Joseph D. Lilly et al.

Patent Trials and Appeals Board

Nov 29, 2019

14171631 - (D) (P.T.A.B. Nov. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/171,631 02/03/2014
121629 7590
Finnegan/Capital One
901 New York Ave., NW
Washington, DC 20001
12/02/2019
FIRST NAMED INVENTOR
Joseph D. LILLY
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.
05793.3051-05000 8871
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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):
CapOne_USPTO@finnegan.com
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH D. LILLY, COLIN JEFFREY RUH,
JEFF G. YORK, and PHILLIP G. WALKER
Appeal2018-002708 1
Application 14,171,631
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 85-104. We have jurisdiction under 35 U.S.C.
§ 6(b ). A hearing was held on August 8, 2019.
SUMMARY OF DECISION
We AFFIRM.
1 We use the word Appellant to refer to "applicant" as defined in 37 C.F.R.
§ l.42(a). Appellant identifies Capital One Financial Corporation as the real
party in interest. Appeal Br. 3.
Appeal2018-002708
Application 14/171,631
THE INVENTION
Appellant states, "[t]his invention relates to credit card products and
to systems and methods for providing and using such products." Spec. 1 :4--
5.
Claim 85, reproduced below, is representative of the subject matter on
appeal.
85. A system for editing a vendor table, comprising:
a database;
a computer readable medium storing instructions; and
a processor configured to execute the instructions to
perform operations comprising:
providing at least one extra line of credit to a customer
associated with a customer group,
storing, in the database, a vendor table associated with
the customer comprising information indicating an ability for
the customer to use the at least one extra line of credit,
receiving, from a device operated by the customer, a
customer selection of one or more vendors, and
editing the vendor table based at least on the selected
vendors to include information which configures the vendor
table to enable the customer to use the at least one extra line of
credit at the selected vendors identified in the vendor table.
THE REJECTION
The following rejection is before us for review.
Claims 85-104 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
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FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 2-11 in the
Final Office Action2 and on pages 3-13 in the Examiner's Answer.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 85-104 under 35 U.S.C. § 101.
The Appellant argues claims 85-104 as a group (Appeal Br. 8), and
we select claim 85 as the representative claim for this group, and so the
remaining claims stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2015).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. 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
and Alice. Alice, 573 U.S. at 217-18 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed to."
See id. 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
2 All references to the Final Office Action refer to the Final Office Action
mailed on February 10, 2017.
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settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 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 182 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
mathematical formula." Diehr, 450 U.S. at 187; 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., Diehr, 450 U.S. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks 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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure ("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 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
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(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 Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
"the 'directed to' inquiry applies a stage-one filter to claims, considered in
light of the specification, based on whether 'their character as a whole is
directed to excluded subject matter."' Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See Enfzsh, 822 F.3d at 1335-36.
In so doing, as indicated above, we apply a "directed to" two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim "appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." Guidance,
84 Fed. Reg. at 53; see also MPEP § 2106.05(a}-(c), (e}-(h).
The Specification states:
With a credit card, an authorized customer or cardholder is
capable of purchasing services and/or merchandise without an
immediate, direct exchange of cash. With each purchase, the
cardholder incurs debt to their credit card account, which the
cardholder may thereafter pay upon receipt of a monthly or
otherwise periodic statement. In most cases, the cardholder will
have the option to either fully pay the outstanding balance or, as
a matter of necessity or choice, defer at least a portion or the
balance for later payment with accompanying interest or
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finance charges for the period during which payment of the
outstanding debt is deferred (also referred to as a revolving
charge credit line).
Spec. 1: 15-22.
The spending power of a credit card (i.e., the maximum
amount of funds that is financed to the cardholder for making
purchases) is typically limited to a particular amount that is
predetermined by the issuer of the card. This amount is
commonly referred to as the 'credit limit' of the credit card.
The credit limit provides the cardholder with a line of credit
(also referred to as a credit line). The size of the issuer-imposed
credit limit is generally based on a number of non-exclusive
factors, the most important of which are often the cardholder's
earning capacity and the cardholder' s credit history. When
purchases are made or debts incurred with the credit card, the
available portion of the credit limit is reduced by the purchase
or debt amounts. In addition, interest and/or finance charges
are also subtracted from the available portion of the credit limit
on a periodic basis. The total debits on a credit card are referred
to as the 'outstanding balance,' while the remaining or available
balance of the credit limit is typically called the 'available
balance' and reflects the dynamically adjusted current spending
power of the credit card. The cardholder may increase the
available balance up to the credit limit, by paying the
outstanding balance to the issuer.
Spec. 2: 1-14.
The preamble states the claim is "for editing a vendor table."
Claim 85. Understood in light of the Specification, claim 85, recites, in
pertinent part:
providing at least one extra line of credit to a customer
associated with a customer group,
storing, in the database, a vendor table associated with the
customer comprising information indicating an ability for the
customer to use the at least one extra line of credit,
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receiving, from a device operated by the customer, a customer
selection of one or more vendors, and
editing the vendor table based at least on the selected vendors to
include information which configures the vendor table to enable
the customer to use the at least one extra line of credit at the
selected vendors identified in the vendor table.
Accordingly, the Examiner found that the claims are directed to
"providing, storing, receiving, and editing data." 3 (Final Act. 4) (emphasis
omitted).
We agree with the Examiner that claim 85 is directed to providing,
storing, receiving, and editing data, in that claim 85 recites, "editing the
vendor table based at least on the selected vendors to include information
which configures the vendor table to enable the customer to use the at least
one extra line of credit at the selected vendors identified in the vendor
table." Claims involving data collection, analysis, and display are directed
to an abstract idea as information as such. Elec. Power Grp. v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
"a familiar class of claims 'directed to' a patent-ineligible concept"); see
also In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). These are also concepts performed in the human mind as
mental processes and are characterized by the steps of receiving, analyzing,
3 Although we and the Examiner describe, at different levels of abstraction,
to what the claims are directed, it is recognized that "[a]n abstract idea can
generally be described at different levels of abstraction." Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in
this case does not, "impact the patentability analysis." See id. at 1241.
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modifying, and displaying data mimicking the 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, 823 F.3d at 611; Fair Warning, 839 F.3d at 1093-
94.
In addition, because Claim 85 requires, "storing, in the database, a
vendor table associated with the customer comprising information indicating
an ability for the customer to use the at least one extra line of credit," and
"enable[ing] the customer to use the at least one extra line of credit at the
selected vendors identified in the vendor table," claim 85 is also directed to
extending credit which is a fundamental economic principle because
economies rely on credit to leverage purchasing power. A fundamental
economic principle is a certain method of organizing human activity falling
into the patent-ineligible end of the spectrum. Guidance, 84 Fed. Reg. 52,
citing Alice, 573 U.S. at 220.
Turning to the second prong of the "directed to" test, claim 85 only
generically requires "a database," "a computer readable medium," "a
processor," and "a device." These components are described in the
Specification at a high level of generality. See Spec. 10:8-22; 11: 1-22,
12: 1-3; Fig. 1. We fail to see how the generic recitations of these most basic
computer components and/or of a system so integrate the judicial exception
as to "impose[] a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort designed to monopolize the judicial
exception." Guidance, 84 Fed. Reg. at 53. We also find no indication in the
Specification that the claimed invention effects a transformation or reduction
of a particular article to a different state or thing.
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Thus, we find that the claims recite the judicial exceptions of a mental
process/information as such and a fundamental economic principle that are
not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to an embedded credit line does not make them any less abstract.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed.
Cir. 2015) ("And that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.").
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217-18 (quoting Mayo, 566 U.S. at 72-73).
Concerning this step the Examiner found the following:
Thus, the limitations of the independent claims 85, 92,
and 99 taken alone or in combination do not amount to
significantly more than the abstract idea. Moreover, the claims
recite "a device operated by the customer", which does not
amount significantly more than the abstract idea because it
merely limits the abstract idea to a particular technological
environment, and it is well-understood, routine, and
conventional activities, previously known in the industry, and
because it does not provide any improvements to the
functioning of a computer itself. Looking at the limitations as
an ordered combination adds nothing that is not already present
when looking at the elements taken individually. There is no
indication that the combination of elements improves the
functioning of a computer itself. Therefore, the claims do not
recite improvements to another technology or technical field,
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improvements to the functioning of the computer itself. As
such, there is no inventive concept sufficient to transform the
claimed subject matter into a patent-eligible application.
Final Act. 5.
We agree with the Examiner. "[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 conventional. Using a
computer to store, retrieve, edit and apply decision criteria to data and
modify the data as a result, amounts to electronic data query and retrieval-
one of the most basic functions of a computer. All of these computer
functions are well-understood, routine, conventional activities previously
known to the industry. See Elec. Power Grp., 830 F.3d at 1354; see also In
re Katz 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"). In short,
each step does no more than require a generic computer to perform generic
computer functions. The claims do not, for example, purport to improve the
functioning of the computer itself. In addition, as we stated above, the
claims do not effect an improvement in any other technology or technical
field. The Specification spells out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
information access under different scenarios (see, e.g., Spec. 10:9-33; 11:1-
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22, 12: 1-3). Thus, the claims at issue amount to nothing significantly more
than instructions to apply the abstract idea 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 225-226.
Considered as an ordered combination, the computer components of
Appellant's claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (store,
retrieve, edit and apply decision criteria to data and modify the data as a
result) and storing is equally generic and conventional or otherwise held to
be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014) (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) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (Appeal Br. 9-28, Reply Br. 3-21). We find that
our analysis above substantially covers the substance of all the arguments,
which have been made. But, for purposes of completeness, we will address
various arguments in order to make individual rebuttals of same.
Appellant respectfully submits, however, that the Examiner has
failed to establish a prima facie case of patent ineligibility. Not
only has the Examiner applied an erroneous standard of law
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without actually identifying a judicial exception, Appellant's
claims are not directed to merely an 'abstract idea,' and
Examiner has failed to show that they are.
(Appeal Br. 10). Appellant also argues, "the Examiner purports to apply the
'directed to' test without providing any reasoning for its conclusion." (Id.
at 11 ).
We disagree with Appellant. To the extent Appellant argues that the
Examiner erred in adequately supporting this determination by not providing
evidence, we are unpersuaded. In this regard, there is no requirement that
Examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
Manual of Patent Examining Procedure§ 2106.07(a)(III) (2018) ("The
courts consider the determination of whether a claim is eligible ( which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Thus, the court does not require 'evidence'
that a claimed concept is a judicial exception, and generally decides the legal
conclusion of eligibility without resolving any factual issues." (Citations
omitted.)) Although evidence may be helpful, e.g., where facts are in
dispute, it is not always needed. 4 See Mortgage Grader, Inc. v. First Choice
Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016).
Moreover, the Federal Circuit made clear in Berkheimer that "not
every § 101 determination contains genuine disputes over the underlying
facts material to the§ 101 inquiry." Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not
require evidentiary support for independent claim 1 because "[t]he
4 We note that Appellant has put forward no rebuttal evidence showing the
claims are not directed to an abstract idea.
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limitations [ of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components."
Id. at 1370.
All that is required of the US PTO to meet its prima facie burden is
that the Examiner set forth the statutory basis of the rejection and the
reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must "notify the applicant,"
"stating the reasons for such rejection," "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of his application." 35 U.S.C. § 132; see also In re Jung,
637 F.3d 1356, 1363 (Fed. Cir. 2011) (declining "to impose a heightened
burden on examiners beyond the notice requirement of§ 132"). Here, as we
found above, the Examiner has made these findings as required by the
statute. See Final Act 2----6.
Appellant asserts that "the Examiner's analysis under Step 2A is
factually flawed at a minimum because, ... the Examiner [has not] found
the required similarity (beyond a cursory one) between these cases and the
claims." (Appeal Br. 11 ).
We disagree with Appellant. We find the Examiner's in depth
analysis on pages 7-11 of the Final Action, albeit discussing differences and
not similarities, between the claims in McRO, Enfzsh, DDR, and BASCOM
and those on appeal constitute rationale reasoning for his findings.
Notwithstanding, the Examiner did make findings based on case law
similarities stating:
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the claims recite providing, storing, receiving, and editing data.
This is simply the recited providing, storing, receiving, and
editing data, which can be performed in a computer and is
similar to the kind of "organizing human activity" and is an
idea of itself. It is similar to other concepts that have been
identified as abstract by the courts, such as using categories to
organize, store and transmit information in Cyberfone, or
comparing new and stored information and using rules to
identify options in SmartGene.
(Final Act. 4) (emphasis omitted).
Appellant next argues,
it is unclear whether the Examiner's analysis is oversimplifying
the claim limitations until they are boiled down to an 'abstract
idea' or if the Examiner is arguing the claim limitations are
nothing more than computer functions beyond the 'idea' of
'providing, storing, receiving, and editing data.' Office Action,
p. 5. The Examiner's analysis is logically inconsistent in view
of the fact that the appealed claims are not simply 'providing,
storing, receiving, and editing data.' Office Action, p. 5.
(Appeal Br. 11-12).
We disagree with Appellant because again, "[a]n abstract idea can
generally be described at different levels of abstraction." See Apple, Inc,
842 F.3d at 1240. This is consistent with our own findings here that the
claims are also directed to the abstract idea of a fundamental economic
practice in addition to the Examiner's finding of the abstraction being a
mental process/ !information as such. Second, although we agree with
Appellant that the claims must be read, as a whole (Appeal Br. 13-14), we
nevertheless find, on balance, that claim 85 is directed to enabling a
customer to use the at least one extra line of credit at a selected vendor as set
forth above with respect to our "directed to" findings. As found supra,
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claim 85 only includes the following generically recited device limitations:
"a database," "a computer readable medium," "a processor," and "a device."
What remains in the claim after disregarding these device limitations, are
abstractions, i.e., "editing the vendor table based at least on the selected
vendors to include information which configures the vendor table to enable
the customer to use the at least one extra line of credit at the selected
vendors identified in the vendor table." "[A] claim for a new abstract idea is
still an abstract idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (citing Mayo, 566 U.S. at 90).
To the extent Appellant is arguing that these device limitations or
additional elements constitute an inventive concept, such features cannot
constitute the "inventive concept." Berkheimer v. HP Inc., 890 F.3d 1369,
1374 (Fed. Cir. 2018) (Moore, J., concurring) ("It is clear from Mayo that
the 'inventive concept' cannot be the abstract idea itself, and Berkheimer . ..
leave[ s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged 'inventive concept' is the abstract
idea."); see also BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018) ("It has been clear since Alice that a claimed invention's use
of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept.").
Pertaining to Cyberfone Sys., LLC v. CNN Interactive Grp., Inc.,
558 F. App'x 988 (Fed. Cir. 2014), Appellant argues,
the appealed claims focus on specific means for upgrading
existing credit cards with additional lines of credit by, for
example, 'storing, in the database, a vendor table . . .
comprising information indicating an ability for the customer to
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use the at least one extra line of credit' and 'editing the vendor
table . . . to include information which configures the vendor
table to enable the customer to use the at least one extra line of
credit,' as recited in claim 85.
(Appeal Br. 16-17) (emphasis omitted).
We disagree with Appellant because first, the asserted "specific
means" referred to by Appellant is an abstraction, namely, "enabl[ing] the
customer to use the at least one extra line of credit." Second, the present
claim's use of a table to parse credit line data relative to various vendors is
similar to the claims in Cyberfone Systems, LLC where the Court held that
"using categories to organize, store, and transmit information is well-
established" and that "the well-known concept of categorical data storage,
i.e., the idea of collecting information in classified form, then separating and
transmitting that information according to its classification, is an abstract
idea that is not patent-eligible[.]" Cyberfone, 558 F. App'x at 992.
As to SmartGene, Appellant argues,
The computing device in those claims was broad and not
meaningfully distinguishable from a doctor's mind such that the
patent merely claimed a result or effect. Id. In contrast, the
appealed claims recite specific elements that constitute specific
means for upgrading existing credit cards with additional lines
of credit, for example, by 'storing, in the database, a vendor
table . . . comprising information indicating an ability for the
customer to use the at least one extra line of credit' and 'editing
the vendor table . . . to include information which configures
the vendor table to enable the customer to use the at least one
extra line of credit,' as recited in claim 85.
(Appeal Br. 17) ( emphasis omitted).
We disagree with Appellant because again, the asserted "specific
elements" referred to by Appellant is an abstraction, namely, "enabl[ing] the
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customer to use the at least one extra line of credit." Second, the claims in
both SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950
(Fed. Cir. 2014) and those on appeal compare new and stored information
and use rules to identify options. See id.
Appellant argues,
That is, rather than focusing on the 'result or Moreover, here,
the limitations do not recite implementation details. Instead,
they recite functional results to be achieved. In other words,
claim 36 does not recite 'a particular way of programming or
designing the software ... , but instead merely' of 'comparing
new and stored information and using rules to identify options,'
as the Examiner asserts; Appellant's claims, like the claim in
McRO, focus on a 'specific means or method' of achieving the
result or effect. Office Action, p. 5. Thus, like the claim in
McRO, Appellant's claims are not 'directed to' the asserted
'abstract idea.'
(Appeal Br. 22).
However, the argument is not commensurate with the broader scope
of claim 85 which merely recites the aspirational result of, "editing the
vendor table based at least on the selected vendors to include information
which configures the vendor table to enable the customer to use the at least
one extra line of credit at the selected vendors identified in the vendor
table." See Move, Inc. v. Real Estate Alliance Ltd., 721 F. App'x 950, 954
(Fed. Cir. 2018) (N onprecedential) ("Claim 1 is aspirational in nature and
devoid of any implementation details or technical description that would
permit us to conclude that the claim as a whole is directed to something
other than the abstract idea identified by the district court.").
The question is whether the claims as a whole "focus on a specific
means or method that improves the relevant technology" or are "directed to
a result or effect that itself is the abstract idea and merely invoke generic
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processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, claim 85 as a whole is
focused on satisfying certain contingencies for enabling the customer to use
the at least one extra line of credit at selected vendors, and not a particular
way of programming or designing the software or a computer circuit. In
other words, nothing in claim 85 purports to improve computer functioning
or "effect an improvement in any other technology or technical field." Alice,
573 U.S. at 225. That is, in McRO the claimed rules were very specific5 as
to the claimed technology they were controlling, namely, "a sequence of
animated characters to produce lip synchronization and facial expression
control of said animated characters." McRO, 837 F.3d at 1308. In contrast,
the rules here only describe data without actual function to the data
extraction process.
Citing to BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), Appellant asserts, "Appellant's
claims, like the 'content filtering system' of BASCOM and contrary to the
Examiner's assertion, Office Action, p. 6, recite a technical improvement to
prior art systems by claiming an arrangement of specific, discrete steps for
upgrading existing credit cards with additional lines of credit." (Appeal Br.
24). We fail again to see how the instant claims are similar to those in
BASCOM. There, an intermediary is inserted between two otherwise
conventional computer nodes to move the location where a process is
otherwise ordinarily executed. In BASCOM, it was the location of the
5 Claim 1 in the McRO decision states "obtaining a first set of rules that
define output morph weight set stream as a function of phoneme sequence
and time of said phoneme sequence; .... "
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filtering element that constituted the technical improvement, whereas in the
instant claims there is no such specific location of ordered combination
elements.
We also disagree with Appellant that under the holding in Enfish our
decision would be different. Enfish, 822 F.3d at 1327. (Appeal Br. 23).
Appellant argues,
As in Enfish, Appellant's claims are not focused on the
'abstract idea' of 'providing, storing, receiving, and editing
data,' as the Examiner asserts. Office Action, p. 5. Rather, like
the claims in Enfish, Appellant's claims are focused on a
specific means of achieving the abstract idea: the claims recite
specific steps for 'editing' and 'storing' computerized vendor
profiles to enable the use of extra lines of credit.
(Appeal Br. 23).
We disagree with Appellant that its claims are directed to an
improvement in computer technology like that of claim 17 in Enfish and
therefore are patent eligible. In Enfish, the invention at issue was directed at
a wholly new type of logical model for a computer database: a self-
referential table that allowed the computer to store many different types of
data in a single table and index that data by column and row information.
See Enfish, 822 F.3d at 1330-32. In finding the claims "not directed to an
abstract idea," but "to a specific improvement to the way computers
operate," the Federal Circuit noted that "the claims are not simply directed to
any form of storing tabular data, but instead are specifically directed to a
self-referential table for a computer database." Id. at 1336-37. We find
nothing in the claims before us arises to this level of technical improvement
in the claimed "a database," "a computer readable medium," "a processor,"
and "a device."
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Appellant argues, "[t]he present invention applies methods and
systems that enable credit card issuers to offer selected customers with the
option of obtaining extra lines of credit for their existing cards." (Appeal
Br. 26).
We are unpersuaded by Appellant because the asserted improvement
is, at best, an improvement to the abstract idea. "No matter how much of an
advance in the ... field the claims recite, the advance lies entirely in the
realm of abstract ideas, with no plausibly alleged innovation in the non-
abstract application realm." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1163 (Fed. Cir. 2018).
Appellant also argues, "[f]urthermore, given that the Examiner did not
reject the claims under either of§§ 102 or 103, there is no evidence that
these features of the independent claims are found in the prior art. Thus, by
definition, the claims require elements 'other than what is well-understood,
routine, and conventional in the field,' i.e., an unconventional
implementation." (Appeal Br. 27).
We disagree with Appellant because although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice, 573 U.S. at 217-218. Also, a
novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diehr,
450 U.S. at 188-89 ("The 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
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subject matter of a claim falls within the§ 101 categories of possibly
patentable subject matter.").
Finally, Appellant's other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See Guidance, 84 Fed. Reg. at 51 ("Eligibility-related guidance
issued prior to the Ninth Edition, R---08.2017, of the MPEP (published Jan.
2018) should not be relied upon."))).
CONCLUSION
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).
AFFIRMED
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