Ex Parte Lamour et al

Patent Trial and Appeal Board

Jan 25, 2019

14341078 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/341,078 07/25/2014
35811 7590 01/29/2019
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Benoit Andre Lamour
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.
LFF-14-1075R 1662
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENOIT ANDRE LAMOUR
and ANAIS F ABIENNE CHRISTIANE DONY
Appeal 2017-005911
Application 14/341,078 1
Technology Center 3600
Before ANTON W. PETTING, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
1 According to Appellants, the real party in interest is LIPPE Administration
and Management, Inc. App. Br. 1.
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DECISION ON APPEAL
STATEMENT OF THE CASE2
Benoit Andre Lamour and Anais Fabienne Christiane Dony
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims
1-32, the only claims 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 providing new products and trading
strategies for expanding exchange for physicals ("EPP") transactions into
new markets. Specification para. 1.
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 for performing an exchange for physicals (EPP)
transaction as a part of a straight-through (STP) procedure, the
method comprising:
[ 1] generating, by a matching engine module of an electronic
exchange in communication with a processor, EPP data
comprising an amount of securities to be traded and a price;
[2] automatically activating, by the matching engine module, a
price allocation module when the EPP data is generated, the
activated price allocation module comprising specialized
instructions that, when executed, cause the price allocation
module to perform the functions of:
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed September 14, 2016) and Reply Brief ("Reply Br.," filed February
28, 2017), and the Examiner's Answer ("Ans.," mailed December 29, 2016),
and Final Action ("Final Act.," mailed April 14, 2016).
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[3] calculating a first delta percentage between the EPP
data and an index based on the amount, the price, and an
index value;
[ 4] calculating a residual delta based on the first delta
percentage and an index notional value;
and
[ 5] attributing the residual delta to the securities to form
modified EPP data;
[ 6] generating, by the matching engine module, at least one
EPP transaction based on the modified EPP data responsive to
the price allocation module forming the modified EPP data,
each of the at least one EPP transaction comprising a futures leg
and a cash leg;
and
[7] automatically executing and settling the futures leg and the
cash leg of each of the at least one EPP transaction as part of
the straight-through processing (STP) procedure.
Claims 1-32 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
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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STEPP-
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, ... 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 Servs. v. Prometheus Labs.,
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 the claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
3 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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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, we then finally determine 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 generating EPP data, using a price module to
calculate data, generating transaction data, and generating trade execution
and settlement data. Trade data are transactional data and so generation is
by way of reception from the transaction. 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 functional results 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. The next issue is whether it recites the
judicial exception of an abstract idea. To answer this, we next determine
whether it recites one of the concepts the Courts have held to be lacking
practical application, viz. mathematical concepts4, certain methods of
organizing human interactions 5, including fundamental economic practices
and business activities, or mental processes6•
4 See e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Tel. 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).
5 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.
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The Examiner determines the claims to be directed to a method of
organizing human activities, a fundamental economic practice, and a
mathematical relationship or formula. Final Act. 3.
The preamble to claim 1 recites that it is a method for performing an
exchange for physicals (EPP) transaction as a part of a straight-through
(STP) procedure. The steps in claim 1 result in pricing, executing, and
settling a financial instrument trade absent any technological mechanism
other than a conventional computer for doing so.
As to the specific limitations, limitation 1 recites conventional
receiving of EPP data, which advises one to apply generic functions to get to
these results. Limitations 2-7 are the only steps associated with performing
what the claim produces and recite a process to perform calculations ( steps
2-5), generate transaction data (step 6), and submit the transaction data to a
conventional trade process (step 7). These steps simply submit computed
trade data to some generic unspecified trading process. To advocate
submitting computed trade data to some generic unspecified trading process
is conceptual advice for results to be obtained and not technological
operations. That the process results in an executed trade is not sufficient to
be more than the abstract idea of making a trade.
The Specification at para. 1 recites that the invention relates to
providing new products and trading strategies for expanding EPP
2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed. Cir.
2018).
6 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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transactions into new markets. Thus, all this evidence shows that claim 1 is
directed to pricing, executing, and settling a financial instrument trade, i.e.
financial instrument trading. This is consistent with the Examiner's
determination.
The concept of financial instrument trading is a fundamental
economic practice long prevalent in our system of commerce. The use of
financial instrument trading is also a building block of ingenuity in financial
management. Thus, financial instrument trading is an example of a
conceptual idea subject to the Supreme Court's "concern that patent law not
inhibit further discovery by improperly tying up the future use of these
building blocks of human ingenuity." See Alice, 573 U.S. at 216 (internal
quote omitted). Claim 1 recites the idea of performing various conceptual
steps generically resulting in the financial instrument trading. As we
determined earlier, none of these steps recite specific technological
implementation details, but instead get to this result by advising one to
perform the steps by computer and use some particular pricing and
allocation formula. Thus, claim 1 is directed to financial instrument trading,
which is a fundamental economic practice.
