Robert Lee. Angell et al.

Patent Trials and Appeals Board

Sep 9, 2019

12333321 - (D) (P.T.A.B. Sep. 9, 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.
12/333,321 12/12/2008 Robert Lee Angell END920080328US1 6114
79230 7590 09/09/2019
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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 LEE ANGELL, ROBERT R. FRIEDLANDER, and
JAMES R. KRAEMER
____________

Appeal 2018-001949
Application 12/333,3211
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellants, the real party in interest is International Business
Machines, Corporation (Appeal Br. 2).

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STATEMENT OF THE CASE2
Robert Lee Angell, Robert R. Friedlander, and James R. Kraemer
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims
1–20, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of generating risk cohorts.
Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] receiving,
by one or more processors,
digital sensor data associated with a specific risk cohort
from a set of multimodal sensors,
wherein the specific risk cohort comprises a set of
uniquely identified individual cohort members,
wherein the digital sensor data comprises metadata
describing attributes associated with at least one cohort
member in the set of uniquely identified individual
cohort members;
[2] retrieving,
by one or more processors,

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 8, 2017) and Reply Brief (“Reply Br.,” filed December
15, 2017), and the Examiner’s Answer (“Ans.,” mailed October 17, 2017),
and Final Action (“Final Act.,” mailed April 12, 2017).
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description data for said at least one cohort member in
the set of uniquely identified individual cohort members
to form a set of cohort description data,
wherein description data for said at least one cohort
member comprises data describing at least one of a
previous history and a current status of said at least one
cohort member from the set of uniquely identified
individual cohort members;
[3] generating,
by one or more processors,
a specific risk score for the specific risk cohort based on
selected risk factors, the attributes associated with the at
least one cohort member, and the set of cohort
description data,
wherein the selected risk factors describe potential
events, and wherein each selected risk factor has a
predefined probability of occurrence;
[4] generating,
by one or more processors,
weighted risk factors from the selected risk factors by
applying weighting values to the selected risk factors,
wherein the weighting values are based on predetermined
levels of detriment that particular events would impose
on said at least one cohort member of the specific risk
cohort;
[5] identifying,
by one or more processors,
a weighted risk score associated with the specific risk
cohort based on the weighted risk factors;
and
[6] responsive to a determination that the weighted risk score
exceeds a risk threshold,
initiating,
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by one or more processors,
a response action to activate a device,
wherein activating the device protects at least one
member of the specific risk cohort from being damaged.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
ANALYSIS
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] . . . described step two of this

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use 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.” Revised Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites receiving sensor data and description data, generating risk
scores and factors, and identifying a score associated with a factor, and
initiating some action to activate a device in response to determining a score
exceeds some threshold. Receiving data, even data from sensors, is still just
data reception. Any sensor and its attributes go to the origin of the data, and
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are outside the scope of the procedure. Generating scores and factors is
generic mathematical analysis. Identifying a score is rudimentary analysis.
Determining that a threshold value is met is rudimentary analysis. Initiating
some generic action is broad enough to encompass generating data that
might be used outside the scope of the claim, such as sending data that is
then used in displaying text telling someone to do something. The recitation
“to activate a device” is aspirational only. The final wherein clause is
equally aspirational. The last step goes no further than initiating some action
and does not see the action, or its result, through. Thus, claim 1 recites
receiving, analyzing, and transmitting data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,4 (2) certain methods of organizing
human activity,5 and (3) mental processes.6 Among those certain methods

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
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of organizing human activity listed in the Revised Guidance are fundamental
economic principles or practices (including hedging, insurance, mitigating
risk). Like those concepts, claim 1 recites the concept of reducing risk.
Specifically, claim 1 recites operations that would ordinarily take place in
advising one to initiate some action when a weighted risk score associated
with a specific risk cohort based on weighted risk factors exceeds some
threshold. The advice to initiate some action when a weighted risk score
associated with a specific risk cohort based on weighted risk factors exceeds
some threshold involves initiating an action, which is a social act, and
deciding to do so when some threshold is exceeded, which is an act
ordinarily performed in the deciding to undertake social interaction. For
example, claim 1 recites “initiating . . . a response action to activate a device,
wherein activating the device protects at least one member of the specific
risk cohort from being damaged,” which is an activity that would take place
whenever one is taking interpersonal action to protect someone.
The Examiner determines the claims to be directed to risk
management via observation. Final Act. 3.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in computing risk statistics to initiate some risk
reduction absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations 1 and 2 recite generic data
retrieval. Limitations 3–5 recite rudimentary mathematical analysis.

6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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Limitation 6 recites initiating some generic unspecified action and does not
even see the action or its results through. The limitations thus recite advice
for initiating some action when a weighted risk score associated with a
specific risk cohort based on weighted risk factors exceeds some threshold.
To advocate initiating some action when a weighted risk score associated
with a specific risk cohort based on weighted risk factors exceeds some
threshold is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 1 describes the invention as relating to
generating a risk score based on specific risk cohort data. Thus, all this
intrinsic evidence shows that claim 1 is directed to computing risk statistics
to initiate some risk reduction, i.e., reducing risk. This is consistent with the
Examiner’s determination.
This in turn is an example of fundamental economic principles or
practices (including hedging, insurance, mitigating risk) as a certain method
of organizing human activity because reducing risk is a way of mitigating
risk. The concept of reducing risk by initiating some action when a
weighted risk score associated with a specific risk cohort based on weighted
risk factors exceeds some threshold is one idea for suggesting actions to
reduce risk. The steps recited in claim 1 are part of how this might
conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (creating a transaction performance
guaranty for a commercial transaction on computer networks such as the
Internet); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
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F.3d 1336, 1338 (Fed. Cir. 2013) (generating rule–based tasks for processing
an insurance claim); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (managing a stable value
protected life insurance policy); Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1333 (Fed. Cir. 2012) (processing loan information through a
clearinghouse); Smart Sys., 873 F.3d at 1372 (collection, storage, and
recognition of data).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing, and
transmitting data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 1 is directed to receiving, analyzing, and transmitting data,
and not a technological implementation or application of that idea.
Alternately, this is an example of a mathematical concept because the
steps of generating scores and weighting those scores perform a
mathematical algorithm. The remaining steps are mere data gathering and
incidental post processing steps.
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From this we conclude that at least to this degree, claim 1 recites a
method of reducing risk by initiating some action when a weighted risk
score associated with a specific risk cohort based on weighted risk factors
exceeds some threshold, which is a form of fundamental economic
principles or practices (including hedging, insurance, mitigating risk), one of
certain methods of organizing human activity identified in the Revised
Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the “ ‘buildin[g]
block[s]’ ” of human ingenuity and those that integrate the
building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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devoid of implementation details. Steps 1 and 2 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step 6
is insignificant post-solution activity, such as transmitting or displaying the
results. Steps 3–5 recite generic computer processing expressed in terms of
results desired by any and all possible means and so present no more than
conceptual advice. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellants’ claim 1 simply recites the concept of
reducing risk by initiating some action when a weighted risk score
associated with a specific risk cohort based on weighted risk factors exceeds
some threshold as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment8 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of reducing risk by initiating some action when a weighted risk
score associated with a specific risk cohort based on weighted risk factors
exceeds some threshold under different scenarios. It does not describe any

8 The Specification describes using any type of computing device. Spec.
para. 40.
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particular improvement in the manner a computer functions. Instead, claim
1 amounts to nothing significantly more than an instruction to apply
reducing risk by initiating some action when a weighted risk score
associated with a specific risk cohort based on weighted risk factors exceeds
some threshold using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field; applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition; implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim; effects a transformation or reduction of a
particular article to a different state or thing; or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of
reducing risk by advising one to initiate some action when a weighted risk
score associated with a specific risk cohort based on weighted risk factors
exceeds some threshold, as distinguished from a technological improvement
for achieving or applying that result. This amounts to fundamental
economic principles or practices (including hedging, insurance, mitigating
risk), which fall within certain methods of organizing human activity that
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constitute abstract ideas. The claim does not integrate the judicial exception
into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, and transmitting data amounts to
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electronic data query and retrieval—one of the most basic functions of a
computer. The limitation of “to activate a device, wherein activating the
device protects at least one member of the specific risk cohort from being
damaged” is not a step, but a recitation of what the recited action is to
initiate, viz. a desired use for the steps, which is aspirational. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see 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”). None of these
activities are used in some unconventional manner nor do any produce some
unexpected result. Appellants do not contend they invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellants’ claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
transmission is equally generic and conventional. See Ultramercial, 772
F.3d at 715 (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
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2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The other independent method claim 11 is
substantially similar at least as regards to this analysis. The remaining
method claims merely describe process parameters. We conclude that the
method claims at issue are directed to a patent-ineligible concept itself, and
not to the practical application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 573 U.S. at 226. In particular, the apparatus of claim 18 excludes the
recited sensor and device from its structure, mirroring the method claims.
As a corollary, the claims are not directed to any particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
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other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the fundamental
economic principles or practices (including hedging, insurance, mitigating
risk) of reducing risk by initiating some action when a weighted risk score
associated with a specific risk cohort based on weighted risk factors exceeds
some threshold, without significantly more.
APPELLANTS’ ARGUMENTS
We are not persuaded by Appellants’ argument that
Exemplary Claim 1 includes the feature of activating “a
device that protects at least one member of the specific risk
cohort from being damaged”, as supported by paragraph [0062]
of the present specification as originally filed.
Thus, the present invention controls a “device”, just as
the invention found in the case of Diamond v. Diehr, 450 U.S.
175 (1981) – “Diehr” does. The statutory invention in Diehr
uses mathematical calculations, the results of which control a
rubber mold (a device). Similarly, the present invention uses
calculations to determine a weighted risk score, which are used
to control a device.
App. Br. 8 (underlining and bolding omitted). As we determine supra, claim
1 does not activate a device, but instead initiates some unspecified action
that is then used to activate a device. The actual activation is thus outside
the scope of the claim, as the claim ends with the initiation of such an action.
Further, the action is generic and unspecified, and encompasses initiating a
signal to tell someone to do something who would then in turn activate some
device.
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Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in Diehr. App. Br. 8. But,
we must read Diehr in light of Alice, which emphasized that
Diehr does not stand for the general proposition that a claim
implemented on a computer elevates an otherwise ineligible
claim into a patent-eligible improvement. Alice. Rather, Diehr
involved “a ‘well-known’ mathematical equation ... used ... in a
process designed to solve a technological problem in
‘conventional industry practice.’”
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015).
Diehr solved a technological problem in the conventional industry practice
of molding tires. Here Appellants argue only that the invention activates
some generic device, which encompasses activating display on a generic
computer. Displaying content is not a conventional technological industry
practice, but only making content available to be apprehended. Diehr’s
claim 1 ended with “opening the press automatically when a said
comparison indicates equivalence.” 450 U.S. at 179 fn. 5. This recited
actual completion of a physical operation on a specific industrial device.
Appellants’ recitation of initiating a generic action for a generic device is
more analogous to that in O’Reilly v. Morse, 56 U.S. 62, 86 (1854), which
recited “the use of the motive power of the electric or galvanic current,
which I call electro‐magnetism, however developed for marking or printing
intelligible characters, signs, or letters, at any distances,” which the Supreme
Court found to be outside the scope of patentable subject matter.
We are not persuaded by Appellants’ argument that
Exemplary Claim 1 includes the feature of a set of
multimodal sensors (supported by paragraph [0060] of the
present specification), which are machines to which the present
invention is inextricably tied. Furthermore, the claimed steps
are performed by one or more processors, as described in the
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presently amended claims, and as supported by paragraph
[0015] of the present specification as originally filed.
App. Br. 8 (underlining and bolding omitted). As to the use of processors,
mere recitation of generic computers is insufficient. “When claims like the
Asserted Claims are directed to an abstract idea and merely require generic
computer implementation, they do not move into section 101 eligibility
territory.” Smart Sys., 873 F.3d at 1374 (citations and internal quotations
omitted). As to the sensors, as we determine supra, the claims do not
encompass the sensors but only data that originated from some sensors.
Simply reciting the source of data is insufficient. See SAP Am., supra.
We are not persuaded by Appellants’ argument “that the present
claims are novel and non-obvious, and thus are not ‘well-understood,
routine, activit[ies] previously known in the industry.’” App. Br. 9. “[A]
claim for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). We cite evidence to support the notoriety of the recited operations
supra.
CONCLUSIONS OF LAW
The rejection of claims 1–20 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
DECISION
The rejection of claims 1–20 is affirmed.
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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)(1)(iv) (2011).
AFFIRMED