Ex Parte Cotton

Patent Trials and Appeals Board

Jan 29, 2019

13789510 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/789,510 03/07/2013
20995 7590 01/31/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Jeffrey S. Cotton
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.
AUTLT.001C7 5397
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY S. COTTON
Appeal2017-007868
Application 13/789 ,510
Technology Center 3600
Before ERIC S. FRAHM, JOHN A. EV ANS, and CARLL. SILVERMAN,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 1--48. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 Appellant states the real party in interest is the inventor, AutoAlert, LLC.
Br. 4.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed October 31, 2016, "App. Br."), the
Examiner's Answer (mailed February 9, 2017, "Ans."), the Final Action
( mailed March 21, 2016, "Final Act."), and the Specification ( filed
Appeal2017-007868
Application 13/789,510
STATEMENT OF THE CASE
The claims relate to a financial terms alert generation system. See
Abstract.
INVENTION
Claims 1, 9, 17, 25, 33, and 41 are independent. An understanding of
the invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A method for a user to determine potential
customers of a vehicle to contact, the method comprising:
determining, using a computing device, a customer
whose vehicle is either scheduled for vehicle service or that is
currently at a location for vehicle service;
determining one or more first vehicles that are existing
and currently available to the user that the user can offer to
potential customers;
identifying, using a computing device, one of the first
vehicles that is a similar make and model as the customer
vehicle;
receiving, by a computing device, customer information
and market information wherein said market information
includes an estimated market value for the customer vehicle and
at least one of an interest rate, a manufacturer's incentive that is
available for the first vehicle, and a sales price of the first
vehicle;
generating, by a computing device, a report if the first
vehicle is of the similar make and model as the customer
vehicle, such report including the customer information and an
estimated proposal for the first vehicle based at least in part on
September 10, 2013, "Spec.") for their respective details.
2
Appeal2017-007868
Application 13/789,510
said estimated market value of the customer vehicle and the
market information; and
determining that the customer is a potential customer to
contact regarding the first vehicle based on said report.
Rejection.
Claims 1--48 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 7-10.
ANALYSIS
We have reviewed the rejections of Claims 1--48 in light of
Appellant's arguments that the Examiner erred. We consider Appellant's
arguments seriatim, as they are presented in the Brief, pages 16-69.
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken (Final Act. 10-12) and (ii) the Answer (Ans. 5-17) to the
extent they are consistent with our analysis below.
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 3-10; Ans. 3-
7. The Examiner finds the claims describe steps to determine potential
customers to whom to market particular products in an automated manner.
Final Act. 5. The Examiner finds the concept to which the claims are
directed is similar to other concepts that have been identified by the courts as
abstract, such as a fundamental economic practice, such as the performance
of a financial transaction, as well as an idea of itself, such as mental
processes or thinking which can be performed in the human mind, or by
manual means. Id. ( citing Alice Corporation Pty. Ltd. v. CLS Bank
3
Appeal2017-007868
Application 13/789,510
International, 134 S.Ct. 2347 (2014)). The Examiner finds the claims are
also directed to collecting and comparing known information and computing
mathematical relationships and formulas, such as generating a financial
analysis output. Id.
The Examiner finds the claims do not identify an inventive concept to
transform the nature of the claims into a patent-eligible application. See
Final Act. 6-7. Appellants argue the Examiner erred. See Br. 16-69.
Appellant does not file a Reply Br. Appellant has not persuaded us of error. 3
CLAIMS 1--48: NON-STATUTORY SUBJECT MATTER.
Prima Facie Case.
We conclude that the Examiner did initially set forth a prima facie
case of patent-ineligibility, i.e., the Examiner's reasons are sufficient to set
forth the basis for the rejection so as to put the patent applicant on notice of
the reasons why the applicant is not entitled to a patent. Cf In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
3 Appellant refers to a prior Appeal Brief, filed December 22, 2015 and
states that "to the extent not included herein, Appellant incorporates those
prior arguments by reference." Br. 18. R. 58. In order for arguments to be
considered by the Board, our rules require that they be included in the
Briefs. 37 C.F.R. § 4I.37(c)(l)(vii) ("Any arguments or authorities not
included in the brief or a reply brief ... will be refused consideration by the
Board, unless good cause is shown."); see also MPEP 1205.02 ("It is
essential that the Board be provided with a brief fully stating the position of
the appellant with respect to each ground of rejection presented for review in
the appeal so that no search of the Record is required in order to determine
that position. Thus, the brief should not incorporate or reference previous
responses. Here, Appellant attempts to incorporate by reference prior
responses. This does not comply with our rules and we will not consider
such previous responses.
4
Appeal2017-007868
Application 13/789,510
Preemption.
Appellant contends the claims do not seek to preempt or monopolize a
fundamental economic practice. Br. 26.
While preemption may denote patent ineligibility, its absence does not
demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We conduct
such an analysis below.
Improper Examination.
Throughout the Brief, Appellant argues the Examiner has improperly
applied various USPTO examination guidance documents. See e.g., Br. 54.
The Director of the United States Patent and Trademark Office, not the
Board, supervises examination and examiners. 4 If an examiner has
procedurally erred, the remedy lies exclusively in petitioning the Director for
supervisory review. 5 The Director has not delegated this supervisory
authority to the Board. 6
The Colson Claims.
4 35 U.S.C. 3(a)(2)(A) & 132(a).
5 37 C.F.R. § 1.181; cf 35 U.S.C. 6(b) (giving substantive review powers
directly to the board).
6 Cf 37 C.F.R. § 41.3 (delegating some petition authority to the Chief
Administrative Patent Judge, not the board) and § 41.50(b) ( delegating to the
board the discretion to enter a new ground, propose a curative amendment or
order additional briefing).
5
Appeal2017-007868
Application 13/789,510
Appellant contends Claims 1-24 of the present application were
identically copied from an application by Colson which issued as US
8,527,349. Br. 18. Appellant contends instant Claims 25--48 were
substantially copied from Colson. Id. Appellant contends the priority date
of the present application is five years prior to Colson and the claims find
written description support in the Specification. Id. Appellant argues the
Examiner makes no finding as to why the identical claims that were found
allowable in the '349 patent should now be rejected in the present
application. Id.
The USPTO did not have the benefit of the Alice decision during the
examination of the '349 patent. The '349 patent issued August 14, 2013,
about a year later, June 19, 2014, the Supreme Court promulgated its
decision in Alice. Appellant's arguments are unpersuasive because the state
of the law has changed subsequent to the issuance of the Colson patent.
35 USC§ 101
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "[l]aws of nature,
natural phenomena, and abstract ideas" from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 216
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v.
6
Appeal2017-007868
Application 13/789,510
Prometheus Labs., Inc., 566 U.S.66, 72-78 (2012); Diamond v. Diehr, 450
U.S. 175, 185 (1981). In view of the 2019 Revised Guidance,7 we conduct a
full analysis, including each step.
Under the mandatory Revised Guidance, we reconsider whether
Appellants' claims recite:
1. any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental
processes), and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim, (1) recites a judicial exception, and (2) does not integrate
that exception into a practical application, do we then reach the issue of
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.
Judicial Exceptions.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract idea
exception includes the following groupings of subject matter, when recited
7 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50-57 (January 7, 2019) ("Revised Guidance").
7
Appeal2017-007868
Application 13/789,510
as such in a claim limitation(s) (that is, when recited on their own or per se):
(a) mathematical concepts, 8 i.e., mathematical relationships, mathematical
formulas, equations, 9 and mathematical calculations 10; (b) certain methods
of organizing human activity-fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
8 Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of hedging ...
reduced to a mathematical formula ... is an unpatentable abstract idea.").
9 Diehr, 450 U.S. at 191 ("A mathematical formula as such is not accorded
the protection of our patent laws"); Parker v. Flook, 437 U.S. 584, 594
(1978) ("[T]he discovery of [ a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.").
10 SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
2018) (holding that claims to a "series of mathematical calculations based on
selected information" are directed to abstract ideas).
8
Appeal2017-007868
Application 13/789,510
instructions) 11; and ( c) mental processes 12----concepts performed in the
human mind (including observation, evaluation, judgment, opinion). 13
Claim 1, a method, recites, inter alia, a plurality of "determining" and
"identifying" steps. According to appellant, the claims improve search
algorithms by using tailored search-terms. See Br. 21. In accordance with
the Revised Guidance, we conclude these "determining" and "identifying"
steps are mental processes which are recited as such in the claims. Thus,
Claim 1 recites a judicial exception.
Integration of the judicial exception into a practical application.
Where, as here, we determine the claims recite a judicial exception,
we look to determine the presence of additional elements that integrate the
judicial exception into a practical application. The Revised Guidance is
"designed to more accurately and consistently identify claims that recite a
11 Alice, 573 U.S. at 219--20 (concluding that use of a third party to mediate
settlement risk is a "fundamental economic practice" and thus an abstract
idea); see Revised Guidance, p. 52, n.13 for a more extensive listing of
"certain methods of organizing human activity" that have been found to
abstract ideas.
12 If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind. See Revised Guidance, p. 52,
n. 14; see Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) ("[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.").
13 Mayo, 566 U.S. at 71 ("'[M]ental processes[] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work"' ( quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972))).
9
Appeal2017-007868
Application 13/789,510
practical application of a judicial exception [] and thus are not 'directed to' a
judicial exception." Revised Guidance, at 53.
The claims recite a practical application where an additional element
reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field. Revised Guidance, at
55.
For the reasons which follow, we conclude that Appellants' claims do
not integrate the judicial exception into a practical application. See MPEP
§§ 2106.05(a)-(c) and (e)-(h). We address these "practical application"
MPEP sections seriatim:
MPEP § 2106.05(a) "Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field."
"In determining patent eligibility, examiners should consider whether
the claim 'purport(s) to improve the functioning of the computer itself" or
"'any other technology or technical field."' MPEP § 2106.05(a).
Appellant contends the claims provide "unique solutions to problems
that specifically arise in the realm of computer networks," citing generally
DDR Holdings. 14 Br. 20. According to Appellant, computer searches of
automotive databases have become unwieldy because of the large number of
search results and because lesser candidate matches are not filtered yielding
an overinclusion of prospective results. Id. Appellant argues such
overinclusion is a problem arising specifically in the computer context. Id.
14 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
10
Appeal2017-007868
Application 13/789,510
According to appellant, the claims improve search algorithms by using
tailored search-terms. See Br. 21. In particular, Appellant argues the
improvement arises because the search-terms are tailored to the specific
customer. See Br. 38-9.
We are not persuaded. As Appellant characterizes his claims, we find
they are similar to those discussed in Intellectual Ventures I. "At step one of
the Alice framework, it is often useful to determine the breadth of the claims
in order to determine whether the claims extend to cover a 'fundamental ...
practice long prevalent in our system .... 'Alice, 134 S. Ct. at 2356. As
noted, the claim relates to customizing information based on (1) information
known about the user and (2) navigation data .... [T]ailoring is 'a
fundamental ... practice long prevalent in our system .... 'Id. There is no
dispute that newspaper inserts had often been tailored based on information
known about the customer-for example, a newspaper might advertise based
on the customer's location. Providing this minimal tailoring----e.g.,
providing different newspaper inserts based upon the location of the
individual-is an abstract idea. Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015). We further find the
specification describes, and the claims recite, "a desired function or
outcome, without providing any limiting detail that confines the claim to a
particular solution to an identified problem." Affinity Labs. Of Tex. LLC v.
Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). Contrary to
Appellants' arguments on appeal, we find the present claims are not directed
to a specific improvement to computer functionality. Rather, similar to
those of TL!, "they are directed to the use of conventional or generic
technology in a nascent but well-known environment, without any claim that
11
Appeal2017-007868
Application 13/789,510
the invention reflects an inventive solution to any problem presented by
combining the two." TL! Commc 'ns LLC v. AV Auto., L.L.C., 823 F.3d 607,
612 (Fed. Cir. 2016). Therefore, we conclude all claims on appeal are
directed to a patent-ineligible abstract idea, i.e., a fundamental economic
practice, as found by the Examiner (Final Act. 3-10; Ans. 3-7).
MPEP § 2106.05(b) Particular Machine.
At the outset, we note that the Bilski machine-or-transformation test is
only applicable to the method (process) claims on appeal. This section of
the MPEP guides: "When determining whether a claim recites significantly
more than a judicial exception, examiners should consider whether the
judicial exception is applied with, or by use of, a particular machine." See
Bilski v. Kappas, 561 U.S. 593, 604 (2010) ("[T]he machine-or-
transformation test is a useful an important clue, and investigative tool" for
determining whether a claim is patent eligible under § 101 ). MPEP §
2106.05(b).
MPEP § 2106.05(b) provides further guidance regarding what
constitutes a particular machine:
[A]s described in MPEP §2106.05(±), additional elements that invoke
computers or other machinery merely as a tool to perform an existing
process will generally not amount to significantly more than a judicial
exception. See, e.g., Versata Development Group v. SAP America, 793 F .3d
1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015) (explaining that in
order for a machine to add significantly more, it must "play a significant part
in permitting the claimed method to be performed, rather than function
12
Appeal2017-007868
Application 13/789,510
solely as an obvious mechanism for permitting a solution to be achieved
more quickly").
We find the claims on appeal are silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet, nor do Appellants direct our attention to such specific
limitations. "[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 573
U.S. at 223; see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an
Internet computer network' or on a generic computer is still an abstract
idea"). Applying this reasoning here, we conclude Appellants' claims are
not directed to a particular machine, but rather merely implement an abstract
idea using generic computer components. Thus, we conclude Appellants'
method claims fail to satisfy the "tied to a particular machine" prong of the
Bilski machine-or-transformation test.
MPEP § 2106.05(c) Particular Transformation.
This section of the MPEP guides: "Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing." "[T]ransformation and reduction of an article 'to a different state
or thing' is the clue to patentability of a process claim that does not include
particular machines." Bilski v. Kappas, 561 U.S. at 658 (quoting Benson,
409 U.S. at 70).
The claims operate to select certain electronic data, i.e., data about
various automobiles. The selection of electronic data is not a
"transformation or reduction of an article into a different state or thing
13
Appeal2017-007868
Application 13/789,510
constituting patent-eligible subject matter[.]" See In re Bilski, 545 F.3d 943,
962 (Fed. Cir. 2008) ( emphasis added). See also CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("The mere
manipulation or reorganization of data ... does not satisfy the
transformation prong."). Applying this guidance here, we conclude
Appellants' method claims fail to satisfy the transformation prong of the
Bilski machine-or-transformation test.
MPEP § 2106.05(e) Other Meaningful Limitations.
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment. 450 U.S. 175, 209
USPQ 1 (1981). 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. 450 U.S. at 177-78, 209 USPQ at 4. 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. 450 U.S. at
184, 187, 209 USPQ at 7, 8. In contrast, the claims in Alice Corp. v. CLS
Bank International did not meaningfully limit the abstract idea of mitigating
settlement risk. 573 U.S. _,134 S. Ct. 2347 (2014). In particular, the Court
14
Appeal2017-007868
Application 13/789,510
concluded that the additional elements such as the data processing system
and communications controllers recited in the system claims did not
meaningfully limit the abstract idea because they merely linked the use of
the abstract idea to a particular technological environment (i.e.,
"implementation via computers") or were well-understood, routine,
conventional activity.
MPEP § 2106.05(e).
"[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. Similarly as for Alice, we find
that "[t]aking the claim elements separately, the function performed by the
computer at each step of the process is '[p ]urely conventional."' Id. "In
short, each step does no more than require a generic computer to perform
generic computer functions." Id.
We agree with the Examiner's conclusion that Appellants' claims do
not add meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment. "Furthermore,
there are no actual improvements to another technology or technical field, no
improvements to the functioning of the computer itself, and there are no
meaningful limitations beyond generally linking the use of the abstract idea
to a particular technological environment evident in the claims." Ans. 4.
MPEP § 2106.05(±) Mere Instructions To Apply An Exception.
Appellants are not persuasive that their claims do any more than to
merely invoke generic computer components merely as a tool in which the
computer instructions apply the judicial exception.
15
Appeal2017-007868
Application 13/789,510
MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
The claimed method concludes by "determining that the customer is a
potential customer to contact regarding the first vehicle based on said
report." But, having so determined, the claims provide for no, not merely
insignificant, extra-solution activity.
MPEP § 2106.05(h) Field of Use and Technological Environment.
[T]he Supreme Court has stated that, even if a claim does not wholly
pre-empt an abstract idea, it still will not be limited meaningfully if it
contains only insignificant or token pre- or post-solution activity-such as
identifying a relevant audience, a category of use, field of use, or
technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir.
2013). We find the claims simply attempt to the abstract idea to a field of
use, i.e., customers of an autodealership.
We do not find Appellants' argument to be persuasive because "[ t ]he
courts have also identified examples in which a judicial exception has not
been integrated into a practical application." Revised Guidance, at 55. The
claims fail to recite a practical application where the additional element does
no more than generally link the use of a judicial exception to a particular
technological environment or field of use. Id. The mere application of an
abstract idea in a particular field is not sufficient to integrate the judicial
exception into a practical application. See id. at n. 32. In view of the
foregoing, we conclude the claims are "directed to" a judicial exception.
16
Appeal2017-007868
Application 13/789,510
Well-understood, routine, conventional.
Because the claims recite a judicial exception and does not integrate
that exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that is not "well-understood, routine, conventional" in the field. Revised
Guidance, at 56. The Examiner finds the further limitations are "well-
understood, routine, conventional." "The claims require no more than a
generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry." Ans. 4.
Appellant describes the computer and communications system
environment of their invention consistent with its being "well-understood,
routine, [and] conventional":
However, a skilled artisan will appreciate, in light of this
disclosure, that any module that can be implemented using
software to be executed on a general purpose computer can also
be implemented using a different combination of hardware,
software, or firmware.
Spec., ,r 27 ( emphasis added).
We find such "well-understood, routine, [and] conventional"
limitations fail to indicate the presence of an inventive concept.
Specified at a high level of generality.
It is indicative of the absence of an inventive concept where the
claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, at 56.
17
Appeal2017-007868
Application 13/789,510
Appellant contends "some of the technological benefits provided by
the present system, such as the system's unique advances in data mining and
in generating, analyzing, and presenting information to automotive dealers
from their databases." App. Br. 31.
However, claim 1 fails to recite any specific steps that may provide
"unique advances in data mining," nor does Appellant cite to the
Specification disclosure for the required specificity.
We find the limitations are specified at such a high level of generality
consistent with the absence of an inventive concept. Therefore, we conclude
that none of the claim limitations, viewed "both individually and as an
ordered combination," amount to significantly more than the judicial
exception in order to sufficiently transform the nature of the claims into
patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal
quotations omitted) (quoting Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of Claims 1--48
under 35 U.S.C. § 101.
DECISION
The rejection of Claims 1--48 under 35 U.S.C. § 101 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)(l)(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
18