This in tum is an example of fundamental economic principles or
practices and commercial or legal interactions as a certain method of
organizing human interactions, because financial instrument trading is the
most pervasive financial services practice and creates both a commercial and
legal interaction between trading parties.
The concept of financial instrument trading as advised to be done by
performing the steps by computer and using some particular pricing and
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allocation formula is an idea for how to induce participants to trade. The
steps recited in claim 1 are part of the trading process between parties.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Alice, 573 U.S. at 221
(intermediated settlement); Bilski, 561 U.S. at 611---6112 (risk hedging).
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 607,613 (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.
Alternately, this is an example of a mathematical concept because the
steps of calculating a first delta percentage between the EPP data and an
index based on the amount, the price, and an index value and calculating a
residual delta based on the first delta percentage and an index notional value
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perform a mathematical algorithm. The remaining steps are mere data
gathering and incidental post processing steps.
From this we conclude that at least to this degree, the claims are
directed to the abstract idea of financial instrument trading by advising one
to perform the steps by computer and use some particular pricing and
allocation formula.
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. 7
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, 573 U.S. at 217 ( citations omitted).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it' " is
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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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
featur[ 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 function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Step 1 is a pure data gathering step. Limitations
describing the nature of the data do not alter this. Steps 6 and 7 are
insignificant post solution activity, such as storing, transmitting, or
displaying the results. Although step 7 recites executing a trade, this is no
more than an insignificant advisory step to perform a generic human
organization function of trading. Steps 2-5 recite generic computer
processing expressed in functional terms to be performed by any and all
possible means and so present no more than abstract conceptual advice. 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
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interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellants' method claims simply recite the
concept of financial instrument trading as performed by a generic computer.
To be sure, the claims recite doing so by advising one to perform the steps
by computer and use some particular pricing and allocation formula. But
this is no more than abstract conceptual advice on the parameters for such
financial instrument trading and the generic computer processes necessary to
process those parameters, and does not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they affect an improvement in
any other technology or technical field. The 13 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 financial instrument trading under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of financial
instrument trading by advising one to perform the steps by computer and use
some particular pricing and allocation formula 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, apply or
8 The Specification describes using any programmable machine or machines
capable of performing arithmetic and/or logical operations. Spec. para. 10.
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use a judicial exception to affect a particular treatment or prophylaxis for a
disease or medical condition, implement a judicial exception with, or use a
judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, affect a transformation or reduction of a
particular article to a different state or thing, or apply or use 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 perform the
steps by computer and use some particular pricing and allocation formula to
achieve the functional result of financial instrument trading as distinguished
from a technological improvement for achieving or applying that result.
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. 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). See also In re Katz
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Interactive Call Processing Patent Litig., 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 Am., 898 F.3d at 1168.
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 or otherwise
held to be abstract. See Ultramercial, 772 F.3d at 715 (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Commc 'ns, 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.
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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
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
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of financial
instrument trading, without significantly more.
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APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 3---6 and Answer 3-5 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that
the Examiner explicitly acknowledges that the claims include
unconventional steps that provide improvements to a specific
field (e.g., electronic trading systems). However, the Examiner
does not appear to recognize that by virtue of these
acknowledgements, the claims are statutory under the USP TO' s
own guidelines. In addition, the Examiner is also failing to
recognize that this "field" is indeed a technical field, that the
improvements provided by Appellant's invention are indeed
computer functioning improvements and that the claims are
clearly directed to a technological solution to a technical
problem.
Reply Br. 3 ( emphasis omitted). Abstract ideas may be useful, new and non-
obvious. They are still abstract ideas. "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 Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (emphasis omitted).
The field of securities trading is not a technical field. It is a field in
finance, itself among the hallmarks of abstractions. The claims recite no
technological implementation details, except for abstract mathematical
formulas. "Adding one abstract idea ... to another abstract idea ... does
not render the claim non-abstract." RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (2017). The claims only recite a trading system to
the extent the claims call for applying the abstract idea on such a system by
any and all possible means.
