The Blessing Basket Project

Patent Trials and Appeals Board

Aug 24, 2020

2019003191 (P.T.A.B. Aug. 24, 2020)

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.
14/138,460 12/23/2013 Theresa Carrington 33466-1 8098
76656 7590 08/24/2020
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
SENSENIG, SHAUN D
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/24/2020 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THERESA CARRINGTON,
CHARLES GRADY, and TIMOTHY J. ERNST
____________

Appeal 2019-003191
Application 14/138,460
Technology Center 3600
____________

Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest
as The Blessing Basket Project. Appeal Br. 1.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “selecting
applicants for participation in a program.” Spec. ¶¶ 1, 10.2 The
Specification explains that “many charitable organizations are not overly
selective when choosing to whom they provide assistance” and that “such
lack of selectivity can result a depletion of the organizations [sic] resources
without achieving the mission.” Id. ¶ 12. The Specification also explains
that “it is important to take the highest ranked applicants, the most likely to
succeed,” because “[s]pace in charity programs is limited and resources are
finite.” Id. ¶ 45. According to the Specification, however, “determining
how to select participants in such a program can be extremely difficult and
time consuming.” Id. ¶ 12. Hence, the invention endeavors to provide
“a selection process to facilitate choosing participants who are most likely
to succeed at a program that enables such participants to earn a wage and
work their way out of poverty.” Id. ¶¶ 1, 10.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads
as follows (with formatting added for clarity):
1. A computer-implemented method for selecting
participants from an applicant pool to participate in a program
to exit poverty, said method implemented using a computer

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed December 23, 2013; “Final Act.” for the Final Office
Action, mailed February 6, 2018; “Appeal Br.” for the Appeal Brief, filed
September 5, 2018; “Ans.” for the Examiner’s Answer, mailed January 24,
2019; and “Reply Br.” for the Reply Brief, filed March 18, 2019.
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device in communication with a memory, said method
comprising:
storing, in the memory, a plurality of questions to ask
each applicant currently living in poverty from a pool of
applicants currently living in poverty based on the International
Poverty Line as defined by the World Bank;
storing, in the memory, a plurality of values based on
historical data,
wherein each value is associated with each of
one or more potential answers for each question of
the plurality of questions,
wherein the plurality of values are based on an
applicant’s chances of success in the program to exit
poverty, and
wherein the historical data is based on past
participation of applicants in the program;
for each applicant of the pool of applicants, the method
comprises:
compiling, by the computing device, an income
score based on current income of the applicant in relation
to a current income for each of the applicants, an
expenses score based on current expenses of the
applicant, and an intangibles score based on intangible
qualities of the applicant based on the applicant’s
answers to the plurality of questions and the plurality
of values;
calculating, by the computing device, a likelihood
of the applicant successfully participating in the program
to exit poverty based on the income score, the expenses
score, and the intangibles score;
calculating, by the computing device, the
applicant’s overall score based on the calculated
likelihood of the applicant successfully participating
in the program to exit poverty; and
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determining, by the computing device, the
applicant’s ranking in comparison to the pool of
applicants, based on each applicant’s overall score; and
outputting, by the computing device, the rankings of
the applicants.
Appeal Br. 23–24 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:
The Rejections on Appeal
Claims 1–20 stand rejected under 35 U.S.C. § 112(a) for failing
to comply with the written-description requirement. Final Act. 3.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 3–5.
Claims 1–4, 6–11, 13–18, and 20 stand rejected under 35 U.S.C. § 103
as unpatentable over Stimac, Deyo, and Ravallion. Final Act. 6–14.
Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Stimac, Deyo, Ravallion, and official notice. Final
Act. 14–15.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we agree with the
Examiner’s determinations under § 101 and § 112(a) but disagree with the
Stimac US 2003/0071852 A1 Apr. 17, 2003
Deyo US 2009/0164311 A1 June 25, 2009
Martin Ravallion, World Bank’s $1.25/Day Poverty Measure - Countering
the Latest Criticisms, The World Bank (Jan. 2010) (“Ravallion”)
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Examiner’s determinations under § 103. We adopt the Examiner’s findings
and reasoning for the § 101 and § 112(a) rejections in the Final Office
Action and Answer. See Final Act. 3–5; Ans. 4–10. We add the following
to address and emphasize specific findings and arguments.
The § 112(a) Rejection of Claims 1–20
Among other things, § 112(a) requires that the specification “contain
a written description of the invention.” 35 U.S.C. § 112(a). The written-
description requirement serves to “clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (alteration in original) (quoting Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991)); see Blue Calypso, LLC v. Groupon,
Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016).
“[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad,
598 F.3d at 1351; Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275,
1296 (Fed. Cir. 2017). The “test requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art.” Ariad, 598 F.3d at 1351. While the written-description
requirement “does not demand any particular form of disclosure” or “that the
specification recite the claimed invention in haec verba, a description that
merely renders the invention obvious does not satisfy the requirement.” Id.
at 1352. The analysis for disclosure sufficiency may consider “such
descriptive means as words, structures, figures, diagrams, formulas, etc.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
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Here, independent claims 1, 8, and 15 each recite “questions to ask
each applicant currently living in poverty from a pool of applicants currently
living in poverty based on the International Poverty Line as defined by the
World Bank.” Appeal Br. 23–26. After application filing, Appellant
amended each claim to add the phrase “based on the International Poverty
Line as defined by the World Bank.” Nov. 15, 2017 Amdt 3–7.
The Examiner finds that the “disclosure as originally filed” did not
include the phrase “based on the International Poverty Line as defined by
the World Bank.” Final Act. 3. Thus, the Examiner determines that the
independent claims and their respective dependent claims lack written-
description support in the “disclosure as originally filed.” Id.; see Ans. 5–6.
Appellant argues that the Examiner erred in rejecting the claims under
§ 112(a) because those skilled in the art would have understood that “the
term poverty is based on the International Poverty Line as defined by the
World Bank” when “dealing with a program to exit poverty.” Appeal Br. 8;
see Reply Br. 3–4. Appellant contends that “if the definition of poverty, is
defined by those having skill in the art, as being based on the International
Poverty Line as set by the World Bank, then the use of the phrase [in] the
present claims would be inherently supported” by the Specification. Appeal
Br. 8; Reply Br. 4.
To support its contention concerning inherent disclosure, Appellant
provides declarations from Tanja Gabriele Faller, Daniel Zoltani, Sel
Dibooglu, and Theresa Carrington. See Appeal Br. Evid. App. Each
declarant states that “one having ordinary skill in the art of assisting those
living in poverty would use the definition of poverty as defined by the World
Bank, which defines someone living in poverty as an individual living on
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less than the International Poverty Line.” Faller Decl. ¶ 7; Zoltani Decl. ¶ 5;
Dibooglu Decl. ¶ 6; Carrington Decl. ¶ 7.
We disagree that the Examiner erred in rejecting the claims under
§ 112(a). The phrase “based on the International Poverty Line as defined by
the World Bank” does not appear in the Specification as filed. The
Specification as filed does not discuss the International Poverty Line or even
mention the World Bank.
Entities other than the World Bank define poverty differently than the
World Bank. See, e.g., 85 Fed. Reg. 3060, 3060–61 (Jan. 17, 2020); 84 Fed.
Reg. 1167, 1168 (Feb. 1, 2019); 83 Fed. Reg. 2642, 2643 (Jan. 18, 2018).
For instance, the U.S. Census Bureau annually computes official poverty
thresholds, i.e., dollar amounts used to determine poverty status.3 Based on
the Census Bureau’s poverty thresholds, the U.S. Department of Health and
Human Services annually establishes poverty guidelines “used as an
eligibility criterion by Medicaid and a number of other Federal programs.”
See, e.g., 85 Fed. Reg. at 3060.
Moreover, the poverty line may vary from country to country. See
Aldi J.M. Hagenaars & Bernard M.S. Van Praag, A Synthesis of Poverty
Line Definitions, 31 Review of Income & Wealth 139–54, 139 (Abstract)
(June 1985). For instance, Ravallion states that “richer countries have
higher national poverty lines” than poorer countries. Ravallion 1.
Further, the World Bank uses poverty lines other than the
International Poverty Line. See Ravallion 1. Ravallion explains that “in its

3 See https://www.census.gov/data/tables/time-series/demo/income-
poverty/historical-poverty-thresholds.html.
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work with specific developing countries, the [World] Bank uses the national
poverty line considered most appropriate in each country.” Id.
Demonstrating inherent disclosure requires evidence that “the missing
descriptive material is ‘necessarily present,’ not merely probably or possibly
present.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295
(Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999)). Appellant’s declaration evidence shows that some people skilled in
the art would use the International Poverty Line to define poverty. See
Faller, Zoltani, Dibooglu, and Carrington Decls. But other people skilled in
the art would use other poverty lines to define poverty. See, e.g., Ravallion
1; 85 Fed. Reg. at 3060–61. Hence, we disagree with Appellant’s contention
that the Specification inherently supports a poverty definition “based on the
International Poverty Line as defined by the World Bank.”
At best, Appellant establishes that a poverty definition “based on the
International Poverty Line as defined by the World Bank” would have been
obvious to those skilled in the art. See Faller, Zoltani, Dibooglu, and
Carrington Decls.; Ans. 6. But a disclosure that “merely renders the
invention obvious does not satisfy” the written-description requirement.
Ariad, 598 F.3d at 1352.
For the reasons discussed above, we sustain the § 112(a) rejection
of claims 1–20.
The § 101 Rejection of Claims 1–20
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
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thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth
a two-step analytical framework for evaluating patent eligibility. Mayo,
566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO).
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
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exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
Patent-ineligible abstract ideas include fundamental economic
practices, mental processes, and mathematical formulas. See, e.g., Alice,
573 U.S. at 219–20 (fundamental economic practice of intermediated
settlement); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010)
(fundamental economic practice of hedging or protecting against risk in
independent claim and mathematical formula in dependent claim); Parker v.
Flook, 437 U.S. 584, 585–86, 596–98 (1978) (mathematical formula for
calculating updated alarm limit); Gottschalk v. Benson, 409 U.S. 63, 65–67
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(1972) (mental process of converting binary-coded-decimal representation
to binary representation). The 2019 Guidance specifies three groupings
of abstract ideas: (1) certain methods of organizing human activity,
(2) mental processes, and (3) mathematical concepts. 84 Fed. Reg. at 51–52.
In Alice, the Supreme Court “did not establish any ‘precise contours’
for defining whether claims are directed to ‘abstract ideas’ or something
else.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir.
2019) (citing Alice, 573 U.S. at 221). Further, for Mayo/Alice step one, the
Federal Circuit has noted 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).
Here, the Examiner determines that the claims are directed to the
abstract idea of “collecting and comparing user data to determine scores for
the purpose of ranking users.” Final Act. 3–4. The Examiner explains that
the claims encompass concepts that “are similar to concepts identified as
abstract ideas by the courts.” Id. at 4 (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014); SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F. App’x 950 (Fed. Cir. 2014); Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)).
Appellant disputes that the claims are directed to an abstract idea. See
Appeal Br. 9–14; Reply Br. 4–7. Specifically, Appellant asserts that “none
of the recitations of independent Claims 1, 8, and 15 can be performed
mentally, recite nothing more than mathematical concepts, or are reasonably
categorized as methods of organizing human activity.” Reply Br. 5; see id.
at 6.
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We disagree. Under the 2019 Guidance, we determine that each
independent claim recites abstract ideas falling within two of the three
groupings of abstract ideas specified in the 2019 Guidance. See 84 Fed.
Reg. at 51–52. In particular, each claim recites (1) mental processes and
(2) mathematical concepts.
First, the 2019 Guidance describes mental processes as “concepts
performed in the human mind,” such as “an observation, evaluation,
judgment, [or] opinion.” 84 Fed. Reg. at 52 (footnote omitted). Here,
claim 1 recites the following limitations encompassing observations and
evaluations performed by a human mentally or with pen and paper:
● “compiling . . . an income score based on current income
of the applicant in relation to a current income for each
of the applicants, an expenses score based on current
expenses of the applicant, and an intangibles score based
on intangible qualities of the applicant based on the
applicant’s answers to the plurality of questions and
the plurality of values”;
● “calculating . . . a likelihood of the applicant successfully
participating in the program to exit poverty based on the
income score, the expenses score, and the intangibles
score”;
● “calculating . . . the applicant’s overall score based on
the calculated likelihood of the applicant successfully
participating in the program to exit poverty”; and
● “determining . . . the applicant’s ranking in comparison
to the pool of applicants, based on each applicant’s
overall score.”
Appeal Br. 23. Claims 8 and 15 recite similar limitations. Id. at 25, 27.
The above-identified limitations encompass observations and
evaluations performed by a human mentally or with pen and paper because
someone could mentally determine an income score, an expenses score, and
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an intangibles score for an applicant after asking the applicant a few
questions. See Spec. ¶¶ 15–17, 38–39, 41, Fig. 3. After determining the
scores, someone could mentally or with pen and paper compile the scores.
See id. ¶¶ 40–42. After compiling the scores, someone could mentally or
with pen and paper calculate the applicant’s likelihood of successful
program participation, e.g., by adding, subtracting, multiplying, or dividing
various scores or combinations of scores. See id. ¶ 43, Fig. 3. In addition,
someone could mentally or with pen and paper calculate the applicant’s
overall score, e.g., by inputting the previously calculated likelihood into a
formula. See id. ¶¶ 44–46, Fig. 3. Then, someone could mentally compare
the applicant’s overall score to the overall scores for others in the applicant
pool to determine the applicant’s ranking.
For these reasons, the above-identified limitations encompass
observations and evaluations performed by a human mentally or with pen
and paper. The 2019 Guidance identifies observations and evaluations
performed by a human mentally or with pen and paper as mental processes,
and thus an abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“Symantec”) (“[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.”).
Second, the 2019 Guidance describes mathematical concepts as
including “mathematical relationships, mathematical formulas or equations,
[and] mathematical calculations.” 84 Fed. Reg. at 52. Here, claim 1 recites
the following limitations encompassing mathematical relationships and
mathematical calculations:
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● “calculating . . . a likelihood of the applicant successfully
participating in the program to exit poverty based on the
income score, the expenses score, and the intangibles
score”;
● “calculating . . . the applicant’s overall score based on
the calculated likelihood of the applicant successfully
participating in the program to exit poverty”; and
● “determining . . . the applicant’s ranking in comparison
to the pool of applicants, based on each applicant’s
overall score.”
Appeal Br. 23. Claims 8 and 15 recite similar limitations. Id. at 25, 27.
Each of the above-identified limitations involves mathematical
relationships or mathematical calculations (or both). For example, the
“calculating” limitations expressly require mathematical calculations.
Further, the “determining” limitation involves mathematical relationships
that compare the magnitudes of different numbers. The 2019 Guidance
identifies mathematical relationships and mathematical calculations as
mathematical concepts, and thus an abstract idea. 84 Fed. Reg. at 52.
Appellant “submits that the present claims cannot be performed
mentally” because they “recite a computer device that performs” calculating,
comparing, and ranking functions. Reply Br. 5. We disagree because, as
discussed above, a human can perform the calculating, comparing, and
ranking functions mentally or with pen and paper. See Spec. ¶¶ 38–46,
Fig. 3. For example, the independent claims do not specify the applicant
pool’s size, and the pool could consist of two or three applicants. Appeal Br.
23–27. Someone could rank or re-rank two or three applicants mentally
or with pen and paper.
Appellant analogizes the claims here to the claims in Application
13/287,831 where the Board determined that the abstract idea of “collecting
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usage information” identified by the Examiner did not fall within any of the
three groupings of abstract ideas specified in the 2019 Guidance. Reply
Br. 6. But the claims here differ from the claims in Application 13/287,831
because the claims here recite abstract ideas falling within two of the three
groupings.
For the reasons discussed above, each independent claim recites
(1) mental processes and (2) mathematical concepts. Thus, each claim
recites abstract ideas.
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG TWO
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite computer
components, i.e., a “computer device” or “computing device,” a “memory”
or “memory device,” and a “processor.” Appeal Br. 23–27; see Final
Act. 4–5. The claims also recite data-collecting and data-presenting
limitations. Appeal Br. 23–27.
For instance, claim 1 recites the following data-collecting and data-
presenting limitations:
● “storing . . . a plurality of questions to ask each applicant
currently living in poverty from a pool of applicants
currently living in poverty based on the International
Poverty Line as defined by the World Bank”;
● “storing . . . a plurality of values based on historical data,
wherein each value is associated with each of one or
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more potential answers for each question of the plurality
of questions, wherein the plurality of values are based on
an applicant’s chances of success in the program to exit
poverty, and wherein the historical data is based on past
participation of applicants in the program”; and
● “outputting . . . the rankings of the applicants.”
Appeal Br. 23–24. Claims 8 and 15 recite similar limitations. Id. at 24–27.
We determine that each independent claim as a whole does not
integrate the recited abstract ideas into a practical application because the
additional elements do not impose meaningful limits on the abstract ideas.
See 84 Fed. Reg. at 53–54; see also Final Act. 3–5. Instead, the claimed
computer components constitute generic computer components that perform
generic computer functions. See Spec. ¶¶ 26–29; Final Act. 5 (citing Spec.
¶ 28); Ans. 9. Further, the data-collecting and data-presenting limitations
constitute insignificant extra-solution activity. See, e.g., Mayo, 566 U.S.
at 79; Bilski, 561 U.S. at 611–12; Apple, 842 F.3d at 1241–42; OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011); In re Grams, 888 F.2d 835, 839–40 (Fed. Cir. 1989).
As an example of insignificant extra-solution activity, in Mayo the
Supreme Court decided that measuring metabolite levels for later analysis
constituted purely “conventional or obvious” pre-solution activity. Mayo,
566 U.S. at 79. Similarly, the Federal Circuit has held that mere data-
gathering steps “cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The
Federal Circuit has also held that (1) presenting offers to potential customers
and (2) gathering statistics concerning responses were “conventional data-
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gathering activities that [did] not make the claims patent eligible.” OIP
Techs., 788 F.3d at 1363–64. Consistent with those decisions, the Manual
of Patent Examining Procedure (“MPEP”) identifies “gathering data” as an
example of insignificant pre-solution activity. MPEP § 2106.05(g) (9th ed.
rev. 08.2017 Jan. 2018).
Here, the data-collecting limitations amount to mere data-gathering
steps and require nothing unconventional or significant. See Classen,
659 F.3d at 1067 (analogizing “data gathering” to “insignificant extra-
solution activity”). In particular, the “storing” and “store” limitations
operate to make data available for processing like the “conventional data-
gathering activities” in OIP Technologies. See OIP Techs., 788 F.3d
at 1363–64; see also Bilski, 561 U.S. at 611–12 (establishing inputs for
mathematical formula); Spec. ¶¶ 3, 21. Hence, the data-collecting
limitations in each independent claim do not help integrate the recited
abstract ideas into a practical application.
Further, in Flook the Supreme Court decided that adjusting an alarm
limit according to a mathematical formula was “post-solution activity” and
insufficient to confer eligibility. Flook, 437 U.S. at 590, 596–98; see Bilski,
561 U.S. at 610–11 (discussing Flook). Similarly, the Federal Circuit has
held that printing menu information constituted insignificant post-solution
activity. Apple, 842 F.3d at 1241–42. Consistent with those decisions, the
MPEP identifies printing “to output a report” as an example of insignificant
post-solution activity. MPEP § 2106.05(g).
Here, the data-presenting limitations require no particular presentation
tool and nothing unconventional or significant. Instead, the “outputting” and
“output” limitations require nothing more than a generic display for
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presenting applicant rankings. For example, the Specification describes
a “display device” as including “a cathode ray tube (CRT), liquid crystal
display (LCD), light emitting diode (LED) display, or ‘electronic ink’
display.” Spec. ¶ 30. Just as printing menu information in Apple constituted
insignificant post-solution activity, presenting applicant rankings here
constitutes insignificant post-solution activity. Hence, the data-presenting
limitation in each independent claim does not help integrate the recited
abstract ideas into a practical application.
Appellant analogizes the claims here to the claims in McRO. See
Appeal Br. 9–14 (citing McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016)). In particular, Appellant argues that “like
the McRO patents, Appellant’s application discloses and claims not the
automation of steps previously known in the art, but rather a new ordered
combination of rules that solves a specifically identified problem in the prior
art.” Id. at 11 (emphasis by Appellant). In addition, Appellant contends that
“[b]ecause Appellant’s claims use ‘limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice,’ they must be held to be patent-eligible at step one.” Id.
at 12 (quoting McRO, 837 F.3d at 1316).
We disagree that the claims here resemble the claims in McRO.
There, the claims recited a “specific . . . improvement in computer
animation.” McRO, 837 F.3d at 1315. In particular, the claims recited
“unconventional rules” that related “sub-sequences of phonemes, timings,
and morph weight sets” to automatically animate lip synchronization and
facial expressions for three-dimensional characters that only human
animators could previously produce. Id. at 1302–03, 1307–08, 1313–15.
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The Federal Circuit decided that the claims satisfied § 101 under Mayo/Alice
step one because “the incorporation of the claimed rules” improved an
existing technological process. Id. at 1314–16; see Alice, 573 U.S. at 223
(explaining that “the claims in Diehr were patent eligible because they
improved an existing technological process”).
Unlike the claims in McRO, the claims here do not recite
“unconventional rules” or improve an existing technological process. See
Final Act. 5; Ans. 7, 10. For example, claim 1’s “compiling,” “calculating,”
and “determining” limitations are not “rules” like the expressly claimed
“rules” in McRO, i.e., “a first set of rules that define output morph weight set
stream as a function of phoneme sequence and time of said phoneme
sequence.” See McRO, 837 F.3d at 1307–08, 1313.
Using generic computer components to interview, score, and rank
applicants is not a technological process. See Ans. 10. The “need to
perform tasks automatically is not a unique technical problem.” Cellspin
Soft, 927 F.3d at 1316. Here, the claims merely automate the manual
processes of interviewing, scoring, and ranking applicants, and thus facilitate
“difficult and time consuming” activities. See Appeal Br. 23–27; Spec. ¶¶ 1,
10–12, 38–46, Fig. 3. The “mere automation of manual processes using
generic computers” does not suffice for patent eligibility. Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017); see Univ.
of Fla., 916 F.3d at 1367.
In addition, Appellant concedes that the claims seek to overcome “the
problem that selecting candidates . . . requires significant time and effort.”
Appeal Br. 15. Claims “seek[ing] to automate ‘pen and paper
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methodologies’ to conserve human resources” are directed to an abstract
idea. See Univ. of Fla., 916 F.3d at 1367–68.
Based on McRO, Appellant asserts that “the absence of any risk of
preemption further supports the conclusion that the asserted claims are not
directed to an abstract idea.” Appeal Br. 13–14. Appellant wrongly relies
on an absence of preemption to establish patent eligibility. See Ans. 8.
While preemption may denote ineligibility, its absence does not establish
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).
Appellant contends that the claims include “detailed limitations
recit[ing] a specific manner of electronically selecting participants from an
applicant pool to participate in a program to exit poverty that provides a
specific improvement over prior poverty assistance systems, resulting in an
improved system for assisting individuals in exiting poverty.” Reply Br. 7.
Appellant “submits that leveraging applicant data” to “(i) calculate scores
for individual applicants, (ii) compare the applicants to the other applicants
in the applicant pool, (iii) rank each applicant based on the scores, and
(iv) automatically re-rank each applicant based on changes to one or more
applicants in the applicant pool” provides “the technical improvement.” Id.
We disagree. As discussed above, using generic computer
components to interview, score, and rank applicants is not a technological
process. See Ans. 10. The Specification does not discuss an advance in
hardware or software that, for example, causes a computing device, memory
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device, or processor to operate faster or more efficiently. The claimed
invention does not improve the functioning of a computer or any other
technology. Final Act. 5; see Ans. 10.
Appellant analogizes the claims here to the claims in BASCOM. See
Appeal Br. 15–16 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Specifically, Appellant
asserts that the claims here recite “a technology-based solution” that
“overcomes existing problems with other aid providing methods, namely the
problem that selecting candidates that will be successfully [sic] both in the
program and afterwards requires significant time and effort.” Id. at 15.
We disagree that the claims here resemble the claims in BASCOM.
There, the claims recited a “specific method of filtering Internet content”
requiring “the installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features specific to each end
user.” BASCOM, 827 F.3d at 1345–46, 1350. The Federal Circuit decided
that the claims satisfied § 101 under Mayo/Alice step two. Id. at 1349–51.
The court reasoned that the claims covered “a technology-based solution . . .
to filter content on the Internet that overcomes existing problems with other
Internet filtering systems” and “improve[s] an existing technological
process.” Id. at 1351 (citing Alice, 573 U.S. at 223).
Unlike the claims in BASCOM, the claims here do not cover a
technology-based solution that improves an existing technological process.
See Final Act. 5; Ans. 7, 10. As discussed above, using generic computer
components to interview, score, and rank applicants is not a technological
process. See Ans. 10.
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The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract ideas into a practical application. Thus, each claim is
directed to a judicial exception and does not satisfy § 101 under Mayo/Alice
step one.
MAYO/ALICE STEP TWO: PTO STEP 2B
Because we determine that each independent claim is directed
to a judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power, 830 F.3d at 1353). An “inventive
concept” requires more than “well-understood, routine, conventional activity
already engaged in” by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79–80). But a “non-conventional and non-generic arrangement
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of known, conventional pieces” may provide an “inventive concept”
satisfying step two. BASCOM, 827 F.3d at 1350.
As discussed above, the independent claims recite computer
components, i.e., a “computer device” or “computing device,” a “memory”
or “memory device,” and a “processor.” Appeal Br. 23–27; see Final
Act. 4–5. As also discussed above, the claimed computer components
constitute generic computer components that perform generic computer
functions. See Spec. ¶¶ 26–29; Final Act. 5 (citing Spec. ¶ 28); Ans. 9.
The Specification describes the claimed computer components
generically and evidences their conventional nature. See Spec. ¶¶ 26–29.
As an example, the Specification states that the disclosed “generic
computing device” represents (1) “various forms of digital computers, such
as laptops, desktops, workstations, personal digital assistants, servers, blade
servers, mainframes, tablets, and other appropriate computers” and
(2) “various forms of mobile devices, such as personal digital assistants,
cellular telephones, smart phones, and other similar computing devices.” Id.
¶ 28. As another example, the Specification describes a “memory device”
as including “RAM memory, ROM memory, EPROM memory, EEPROM
memory, and non-volatile RAM (NVRAM) memory.” Id. ¶ 27. As yet
another example, the Specification explains that a “processor” refers to
“central processing units, microprocessors, microcontrollers, reduced
instruction set circuits (RISC), application specific integrated circuits
(ASIC), logic circuits, and any other circuit or processor capable of
executing the functions described herein.” Id. ¶ 26.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
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also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk, 409 U.S. at 64–65, 71).
Moreover, the claimed computer components operate to collect,
manipulate, and display data. Appeal Br. 23–27; see Final Act. 3–5; Ans. 9.
Court decisions have recognized that generic computer components
operating to collect, manipulate, and display data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S.
at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d
at 1234, 1241–42; Symantec, 838 F.3d at 1316–20; Versata Dev. Grp., Inc.
v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial,
772 F.3d at 715–16; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014); see also Ans. 9 (citing court decisions).
For example, the system claims in Alice recited a “data processing
system” (e.g., a “computer device” or “computing device”) with
a “communications controller” and a “data storage unit” (e.g., a “memory”
or “memory device”). Alice, 573 U.S. at 226. The Supreme Court decided
that the system claims failed to satisfy § 101 because “[n]early every
computer” includes those generic components for performing “basic
calculation, storage, and transmission functions” and the system claims
simply implemented the same abstract idea as the method claims. Id.
at 226–27. The Court reasoned that (1) “the system claims are no different
from the method claims in substance”; (2) “[t]he method claims recite the
abstract idea implemented on a generic computer”; and (3) “the system
claims recite a handful of generic computer components configured to
implement the same idea.” Id. at 226.
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Here, the claimed computer components perform “basic calculation,
storage, and transmission functions” that nearly every computer performs.
Appeal Br. 23–27; see Final Act. 5; Ans. 9. For instance, nearly every
computer includes a “processor” for manipulating data and a “memory” or
“memory device” for storing data. Nothing in the claims “requires anything
other than conventional computer . . . components operating according to
their ordinary functions.” See Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1339, 1341 (Fed. Cir. 2017).
Hence, the claimed computer components do not satisfy the
“inventive concept” requirement. See, e.g., Customedia Techs., LLC v. Dish
Network Corp., 951 F.3d 1359, 1361, 1366 (Fed. Cir. 2020) (describing the
claimed “processor,” “storage device,” “programmable receiver unit,” and
“remote server” as “generic computer components”); Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(holding that “generic computer components such as an ‘interface,’
‘network,’ and ‘database’” did not satisfy the “inventive concept”
requirement); FairWarning, 839 F.3d at 1095–96 (describing the claimed
“microprocessor” and “user interface” as “generic computer elements”);
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17
(Fed. Cir. 2017) (describing the claimed “authentication server,” “access
server,” “Internet Protocol network,” “client computer device,” and
“database” as “indisputably generic computer components”).
We reach a similar conclusion concerning the data-collecting and
data-presenting limitations, e.g., claim 1’s “storing” and “outputting”
limitations. As discussed above, the data-collecting limitations amount to
mere data-gathering steps and require nothing unconventional or significant.
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As also discussed above, the data-presenting limitations require no particular
presentation tool and nothing unconventional or significant. Consequently,
the claimed insignificant extra-solution activity does not satisfy the
“inventive concept” requirement. See, e.g., Mayo, 566 U.S. at 79–80; Bilski,
561 U.S. at 611–12; Flook, 437 U.S. at 590; Apple, 842 F.3d at 1241–42;
OIP Techs., 788 F.3d at 1363–64; CyberSource, 654 F.3d at 1370.
To satisfy the “inventive concept” requirement, Appellant asserts that
the claims recite a “novel architecture” not “well-understood, routine, and
conventional.” Appeal Br. 14. Appellant contends that “claims introduce a
new structural component—the recited computer system” that “enables
(i) calculating scores for individual applicants, (ii) comparing the applicants
to the other applicants in the applicant pool, (iii) ranking each applicant
based on the scores, and (iv) automatically re-ranking each applicant based
on changes to one or more applicants in the applicant pool.” Id. (emphasis
by Appellant).
Insofar as Appellant relies on the recited abstract ideas to satisfy the
“inventive concept” requirement, Appellant wrongly does so. A “claimed
invention’s use of the ineligible concept,” e.g., an abstract idea, “cannot
supply the inventive concept that renders the invention ‘significantly more’
than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018). Under “the Mayo/Alice framework, a claim
directed to a newly discovered” abstract idea “cannot rely on the novelty of
that discovery for the inventive concept necessary for patent eligibility.”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Insofar as Appellant relies on novelty and nonobviousness over the
prior art to satisfy the “inventive concept” requirement, Appellant wrongly
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does so. Novelty and nonobviousness do not “resolve the question of
whether the claims embody an inventive concept” under Mayo/Alice
step two. Symantec, 838 F.3d at 1315; see SAP Am., 898 F.3d at 1163.
“The search for a § 101 inventive concept” differs “from demonstrating
§ 102 novelty.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016); see Two-Way Media, 874 F.3d at 1340. “The
‘novelty’ of any element[s] or steps” in a claim or even the claim itself “is of
no relevance in determining whether the subject matter of a claim” satisfies
§ 101. Diehr, 450 U.S. at 188–89.
Further, contrary to Appellant’s contention, programing a computer to
perform an allegedly novel algorithm does not transform the computer into
“a new structural component.” See Alice, 573 U.S. at 213, 225–27; Bilski,
561 U.S. at 599, 609–13; SAP Am., 898 F.3d at 1163–65; Appeal Br. 14.
The allegedly novel algorithm does not alter a processor’s structure or a
memory’s structure.
Appellant asserts that the § 101 rejection fails under Berkheimer.
Appeal Br. 14–15 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.
2018)). We disagree because the Examiner cites court decisions recognizing
that generic computer components operating to collect, manipulate, and
display data are well understood, routine, and conventional to a skilled
artisan. See Ans. 9; see also Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d
at 1164–65 & n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Symantec,
838 F.3d at 1316–20; Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d
at 715–16; buySAFE, 765 F.3d at 1355. In addition, the Examiner
“provide[s] a citation to Appellant’s specification” where it “discusses the
use of general-purpose, generic computer components for performing
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Appellant’s claimed invention without disclosing any special-purpose or
non-conventional computer components.” Final Act. 5 (citing Spec. ¶ 28);
Ans. 9.
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Considering the limitations as an ordered combination adds nothing to the
abstract ideas that is not already present when considering the limitations
separately. See Mayo, 566 U.S. at 79; Final Act. 5. The ordered
combination of limitations in each independent claim amounts to nothing
more than the abstract ideas implemented with generic computer
components that perform generic computer functions. See Alice, 573 U.S.
at 225–26; Final Act. 5; Ans. 9. Hence, we conclude that the ordered
combination of limitations in each independent claim does not supply an
“inventive concept” that renders the claim “significantly more” than the
abstract ideas. See Final Act. 4–5; Ans. 9. Thus, each claim does not satisfy
§ 101 under Mayo/Alice step two.
SUMMARY FOR INDEPENDENT CLAIMS 1, 8, AND 15
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of
the independent claims.
DEPENDENT 2–7, 9–14, AND 16–20
We also sustain the § 101 rejection of dependent claims 2–7, 9–14,
and 16–20 because Appellant does not argue eligibility separately for them.
See Appeal Br. 9–16; Reply Br. 4–8; 37 C.F.R. § 41.37(c)(1)(iv).
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The § 103 Rejection of Claims 1–4, 6–11, 13–18, and 20
INDEPENDENT CLAIMS 1, 8, AND 15
As noted above, the § 103 rejection of claims 1, 8, and 15 rests on
Stimac, Deyo, and Ravallion. See Final Act. 6–12. Appellant argues that
the Examiner erred in rejecting the claims because the references fail to
teach or suggest the following limitation in claim 1 and similar limitations
in claims 8 and 15:
compiling, by the computing device, an income score based on
current income of the applicant in relation to a current income
for each of the applicants, an expenses score based on current
expenses of the applicant, and an intangibles score based on
intangible qualities of the applicant based on the applicant’s
answers to the plurality of questions and the plurality of values.
See Appeal Br. 16–19; Reply Br. 8–9.
Specifically, Appellant asserts that no reference teaches or suggests
determining an income score, an expenses score, and an intangibles score
as required by the “compiling” limitation. See Appeal Br. 16–18; Reply
Br. 8–9. Appellant also asserts that Stimac “merely describes questions for
a job applicant” and does not relate to poverty. Appeal Br. 18; Reply Br. 9.
In addition, Appellant contends that Deyo merely “describe[s] the use of
historical answer data relating to performance data of previous applicants to
determine the potential effectiveness of potential answers to predict job
performance.” Appeal Br. 18. Appellant also contends that Ravallion
teaches only “poverty being measured based on the International Poverty
Line as defined by the World Bank.” Id. at 19.
The Examiner finds that “Stimac does not explicitly disclose scores
specifically measuring data related to income, expense and/or intangible
data.” Final Act. 10, 13. But the Examiner construes the claimed “type of
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data/score” as “simply a label for the data” that “does not serve to
distinguish over the prior art.” Id. at 10. The Examiner reasons that the
claimed scores “are not used in any significant manner in the claimed
invention” and that “substituting those scores with other, different scores
based on different data would not materially alter the performance and/or
outcome of the claimed invention.” Id. According to the Examiner, “the
claims merely recite the determining of various scores, each score being
provided a label that doesn’t affect how it is determined.” Ans. 12.
We disagree with the Examiner because the claims require using the
claimed income score, expenses score, and intangibles score for calculating
and ranking purposes. Appeal Br. 23–27. Substituting Stimac’s scores or
Deyo’s scores for the claimed scores would affect the claimed calculations
and rankings, and thus would “alter the performance and/or outcome of the
claimed invention.” See Stimac ¶¶ 109, 134, 141, 150–152, 160, code (57),
Figs. 68–69; Deyo ¶¶ 20, 24–25, 31, code (57), Fig. 1. Thus, based on the
record before us, we agree with Appellant that the Examiner has not
adequately explained how the cited portions of the references teach or
suggest the “compiling” and “compile” limitations in claims 1, 8, and 15.
Hence, we do not sustain the § 103 rejection of claims 1, 8, and 15.
DEPENDENT CLAIMS 2–4, 6, 7, 9–11, 13, 14, 16–18, AND 20
Claims 2–4, 6, and 7 depend from claim 1; claims 9–11, 13, and 14
depend from claim 8; and claims 16–18 and 20 depend from claim 15. For
the reasons discussed for claims 1, 8, and 15, we do not sustain the § 103
rejection of claims 2–4, 6, 7, 9–11, 13, 14, 16–18, and 20.
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The § 103 Rejection of Claims 5, 12, and 19
Claim 5 depends from claim 1; claim 12 depends from claim 8; and
claim 19 depends from claim 15. The Examiner relies on official notice for
the limitations in claims 5, 12, and 19 but not for the “compiling” and
“compile” limitations in claims 1, 8, and 15. See Final Act. 6–12, 14–15.
For the reasons discussed for claims 1, 8, and 15, we do not sustain the § 103
rejection of claims 5, 12, and 19.
Because the preceding determinations resolve the § 103 rejections for
claims 1–20, we need not address Appellant’s other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on “a single dispositive issue”).
CONCLUSION
We affirm the rejection of claims 1–20 under 35 U.S.C. § 101.
We reverse the rejections of claims 1–20 under 35 U.S.C. § 103.
We affirm the rejection of claims 1–20 under 35 U.S.C. § 112(a).
Because we affirm at least one ground of rejection for each claim
on appeal, we affirm the Examiner’s decision to reject all of the claims
on appeal. See 37 C.F.R. § 41.50(a)(1).
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–4, 6–11,
13–18, 20 103
Stimac, Deyo,
Ravallion
1–4, 6–11,
13–18, 20
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5, 12, 19 103
Stimac, Deyo,
Ravallion,
official notice
5, 12, 19
1–20 112(a) Written Description 1–20
Overall
Outcome 1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED