FRIEDLANDER, ROBERT R. et al.

Patent Trials and Appeals Board

Sep 19, 2019

13342305 - (D) (P.T.A.B. Sep. 19, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/342,305 01/03/2012 ROBERT R. FRIEDLANDER END920110116US1 1983
79230 7590 09/19/2019
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/19/2019 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):
Emily@BoiceIP.com
Jennifer@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ROBERT R. FRIEDLANDER and
JAMES R. KRAEMER1
________________

Appeal 2018-007768
Application 13/342,305
Technology Center 3600
________________

Before BARBARA A. BENOIT, HUNG H. BUI, and RUSSELL E. CASS,
Administrative Patent Judges.

CASS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection under 35 U.S.C. § 101 of claims 1–20. 2 Appeal Br. 9–18. The
Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103 have been
withdrawn. Ans. 7–18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants list International Business Machines Corporation as the real
party in interest. Appeal Brief filed February 20, 2018 (“Appeal Br.”) 2.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
July 26, 2017 (“Final Act.”); the Examiner’s Answer mailed May 29, 2018
(“Ans.”); and the Reply Brief filed July 24, 2018 (“Reply Br.”).
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BACKGROUND
The present invention relates to a method and system for identifying
an optimal cohort of databases for supporting a proposed solution to a
complex problem. Abstract. According to Appellants’ Specification, the
system receives a synthetic event, which is defined as a hypothetical
condition that is dependent upon multiple disparate factors, then develops a
complex problem to establish a probability that a specific set of multiple
disparate factors is a cause of the synthetic event, and provides a proposed
solution to the complex problem. Spec. ¶¶ 23–24. A set of optimization
rules are then applied in order to identify an optimal cohort of databases,
each of which contains data that determines whether the proposed solution to
the complex problem is valid. Id. The optimal cohort of databases is
optimized by applying a set of predefined rules regarding tradeoffs of factors
such as financial cost, resource usage, accuracy, and timeliness. Id. Thus,
according to the Specification, the set of optimization rules establishes a
predetermined balance of cost, timeliness, and accuracy of data that
determine a probability that the specific set of disparate factors causes the
synthetic event. Id.
The Specification provides a number of embodiments directed to
different problems to be solved. Id. ¶¶ 27–31. In one embodiment, the
system is used to estimate the probability that a product will be a financial
success. Id. ¶ 27. In this embodiment, the multiple disparate factors may
include a preferred price range for the product, a preferred availability for
the product, and a reliability rating for the product. Id. The system then
applies a set of optimization rules to identify and optimal cohort of databases
based on factors such as the cost of the database, the timeliness of the
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database, and the accuracy of the database. Id. Based on this process, the
system may identify an optimal cohort of databases with data representing
results from an opinion survey about the product, current customer responses
to other similar products, and the level of commercial success of a
competitor’s product that is similar to the product at issue. Id. Once the
optimal cohort of databases is identified, the data from this optimal cohort
can be used to solve the complex problem, which establishes the probability
that the specific set of disparate factors causes the financial success of the
product. Id. The Specification includes additional embodiments for
estimating the probability of a patient having a specific medical condition, of
a political candidate winning an election, of a natural disaster occurring at a
specific location within a period of time, and of a government being
replaced. Id. ¶¶ 28–31.
The Specification explains that the invention uses a Bayesian
probability formula to establish probability that the set of disparate factors
causes the synthetic event. Id. ¶ 32. Specifically, the system uses the
following Bayesian probability formula:

P(H ǀ D) = P(D ǀ H) * P(H)
P(D)

Id.
Claim 1 is illustrative of the claimed subject matter, and is reproduced
below with formatting modified for clarity:
1. A processor-implemented method of identifying an
optimal cohort of databases used to support a proposed solution
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to a complex problem, the processor-implemented method
comprising:
[i] a processor receiving a synthetic event that is based on
multiple disparate factors, wherein the synthetic event is a
hypothetical condition that is dependent upon multiple
disparate conditions and states occurring randomly;
[ii] the processor developing a complex problem, wherein
the complex problem is to establish a probability that a
specific set of disparate factors causes the synthetic event,
wherein the complex problem used to establish the
probability that the specific set of disparate factors causes
the synthetic event is based on:
P(H ǀ D) = P(D ǀ H) * P(H)
P(D)
where H represents a hypothesis that the synthetic event
will occur if supported by a first set of data from a first
cohort of databases, and where D represents a condition in
which the synthetic event will occur if supported by a
second set of data from a second cohort of databases, and
wherein:
P(HǀD) is a probability that the synthetic event will
occur if supported by the first set of data given (ǀ) a
likelihood of the synthetic event occurring if supported by
the second set of data (D);
P(DǀH) is a probability that the synthetic event will
occur if supported by the second set of data given a
likelihood of the synthetic event occurring if supported by
the first set of data (H);
P(H) is a probability that the synthetic event will occur if
supported by the first set of data regardless of what the
second set of data holds; and
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P(D) is a probability that the synthetic event will occur if
supported by the second set of data regardless of what the
first set of data holds;
[iii] the processor applying a set of optimization rules to
identify an optimal cohort of databases from a remote
database server, wherein the optimal cohort of databases is a
set of databases in which each database contains data that
determines whether the proposed solution to the complex
problem is valid, wherein the set of optimization rules
establishes a predetermined balance of cost, timeliness,
minimizing resource usage, and accuracy of data that
describe the multiple disparate factors, and wherein the data
determine the probability that the specific set of disparate
factors causes the synthetic event; and
[iv] a local computer retrieving data from an identified
optimal cohort of databases stored in the remote database
server, wherein usage of the identified optimal cohort of
databases reduces a level of resources required by the
remote database server to serve data to the local computer,
and wherein supplying the identified optimal cohort of
databases by the remote database server conserves network
bandwidth between the local computer and the remote
database server by requiring the remote database server to
send only the identified optimal cohort of databases to the
local computer.
Appeal Br. 36–37 (Claims App.).

PRINCIPLES OF LAW
I. SECTION 101
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
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ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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. Kappos, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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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 turn 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 (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. (alterations in original) (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.
II. USPTO SECTION 101 GUIDANCE
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of § 101. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
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(Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look
to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes) (referred to as Step 2A, prong 1 in the Guidance); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (referred
to as Step 2A, prong 2 in the Guidance).
See 2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to Step
2B of the Guidance and look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, 84 Fed. Reg. at 56.

ANALYSIS
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I. CLAIM 1
A. The Examiner’s Rejection and Appellants’ Contentions
In support of the rejection of claims 1–20 under 35 U.S.C. § 101 the
Examiner finds that the claims recite an abstract idea that includes the steps
of
receiving a synthetic event based on multiple disparate factors,
developing a complex problem to establish the probability,
applying s set of optimization rules to identify an optimal
cohort databases, retrieving data from an identified optimal
cohort of databases to reduce a level of resources, [and]
retrieving data from an identified optimal cohort of databases to
reduce a level of resources.
Id. at 3 (emphasis omitted). The Examiner also determines that the claims
are similar to concepts that have been identified as an abstract idea in other
cases including, “organizing information through mathematic[al]
correlations” (pointing to the Bayes’ probability formula), “collecting and
comparing known information,” “collecting information, analyzing it and
displaying certain results,” and “comparing new and stored information and
us[ing] rules to identify options.” Id. at 3–4 (emphasis omitted).
The Examiner further determines that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception. Id. at 4–5. According to the Examiner, the additional
limitations involve using a “computer to apply a set of optimization rules to
identify an optimal cohort of databases and to retrieve data from the . . .
optimal cohort of databases.” Id. at 21. However, the Examiner determines
that “the [S]pecification does not describe a new computer, a new network, a
new processor; but only describe[s] general computing components.” Id.
(citing Spec. ¶¶ 17, 18, 28, 67, 68). The Examiner also determines that the
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Specification “fails to provide any technical details for these tangible
components, but only describes these components in purely functional
terms.” Id. The Examiner determines that the present claims are distinct
from those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), and McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (Fed. Cir. 2016) because here “the [S]pecification does not provide any
detail of supplying the identified optimal cohort of databases by the remote
databases server” or how this “conserves network bandwidth between the
local computer and the remote databases.” Id. at 22. Thus, the Examiner
concludes, “the claims of the application recite[] generalized steps to be
performed on a computer.” Id.
Appellants argue that the claims satisfy step 2A of the Mayo test
because “[t]he present invention . . . overcomes a problem that specifically
arises in the realm of computer technology of identifying an optimal cohort
of databases used to support a proposed solution to a complex problem.”
Appeal Br. 11. Specifically, Appellants argue that “the present invention
overcomes the problems of 1) having to utilize too many resources in a
system and 2) consuming too much bandwidth” as well as “enabling the
faster retrieval of information,” analogizing this case to DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) and Enfish, 822 F.3d
1327. Id. at 12 (emphasis omitted). “Since these problems specifically arise
in technology,” Appellants argue, “the present invention is statutory” under
Section 101. Id. Appellants further argue that the present invention satisfies
Step 2B of the Mayo test, analogizing it to the inventions at issue in In re
Abele, 684 F.2d 902 (CCPA 1982), Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288 (Fed. Cir. 2016), Bascom Global Internet Services, Inc.
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v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011). Id.
at 12–15.
B. Analysis under Step 2A, Prong 1, of the 2019 Guidance
Under Step 2A, Prong 1, of the 2019 Guidance, we first must
determine whether any judicial exception to patent eligibility is recited in the
claim. The 2019 Guidance identifies three judicially excepted groupings:
(1) mathematical concepts (including mathematical relationships,
mathematical formulas or equations, and mathematical calculations), (2)
certain methods of organizing human activity such as fundamental economic
practices, and (3) mental processes (concepts performed in the human mind
including observation, evaluation, judgment and opinion). 2019 Guidance,
84 Fed. Reg. at 52–53.
Here, claim 1 recites mathematical concepts, including mathematical
relationships, formulas, equations, and calculations. Specifically, limitation
[ii] of claim 1 recites “developing a complex problem” to “establish a
probability that a specific set of disparate factors causes the synthetic event”
using a specific mathematical formula, namely:

P(H ǀ D) = P(D ǀ H) * P(H)
P(D)
Appeal Br. 36 (Claims App.). The Specification identifies this mathematical
formula as a “Bayesian probability formula” and provides an example of
how this formula can be used to calculate a probability result. Spec. ¶¶ 32,
33.
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Limitation [i] of claim 1 also recites a mental step in the form of
“receiving a synthetic event” that “is a hypothetical condition that is
dependent upon multiple disparate conditions and states occurring
randomly.” Receiving a hypothetical condition to be used in a mathematical
equation is an act that can be performed in the mind of an individual without
any computer or apparatus, for example by speaking to another individual or
reading the hypothetical condition from a piece of paper.3
Limitation [ii] of claim 1 recites what each of the variables used in
this mathematical equation represents, including H, D, P(HǀD), P(DǀH),
P(H), and P(D). Id. This mathematical formula qualifies as a mathematical
concept, which is one of the judicially excepted groupings under the 2019
Guidance. 84 Fed. Reg. at 52 (identifying “Mathematical concepts—
mathematical relationships, mathematical formulas or equations,
mathematical calculations” as one of the judicial exception groupings of
subject matter).
Limitation [iii] of claim 1 recites “applying a set of optimization rules
to identify an optimal cohort of databases from a remote database server.”
The Specification explains that the optimization rules are “a set of
predefined rules regarding tradeoffs of financial cost, resource usage,
accuracy, timeliness, etc.,” and that application of these rules “establishes a
predetermined balance of cost, timeliness, and accuracy of data that
determine a probability that the specific set of disparate factors causes the

3 The receiving of a synthetic event also qualifies as insignificant extra-
solution activity in the form of mere gathering of data to be used in a
mathematical equation. See 2019 Guidance, 84 Fed. Reg. 55 n.31; MPEP
§ 2106.05.
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synthetic event.” Spec. ¶ 24. Evaluating rules to identify an optimal set of
databases can be performed by a human in the mind or using pencil and
paper. This step is, therefore, a mental evaluation that qualifies as a mental
process under the 2019 Guidance. 84 Fed. Reg. at 52 (identifying “Mental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, or opinion” as one of the judicial
exception groupings of subject matter).
For these reasons, we are persuaded that claim 1 recites judicial
exceptions to patent-eligibility under 35 U.S.C. § 101.
C. Analysis under Step 2A, Prong 2, of the 2019 Guidance
Having determined that the claims recite a judicial exception, we next
determine whether the claims recite “additional elements that integrate the
[judicial] exception into a practical application.” See 2019 Guidance,
84 Fed. Reg. at 54; MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the
Examiner that the present claims do not recite sufficient additional elements
to integrate the claimed mathematical concepts and mental processes into a
practical application. See Final Act. 4–5, 21–23.
In particular, we agree with the Examiner that the additional
computer-based limitations of (1) using a “processor” to carry out various
steps (receiving a synthetic event, developing a complex problem, and
“applying a set of optimization rules,)” and (2) using “a local computer” to
retrieve data from databases do not recite an improvement in computer
technology that would integrate the judicial exceptions into a practical
application . Final Act. 4–5. As the Examiner found, “the [S]pecification
does not describe a new computer, a new network, [or] a new processor,”
but rather describes only generic computing components. See id. at 21. For
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example, the Specification states that the steps recited in the flowchart
describing the invention “can be implemented by computer program
instructions” that “may be provided to a processor of a general purpose
computer, special purpose computer, or other programmable data processing
apparatus.” Spec. ¶ 11. The Specification further describes and depicts the
computer as including generic components such as a “processor,” “system
bus,” “video adapter,” “display,” “input/output (I/O) bus,” “I/O interface,”
“keyboard,” and “mouse.” Id. ¶ 15.
In addition, the Specification defines the software for identifying
optimal databases in generic fashion. More specifically, the Specification
identifies this software using a box labeled “optimal database locating
program (ODLP) 148” in Figure 2, which is one of several “[a]pplication
programs 144” running in the system memory 136 of the general purpose
computer 102. Spec., Fig. 1, ¶ 21. The Specification does not provide
technical details of the ODLP 148. The Specification further states that “all
of the functions associated with the present invention (including execution
of ODLP 148)” can be performed by “software deploying server 150,”
which is also represented merely by a box in Figure 1, again without
technical details. Id. Thus, we agree with the Examiner that the
Specification “fails to provide any technical details for these tangible
components, but only describes these components in purely functional
terms,” and thus, is distinct from the claims in Enfish and McRO. See Final
Act. 21; Alice, 573 U.S. at 221 (“merely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention”). Id.
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We are not persuaded by Appellants’ attempts to analogize claim 1 to
DDR and Enfish. Appellants argue that claim 1 is analogous to DDR
because it “overcomes a problem that specifically arises in the realm of
computer technology,” namely the problems of “1) having to utilize too
many resources in a system and 2) consuming too much network
bandwidth.” See Appeal Br. 11–12. But even if we assume that the
invention of claim 1 is meant to address these problems, the claimed solution
is not one that is “necessarily rooted in computer technology” because the
steps of claim 1 recite performing a mathematical calculation and a series of
mental steps that can be performed in the mind or with pencil and paper.
DDR, 773 F.3d at 1257. By contrast, in DDR, the Court found that “the
claimed solution is necessarily rooted in computer technology” because the
claims “specify how interactions with the Internet are manipulated to yield a
desired result” that “overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink” by reciting “a
specific way to automate the creation of a composite web page by an
‘outsource provider’ that incorporates . . . multiple sources.” Id. at 1257–59
(emphasis added). The solution recited in claim 1 does not recite a specific
way to perform particular activities on the Internet, but rather recites a
mathematical formula and mental steps for using that formula along with
generic computer components.
Appellants similarly argue that the claimed invention is like Enfish
because it “improves the operation of the computer by enabling the faster
retrieval of information.” Appeal Br. 12. In Enfish, the claims at issue were
“specifically directed to a self-referential table for a computer database”
which was “a specific type of data structure designed to improve the way a
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computer stores and retrieves data in memory” and “function[ed] differently
than conventional database structures.” Enfish, 822 F.3d at 1337, 1139.
Here, by contrast, claim 1 does not recite any such data structure or other
improvement in computer technology that goes beyond generic computer
elements. Indeed, Enfish distinguished claims, like claim 1 here, that
“recite[] a purely conventional computer implementation of a mathematical
formula” or “generalized steps to be performed on a computer using
conventional computer activity.” Id. at 1338.
D. Analysis under Step 2B of the 2019 Guidance
Under Step 2B of the 2019 Guidance, we determine whether claim 1
includes additional elements individually or in combination that provide an
inventive concept and, therefore, amount to significantly more than the
exception itself. 84 Fed. Reg. at 56. Here, Appellants have not persuaded us
that claim 1 includes any such “inventive concept,” or that claim 1 adds any
limitations beyond the judicial exception that are not “well-understood,
routine, or conventional” in the field. See MPEP § 2106.05(d). As
discussed above, the additional computer-based limitations of claim 1
involve standard and conventional computer components, specifically a
“processor” for carrying out various steps (receiving a synthetic event,
developing a complex problem, and “applying a set of optimization rules”)
and “a local computer” for retrieving data from databases. Thus, claim 1
simply appends well-understood, routine, and conventional components
previously known to the industry, specified at a high level of generality, to
the judicial exception. See 2019 Guidance, 84 Fed. Reg. at 56.
We do not find Appellants’ arguments to the contrary persuasive.
First, Appellants argue that claim 1 is like Abele (684 F.2d 902) because it
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“uses a novel algorithm . . . based on a synthetic event that is dependent
upon multiple disparate conditions and states occurring randomly,” thus,
“invoking an activity that goes far beyond that which is well-understood,
routine, and conventional.” Appeal Br. 13. As discussed above, however,
this “novel algorithm” recites a mathematical formula and is, therefore, is
part of the judicial exception itself. By contrast, the claim at issue in Abele
related to an improved CAT-scan process for graphically displaying X-ray
data and was found to be patent-eligible because (1) such X-ray data was
representative of physical and tangible objects such as bones, organs and
body issues, and (2) such “an improved CAT-scan process [was] comparable
to the improved process for curing synthetic rubber in Diehr.” Abele, 684
F.2d at 909.
Second, Appellants argue that claim 1 is statutory because it “uses a
novel ‘distributed architecture’ that improves overall computer functionality
of the network and/or the attached devices,” and therefore, is analogous to
Amdocs (841 F.3d 1288). Appeal Br. 14. In Amdocs, however, the Court
found that the claim at issue was “tied to a specific structure of various
components” and “does not merely combine the components in a generic
manner, but instead purposefully arranges the components in a distributed
architecture to achieve a technological solution to a technological problem
specific to computer networks.” Amdocs, 841 F.3d at 1301. Here, claim 1
does not include a specific structure of components arranged in a novel
distributed architecture as in Amdocs.
Finally, we are not persuaded by Appellants’ attempt to analogize
claim 1 to the decisions in Bascom and Classen. In Bascom, the Court found
that the claims at issue included an “inventive concept” in the form of “a
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filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user.” Bascom, 827 F.3d
at 1350. Here, claim 1 does not recite any such specific inventive
technology tool. In Classen, the claims found patent-eligible were “directed
to a method of lowering the risk of chronic immune-mediated disorder,
including the physical step of immunization on the determined schedule,”
and thus, were “directed to a specific, tangible application.” Classen, 827
F.3d at 1066. Claim 1 of the instant application includes nothing
comparable to a “physical step of immunization” on a desired schedule.
Consequently, Appellants have not persuaded us that the Examiner
erred in rejecting claim 1 as being directed to patent-ineligible subject
matter. We sustain this rejection, as well as the rejection of independent
claims 9 and 17, which include similar limitations, and claims 2–6, 8, 10–16,
and 18–20, which Appellants do not argue separately.
E. Dependent Claim 7
Claim 7 depends on claim 3, which depends on claim 2, which in turn
depends on claim 1. Claim 7 recites, inter alia, that the processor applies
“data from physical sensors” at a specific location and “utilize[es] data from
the optimal cohort of databases and readings from the physical sensors to
solve the complex problem.” Appeal Br. 39 (Claims Appendix). Appellants
argue that claim 7 “utilizes physical sensors located at the specific location”
which “are essential components to the claimed invention” and, therefore,
“is clearly directed to more than an abstract idea or a human activity, and is
statutory.” Id. at 19 (emphasis omitted).
We do not find this argument persuasive. The use of “physical
sensors” to gather data is merely the use of a generic and conventional
Appeal 2018-007768
Application 13/342,305

19
component for data gathering for use in the claimed mathematical formula
and associated mental steps. This data gathering is incidental to the claimed
judicial exceptions and, therefore, is insignificant to the claimed invention.
See 2019 Guidance, 84 Fed. Reg. 55 (listing “mere data gathering” as an
example of “an additional element [that] adds insignificant extra-solution
activity to the judicial exception,” which courts have identified as a situation
“in which a judicial exception has not been integrated into a practical
application”); MPEP § 2106.05(g) (the addition of “insignificant extra-
solution activity” such as “a step of gathering data for use in a claimed
process” does not “amount to an inventive concept, particularly when the
activity is well-understood or conventional”); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (obtaining information
about credit card transactions so that the information can be analyzed in
order to detect whether the transactions were fraudulent amount to
insufficient data-gathering activity). This limitation, therefore, is
insufficient to transform the judicial exceptions into a patent-eligible
invention.

DECISION
We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED