Ex Parte Fraser

Patent Trials and Appeals Board

Mar 29, 2019

14022568 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/022,568
147954 7590
Sanford Astor
650 S. Spring St.
Suite 1112
FILING DATE
09/10/2013
03/29/2019
Los Angeles, CA 90014
FIRST NAMED INVENTOR
Eileen A. Fraser
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.
VNMK0101PUS3 8571
EXAMINER
HAIDER,FAWAAD
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
03/29/2019 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 EILEEN A. FRASER
Appeal2018-003049
Application 14/022,568 1
Technology Center 3600
Before DAVID M. KOHUT, ERIC B. CHEN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1-26. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is the
inventor. App. Br. 2.
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Application 14/022,568
STATEMENT OF THE CASE
Appellant's invention relates to a method for selling goods and
services to a prospective customer and, specifically, to someone calling a
phone line that takes orders for a particular good or service. See, e.g., Fig. 2;
Spec. 2, 11. 25--48; 3, 11. 60-67. The invention uses prior call interactions,
with the current and other prospective customers, to determine whether a
current prospective customer has a low, medium, or high value and to assign
them a respective script (i.e., according to the value) used by the call
handler. See, e.g., id. at 3, 11. 49--54; 7, 11. 147-151; 8, 1. 181-9, 1. 198.
Claim 1, reproduced below, is representative of all claims. See 37
C.F.R. § 4I.37(c)(l)(iv) (representative claims).
1. A method for direct marketing of goods and services with
a prospective customer comprising:
(a) establishing a first communications link between a
prospective customer, making contact about goods or services,
using a communication device having a unique identification
number and a unique calling number identification and an
advertiser or service provider's communications device;
(b) automatically transmitting the unique identification
number associated with the prospective customer's
communication device to the advertiser or service provider's
communications device;
( c) establishing a second communications link between the
advertiser or service provider's communications device and an
advertiser or service provider's computer operably connected to
a tangible memory apparatus having a prospective customer
database compnsmg prospective customer information
associated with the unique identification number of the
prospective customer's communication device;
( d) the advertiser or service provider's computer pulling in
or developing the value or risk of the prospective customer based
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upon the prospective customer information in the tangible
memory apparatus, and also based upon the unique calling
number identification, and may pull in additional data from
external data sources identifying the prospective customer as a
high, medium or low value prospective customer, or a risk
prospective customer prior to the advertiser or service provider
communicating with the prospective customer;
( e) preparing and entering into the tangible memory
apparatus a plurality of scripts targeted for prospective
customers, for goods and services, each script being based upon
the prospective customer being a high, medium or low
prospective customer or a prospective customer having a history
of chargebacks, returns, bad credit cancellations or abusive
manners;
( f) the wording of the plurality of scripts differing between
high, medium and low prospective customers and prospective
customers having a history of chargebacks, returns, bad credit
cancellations or abusive manners;
(g) the advertiser's or service provider's computer
selecting, which script will be used by the advertiser or service
provider for communication with the prospective customer,
based on the prospective customer being a high, medium or low
value prospective customer, prior to any communication with the
prospective customer, while a prospective customer having a
history of chargebacks, returns, bad credit, cancellations, or
abusive manners 1s filtered for special handling.
REJECTION
Claims 1-26 stand rejected under 35 U.S.C. § 101 because the
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. Final Act. 2-5.
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PRINCIPLES OF LAW
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 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. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step 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. Kappas, 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 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (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 water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56
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U.S. 252, 267---68 (1854))); 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
Supreme 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 176; 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 Supreme 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. ( 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 tum 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 (internal citation
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (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.
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PTO GUIDANCE
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed.,
Rev. 08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54--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 to whether the claim:
(3) adds a specific limitation or combination of limitations
beyond the judicial exception that are not "well-understood,
routine, conventional" activity 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.
See Memorandum, 84 Fed. Reg. at 56.
ANALYSIS
Appellant argues all claims as a group. App. Br. 4--8. We select
claim 1 as representative, such that all claims stand or fall with
claim 1. 37 C.F.R. 4I.37(c)(l)(iv).
At the outset, we note Appellant's argument that "[t]he Examiner and
the office action have committed a procedural error, in failing to analyze all
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of the claim limitations." App. Br. 4 (emphasis added). We find
Appellant's argument unpersuasive for the following reasons.
First, allegations of procedural error are resolved by petition. 37
C.F.R. § 1.181(a)(l) (Petition from an examination requirement). The Board
"will not ordinarily hear a question that should be decided by the Director on
petition." See also Ex parte Frye, 94 USPQ.2d 1072, 1077-78 (BPAI 2010)
(precedential).
Second, even assuming this issue were before us, Appellant would not
prevail by merely ( as here) alleging a claim's rejection is erred per se if not
discussing a limitation. Appellant must rather show, and has not
persuasively argued, the prosecution record fails to provide notice under
35 U.S.C. § 132 for a particular claim requirement. See In re Jung,
637 F.3d 1356, 1363---65 (Fed. Cir. 2011) (explaining the notice
requirement).
Regarding step 1 of Alice, we conclude that the Examiner's findings
(Final Act. 2-7) are sufficient to place Appellant on notice as to steps 1 and
2 of Alice as required under 35 U.S.C. § 132. Further, Appellant's
understanding of the Examiner's rejection on this point was manifested by
their response to the Office Action. See App. Br. 4--8. Appellant did not
respond by asserting that they did not understand the Examiner's rejection.
Instead, Appellant presented arguments as to why the claims were directed
to patent eligible subject matter, which we address below. See Jung, 637
F.3d at 1363---65. On the issue of prima facie notice, particularly to
anticipation but also generally, our reviewing court was clear in Jung that:
There has never been a requirement for an examiner to make an
on-the-record claim construction of every term in every rejected
claim and to explain every possible difference between the prior
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art and the claimed invention in order to make out a prima facie
rejection.
637 F.3d at 1363. The Federal Circuit further stated:
"[Section 132] does not mandate that in order to establish prima
facie anticipation, the PTO must explicitly preempt every
possible response to a section 102 rejection. Section 132 merely
ensures that an applicant at least be informed of the broad
statutory basis for the rejection of his claims, so that he may
determine what the issues are on which he can or should produce
evidence." Chester, 906 F.2d at 1578 (internal citation omitted).
As discussed above, all that is required of the office to meet its
prima facie burden of production is to set forth the statutory basis
of the rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of§ 132. As the statute itself instructs, the
examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132.
Jung, 637 F.3d at 1363. Again, we conclude the Examiner's findings were
sufficient to meet this burden.
STEP]
Under "Step 1" of the analysis, we determine whether the claimed
subject matter falls within the four categories of patentable subject matter
identified by 35 U.S.C. § 101. Memorandum, 84 Fed. Reg. at 53-54. Claim
1 is directed to a method and, therefore, falls within the four categories of
patentable subject matter-a process.
STEP 2A, PRONG ONE
Under "Step 2A, Prong One" of the analysis, we determine whether
the claim recites a judicial exception. Id. at 54. Claim 1 recites the
following features covering abstract ideas:
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(a) establishing ... communications ... between [i] a
prospective customer, making contact about goods or services,
... having a unique identification number and a unique calling
number identification and [ii] ... [a] service provider[] ... ;
(b) ... transmitting the unique identification number ... to the
... service provider[] ... ;
( c) establishing ... communications ... between the ... service
provider[]. .. and ... service provider[ having] ... prospective
customer information associated with the unique identification
number of the prospective customer[] ... ;
( d) the ... service provider[] ... developing the value or risk of
the prospective customer based upon the prospective customer
information ... , and also based upon the unique calling
number identification, ... ;
( e) preparing and entering ... a plurality of scripts targeted for
prospective customers, for goods and services, each script being
based upon the prospective customer being a high, medium or
low prospective customer or a prospective customer having a
history of chargebacks, returns, bad credit cancellations or
abusive manners;
(f) the wording of the plurality of scripts differing between
high, medium and low prospective customers and prospective
customers having a history of chargebacks, returns, bad credit
cancellations or abusive manners;
(g) the ... service provider[] ... selecting, which script will be
used by the ... service provider for communication with the
prospective customer, based on the prospective customer being
a high, medium or low value prospective customer, prior to any
communication with the prospective customer, while a
prospective customer having a history of chargebacks, returns,
bad credit, cancellations, or abusive manners is filtered for
special handling.
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These limitations, as drafted, form a process that, under its broadest
reasonable interpretation, covers "[ c ]ertain methods of organizing human
activity- ... commercial ... interactions ... including ... advertising,
marketing or sales activities." Memorandum, 84 Fed. Reg. at 52. For
example, the activities include a retailer's rating of customers ( e.g., by their
profitability as measured from their frequency, quantity, and amounts of
purchases and chargebacks). The activities also include the retailer's use of
a call center that handles calls of prospective purchasers and, in doing so,
assists in the retailer's above modeling of customers by tracking and
reporting each caller's unique identification (their phone number), the
number being called (which corresponds to the good or service sought), and
the purchases and chargebacks recorded. The activities further include the
call center's use of the retailer's models and scripts to respectively rank and
guide a current customer based on whether their unique identification is
ascribed a high, medium, low, or unacceptable rank for the current number
being called (good or service sought).
The above-quoted limitations, as drafted, also form a process that,
under its broadest reasonable interpretation, covers "[ m ]ental processes-
concepts performed in the human mind ... including an ... evaluation,
judgment" (footnote omitted). Id. at 52. For example, tracking the
frequency and extent of a person's behavior, accordingly rating that person,
and consulting the records of other entities to perform such tracking and
rating are all activities that can be practically performed in the mind ( e.g., by
using 'pen-and-paper' to manually determine the frequency and extent of
purchases/chargebacks, to track those values, and to share those values). See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
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(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.").
For the foregoing reasons, we find claim 1 recites certain methods of
organizing human activity and mental processes (abstract ideas) recognized
by our recent Guidance.
STEP 2A, PRONG Two
Under "Step 2A, Prong Two," we determine whether the claim as a
whole integrates the recited judicial exception into a practical application of
the exception. Memorandum, 84 Fed. Reg. at 54. Claim 1 recites the
following additional elements (emphasis on computer technology):
(a) ... first communications link between a prospective
customer ... communication device . .. and [a] service
provider's communication device;
(b) automatically transmitting the unique identification number
... to the ... service provider's communications device;
( c) ... second communications link between the ... service
provider's communications device and ... service provider's
computer operably connected to a tangible memory apparatus
having a ... database comprising prospective customer
information associated with the unique identification number
... '
(d) the ... service provider's computer ... developing the
value or risk . .. based upon the prospective customer
information in the tangible memory apparatus, and also based
upon the unique calling number identification ... ;
( e) ... entering into the tangible memory apparatus a plurality
of scripts ... ;
(g) the ... service provider's computer selecting . .. [a] script
... based on the prospective customer ... value ... , ... [ and
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filtering] a prospective customer having a history of
chargebacks ....
These limitations are recited at a high level of generality and amount
to mere data gathering and manipulation, which is a form of insignificant
extra-solution activity, or to merely narrowing the recited abstract ideas. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011 ). These limitations do not impose any meaningful limits on practicing
the recited abstract ideas and fail to integrate the judicial exception into a
practical application. For example, the claims do not ( 1) improve the
functioning of a computer or other technology, (2) are not applied with any
particular machine ( except for a generic computer), (3) do not effect a
transformation of a particular article to a different state, and ( 4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See Memorandum, 84 Fed. Reg. at 54--55; MPEP §§ 2106.05(a}-
( c ), ( e }-(h ). Rather, the additional elements require only generic links,
computers, and memory that connect a call center (intermediary) to callers
(customers) and a database (retailer) in order to implement the concept of
using a call center to handle calls of customers, track and rate customers, and
ascribe scripts to customers based on their ratings.
Appellant argues claim 1 is analogous to the patent-eligible claims of
Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016), because the Bascom decision emphasized the claimed use
of filtering at a specific location and the claimed invention automatically
"filter[ s] certain prospective customers who have a history of chargebacks,
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returns, bad credit, cancellations or abusive manners for special handling."
App. Br. 6. We disagree with Appellant's characterization of the Bascom
decision; it did not tum on what was filtered but rather how, i.e., the
mechanism by which, the filtering was performed. Bascom, 827 F.3d at
1352. Namely, the Bascom decision turned on whether the specific
mechanism (particularly its location) resulted in "claims [that] do not merely
recite the abstract idea of filtering content along with the requirement to
perform it on the Internet [and] generic computer components." Id. at
1350. Appellant does not identify, in claim 1 or anywhere, filtering means
that do more than perform the abstract idea of filtering low value customers
via generic computer technology.
Appellant also argues: "Not human, nor machine, can determine
which script is the best script tailored to a caller, without the use of this
invention. You simply cannot decide, and therefore don't have the benefit,
without this system. You can't tell which script to use without this
invention." App. Br. 4. The argument does not present persuasive evidence
as to why a call handler cannot pick a best-fit script for a caller unless using
the invention and, therefore, is unpersuasive.
Appellant similarly argues:
[O]n what basis is the person going to decide between
High, Medium, Low, Risk in a nanosecond? This process
actively uses 500-1,000 data points across 639,000,000 ANI
phone numbers in order to determine the correct script within
7 /10th of a second for a single campaign, advertising one
product, for instance.
App. Br. 5. Assuming these parameters are correct, the argument shows
only that the claimed invention is performed by one or more computers, a
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computer network, etc. "[O]ur precedent is clear that merely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea." Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370
(Fed. Cir. 2015).
For the foregoing reasons, we find claim 1 is directed to the recited
abstract ideas (e.g., methods of organizing human activity and mental
processes) and does not integrate the judicial exceptions into a practical
application.
STEP2B
We next evaluate the claim under "Step 2B" to determine whether the
claim provides an "inventive concept" (e.g., recites significantly more than
the abstract idea). Memorandum, 84 Fed. Reg. at 56.
As recognized by the Memorandum, an "inventive concept" under
Alice step 2 can be evaluated based on whether an additional element or
combination of elements:
(1) adds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present (see MPEP § 2106.05(d)); or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
See Memorandum, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellant's claim that adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
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field. See id. The detailed features of claim 1 and their combination----e.g.,
the use of computer technology (links and database) to share a customer's
identification, called numbers, behavior (purchase/chargeback), rating
modeled from this data, and respective script assigned to the rating (see, e.g.,
App. Br. 8}-are forms of insignificant extra-solution activity or merely
narrow the recited abstract ideas. The detailed features fail to cause the
claim to recite "significantly more" than the abstract ideas to which the
claim is directed. There is not an improvement to the functioning of the
computer itself or to any other technology or technical field.
We agree with the Examiner that the claimed computer technology,
for example, constitutes only generic computer hardware performing
conventional computer functions, such as those listed by past PTO Guidance
for 35 U.S.C. § 101. Final Act. 5 (citing the July 2015 Update on Subject
Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015), available at https://
www.uspto.gov/sites/default/files/documents/iegjuly-2015-update.pdf); see
also MPEP § 2106.05( d)(II) (presenting a substantially similar list of
computer functions that are judicially-recognized as conventional and cited
by the Berkheimer Memorandum (see supra fn. 2), at Section III.2, as
support for such a finding under Step 2B). 2 We also agree with the
Examiner that the claimed computer technology is similar to:
2 The Memorandum supersedes the July 2015 guidance with respect to
determining whether claimed subject matter has been judicially-recognized
as an abstract idea. 84 Fed. Reg. at 51-52. The Memorandum does not
supersede the July 2015 guidance's identification of computer functions that
are judicially-recognized as "conventional functions when they are claimed
in a merely generic manner" ( at page 7 of the guidance's above-cited web
address).
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[Alice's] example of computer functions and components that
have been treated as conventional[, which] describes [(i)] the
use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions ... and [(ii)]
notes that nearly every computer has a "data processing
system" with a "communications controller" and a "data storage
unit."
Ans. 4; see also Alice, 573 U.S. at 225. As such, the claim fails to recite
significantly more than the recited abstract ideas. See Alice, 573U.S. at 220.
Appellant argues: "Since the Examiner has found that the
claims include limitations that are not commonly known in the art, no prior
art is cited[;] they therefore show inventive concept." App. Br. 5. Although
the second step in the Alice/Mayo framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or
non-obviousness, but rather a search for "'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,
573 U.S. at 217-18. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Appellant further argues:
Claim 1 recites that, in addition to utilizing the customer['s
unique identification number] ... to pull or develop a
predictive modeling score or customer value, the [ calling
number identification (i.e.,] number that the customer was
calling[)] is used to further customize that modeling score or
customer value or risk. An example would be, if a customer
had called about a bathroom cleaner on one call, and the same
person called about life insurance, and then called about
jewelry, this person would likely have three different customer
values. This caller may be Low value for a bathroom cleaner,
High for life insurance, and a Risk category for jewelry. Thus,
by utilizing both the customer information and the calling
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number, the salesperson arrives at a more accurate modeling
score or customer value or risk.
App. Br. 5---6; see also id. at 7-8. Even assuming the claimed combination
of customer's unique identification number and calling number
identification arrives at a more accurate customer value, this is merely
narrowing the abstract idea by further tailoring the script to the caller (i.e.,
additional tailoring to what the caller wants, as indicated by the number
being called). See, e.g., Intellectual Ventures, 792 F.3d at 1370 (Tailoring
an advertisement that considers the demographic of its audience and tailors
the advertisement presented to the user based on that information is a
"fundamental ... practice long prevalent in our system."). The alleged
improvement therefore lies in the abstract idea and is, accordingly, not an
"inventive concept" with respect to that meaning for analyses under
35 U.S.C. § 101. SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161, 1170
(Fed. Cir. 2018) ("There is, in short, nothing 'inventive' about any
claim details ... that are not themselves in the realm of abstract
ideas. . . . Under ... § 101, patent law does not protect such claims, without
more, no matter how groundbreaking the advance.").
In addition to repeating some of the above arguments, the Reply Brief
also argues the Examiner "make[ s] his case" by relying upon Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). Reply Br. 2.
The Examiner's prima facie case does not rest upon Electric Power, but
rather upon his finding that claim 1 recites only fundamental economic
practices that are implemented on generic computer hardware performing
conventional computer functions. Ans. 3-5; Final Act. 2-5. The cite to
Electric Power is merely to support his correct position that mere
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"classification and manipulation of data ... to gather and analyze
information" for these ineligible practices does not transform the claim into
a patent-eligible invention. Ans. 3--4; accord Elec. Power, 830 F.3d at 1355
("We have repeatedly held that such [ readily available] invocations of
computers and networks that are not even arguably inventive are insufficient
to pass the test of an inventive concept in the application of an abstract
idea." (internal quotation marks and citations omitted)).
For the foregoing reasons, we find claim 1 appends only
well-understood, routine, conventional activities previously known to the
industry, and specified at a high level of generality, to the judicial
exceptions.
Conclusion
Because claim 1 is directed to an abstract idea and fails to recite
significantly more than the abstract idea, we sustain the Examiner's
35 U.S.C. § 101 rejection of claim 1 and claims 2-26, which fall with claim
1.
DECISION
The Examiner's decision rejecting claims 1-26 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).
AFFIRMED
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