Ex Parte Boss et al

Patent Trials and Appeals Board

Apr 18, 2019

11755985 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/755,985 05/31/2007 Gregory J. Boss
45092 7590 04/22/2019
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920060223US 1 1071
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
04/22/2019 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. BOSS,
CHRISTOPHER J. DAWSON,
RICK A. HAMILTON II,
and TIMOTHYM. WATERS
Appeal2017---008389
Application 11/755,985
Technology Center 3600
Before ANTON W. PETTING, JAMES A. WORTH, and
BRADLEY B. BAY AT, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Gregory J. Boss, Christopher J. Dawson, Rick A. Hamilton II, and
Timothy M. Waters (Appellants) seek review under 35 U.S.C. § 134 of a
final rejection of claims 1--4, 6, 8-11, 13-16 and 18-23, the only claims
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed December 21, 2016) and Reply Brief ("Reply Br.," filed May 19,
2017), and the Examiner's Answer ("Ans.," mailed March 22, 2017), and
Final Action ("Final Act.," mailed July 22, 2016).
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Application 11/755,985
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of allocating a resource among a
plurality of groups based on the role of each group within an organizational
model. Specification para. 7.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method,
performed using at least one computing device,
for allocating a resource among a plurality of component
groups within an organization characterized by an
organizational model,
each of the component groups being capable of using the
resource,
the method comprising:
[ 1] granting each of the plurality of component groups a
privilege to bid on a resource using the at least one computing
device,
the privilege being based on a role of the component
group as defined by the organizational model,
wherein the role of the component group within the
organizational model includes at least one criterion
selected from:
a budget allocated to the component group relative
to a budget for other component groups in the
organizational model,
a commitment of the component group to another
component group within the organizational model,
or
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a commitment of the component group to an entity
outside the organizational model,
wherein the privilege for a first component group of the
plurality of component groups is greater than the
privilege for a second component group of the plurality
of component groups based upon the respective role of
each component group within the organizational model,
wherein the privilege for the first component group
permits the first component group to see the bids made
by the second component group before bidding on the
resource,
and
wherein the privilege for the second component group
prevents the second component group from seeing the
bids made by the first component group;
[2] accepting at least one bid for the resource from at least one
of the plurality of component groups;
and
[3] awarding a temporary right to use the resource to the
component group making the highest bid for the resource to
perform a business purpose for the component group, using the
at least one computing device.
Claims 1--4, 6, 8-11, 13-16 and 18-23 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
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ANALYSIS
Claim 1, as a method claim, recites one of the enumerated categories of
eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it
is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court:
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat else
is there in the claims before us? To answer that question, ...
consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions ( a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
2 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
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exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception. If the claims are directed to a
judicial exception, then finally determining whether the claims provide an
inventive concept because the additional elements recited in the claims
provide significantly more than the recited judicial exception.
STEP 2A Prong 1
Method claim 1 recites assigning data representing the capacity to
create bid data to each of a plurality of data groups, accepting data
representing bids, and assigning data representing the award of a right to use
a resource. Thus, claim 1 recites receiving, analyzing, modifying, and
transmitting data. None of the limitations recite technological
implementation details for any of these steps, but instead recite only results
desired to be achieved by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts3, (2) certain methods of organizing
3 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
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human activity4, and (3) mental processes5. Among those certain methods of
organizing human activity listed in the Revised Guidance are commercial or
legal interactions. Like those concepts claim 1 recites allocating
organizational resources. Specifically, claim 1 recites operations that would
ordinarily take place in allocating organizational resources by assigning and
comparing relative privileges in the process of bidding for the use of the
resource. The advice to allocate organizational resources by assigning and
comparing relative privileges in the process of bidding for the use of the
resource involves allocating resources, which is a commercial act, and
bidding for the use of the resource, which is a business planning (budget)
practice ordinarily performed in the stream of commerce. For example,
claim 1 recites "granting each of the plurality of component groups a
privilege to bid on a resource," which is an activity that would take place
whenever one is delegating responsibility for organizational planning.
Similarly, claim 1 recites "a budget allocated to the component group" and
"awarding a temporary right to use the resource," which are also
characteristics of the generic organizational budgeting process.
The preamble to claim 1 recites that it is a method for allocating a
resource among a plurality of component groups within an organization.
4 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
5 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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The steps in claim 1 result in creating data representing the awarding of a
temporary right to use a resource absent any technological mechanism other
than a conventional computer for doing so.
As to the specific limitations, limitations 1 and 2 recite insignificant
receiving of bid and bid privilege data, which advise one to apply generic
functions to get to these results. The limitation 1 wherein clauses do not
affect the operation of limitation 1, but instead are data for consideration in
limitation 3, although limitation 3 does not recite using this data to do so.
Thus, these wherein clauses are left hanging as having no effect upon the
claim. Limitation 3 is the only step associated with performing what the
claim produces and recites awarding a temporary right, which is simply
creating data that represents such a right. A right in itself is an intangible
concept, and nothing in the claim relies on such a right. To advocate
awarding a right is conceptual advice for results to be obtained and not
technological operations.
The Specification at paragraph 7 recites that the invention relates to
allocating a resource among a plurality of groups based on the role of each
group within an organizational model. Thus, all this intrinsic evidence
shows that claim 1 is directed to allocating a resource among a plurality of
component groups within an organization, i.e. allocating organizational
resources. This is consistent with the Examiner's determination.
This in tum is an example of commercial or legal interactions as a
certain methods of organizing human activity because allocating
organizational resources is a practice for delegating functions that use
resources in commercial transactions. The concept of allocating
organizational resources as advised to be done by assigning and comparing
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relative privileges in the process of bidding for the use of the resource is a
conceptual mechanism for deriving an allocation. The steps recited in claim
1 are part of such a derivation.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Digitech Image Technologies, LLC
v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (2014) (analyzing and
integrating data sets).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
modifying, and transmitting data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data reception, analysis,
modification, and transmission and does not recite an improvement to a
particular computer technology. See, e.g., 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"). As such, claim 1 is directed to the abstract idea of
receiving, analyzing, modifying, and transmitting data, and not a
technological implementation or application of that idea.
From this we conclude that at least to this degree, the claims are
directed to the abstract idea of certain methods of organizing human activity
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in allocating organizational resources by advising one to assign and compare
relative privileges in the process of bidding for the use of the resource.
STEP 2A Prong 2
The next issue is whether the claims not only recite, but are more
precisely directed to this concept itself or whether they are instead directed
to some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 6
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[ A Jpplication[ s ]" of such
concepts "'to a new and useful end,"' we have said, remain
eligible for patent protection. Accordingly, in applying the §
101 exception, we must distinguish between patents that claim
the "'buildin[g] block[ s]"' of human ingenuity and those that
integrate the building blocks into something more.
Alice, 5 7 3 U.S. at 21 7 ( citations omitted).
The introduction of a computer into the claims does not generally alter
the analysis at Mayo/Alice step two. 7
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
6 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
7 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See USPTO's January
7, 2019 Memorandum, "2019 Revised Patent Subject Matter Eligibility
Guidance."
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Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[ t ]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 ( citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is purely in terms of results desired,
devoid of implementation details. Steps 1 and 2 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step 3
recites generic computer processing expressed in terms to be performed by
any and all possible means. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process
physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellants' method claims simply recite the
concept of allocating organizational resources as performed by a generic
computer. To be sure, the claims recite doing so by advising one to assign
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and compare relative privileges in the process of bidding for the use of the
resource. But this is no more than conceptual advice on the parameters for
such allocating organizational resources and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 14+ pages of Specification
spell out different generic equipment8 and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of allocating organizational resources
under different scenarios. They do not describe any particular improvement
in the manner of a computer functions. Instead, the claims at issue amount
to nothing significantly more than an instruction to apply the conceptual idea
of allocating organizational resources by advising one to assign and compare
relative privileges in the process of bidding for the use of the resource using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
8 The Specification describes any general purpose computing article of
manufacture capable of executing computer program code installed by a user
(e.g., a personal computer, server, handheld device, etc.). Spec. para. 41.
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a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other 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.
We conclude that claim 1 is directed to advising one to assign and
compare relative privileges in the process of bidding for the use of the
resource to achieve the result of allocating organizational resources as
distinguished from a technological improvement for achieving or applying
that result. This amounts to commercial or legal interactions, which fall
within certain methods of organizing human activity that constitute abstract
ideas. The claim does not integrate the judicial exception into a practical
application.
STEP 2B
The next issue is whether the claims provide an inventive concept
because the additional elements recited in the claims provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
modifying, and transmitting data amounts to electronic data query and
retrieval----one of the most basic functions of a computer. The wherein
clauses are not steps, but recitations of what data is meant to represent, viz. a
description of how the human mind would interpret the data, which is
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aspirational. The wherein clauses have no effect upon the assignment and
acceptance steps, and there are no recited linkage steps between the data
interpretations in the wherein clauses and the award step. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellants do not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method claims add nothing that is not already present when the
steps are considered separately. The sequence of data reception-analysis-
modification-transmission is equally generic and conventional. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited as an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
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(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that the claims do not provide an inventive concept
because the additional elements recited in the claims do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The other independent method claim is
substantially similar at least as regards this analysis. The remaining method
claims merely describe process parameters. We conclude that the method
claims at issue are directed to a patent-ineligible concept itself, and not to
the practical application of that concept.
As to the structural claims, they:
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
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transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of allocating
organizational resources by assigning and comparing relative privileges in
the process of bidding for the use of the resource involves allocating
resources, without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 6-18 and Answer 1-12 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that the rejection is
deficient in view of the USPTO guidelines. Reply Br. 2-5. Any Examiner's
failure to follow the Director's guidance is appealable only to the extent that
the Examiner has failed to follow the statutes or case law. That is, to the
extent the Director's guidance goes beyond the case law and is more
restrictive on the Examiner than the case law, failure of the Examiner to
follow those added restrictions is a matter for petition to the Director. We
review Appellants' particular arguments against the case law and find no
requirement in the law that restricts "abstract ideas" to only those particular
narrowly circumscribed concepts that the courts have identified already as
an abstract idea explicitly.
[W]e cannot address Applicants' argument that the PTO's 2014
Interim Guidance on Patent Subject Matter Eligibility ("Interim
Eligibility Guidance") exceeds the scope of§ 101 and the
Supreme Court's Alice decision. Applicants' challenge to the
Guidelines is not properly before us in this appeal. See 3 5
U.S.C. § 141(a) (stating that an applicant "dissatisfied with the
final decision" of the Board may appeal that decision to the
Federal Circuit) ( emphasis added). As the Interim Eligibility
Guidance itself states, it "is not intended to create any right or
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benefit, substantive or procedural, enforceable by any party
against the Office. Rejections will continue to be based upon
the substantive law, and it is these rejections that are
appealable." Interim Eligibility Guidance, Vol. 79 Fed. Reg.
74618, 74619 (Dec. 16, 2014) (emphasis added). And even if
the Applicants had properly challenged the Guidance, we have
previously determined that such Guidance is "not binding on
this Court."
In re Smith, 815 F.3d 816, 819 (Fed Cir 2016). On the other hand,
we show supra that the claims are representative of the examples
among the abstract ideas the courts have found.
We are not persuaded by Appellants' argument that "Examiner does
not consider that Appellant's claims are directed to novel, non-obvious
approaches for allocating (information technology) resources using an
asymmetrical viewing mechanism to provide particular benefits to groups
within an organizational model." Reply Br. 5. "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." Synopsys, Inc. v. Mentor
Graphics Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016).
We are not persuaded by Appellants' argument that "the Examiner has
failed to properly identify an allegedly abstract idea in Appellants' claims."
Reply Br. 5---6. "Further, the Examiner has ignored various features of
Appellants' claims which go beyond any judicial exception, and which when
combined, recite significantly more than any judicial exception." Id. at 5.
As we determine supra, the claims are directed to the abstract idea of a
certain method of organizing human activity in allocating resources, and the
steps recited are generic data processing steps our reviewing court held to be
conventional.
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We are not persuaded by Appellants' argument that the various claim
limitations recited "alone or in combination, clearly amount to significantly
more than any abstract idea described in the original Memorandum." Reply
Br. 6. This is an entirely conclusory argument as no reason or analysis is
provided as to why they amount to "significantly more." Id.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 6-8. The claims differ from those found patent
eligible in Enfzsh, where the claims were "specifically directed to a self-
referential table for a computer database." Enfish, 822 F.3d at 1337. The
claims thus were "directed to a specific improvement to the way computers
operate" rather than an abstract idea implemented on a computer. Id. at
1336. Here, by contrast, the claims are not directed to an improvement
in the way computers operate. Though the claims purport to accelerate
the process of allocating resources, our reviewing court has held that
speed and accuracy increases stemming from the ordinary capabilities of a
general purpose computer "do[] not materially alter the patent eligibility
of the claimed subject matter." Bancorp Servs., L.L. C. v. Sun Life
Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
Instead, the claims are more analogous to those in FairWarning, which
recited "a few possible rules to analyze audit log data" and were found to be
directed to an abstract idea because they asked "the same questions
(though perhaps phrased with different words) that humans in analogous
situations detecting fraud have asked for decades." 839 F.3d at 1094--95.
Appellants also contend the Specification describes various benefits arising
from the particular algorithm employed. But this algorithm can be done
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with paper and pencil, at least as recited in the claims, and so does not
present a technological solution.
We are not persuaded by Appellants' argument that the claims are not
preemptive. Reply Br. 7-8. "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo/Alice framework, as
they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
CONCLUSIONS OF LAW
The rejection of claims 1--4, 6, 8-11, 13-16 and 18-23 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1--4, 6, 8-11, 13-16 and 18-23 is affirmed.
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)(l)(iv) (2011).
AFFIRMED
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