1B3Y, LLCDownload PDFPatent Trials and Appeals BoardMay 12, 20202019000503 (P.T.A.B. May. 12, 2020) 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. 13/781,744 02/28/2013 Keith Rinzler 4I05-1-010 5901 35725 7590 05/12/2020 MEHRMAN LAW OFFICE, P.C. P.O. Box 420797 ATLANTA, GA 30342 EXAMINER LOFTIS, JOHNNA RONEE ART UNIT PAPER NUMBER 3683 MAIL DATE DELIVERY MODE 05/12/2020 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 KEITH RINZLER ____________ Appeal 2019-000503 Application 13/781,744 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on April 27, 2020.2 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed June 5, 2018) and Reply Brief (“Reply Br.,” filed October 16, 2018), and the Examiner’s Answer (“Ans.,” mailed September 5, 2018) and Final Office Action (“Final Act.,” mailed November 14, 2017). Appellant identifies the real party in interest as “1Q, LLC” (Appeal Br. 1). 2 Appellant submitted an Exhibit after Notice of Appeal, on April 8, 2020, for the hearing. Appeal 2019-000503 Application 13/781,744 2 We AFFIRM. CLAIMED INVENTION Appellant’s claims relate “to electronic data collection systems and, more particularly, to a dynamic permission-based market polling and research system incorporating per-response member survey compensation, social media interfacing, and dynamic polling to produce desired demographic results with the minimum number of member requests.” Spec. 1, ll. 9–13. Claims 1, 13, and 18 are the independent claims on appeal. Claim 1, reproduced below, with bracketed notations and some paragraphing added, is illustrative of the claimed subject matter: 1. A dynamic permission-based market polling and research system, comprising: [a] a plurality of computer-implemented customer systems associated with a plurality of customers; [b] a plurality of computer-implemented member systems associated with a plurality of members; [c] a computer-implemented direct response controller operative to electronically interact with the plurality of computer-implemented customer systems and the plurality of computer-implemented member systems; [d] the direct response controller further operative to maintain membership relationships with the members providing the direct response controller with permission-based access to member demographic data for the purpose of directing electronic surveys to the members and further providing electronic payment to the members; [e] the direct response controller further operative to maintain paying customer relationships with the members providing for the delivery of surveys to the members and providing for receipt of payment from the customers based on survey responses received from the members; Appeal 2019-000503 Application 13/781,744 3 [f] the direct response controller further operative to receive authorization from the member systems to receive location tracking data associated with the member systems; [g] the direct response controller is further operative to automatically receive the location tracking data associated with the member systems; [h] the direct response controller further operative to receive a survey request from a customer system identifying a target demographic objective for the survey, automatically identify an initial portion of a target audience of the member systems corresponding to the target demographic objective based in part on the member location tracking data; [i] automatically direct the survey request to the initial portion of a target audience of the member systems in a priority order, and receive responses to the survey from the member systems comprising partial survey results; [j] wherein the direct response controller is further operative to apply a dynamic polling algorithm to automatically adjust the number and demographic distribution of the member systems participating in the survey by determining a residual demographic objective based on the target demographic objective, the location tracking data, and the partial survey results, adjust the priority order of the target audience of member systems to meet the residual demographic objective through subsequent survey requests, and direct the survey request to a residual portion of the target audience of member systems in the adjusted priority order, based at least in part on the location tracking data. REJECTION Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Appeal 2019-000503 Application 13/781,744 4 ANALYSIS Patent-Ineligible Subject Matter Appellant argues independent claims 1, 13, and 18 as a group. Appeal Br. 7; Reply Br. 2–14. We select independent claim 1 as representative. The remaining independent claims stand or fall with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). 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 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.”). 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); Appeal 2019-000503 Application 13/781,744 5 mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); 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 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 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. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). Appeal 2019-000503 Application 13/781,744 6 “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. USPTO Section 101 Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also October 2019 Update at 1. Under the 2019 Revised Guidance and the October 2019 Update, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and 3 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df). Appeal 2019-000503 Application 13/781,744 7 (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4 2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 52–56. C. Step One and 2A-Prong 1 of the Mayo/Alice Framework With regard to the first step of the Mayo/Alice framework and Step 2A, Prong One of the 2019 Revised Guidelines, 84 Fed. Reg. at 54, the Examiner determines that exemplary independent claim 1 broadly recites the “determination of a residual demographic objective based on a comparison with a target demographic objective and survey results, resulting in how the priority order of the target audience is adjusted and how the survey is 4 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See 2019 Revised Guidance - Section III(A)(2), 84 Fed. Reg. 54–55. Appeal 2019-000503 Application 13/781,744 8 directed” (Final Act. 6), and as such, is “directed towards methods of organizing human activities, which is an example identified by the courts as an abstract idea.” Id. The Examiner considers this to be an abstract idea, inasmuch as it is similar to abstract ideas identified by the Federal Circuit, including the abstract idea of “collecting information, analyzing it, and displaying certain results of the collection and analysis” in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Final Act. 6. The Examiner further notes that the additional steps of providing permission-based access to demographic data and maintaining customer relationships is similar to the concept in Cyberfone Sys. v. CNN Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014) wherein using categories to organize, store and transmit information was found to be an abstract idea by the Courts. Final Act. 6. In response, Appellant argues that “[t]here is no prior decision or Office guidance holding that electronic polling systems or similar systems are considered to be abstract ideas under Section 101.” Appeal Br. 11. More particularly, Appellant argues that the Final Rejection incorrectly over-generalizes the claimed invention in the Step 2A analysis with a conclusory determination that the entire claim is “abstract” despite the presence of very specific and concrete claim language describing “the improvement” — a dynamic polling algorithm using location tracking data to produce electronic poll results that meet a specified target demographic objective. Appeal Br. 18; see also Reply Br. 2. According to Appellant, “[a]ttempting to shunt the claimed invention into allegedly ineligible categories of ‘non- technology’ such as business improvements, algorithms, and/or methods of Appeal 2019-000503 Application 13/781,744 9 organizing human activities as a way of finding the invention to be an ‘abstract idea’ is legal error.” Appeal Br. 14. We are not persuaded that the Examiner erred in determining that independent claim 1 is directed to an abstract idea. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the Specification (including the claim language) that the claims focus on an abstract idea, and not on any improvement to technology and/or a technical field. In making this determination, we note that the Specification is entitled “DYNAMIC MARKET POLLING AND RESEARCH SYSTEM,” and states that the disclosure relates to electronic data collection systems and, more particularly, to a dynamic permission-based market polling and research system incorporating per-response member survey compensation, social media interfacing, and dynamic polling to produce desired demographic results with the minimum number of member requests. Spec. 1, ll. 9–13. According to the Specification, “[e]xisting technology for incorporating social media into market research and polling remains cumbersome and inaccurate.” Id. at 1, l. 35–2, l. 1. The Specification discloses that “the current lack of affordable or effective direct marketing Appeal 2019-000503 Application 13/781,744 10 and research platforms presents a major barrier to entry for many companies, especially small and medium-sized businesses, which cannot afford to expend the vast sums necessary to reach their target audiences.” Id. at 2, ll. 2–5. The Specification subsequently identifies “a continuing need for improved online market research and polling systems and, more specifically, market research and polling systems that more effectively utilize social media and other techniques to increase the effectiveness and decrease the cost of market research and customer polling.” Id. at 2, ll. 6–9. To address these drawbacks, the present invention employs “a compensation driven permission marketing and polling system referred to as an instant response system” that “directly targets market polling communications to precise demographic, geographic, psychographic and/or keyword-associated audiences to empower businesses with sophisticated, immediate and effective targeted marketing and research at a fraction of the traditional expense.” Id. at 2, ll. 12–17. The Specification further notes that the instant response system may “self-generate in a viral manner to create a large scale, easily searchable, ever improving demographic database of highly relevant market research information,” thereby “improve[ing] market polling and research.” Id. at 3, ll. 11–13; 3, l. 26. Consistent with this disclosure, exemplary independent claim 1 recites “[a] dynamic permission-based market polling and research system” comprising functions operative to: (1) “interact with a customer” and “member systems” (limitations [a]–[c]); (2) maintain member relationships and paying customer relationships in order to provide access to demographic data, provide and receive electronic payments, and deliver surveys, i.e., “maintain membership relationships with the members providing . . . Appeal 2019-000503 Application 13/781,744 11 permission-based access to member demographic data for the purpose of directing electronic surveys to the members and further providing electronic payment to the members” and “maintain paying customer relationships with the members providing for the delivery of surveys to the members and providing for receipt of payment from the customers based on survey responses received from the members” (limitations [d], [e]); (3) receive authorization to receive location tracking data and receive the location tracking data, i.e., “receive authorization from the member system to receive location tracking data” and “automatically receive the location tracking data” (limitations [f], [g]); (4) receive a survey request, identify an initial portion of a target audience, direct the survey request to the initial portion of the target audience, and receive responses to the survey, i.e., “receive a survey request from a computer system identifying a target demographic objective for the survey” and “automatically direct the survey request to the initial portion of the target audience . . . and receive responses to the survey from the member systems comprising partial survey results” (limitations [h], [i]); and (5) adjust the number and demographic distribution of the participants, adjust the priority order of the target audience, and direct the survey request to a residual portion of the target audience, i.e., “apply a dynamic polling algorithm to adjust the number of demographic distribution . . . adjust the priority order . . . and direct the survey request” (limitation [j]). Upon reviewing the Specification and independent claim 1, as summarized above, we agree with the Examiner that independent claim 1 recites broadly the “determination of a residual demographic objective based on a comparison with a target demographic objective and survey results, Appeal 2019-000503 Application 13/781,744 12 resulting in how the priority order of the target audience is adjusted and how the survey is directed” (Final Act. 6), which can be characterized as a certain method of organizing human activity. Here, independent claim 1 maintains membership and customer relationships for the delivery of surveys (limitations [d], [e]), receives authorization and location tracking data (limitations [f], [g]), identifies a target audience, directs a survey request to a target audience, and receives responses (limitations [h], [i]), and adjusts the number and demographic distribution of participating members, adjusts the priority order of the target audience, and directs the survey to a residual portion of the target audience (step [j]). In other words, claim 1 broadly recites a system for directing market polling surveys using functionality operative receive information (e.g., authorization data, location data, target demographic data), identify information (e.g., target demographic), send information (i.e., direct information), receive additional information (e.g., location data, survey information), and analyze data via polling algorithm. Cf. Ans. 13–14. Thus, it is clear that independent claim 1 recites a form of marketing that, under the 2019 Revised Guidance, falls under the category of “[c]ertain methods of organizing human activity” and more specifically “commercial or legal interactions (including agreements in the form of … advertising, marketing or sales activities or behaviors; business relations).” 2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly, independent claim 1 recites an abstract idea. Cf. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (claim for distributing copyrighted media over the Internet to consumers in exchange for viewing an advertisement was directed to the abstract idea of “displaying an advertisement for access Appeal 2019-000503 Application 13/781,744 13 to a copyrighted media”); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1339–40 (Fed. Cir. 2017) (claim for manipulating XML documents by organizing, identifying, mapping, defining, and modifying data was directed to the abstract idea of “collecting, displaying, and manipulating data”); and Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351–54 (Fed. Cir. 2016) (claim for detecting events by receiving, detecting, analyzing, displaying, accumulating, and updating data, and deriving a composite indicator from that data was directed to the abstract idea of “collecting information, analyzing it, and displaying certain results of the collection and analysis”). D. Step 2A-Prong 2 of the