We are not persuaded by Appellants' argument that
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by oversimplifying the claims to an "abstract idea of
performing exchange of physicals," the Examiner fails to
account for the specific requirements of the claims. Instead, the
Examiner merely identifies an alleged abstract idea and
characterizes the entirety of the claims as ''using conventional
generic computer functions." Such a characterization is
improper. Appellant respectfully notes for the Board that the
Federal Courts have repeatedly cautioned against
oversimplifying the claims by looking at them generally and
failing to account for the specific requirements of the claims
(see, e.g., McRO at 21). Additionally, the November 2016
Memo noted that Examiners "should not overgeneralize the
claim or simplify it into its 'gist' or core principles, when
identifying a concept as a judicial exception."
Reply Br. 3--4 ( emphasis omitted). As we determine supra, the claims are
directed to pricing, executing, and settling a financial instrument trade. The
claims recite no technological details, so they cannot be directed to some
technological means for pricing, executing, and settling a financial
instrument trade. The details Appellants refer to are abstract conceptual
advice as to how to price and allocate trades. These are financial steps, not
technological steps, and are as abstract as their financial conceptual
underpinnings.
We are not persuaded by Appellants' argument that
the fact that a claimed invention may hypothetically be
embodied on otherwise generic computers components does not
automatically render the invention ineligible. The proper focus
of the analysis should be on whether the claims include an
inventive concept, even if it only exists in the implementation
and execution of computer software/ instructions.
Reply Br. 4 ( emphasis omitted). The premise is good law, but the
conclusion does not follow. The proper focus is whether the claim is
directed to an abstract idea and the details do no more than recite applying
that idea on a generic computer. Again, what Appellants refer to as an
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inventive concept contains no technological implementation details, but
instead only abstract conceptual advice as to how to price, execute, and
settle a financial instrument trade.
We are not persuaded by Appellants' argument that
Appellant's invention clearly provides an inventive concept
(acknowledged by the Examiner on page 3 of the Examiner's
Answer and evidenced by the lack of any § 102 or § 103
rejections) that provides computer functioning improvements to
a computer system in the context of speed, data throughput,
volume capacity and scalability, and adds unconventional
limitations that clearly provide improvements to another
technical field and effects a transformation.
Reply Br. 5 (emphasis omitted). This is a repetition of the above inventive
concept argument and is equally unpersuasive here. As to speed and
scalability, this is exactly what a generic computer provides. As the Federal
Circuit said in another pricing context:
At best, the claims describe the automation of the
fundamental economic concept of offer-based price
optimization through the use of generic-computer functions.
Both the prosecution history and the specification emphasize
that the key distinguishing feature of the claims is the ability
to automate or otherwise make more efficient traditional
price-optimization methods. . .. But relying on a computer
to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).
We are not persuaded by Appellants' argument that
Appellant's claimed invention explicitly includes and executes
a novel set of rules that are used to perform EPP transactions
using an entirely electronic STP procedure that can be said to
"focus on a specific means or method that improves the relevant
technology" and that do not preempt all other rules to achieve
the same result deemed patent-eligible in McRO.
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Reply Br. 5---6. As to the preemption argument, that the claims do not
preempt all forms of the abstraction or may be limited to the abstract idea in
the e-commerce setting do not make them any less abstract. See OIP Techs.,
Inc., 788 F.3d at 1360-1361.
Further, " [ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo 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).
As to the argument regarding McRO (Reply Br. 5-6), the instant
claims are unlike the McRO claims that performed something physical, but
instead perform pricing and allocation by mathematical formulas.
Contrary to InvestPic' s contention, the claims here are
critically different from those we determined to be patent
eligible in McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016). The claims in McRO were
directed to the creation of something physical-namely, the
display of "lip synchronization and facial expressions" of
animated characters on screens for viewing by human eyes. Id.
at 1313. The claimed improvement was to how the physical
display operated (to produce better quality images), unlike
( what is present here) a claimed improvement in a mathematical
technique with no improved display mechanism. The claims in
McRO thus were not abstract in the sense that is dispositive
here. And those claims also avoided being "abstract" in another
sense reflected repeatedly in our cases (based on a contrast not
with "physical" but with "concrete"): they had the specificity
required to transform a claim from one claiming only a result to
one claiming a way of achieving it. McRO, 837 F.3d at 1314;
see Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305---06
(Fed. Cir. 2018); Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1241 (Fed. Cir. 2016); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1265 (Fed. Cir. 2016); see also
Two-Way Media, 874 F.3d at 1337; Secured Mail Solutions
LLC v. Universal Wilde, Inc., 873 F.3d 905, 909 (Fed. Cir.
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2017); RecogniCorp, 855 F.3d at 1326; Symantec, 838 F.3d at
1316.
SAP Am., 898 F.3d at 1167-1168.
CONCLUSIONS OF LAW
The rejection of claims 1-32 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
DECISION
The rejection of claims 1-32 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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