Ex Parte Luwang et al

Patent Trials and Appeals Board

May 30, 2019

14076195 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/076,195 11/09/2013
50400 7590 06/03/2019
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Tianyu Luwang
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.
2058.909US 1 8860
EXAMINER
ERB,NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIANYU LUWANG, MENGJIAO WANG,
and WEN-SY AN LI
Appeal2018-003760
Application 14/076,195
Technology Center 3600
Before JOHN A. EV ANS, JAMES W. DEJMEK and
MICHAEL M. BARRY, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final rejection of claims 1-20. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 2
1 Appellants state the real party in interest is SAP SE. App. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief filed August 16, 2017 ("App. Br."); the Reply Brief
filed February 23, 2018 ("Reply Br."); the Examiner's Answer mailed
December 26, 2017 ("Ans."); the Advisory Action mailed May 26, 2017
("Adv. Act."); the Final Action mailed March 13, 2017 ("Final Act."); and
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Application 14/076,195
STATEMENT OF THE CASE
The claims relate to a method for managing package delivery by
constructing and using a tree data structure of feasible delivery routes. Spec.
,r,r 19, 41--46, and Fig. 7.
Invention
Claims 1, 10, and 19 are independent. An understanding of the
invention can be derived from a reading of claim 1, which is reproduced
below:
1. A computerized method for managing package
delivery, the method comprising:
establishing, using at least one hardware processor, a
root node in a tree data structure representing a home base
and comprising a capacity of a corresponding delivery
vehicle;
setting, using the at least one hardware processor, an
index to an initial value, the index representing a level of
the tree data structure;
adding, using the at least one hardware processor,
one or more unassigned delivery points as a child node of
the root node in the tree data structure if a path to the
corresponding unassigned delivery point is feasible;
setting, using the at least one hardware processor, the
index to the initial value plus one;
adding, using the at least one hardware processor, a
next level delivery point as a child node of a node in the
tree data structure in a tree leveLndex if the delivery point is
unassigned and a path to the next level delivery point is
feasible, the adding step being repeated for each
the Specification filed November 9, 2013 ("Spec.") for their respective
details.
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combination of unassigned delivery point and node in the
tree leveLndex;
incrementing, using the at least one hardware
processor, the index; and
repeating, using the at least one hardware processor,
the adding a next level delivery point and the incrementing
until the index is greater than a count of delivery points.
Rejection
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter without significantly more. Final Act. 5---6.
ANALYSIS
We have reviewed the rejections of Claims 1-20 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
We are not persuaded that Appellants identify reversible error. Upon
consideration of the arguments presented in the Appeal Brief and Reply
Brief, we agree with the Examiner that all the pending claims are
unpatentable. We adopt as our own the determinations and reasons set forth
in the rejection from which this appeal is taken and in the Examiner's
Answer, to the extent consistent with our analysis below. We provide the
following explanation to highlight and address specific arguments and
determinations primarily for emphasis. We consider Appellants' arguments
seriatim, as they are presented in the Appeal Brief pages 8-27, and Reply
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Brief pages 2-12.
CLAIMS 1-20: INELIGIBLE SUBJECT MATTER
Appellants argue all claims as a group in view of the limitations of
Claim 1 and the commensurate limitations of claims 10 and 19. See App.
Br. 8-27; see also Reply Br. 2-12. Therefore, we decide the appeal of the
section 101 rejections with reference to claim 1, and refer to the rejected
claims collectively herein as "the claims." See 37 C.F .R. § 41.37 ( c )(1 )(iv);
see also In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Prima Facie Case I Application of Examination Guidelines.
Appellants contend the Examiner did not clearly and specifically
explain why all claims are "directed to" the alleged abstract idea of
"generating a delivery route," as required for a prima facie eligibility
rejection. App. Br. 9-10.
We conclude 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). For example, in rejecting claims 1-
20 as directed to the abstract idea of "generating a delivery route," the
Examiner explains that "the steps of establishing a root node, setting an
index to an initial value, adding one or more unassigned delivery points,
setting the index to the initial value plus one, adding a next level delivery
point, incrementing the index, and repeating the adding and the incrementing
... describe the concept of 'generating a delivery route."' Final Act. 5.
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Here, the Examiner explains the recited step of adding unassigned delivery
points to a tree is equivalent to setting forth a series of delivery stops on a
route. Id. at 2. Moreover, the Examiner specifies that the additional
limitations of the claims-i.e., a computer, hardware processor, processor,
memory, instructions, non-transitory machine-readable storage medium, and
machine----do not amount to significantly more than the abstract idea
because, for example, they are recited at a high level of generality and
perform merely generic computer functions routinely used in computer
applications. Id. at 5. The Examiner further explains that the additional
limitations recited in dependent claims 2-20
do not add significantly more to the abstract idea because they
either: ( 1) add additional abstract ideas ( see the mathematical
expressions of claim 2, for example); and/or (2) add steps to the
abstract idea (see claim 5 for example; a step that is part of an
abstract idea cannot also be significantly more than that same
abstract idea); and/or (3) adds further details to the previously
mentioned abstract idea (see claim 20 for example which adds
detail regarding an unvisited delivery point a detail that is part
of an abstract idea cannot also be significantly more than that
same abstract idea).
Id. at 6.
In view of the foregoing, we are unpersuaded by Appellants'
argument. For similar reasons, we are unpersuaded that the Examiner
erred by using a short-hand summary statement in concluding the
claims are directed to the abstract idea of "generating a delivery
route." App. Br. 10-12. As the Examiner explains, "the short-hand
summary statement of 'generating a delivery route' is not intended to
define every detail of the abstract idea; rather, those details are set
forth by the underlying functional steps which perform the abstract
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idea, with all of their corresponding details." Ans. 5. Further, the
Examiner's approach is consistent with those of the Federal Circuit
and Supreme Court, which routinely characterize recited claim steps
that constitute an abstract idea as a term or phrase. See, e.g., Bilski,
561 U.S. at 611 ("Claims 1 and 4 in [P]etitioners' application explain
the basic concept of hedging, or protecting against risk. ... The
concept of hedging, described in claim 1 and reduced to a
mathematical formula in claim 4, is an unpatentable abstract idea, just
like the algorithms at issue in Benson and Flook.").
To the extent Appellants argue the Examiner has applied various
USPTO examination guidance documents improperly (see, e.g., App. Br. 8,
9-10, 13-15, and 17-18), such alleged procedural errors by the Examiner
may not be addressed through appeal, but instead by petitioning the Director
of the United States Patent and Trademark Office for supervisory review.
See 3 7 C.F .R. § 1.181. The Director has not delegated this supervisory
authority to the Board.
Preemption.
Appellants contend the claims do not seek to tie up any judicial
exception so that others cannot practice it. App. Br. 24. Although
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
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analysis below. In response to Supreme Court and Federal Circuit opinions,
the USPTO has issued updated guidance. We review this appeal within the
framework of the Revised Guidance, which specifies and particularizes the
Mayo/Alice framework.
35 u.s.c. § 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 35 U.S.C. § 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.
Prometheus Labs., Inc., 566 U.S.66, 72-78 (2012); Diamond v. Diehr, 450
U.S. 175, 185 (1981).
Under the mandatory 2019 Revised Guidance, 3 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
activity such as a fundamental economic practice, or mental
3 The US PTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84(4) Fed. Reg. 50-57 (January 7, 2019) ("Revised Guidance," and/or "Rev.
Guid.").
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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 simply appends well-understood, routine,
conventional activities previously known to the industry, specified at
a high level of generality, to the judicial exception.
A. 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
as such in a claim limitation(s) (that is, when recited on their own or per se):
(a) mathematical concepts, 4 i.e., mathematical relationships, mathematical
4 Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of hedging ...
reduced ... to a mathematical formula .... is an unpatentable abstract
idea.").
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formulas, equations, 5 and mathematical calculations; 6 (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
instructions);7 and (c) mental processes 8----concepts performed in the human
mind (including observation, evaluation, judgment, opinion). 9
5 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.").
6 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).
7 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 also Rev. Guid. 52 n.13 (For a more extensive listing of"certain
methods of organizing human activity" that have been found to be abstract
ideas.).
8 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 Rev. Guid. 52 n.14; see also 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.").
9 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
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The limitations of claim 1 are analyzed in Table I as they correspond
to abstract ideas as set forth in the Revised Guidance:
Table I
[a] 10 A . . . method for managing
package delivery, the method
compnsmg:
[b] establishing ... a root node in a tree
data structure representing a home base
and comprising a capacity of a
corresponding delivery vehicle;
[ c] Setting . . . an index to an initial
value, the index representing a level of
the tree data structure;
[ d] Adding ... one or more unassigned
delivery points as a child node of the
root node in the tree data structure if a
path to the corresponding unassigned
deliver point is feasible;
[ e] Setting ... the index to the initial
value plus one;
(b) Certain methods of organizing
human activity----e.g., managing
personal behavior or relationships or
interactions between people (including
social activities, teaching, and
following rules or instructions). Rev.
Guid. 52, 52 n.13.
(a) Mathematical concepts-
mathematical relationships,
mathematical formulas or equations,
mathematical calculations. Id. at 52,
52 n.12
(a) Mathematical concepts-
mathematical relationships,
mathematical formulas or equations,
mathematical calculations. Id.
(a) Mathematical concepts-
mathematical relationships,
mathematical formulas or equations,
mathematical calculations. Id.
(a) Mathematical concepts-
mathematical relationships,
mathematical formulas or equations,
mathematical calculations. Rev. Guid.
52, 52 n.12.
[f] Adding ... a next level delivery point (a) Mathematical concepts-
as a child node of a node in the tree data mathematical relationships,
technological work.") ( quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
10 Indicia, e.g., "[a]," added to facilitate discussion.
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structure in a tree leveLndex if the delivery
point is unassigned and a path to the next
level delivery point is feasible;
[g] the adding step being repeated for
each combination of unassigned delivery
point and node in the tree leveLndex;
[i] incrementing ... the index; and
Li] Repeating ... the adding a next level
delivery point and the incrementing until
the index is greater than a count of
delivery points.
mathematical formulas or equations,
mathematical calculations. Id.
This limitation may narrow the scope
of the abstract idea, but it does not
amount to an "inventive concept" that
transforms the claim into a patent-
eligible application of the otherwise
ineligible abstract idea. Id. at 52 n.12,
54, 54 n.22, 56.
(a) Mathematical concepts-
mathematical relationships,
mathematical formulas or equations,
mathematical calculations. Id. at 52,
52 n.12
This limitation may narrow the scope
of the abstract idea, but it does not
amount to an "inventive concept" that
transforms the claim into a patent-
eligible application of the otherwise
ineligible abstract idea. Rev. Guid. 52
n.12, 54, 54 n.22, 56.
Under their broadest reasonable interpretation, limitations [ a ]-Li] of
claim 1 ( as recited in Table I above) recite a method of organizing human
activity (managing package delivery) by implementing a mathematical
concept ( constructing and using a tree data structure }-akin to solving the
traveling salesman problem by using a branch-and-bound search method.
Like Appellants' claim 1, a branch-and-bound search method can be
employed to determine a minimum cost route among a plurality of route
options by implementing a tree of nodes having levels of nodes and cost
edges ( or branches), such that the tree of nodes represents possible paths
between a root node and various destination ( child, grandchild, etc.) nodes.
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See, e.g., Robert M. Stark and Robert L. Nicholls, Mathematical
Foundations for Design - Civil Engineering Systems - 7.2 Traveling-
Salesman Problem 238--44 (Dover Publ. 2005). Similarly, Appellants'
invention constructs and uses a tree data structure including a root node and
a plurality of child nodes (unassigned, feasible delivery points) to determine
optimal delivery routes based on objectives such as maximizing revenue,
maximizing profit, minimizing travel and/or delivery time, and minimizing
travel distance. See e.g., Spec. ,r,r 14, 35 (see claim 1), Fig. 5 (showing an
exemplary tree data structure).
Contrary to Appellants' arguments, we are unpersuaded the Examiner
erred in citing the Maucorps 11 decision to support its conclusion that
Appellants' claims recite an abstract idea. See Ans. 7-8; see also App. Br.
13-15. In Maucorps, the claimed invention related to determining the
optimum number of times a sales representative for a business should visit
each customer over a period of time. Maucorps, 609 F.2d at 482-83. Even
if the specific purpose and mathematical operations of the claims were to
differ from those in Maucorps, both use mathematical concepts to make
optimal business determinations and, thus, recite patent-ineligible abstract
ideas, viz., mathematical concepts and methods of organizing human
activity. See id. at 485-86. As the Examiner points out, there is no
requirement that the claims recite limitations identical to those of another
claim previously held to be a patent-ineligible abstract idea by the courts.
See Ans. 8.
11 Application of Maucorps, 609 F.2d 481 (CCPA 1979).
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Therefore, we conclude claim 1 recites a method of organizing human
activity by implementing a mathematical concept, which is a combination of
concepts the Revised Guidance identifies as abstract ideas. Here, we note
that merely combining abstract ideas does not render the combination any
less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327
(Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea .
. . does not render the claim non-abstract."); see also Fair Warning, 839 F.3d
at 1093-94 ( determining the pending claims were directed to a combination
of abstract ideas). 12
B. Integration of the judicial exception into a practical application.
Where, as here, we determine the claim recites 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
practical application of a judicial exception[] and thus are not 'directed to' a
judicial exception." Rev. Guid. 53. The Revised Guidance identifies several
exemplary considerations for when a claim may recite an additional element
12 Claim 1 expressly recites the construction of a tree graph. See e.g.,
limitations [b], [c], [d], [f], and [g]. The Board recently held similar tree-
graph claims to be directed to non-statutory subject matter. Ex Parte Paul
Morinville, No. 2016-008102, 2018 WL 1029147 (PTAB. Feb. 22, 2018)
("The subject matter of claim 1, as reasonably broadly construed, is drawn to
a business administration concept for management of a business; that is,
claim 1 is focused on a methodology of creating a functional organizational
structure from a hierarchical operational structure and controlling access to
business processes based on the created functional structure.") ( affirmed In
re Paul Morinville, 2018 WL 1029147, 2018-1895 (Fed. Cir. 2019).
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( or combination of elements) such that the judicial exception has been
integrated into a practical application, which we address below. See id.
at 55.
Appellants contend "the claims simply aren't directed to an abstract
idea, but rather recite an improvement in information processing by using a
novel mapping to assign delivery points to nodes in the tree data structure
which improves not only the functioning of the computer itself, but also
another area of technology." App. Br. 18. More specifically, Appellants
assert that like the claims in Enfish, the claims recite "an improvement to the
area of information processing, which is an improvement to the functioning
of the computer itself." Id. at 16-17 ( citing Enfish, LLC v. Microsoft
Corporation, 822 F.3d 1327 (Fed. Cir. 2016)). Additionally, Appellants
assert the claims "can also be used ... for the efficient delivery of multicast
messages in a network environment where a packet may traverse from one
recipient in the network to another recipient" (id. at 18), "is suitable for a
variety of data storage systems and applications, such as routing
applications" (id. at 19), and "enable[ s] the computer to manage the package
delivery and, like the rules of McRO, constitute an improvement in
technology." App. Br. 19 (citing McRO, Inc. v. Bandai Namco Games Am.,
837 F.3d 1299 (Fed. Cir. 2016)).
Appellants further contend the claims "constitute a non-conventional
and non-generic arrangement of elements," "recite a combination of
operations and elements that constitute a particular, practical application of
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[an] abstract idea," and "like the claims in BASCOM, ... carve out a
particular way to manage package delivery." 13 App. Br. 23, 26.
For the reasons that 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 have considered the additional elements
both individually and "as an ordered combination," and determine that "the
computer components ... 'ad[d] nothing ... that is not already present when
the steps are considered separately"' and simply recite a method of
organizing human activity by implementing a mathematical concept on a
generic computer. Alice, 573 U.S. at 225 (quoting Mayo, 566 U.S. at
79). We address the relevant "practical application" MPEP sections below:
MPEP § 2106.05(a) "Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field." & MPEP § 2106.05(±)
"Mere Instructions To Apply An Exception."
"In determining patent eligibility, [E]xaminers 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).
Although the claims recite various computing elements, Appellants
present no persuasive evidence that practicing the claims results in an
improvement to the functioning of the computer. The claim is silent
regarding specific limitations directed to an improved machine, apparatus,
computer, hardware processor, memory, non-transitory machine readable
storage medium, network, database, Internet, etc.
13 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1352 (Fed. Cir. 2016).
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Appellants purport an improvement in information processing and the
functioning of a computer by using a novel mapping to assign delivery
points to nodes in the tree data structure, but these functions are merely part
of an abstract idea, viz., a mathematical concept, which is being applied on a
computer. See Rev. Guid. 55 n.30 ( citing Benson, 409 U.S. 63) (holding that
merely implementing a mathematical principle on a general-purpose
computer is a patent-ineligible abstract idea). In other words, unlike the
claims in Enfish and McRO, claim 1 is not focused on an improvement to
computers or software as tools, but rather uses a computer as a tool to
execute the judicial exception. See Rev. Guid. 55, 55 n.30; see also Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
In order to transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do "more than
simply stat[e] the uudicial exception] while adding the words 'apply it.'"
Alice, 573 U.S. at 221 ( quoting Mayo, 566 U.S. at 72).
We are also unpersuaded by Appellants' contention that the claims are
directed to an improvement in another technology. Appellants do not
present any persuasive evidence in either the claims or the Specification that
describes with specificity the purported advances in the package delivery
management, networking, data storage, or routing technologies. See, e.g.,
Final Act. 9 ("Examiner could not find any reference in Appellant's
[S]pecification to the claims being used for network packets."); see also
Ans. 8-9 ( distinguishing Appellants' claims from those in Enfish, which
were directed to improvements in data storage).
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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."
MPEP § 2106.05(b); see also Bilski, 561 U.S. at 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
35 U.S.C. § 101.).
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
(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 solely
as an obvious mechanism for permitting a solution to be
achieved more quickly.").
The claims recite computing elements including a computerized
method using at least one hardware processor ( claim 1 ), an apparatus
comprising a processor and a memory ( claim 10), and a non-transitory
machine readable storage medium comprising instructions executed by one
or more processors of a machine ( claim 19). But the claims are silent
regarding specific limitations directed to a particular machine, nor do
Appellants direct our attention to such specific elements in the claims or
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Specification. "[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, 827 F.3d at 1348 ("An abstract
idea on 'an Internet computer network' or on a generic computer is still an
abstract idea."). Applying this reasoning here, we conclude the claims are
not directed to a particular machine, but rather merely implement a
combination of abstract ideas using generic computer components. Thus,
we conclude the 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, 561 U.S. at 658 (quoting Benson, 409 U.S. at
70).
Claim 1 recites a series of steps for constructing and using a tree data
structure of nodes and paths. These data operations are not a transformation
or reduction of an article into a different state or thing constituting patent-
eligible subject matter. "The mere manipulation or reorganization of data
... does not satisfy the transformation prong." CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). Applying this
guidance here, we conclude claim 1 fails to satisfy the transformation prong
of the Bilski machine-or-transformation test.
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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 (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. 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. 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, 110 USPQ2d 1976 (2014). In
particular, the Court 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.
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We agree with the Examiner's conclusion that the claims do not add
meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment. See Final Act. 5-6; see
also Ans. 10. As the Examiner explains, the additional limitations of claims,
1, 10, and 19 are nothing more than generic computer components, which
does not amount to significantly more than an abstract idea. See Final
Act. 6; see also Ans. 10.
Contrary to Appellants' arguments, the claims are unlike those in
BASCOM, which "carve[ d] out" a specific way of network filtering by
"claiming a technology-based solution (not an abstract-idea-based solution
implemented with generic technical components in a conventional way) to
filter content on the Internet that overcomes existing problems with other
Internet filtering systems." BASCOM, 827 F.3d at 1352. Appellants'
claims, by comparison, simply use computer-related technology for its
ordinary purposes-the solution provided by the claims arises from the steps
that implement a mathematical concept, not from any combination of
technology limitations.
Appellants also dispute the Examiner's determination that the claimed
"tree data structure" is part of the alleged abstract idea and thus cannot be
determined to be "significantly more" under step two of the Mayo/Alice
framework. Reply Br. 5---6. To support their position, Appellants point to
BASCOM as allegedly finding that computer network and Internet
components were part of the abstract idea and that their unique arrangement
amounted to "something more" than the abstract idea. Reply Br. 5. We are
unpersuaded of error. First, as the Examiner points out, the claimed tree
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data structure is not a physical component but rather merely an abstract
representation of data that is part of the recited abstract idea. See Ans. 5-6.
Moreover, in BASCOM, the Federal Circuit treated the recited network and
Internet components not as part of the abstract idea of filtering content, but
as additional elements for consideration under step 2 of the Mayol Alice
framework as "significantly more" than the abstract idea. BASCOM, 827
F.3d at 1348 ("An abstract idea on 'an Internet computer network' or on a
generic computer is still an abstract idea."), 1349-1352 ("We agree with the
district court that the limitations of the claims, taken individually, recite
generic computer, network and Internet components, none of which is
inventive by itself' but "the ordered combination of recited steps amounted
to a particular application of the abstract idea.").
Further, Appellants do not persuasively rebut the Examiner's
determination that dependent claims 2-9, 11-18, and 20 do not add
significantly more than the abstract idea because they "( 1) add additional
abstract ideas ... and/or (2) add steps to the abstract idea ... and/or (3) adds
[sic] further details to the previously mentioned abstract idea." Final Act. 6.
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).
Claim 1 's additional recitation of a computerized method using at
least one hardware processor fails to integrate the abstract ideas into a
practical application because it does no more than generally link the use of a
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judicial exception to a particular technological environment or field of use,
that is, a computerized method. 14 See Rev. Guid. 55. For similar reasons,
claim lO's recitation of an apparatus comprising a processor and a memory
and claim 19's recitation of a non-transitory machine readable storage
medium comprising instructions executed by one or more processors of a
machine fail to integrate the abstract ideas into a practical application.
In view of the foregoing, we conclude the claims are "directed to" a
judicial exception, namely a combination of abstract ideas.
C. Well-understood, routine, conventional; specified at a high level of
generality.
Because the claims recite a judicial exception and do not integrate that
exception into a practical application, we must then reach the issue of
whether the claims add a specific limitation beyond the judicial exception
that is not "well-understood, routine, conventional" in the field. Id. at 56. 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. Id. "Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination." Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018).
14 Here, we note that even if claim 1 's recitation of a "method for managing
package delivery" were characterized as an additional element rather than an
abstract idea, it would do no more than generally link the recited
mathematical concept to the field of package delivery management.
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In the Reply Brief, Appellants present new arguments that rest on the
assertion that the Examiner erred by failing to provide sufficient evidence to
support the determination that the additional limitations of the claims were
"well-understood, routine, and conventional, as required under Berkheimer."
Reply Br. 8-11. These arguments are unpersuasive.
The Examiner determined that
[t]he computing system components are recited at a high level
of generality and are recited as performing generic computer
functions routinely used in computer applications. Generic
computer components recited as performing generic computer
functions that are well-understood, routine and conventional
activities amount to no more than implementing the abstract
idea with a computerized system. Thus, taken alone, the
additional elements do not amount to significantly more than
the above-identified judicial exception (the abstract idea).
Final Act. 5-6; see also Ans. 6 ("Examiner believes that Appellants' claims
... recit[ e] no more than routine steps of data collection and organization
using generic computer components and conventional computer data
processing activities."), and 10 ("Examiner see nothing non-conventional
about the overall arrangement of computing system components."). This
determination is amply supported by, and fully consistent with the
Specification, which describes Appellants' invention in a manner that
requires no more than a general-purpose computer with generic computing
elements. Spec. ,r,r 54--59 ( describing possible embodiments of the
invention at a high level in terms of well-known, commonplace, and generic
computing elements), and Fig. 9 (showing a block diagram of a generic
computer processing system with generic components).
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Appellants cannot reasonably contend that there is a genuine issue of
material fact ( and, therefore, a requirement for evidence) regarding the
operation of these components as well-understood, routine, or conventional
where, as here, there is nothing in the Specification to indicate that the
operations recited in the claims require any specialized hardware or
inventive computer components, invoke any assuredly inventive
programming, or that the claims are implemented using other than generic
computer components. Indeed, the Federal Circuit, in accordance
with Alice, has "repeatedly recognized the absence of a genuine dispute as to
eligibility" where claims have been defended as involving an inventive
concept based "merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality." Berkheimer, 890 F.3d at 1373 (Moore, J., concurring)
( citations omitted).
Therefore, we conclude that the claims, viewing its limitations "both
individually and as an ordered combination," do not recite significantly more
than the judicial exception to transform the claim into patent-eligible subject
matter. See Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of claims 1-20
under 35 U.S.C. § 101.
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DECISION
We affirm the rejection of claims 1-20 under 35 U.S.C. § 101.
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.
§ 4I.50(f).
AFFIRMED
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