Mayo/Alice Framework Having concluded that claim 1 recites a judicial exception, i.e., an abstract idea, we turn to the Step 2A, Prong Two of the 2019 Revised Guidance and determine whether the claim integrates the recited judicial exception into a practical application of the judicial exception. Here we look to see if, for example, any additional elements of the claim (i) reflect an improvement in the functioning of a computer or to another technological field, (ii) implement the judicial exception with, or by use of, a particular machine, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55; see also MPEP §§ 2106.05(a)–(c), (e)–(h). Here, the only additional elements recited in claim 1 beyond the abstract idea are “a plurality of computer-implemented customer systems,” “a plurality of computer-implemented member systems,” and “a computer- Appeal 2019-000503 Application 13/781,744 14 implemented direct response controller operative to electronically interact with the plurality of computer implemented customer systems and the plurality of computer-implemented member systems” and operative to perform the claimed functions. However, these additional elements are described generically in the Specification (see, e.g., Spec. 11:16–24). We find no indication in the Specification, nor does Appellant direct us to any indication, that the operative functions recited in claim 1 invoke any assertedly inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record that attributes an improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the 2019 Revised Guidance.5 5 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in describing the considerations that are indicative that an additional element or combination of elements integrates the judicial exception, e.g., the abstract idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. If the recited judicial exception is integrated into a practical Appeal 2019-000503 Application 13/781,744 15 Appellant argues that “the claimed invention is very similar to a large number of inventions found to be eligible because they claim improvements in technology in the physical realm.” Appeal Br. 13. According to Appellant, [t]he claims are directed to “technology” because they improve the efficiency of the computer and telecommunication systems by saving communication air time and computer resources in the conduct of online polls. Reducing the number of poll requests, reducing the number electronic communications, and reducing the computer resource utilization required to complete an electronic survey that meets a specified target demographic objective are, in fact, improvements to the technology of electronic polling systems sufficient to ensure that the patent in practice amounts to significantly more than a patent upon an abstract idea itself, such as “electronic polling.” Id. at 16. Appellant’s argument is not persuasive. Here, the focus of independent claim 1 is not on any technological advancement, but rather on the implementation of the abstract idea, “for which computers are invoked merely as a tool.” See Enfish, 822 F.3d at 1336. In this regard, the Appellant notes that “the claimed invention is very similar to a large number of inventions found to be eligible because they claim improvements in technology in the physical realm even though the improvement resides in an algorithm running on a general-purpose computer.” Appeal Br. 13. However, independent claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to receive information, identify or parse information, send information, and analyze data related to survey requests, and does not recite an improvement application, as determined under one or more of these MPEP sections, the claim is not “directed to” the judicial exception. Appeal 2019-000503 Application 13/781,744 16 to a particular computer technology. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). Instead, as noted by Appellant, the claimed “improvement resides in an algorithm running on a general-purpose computer.” Appeal Br. 13. Appellant contends that the claims on appeal are similar to “Enfish, McRO and RCT–in which the claims are directed to specific improvements to physical-realm systems arising from software running on general-purpose computers.” Appeal Br. 10–16, 18–19, 22–26; Reply Br. 6–7, 9–11. More particularly, Appellant argues that the present claims provides an improve to “technology” in the same way as a great many inventions found to be patent eligible under the current Section 101 eligibility guidelines, such as the algorithm improving the rubber curing system in Diamond v. Diehr, the algorithm improving the motion tracking system in Thales, the algorithm improving the pivot table database in Enfish, the algorithm improving the lip-sync animation system in McRO, and the algorithm improving the “blue noise” halftone digital image processing system in RCT. Appeal Br. 16. We disagree with Appellant. In Diehr, the claim was directed to the use of the Arrhenius equation (an abstract idea or law of nature) in an automated process for operating a rubber-molding press. Diehr, 450 U.S. at 177–78. The Court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time, and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products. Id. at 184, 187. Appeal 2019-000503 Application 13/781,744 17 In Thales Visionix Inc. v. United States, 840 F.3d 1343, 1348–49 (Fed. Cir. 2017), the claims were directed to a physical tracking system that used mathematical equations that were “dictated by the placement of the inertial sensors and application of laws of physics” to determine the orientation of a tracked object relative to a moving platform. Id. at 1348. In other words, the improvement was to the technology in a physical tracking system. In Enfish, the Federal Circuit rejected a § 101 challenge at step one stage of the Mayo/Alice analysis because the claims focused on “a specific type of data structure [i.e., a self-referential table for a computer database] designed to improve the way a computer stores and retrieves data in memory.” Enfish, 822 F.3d at 1339. The court emphasized that the claims were not directed to any form of storing tabular data, but were instead directed to a self-referential table for a computer database. Id. at 1337. And, the court explained that the table stored information related to each column in rows of the table, such that new columns could be added by simply creating new rows. Id. at 1338. Based on the “plain focus of the claims,” the court, thus, held that the claims were directed to “a specific improvement to the way computers operate, embodied in the self-referential table,” and, as such, were more than a mere abstract idea. Id. at 1336. In McRO, the Federal Circuit premised its determination that the claims were patent-eligible, not merely on the specificity of the claimed animation scheme, but rather on the fact that the claims, when considered as a whole, were directed to a technological improvement over the existing, manual 3-D animation techniques and used limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. See McRO, 837 F.3d at 1314–15. Appeal 2019-000503 Application 13/781,744 18 And, in Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), the Federal Circuit noted that the invention in that case “present[ed] functional and palpable applications in the field of computer technology” with “specific applications or improvements to technologies in the marketplace.” After considering Appellant’s arguments regarding Diehr, Thales, Enfish, McRO, and Research Corp., we are not persuaded that a comparable situation is presented here. There is a fundamental difference between technological or computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. Here, the Specification generically describes the technical environment (see, e.g., Spec. 11) and does not disclose any related technical improvements. Indeed, the Federal Circuit applied this distinction in Enfish because the claims in Enfish focused on a specific type of data structure, i.e., a self- referential table for a computer database, designed to improve the way a computer carries out its basic functions of storing and retrieving data, and not on asserted advances in uses to which existing computer capabilities could be put. Enfish, 822 F.3d at 1335–36. Here, there is no such improvement to technology or a technological process. The Appellant does not assert an improvement in the technical or technological aspects operative to receive information (e.g., authorization data, location data, target demographic data), identify information (e.g., target demographic), send information (i.e., direct information), receive additional information (e.g., location data, survey information), and analyze data via polling algorithm. As discussed above, any improvement to market polling lies in the algorithm itself, not to any technological improvement. Appeal 2019-000503 Application 13/781,744 19 See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018). The Appellant also does not direct our attention to anything in the Specification to indicate that the invention provides a technical improvement or that exemplary independent claim 1 incorporates technical improvements, such as, rules to automate a subjective task of humans, similar to those in McRO or to a physical tracking system as in Thales. Here, to the extent the claimed invention provides an improvement, that improvement does not concern an improvement to computer capabilities, but instead relates to an alleged improvement in the application of the dynamic polling algorithm — a process in which a computer is used as a tool in its ordinary capacity. See Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Step 2B of the Mayo/Alice FrameworkHaving determined under step one of the Mayo/Alice framework that independent claim 1 is directed to an abstract idea, we next consider under Step 2B of the 2019 Revised Guidance, the second step of the Mayo/Alice framework, whether claim 1 includes additional elements or a combination of elements that provides an “inventive concept,” i.e., whether the additional elements amount to “significantly more” than the judicial exception itself. 2019 Revised Guidance, 84 Fed. Reg. at 56. Appellant argues that the Examiner’s contention “that the location tracking and dynamic polling features are conventional and well- understood” fails to comply with the requirements set forth in Berkheimer v. Appeal 2019-000503 Application 13/781,744 20 HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Appeal Br. 20–22; Reply Br. 12. However, “the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine.” BSG Tech, 899 F.3d at 1290. Instead, the question is whether the claim includes additional elements, i.e., elements other than the abstract idea itself, that “‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). Here, the Examiner determined that “[t]he additional elements of the claim are directed to the computer elements, which are not described in the [S]pecification in such a way to distinguish them from routine or conventional computer elements.” Ans. 6. The Examiner further determined that the computer functions involved in the claims include receiving or transmitting data over a network (directing electronic surveys, receive authoriziation, receive location data, receive survey request), performing repetitive calculations (apply the polling algorithm to the data to adjust the number and the demographic distribution of the members participating in the survey), storing and retrieving information in memory. Each of these computer functions have been deemed conventional by the courts, thus satisfying the requirement set forth in the Berkheimer memo. Id. at 13–14. We agree with the Examiner that the steps performed by the computer components are well-understood, routine, or conventional. As discussed above, there is nothing in the Specification to indicate that the steps recited in claim 1 require any specialized hardware or inventive computer components or that the claimed invention is implemented using anything other than generic computer components to perform generic computer functions, e.g., receive information, identify information, send information, Appeal 2019-000503 Application 13/781,744 21 and analyze data. Instead, as noted by Appellant, the claimed “improvement resides in an algorithm running on a general-purpose computer.” Appeal Br. 13. Viewed as a whole, exemplary independent claim 1 simply recites a series of operations instructing how to direct market polling surveys. See Ultramercial, 772 F.3d at 716 (“[T]he claimed sequence of steps comprises only ‘conventional steps, specified at a high level of generality,’ which is insufficient to supply an ‘inventive concept.’”) (Citing Alice, 134 S. Ct. at 2357). Here, independent claim 1 does not, for example, purport to improve the functioning of the computer itself. Nor does it effect an improvement in any other technology or technical field, as discussed above with respect to prong two of step 2A. Instead, independent claim 1 amounts to nothing significantly more than an instruction to apply the abstract idea using generic computing elements, which under our precedents, is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360. E. Remaining Arguments To the extent the Appellant argues that the invention is not directed to an abstract idea and effects an improvement to technology because it is novel over the prior art (see Appeal Br. 25–26; Reply Br. 12), an abstract idea does not transform into an inventive concept just because the prior art does not disclose or suggest it. See Mayo, 566 U.S. at 78. Further, “[g]roundbreaking, 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). Indeed, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance Appeal 2019-000503 Application 13/781,744 22 in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89; see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101”). We also are not persuaded of Examiner error to the extent Appellant maintains that independent claim 1 is patent eligible because there is no risk of preemption. Reply Br. 4–9. Although the Supreme Court has described “the concern that drives [the exclusion of abstract ideas from patent-eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility.” Id. Appellant’s other arguments, including those directed to now- superseded USPTO guidance, have been considered but are not persuasive of error. (See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility- related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”))). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we Appeal 2019-000503 Application 13/781,744 23 sustain the Examiner’s rejection of independent claim 1, and independent claims 13 and 18, which fall with independent claim 1. We also are not persuaded, on the present record, that the Examiner erred in rejecting dependent claims 2–12, 14–17, 19, and 20. With respect to dependent claims 2–12, 14–17, 19, and 20, Appellant simply reproduces the language of the claims, and asserts that each of these claims includes “additional technical claim features [that] define more than a mere abstract idea . . . and amount to significantly more than a patent upon an abstract idea itself.” Appeal Br. 29–32. However, we find that the argued dependent claims merely describe further characteristics of the underlying concept and lack additional elements that would render the claim patent-eligible. And, in the absence of any substantive arguments in support of the separate patent eligibility of the dependent claims, we agree with the Examiner that the dependent claims are abstract idea themselves and fail to transform the abstract into something patent-eligible. See Ans. 17–19. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation