational tables
through coded entries in those other tables.” Id. ¶ 12. Appellant does not
identify any portion of the Specification, or provide any argument,
suggesting that the links or the coded entries described in the Specification
are anything more specific than the utilization of known computer
technology to combine data.
Rather than explaining how the claimed features (e.g., relational
database tables being linked together) improve the functioning of a computer
or provide an improvement in the functioning of technology, Appellant
explains only that users do not need additional post-purchase software and
that the burden on customers to separately enter inventory data and asset
management data into respective software programs is eliminated with the
use of its consortium software, and that, in turn, prevents the neglect or
failure to enter such data when making a purchase. Req. Reh’g 7.
Eliminating the need for a user to have separate software for the
management of different types of data and/or to have to enter data into
separate software is not a technical solution to a technical problem. Cf.
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1383 (Fed. Cir. 2019)
Appeal 2020-004436
Application 14/786,244

7
(citation omitted) (“[T]he claims do not solve a technical problem using a
technical solution. . . . The problem that the patent seeks to solve is
providing ‘highly relevant information’ that is ‘not normally provided in an
electronic exchange’s data feed nor displayed by a trading screen’ to a
trader. . . . The specification does not identify any technical problems
associated with obtaining or displaying this information.”).
Rather than improving the functioning of a computer or providing an
improvement in the functioning of technology, the consortium software
appears to address the business-related problems of avoiding the need for
post-purchase software and ensuring accurate and up-to-date data entry. In
other words, the consortium software focuses on streamlining the business
practice of users, not solving a technical problem. In short, Appellant has
not explained adequately how the linking of different database tables, and
the information contained therein, in a consortium software improves the
functioning of a computer or provides an improvement in the functioning of
technology. Appellant has explained only how its invention solves the
business problems of post-purchase software requirements and potential
neglect in data entry, but such problems are not technical ones. See MPEP
§ 2106.04(a)(II) (citing Trading Techs. Int’l, 921 F.3d at 1093–94) (“[T]he
court determined that the claimed user interface simply provided a trader
with more information to facilitate market trades, which improved the
business process of market trading[,] but did not improve computers or
technology.”). Appellant appears to use known computer components and
technology in their ordinary capacity to improve business practices, not to
improve computers or technology. Dec. 12. Accordingly, Appellant’s
arguments do not persuade us that the claimed invention integrates the
Appeal 2020-004436
Application 14/786,244

8
abstract idea into a practical application. See MPEP § 2106.05(a); Revised
Guidance, 84 Fed. Reg. at 54–55.
To the extent Appellant is suggesting that the combination of claimed
elements amounts to “something more” than the abstract idea itself so as to
provide an inventive concept (Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
221 (2014); Revised Guidance, 84 Fed. Reg. at 56), we do not agree that the
combination of claimed elements transforms the abstract idea into a patent-
eligible application by providing an inventive concept (Dec. 17; Revised
Guidance, 84 Fed. Reg. at 56). Claim 1 simply implements the above-
identified abstract concept through generic computer elements and
technology. We see no evidence or argument suggesting that the computer
functionality is anything beyond well-understood, routine, and/or
conventional activities.
Appellant seems to suggest that it is the combination of various data
tables relating to product/service purchase and asset management that are
unique and provide “something more.” Req. Reh’g 6. However, the
combination is an improvement in the storage, organization, and display
(e.g., retrieval) of data itself. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). However
useful the combination or linking of different data tables, and the
information contained therein, in a consortium software may be, its value or
usefulness is not dispositive of patent eligibility. Parker v. Flook, 437 U.S.
584, 594–96 (1978) (determining claims to “a new and presumably better
method for calculating alarm limit values,” which were of undisputed
usefulness, to be directed to patent-ineligible subject matter). Appellant has
Appeal 2020-004436
Application 14/786,244

9
not persuaded us that, however useful the combination of linking of data in
various tables may be, the claims are directed to more than the abstract
idea—i.e., certain methods of organizing human activity, under which falls
the organization of commercial interactions and/or sales activities, and in
turn, under which falls the storage, organization, and display (e.g., retrieval)
of data. See Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)
(Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’
cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible because
the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290–91 (Fed. Cir. 2018)
(“Our precedent has consistently employed this same approach. If a claim’s
only ‘inventive concept’ is the application of an abstract idea using
conventional and well-understood techniques, the claim has not been
transformed into a patent-eligible application of an abstract idea.”). An
improved abstract idea is still an abstract idea. In short, the law requires an
element or combination of elements that ensures that the claim is more than
the ineligible abstract idea. Here, the combination or linking of various data
tables, and the information contained therein, is just part of the abstract idea
of certain methods of organizing human activity. Consequently, we are not
persuaded by Appellant’s arguments that the combination of elements in
each of the claims contains any “inventive concept” or adds anything
“significantly more” to transform the abstract idea into a patent-eligible
application. Alice Corp., 573 U.S. at 221.
For the foregoing reasons, we are unpersuaded that the Board
misapprehended or overlooked Appellant’s arguments or otherwise erred in
Appeal 2020-004436
Application 14/786,244

10
sustaining the rejection of claims 1–13 and 15–36 under 35 U.S.C. § 101.
Accordingly, Appellant’s request is denied with respect to our making any
modification to the Decision.

CONCLUSION
In summary:
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Basis Denied Granted
1‒13, 15–36 101 Eligibility 1‒13, 15–36

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1‒13, 15–36 101 Eligibility 1‒13, 15–36

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED