Marcia Keld et al.Download PDFPatent Trials and Appeals BoardSep 3, 201914010711 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. 14/010,711 08/27/2013 Marcia Keld P55939 3527 157693 7590 09/03/2019 JPMorgan Chase / Greenblum & Bernstein 1950 Roland Clarke Place Reston, VA 20191 EXAMINER GOYEA, OLUSEGUN ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): gbpatent@gbpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARCIA KELD and SATYAN AVATARA ____________ Appeal 2018-001178 Application 14/010,711 Technology Center 3600 ____________ Before JOHN A. EVANS, JOHN D. HAMANN, and ALEX S. YAP, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of Claims 1–6, 9–17, and 20–24. App. Br. 4. Claims 7, 8, 18, and 19 are canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 Appellants state the real party in interest is JPMorgan Chase Bank, N.A. App. Br. 2. 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed May 30, 2017, “App. Br.”), the Reply Brief (filed November 15, 2017, “Reply. Br.”), the Examiner’s Answer (mailed Appeal 2018-001178 Application 14/010,711 2 STATEMENT OF THE CASE The claims relate to an accounting connection and reconciliation system which facilitates integration of accounting data with expense reporting data stored in an expense reporting system linked to financial account records. See Abstract. Invention Claims 1, 12, and 23 are independent. An understanding of the invention can be derived from a reading of Claim 1, which is reproduced below. 1. An accounting connection and reconciliation system for facilitating integration of accounting data from an accounting system with expense reporting data stored in an expense reporting system linked to financial account records, the system comprising: at least one computer memory storing instructions and financial transaction data, wherein the memory is addressable on a network, and accessible by a remote user on a remote user interface unit having a user input means and a display; and at least one computer processor accessing the memory and executing the stored instructions to: provide a user interface for importation of an accounting data file including the accounting data from the accounting system into the expense reporting system linked to financial account records, wherein the accounting system is hosted on an accounting system server accessible over the network; import the accounting data file in QIF format; September 21, 2017, “Ans.”), the Final Action (mailed November 28, 2016, “Final Act.”), and the Specification (filed August 6, 2014, “Spec.”) for their respective details. Appeal 2018-001178 Application 14/010,711 3 automatically modify the accounting data file with a prefix including account information; integrate the modified accounting data file with the expense reporting system, wherein the expense reporting system comprises a user defined project category for classifying the modified accounting data file; present the user defined project category as a graphical arrangement capable of being modified by the user; compare the data in the modified accounting data file with data stored in the expense reporting system; highlight, on the user interface, discrepancies found through the comparison of the expense reporting data with the accounting data; provide options to the user on the user interface for resolving the discrepancies; receive user input through the user interface; process the user input to resolve the discrepancies; display the resolution; transform the graphical arrangement of the user defined project category into a data record; and export the data record to a personal finance management application. App. Br. (Claims Appendix, A-1–A-2). Appeal 2018-001178 Application 14/010,711 4 Rejections Claims 1–6, 9–17, and 20–24 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter without significantly more.3 Final Act. 2–8. ANALYSIS CLAIMS 1–6, 9–17, AND 20–24: INELIGIBLE SUBJECT MATTER. We have reviewed the rejection of Claims 1–6, 9–17, and 20–24 in light of Appellants’ arguments. 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. § 41.37(c)(1)(iv). We adopt as our own the findings 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 findings primarily for emphasis. We consider Appellants’ arguments seriatim, as they are presented in the Appeal Brief, pages 12–29. Based upon our de novo review of the record in light of recent Director Policy Guidance4 with respect to patent-eligible subject matter 3 Claims 1–6, 9–17, and 20–22 stand rejected under a first header. Final Act. 2. Claims 23 and 24 stand rejected under a separate header, but for substantially the same reasons as given for the first group of claims. Id. 5. Therefore, we analyze all claims as a group. 4 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4) Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance”). Appeal 2018-001178 Application 14/010,711 5 rejections under 35 U.S.C. § 101, we sustain the rejection of 1–6, 9–17, and 20–24. “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). Appellants’ arguments regarding Claims 1–6, 9–17, and 20–24 are generally presented with reference to “the claims,” but without specific reference to the limitations of any claim. See App. Br. 7–24. Therefore, we decide the appeal of the § 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); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). PRINCIPLES OF LAW A. 35 U.S.C. § 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5 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. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–78 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo 5 This threshold analysis of whether a claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter, is referred to as “Step 1” in the patent-eligibility inquiry under 35 U.S.C. § 101. Appeal 2018-001178 Application 14/010,711 6 and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (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 interactions such as a fundamental economic practices (Alice, 573 U.S. at 219–20; see also Bilski v. Kappos, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 573 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held “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, 191 (“We view respondents' claims as nothing more than a process for molding rubber products and not as an Appeal 2018-001178 Application 14/010,711 7 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. at 191 (citing Benson and Flook), 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.”). Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). 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. (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. Appeal 2018-001178 Application 14/010,711 8 B. USPTO Revised Guidance The USPTO recently published revised guidance in the Federal Register concerning the application of § 101. Under the Revised 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);6 and (2) additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h))7. Only if a claim (l) 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 are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance (hereinafter “Step 2A(i) ”). 7 Referred to as “Revised Step 2A, Prong 2" in the Revised Guidance (hereinafter “Step 2A(ii)”). Appeal 2018-001178 Application 14/010,711 9 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.8 See Revised Guidance. Step 2A(i): Does the Claim Recite a Judicial Exception? Informed by our judicial precedent, 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: (a) Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations; (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); and (c) Mental processes-concepts performed in the human mind (including an observation, evaluation, judgment, opinion). 8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court's two-step framework, described in Mayo and Alice. Appeal 2018-001178 Application 14/010,711 10 Under the Revised Guidance, if the claim does not recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above), then the claim is patent- eligible at Step 2A(i). This determination concludes the eligibility analysis, except in rare situations identified in the Revised Guidance.9 Improper Examination. Throughout the Brief, Appellants argue the Examiner has improperly applied various USPTO examination guidance documents. See App. Br. 13– 15, 18–22, 24, and 26. For example, Appellants argue: “[i]n the analysis set forth in the Office Action, the Examiner has also failed to evaluate the claim as a whole. According to the Interim Eligibility Guidance, the claim should be evaluated as a whole.” App. Br. 18. The Director of the United States Patent and Trademark Office, not the Board, supervises examination and examiners. If an examiner has procedurally erred, the remedy lies exclusively in petitioning the Director for supervisory review. The Director has not delegated this supervisory authority to the Board. Preemption. Appellants contend the claims do not seek to preempt or monopolize a fundamental economic practice. App. Br. 21–24. 9 In the rare circumstance in which an examiner believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the procedure described in the Guidance for analyzing the claim should be followed. See Guidance, Section 111.C. Appeal 2018-001178 Application 14/010,711 11 While 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 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. Analysis under Revised Guidance. In accordance with the Revised Guidance, we determine whether under Step 2A(i) the steps recited in independent Claim 1 is directed to a judicial exception. The preamble to Claim 1 recites: “An accounting connection and reconciliation system for facilitating integration of accounting data from an accounting system with expense reporting data stored in an expense reporting system linked to financial account records, the system comprising.” Claim 1 further recites the following limitations as set forth in the left column of Table I below. Table I applies the further limitation of Claim 1 to the category of abstract idea as set forth in the Revised Guidance. Table I Claim 1 Revised Guidance Appeal 2018-001178 Application 14/010,711 12 [a]10 at least one computer memory storing instructions and financial transaction data, wherein the memory is addressable on a network, and accessible by a remote user on a remote user interface unit having a user input means and a display; A hardware limitation to which the Guidance is not applicable. [b] at least one computer processor accessing the memory and executing the stored instructions to: A hardware limitation to which the Guidance is not applicable. [c] provide a user interface for importation of an accounting data file including the accounting data from the accounting system into the expense reporting system linked to financial account records, wherein the accounting system is hosted on an accounting system server accessible over the network; A hardware limitation to which the Guidance is not applicable. [d] import the accounting data file in QIF format; “Mere data gathering.” Additional element adds insignificant extra- solution activity to the judicial exception. Rev. Guid. 55, n.31. [e] automatically modify the accounting data file with a prefix including account information; Mental processes: concepts performed in the human mind.11 10 Indicia, e.g., “[a],” added to facilitate discussion of individual limitations. 11 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 Appeal 2018-001178 Application 14/010,711 13 [f] integrate the modified accounting data file with the expense reporting system, wherein the expense reporting system comprises a user defined project category for classifying the modified accounting data file; Mental processes: concepts performed in the human mind. [g] present the user defined project category as a graphical arrangement capable of being modified by the user; Mental processes: concepts performed in the human mind. [h] compare the data in the modified accounting data file with data stored in the expense reporting system; Mental processes: concepts performed in the human mind. [i] highlight, on the user interface, discrepancies found through the comparison of the expense reporting data with the accounting data; Mental processes: concepts performed in the human mind. [j] provide options to the user on the user interface for resolving the discrepancies; Mental processes: concepts performed in the human mind. [k] receive user input through the user interface; “Mere data gathering.” Additional element adds insignificant extra- solution activity to the judicial exception. Rev. Guid. 55, n.31. cannot practically be performed in the mind. See 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.’’). Rev. Guid. 52, n.31. Appeal 2018-001178 Application 14/010,711 14 [l] process the user input to resolve the discrepancies; Mental processes: concepts performed in the human mind. [m] display the resolution; “Mere data gathering.” Additional element adds insignificant extra- solution activity to the judicial exception. Rev. Guid. 55 & n.31. [n] transform the graphical arrangement of the user defined project category into a data record; and Mental processes: concepts performed in the human mind. [o] export the data record to a personal finance management application. Computer operations such as ‘‘output of data analysis . . . can be abstract,’’ Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017).12 Under Step 2A(i) and based on the analysis in Table I, we determine that limitations [e]–[j], [l], [n], and [o] each recite a judicial exception. Step 2A(ii): Judicial Exception Integrated into a Practical Application? If the claims recite a patent-ineligible concept, as we conclude above, we proceed to the “practical application” Step 2A(ii) in which we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to 12 We find nothing in this limitation to suggest other than a conventional I/O operation is involved. Appeal 2018-001178 Application 14/010,711 15 determine whether they integrate the 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.” Revised Guidance, 53. For the reasons which follow, we conclude that Appellants’ claims are not patent eligible because they do not integrate the judicial exceptions into a practical application. MPEP § 2106.05(a) “Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field.” “In determining patent eligibility, examiners 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). Citing Trading Technologies13 and DDR Holdings,14 Appellants contend the claims represent an improvement: The claims are directed to an improved system and method that provide tools for transporting an accounting file, such as a QIF file from an accounting system, so that the accounting system information can be integrated with the information in the expense reporting system without connection fees or repetitive data entry steps. Furthermore, given that the operator of the disparate systems is able to integrate them, the system is more inclusive than previous systems as it will include purchases that are not made through a host financial institution. 13 Trading Technologies International Inc., v. CQG, Inc., 2017 WL 192716 (Fed. Cir. Jan. 18, 2017). 14 DDR Holdings LLC v. Hotels.com. L.P., 773 F.3d 1234 (Fed Cir. 2014) Appeal 2018-001178 Application 14/010,711 16 App. Br. 20. Appellants correctly note the Federal Circuit held the Trading Technology claims to recite patent-eligible subject matter because the claims “solve problems of prior graphical user interface devices . . . in the context of computerized trading[] relating to speed, accuracy, and usability. Id. (quoting Trading Technologies, at 2). However, whereas the Trading Technology claims “solve problems of prior graphical user interface devices,” Appellants do not relate their claims to problems of prior art devices, but argue the improvement is to an accounting system. Limitation [f] recites, inter alia, “integrate the modified accounting data file with the expense reporting system,” but Appellants’ Appeal Brief cites neither their Specification, nor, the claim language, to show specifically how such “integration” is accomplished. Appellants’ Reply contends the “claimed invention provides a comprehensive system and method that address a unique algorithm to solve a problem in conventional industry practice, with the limitations of the prior art systems being clearly set forth in the Specification.” Reply Br. 3 (citing Spec., ¶¶ 3–9). This argument has been made for the first time in the Reply Brief. “[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.”); Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (citations and quotations marks omitted) (“[A]n issue not raised by an Appeal 2018-001178 Application 14/010,711 17 appellant in its opening brief . . . is waived.”). We conclude an alleged improvement to an accounting system is not an improvement to the functioning of a computer, nor of any other technology. 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.” See Bilski v. Kappos, 561 U.S. 593, 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 § 101). MPEP § 2106.05(b). MPEP § 2106.05(b) provides further guidance regarding what constitutes a particular machine: [A]s described in MPEP §2106.05(f), 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”). Appeal 2018-001178 Application 14/010,711 18 We find the claims on appeal are silent regarding specific limitations directed to an improved computer system, processor, memory, network, database, or Internet, nor do Appellants direct our attention to such specific limitations. “[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 Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’ or on a generic computer is still an abstract idea”). Applying this reasoning here, we conclude Appellants’ claims are not directed to a particular machine, but rather merely implement an abstract idea using generic computer components. Thus, we conclude Appellants’ method 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). The claims operate to select and analyze certain electronic data, i.e., accounting data files in QIF format. The selection of electronic data is not a “transformation or reduction of an article into a different state or thing Appeal 2018-001178 Application 14/010,711 19 constituting patent-eligible subject matter[.]” See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (emphasis added). See also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“The mere manipulation or reorganization of data . . . does not satisfy the transformation prong.”). Applying this guidance here, we conclude Appellants’ method claims fail to satisfy the transformation prong of the Bilski machine-or-transformation test. 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., Appeal 2018-001178 Application 14/010,711 20 “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. MPEP § 2106.05(f) Mere Instructions To Apply An Exception. Appellants do not persuasively argue that their claims do any more than to merely invoke generic computer components merely as a tool in which the computer instructions apply the judicial exception. MPEP § 2106.05(g) Insignificant Extra-Solution Activity. Following various data-manipulation steps, there is “extra-solution activity,” i.e., “export[ing] the data record to a personal finance management application.” We find exporting data to be a classic example of insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en banc), aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010). MPEP § 2106.05(h) Field of Use and Technological Environment. Appeal 2018-001178 Application 14/010,711 21 [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). We find the “computer” and “server” limitations are simply a field of use that attempts to limit the abstract idea to a particular technological environment. We do not find Appellants’ argument to be persuasive because “[t]he courts have also identified examples in which a judicial exception has not been integrated into a practical application.” Revised Guidance, at 55. The claims fail to recite a practical application where the additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use. Id. The mere application of an abstract idea in a particular field is not sufficient to integrate the judicial exception into a practical application. See id. at n. 32. In view of the foregoing, we conclude the claims are “directed to” a judicial exception. 3. Well-understood, routine, conventional. Because the claims recite a judicial exception and does 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. Revised Guidance, at 56. The Examiner finds the claimed “computer memory,” “computer Appeal 2018-001178 Application 14/010,711 22 processor,” “network,” “user input means,” and “display” 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. Final Act. 4; Ans. 13 (citing Spec. ¶ 23). Appellants cite Enfish for the proposition that: “we are not persuaded that the invention’s ability to run on a general-purpose computer dooms the claims.” App. Br. 16 (quoting Enfish at 1691). Appellants further argue: “the claims provide meaningful limitations beyond generally linking the use of an allegedly abstract idea to a particular technological environment.” Reply Br. 9. R. 20. We do not find the claims to be “doomed” because they run on general-purpose computers. Rather, we find Appellants’ arguments not to be persuasive because Appellants fail to argue with particularity which limitations are “meaningful beyond generally linking the use of an allegedly abstract idea to a particular technological environment.” We find the limitations to be “well-understood, routine, [and] conventional” and as such, fail to indicate the presence of an inventive concept. 4. Specified at a high level of generality. 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. Revised Guidance, at 56. Appeal 2018-001178 Application 14/010,711 23 Appellants contend that at least the following limitations of Claim 1 (and the commensurate limitations of Claims 12 and 23) are meaningful limitations providing significantly more than an abstract idea: provide a user interface for importation of an accounting data file including the accounting data from the accounting system into the expense reporting system linked to financial account records, wherein the accounting system is hosted on an accounting system server accessible over the network; import the accounting data file in QIF format; automatically modify the accounting data file with a prefix including account information; integrate the modified accounting data file with the expense reporting system, wherein the expense reporting system comprises a user defined project category for classifying the modified accounting data file; present the user defined project category as a graphical arrangement capable of being modified by the user; compare the data in the modified accounting data file with data stored in the expense reporting system; highlight, on the user interface, discrepancies found through the comparison of the expense reporting data with the accounting data; [and] provide options to the user on the user interface for resolving the discrepancies. Reply Br. 9. We find the cited limitations are specified at such a high level of generality consistent with the absence of an inventive concept. Therefore, we conclude that none of the claim limitations, viewed “both individually and as an ordered combination,” amount to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting Mayo, 566 U.S. at 79). Appeal 2018-001178 Application 14/010,711 24 In view of the foregoing, we sustain the rejection of Claims 1–6, 9– 17, and 20–24 under 35 U.S.C. § 101. DECISION The rejection of Claims 1–6, 9–17, and 20–24 under 35 U.S.C. § 101 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation