The Toronto-Dominion Bank

Patent Trials and Appeals Board

Sep 1, 2021

2021001341 (P.T.A.B. Sep. 1, 2021)

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.
15/720,414 09/29/2017 Nasim SARIR G4144-00224 9202
39290 7590 09/01/2021
Duane Morris LLP - Washington, D.C.
505 9th Street N.W.
Suite 1000
Washington, DC 20004
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
DC_IPDocketing@duanemorris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NASIM SARIR, JOHN WILLIAM THOMAS,
SIMONA HEATH, DIANE LEE, RICHARD THOMAS,
JOHN JONG-SUK LEE, and ARUN VICTOR JAGGA
____________

Appeal 2021-001341
Application 15/720,4141
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
TARA L. HUTCHINGS, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Final Rejection2 of claims 1, 2, 4–9, 11–15, and 17–20. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies The Toronto-Dominion Bank as
the real party in interest (Appeal Br. 3).
2 All references to the Final Office Action refer to the Final Office Action
mailed on April 3, 2020.
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SUMMARY OF DECISION
We affirm.
THE INVENTION
Appellant states the invention relates to “consolidating data in
accordance with at least one apportionment rule.” Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. An entity computing system for retrieving and
consolidating data associated with a plurality of records for
transmission to a second entity computing system, the entity
computing system comprising:
a memory storing computer-executable instructions, and
at least one processing device coupled to the memory, the
computer-executable instructions when executed by the at least
one processing device causing the at least one processing
device to:
receive, from at least one computing device via a secure
network, at least one request to retrieve and consolidate data
from a plurality of data sources associated with the plurality of
records, wherein each one of the plurality of data sources is
associated with a respective one of the plurality of records and
the request comprises an apportionment rule indicating data to
be retrieved from each one of the plurality of data sources and
consolidated for transmission to the second entity computing
system;
determine which of the plurality of records and the
plurality of data sources is associated with the entity computing
system;
retrieve data according to the apportionment rule in
respect of each one of the plurality of data sources associated
with the entity computing system;
store the retrieved data in a consolidated data source; and
transmit, via a secure intermediary network, one of the
consolidated data source and data stored in the consolidated
data source for receipt by the second entity computing system;
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wherein, in respect of each one of the plurality of data
sources associated with the entity computing system:
prior to the retrieval,
determine a first data source state and whether the
first data source state conflicts with the apportionment
rule, wherein the first data source state comprises an
indication of at least one of a data type, a data size and a
data format, and
when the first data source state conflicts with the
apportionment rule, transmit, via the secure intermediary
network, alert data for receipt by the second entity
computing system.

THE REJECTION
Claims 1, 2, 4–9, 11–15, and 17–20 stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception (abstract idea) without
significantly more. Final Act. 2; Ans. 3.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–7 in the
Final Office Action and on pages 3–5 in the Examiner’s Answer.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1, 2, 4–9, 11–15, and 17–20
under 35 U.S.C. § 101.
We select claim 1 as the representative claim for this analysis, and so
the remaining claims stand or fall with claim 1.3 See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).

3 On page 15 of the Appeal Brief, Appellant states: “Pending independent
claims 12 and 14 recite similar elements [to those of claim 1].” We thus
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An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India

consider the mainstay of Appellant’s arguments to be based on the
limitations of independent claim 1.
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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 that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).4 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51;5 see also October
2019 Update at 1.
Under the 2019 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) (“Step 2A, Prong One”); and

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior
to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should
not be relied upon.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.

6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. at 53; see also MPEP §§ 2106.04–2106.05.
The Specification states:
Situations may arise in which a computing system
associated with one entity, such as a government department,
must retrieve data from a computing system associated with
another entity, such as a private hospital, in order to fulfill a data
request. Since the computing systems are associated with
different entities, data that is accessible to the computing system
associated with one entity may not be accessible to the
computing system associated with the other entity. Such
considerations may create technical difficulties in fulfilling
requests for the retrieval and transmission of data from one
entity’s computing system to a computing system associated
with another entity. If communications between computing
systems of different entities are required to take place over secure
networks performing such data retrieval and transmission
activities may be more complex.
Spec. ¶ 3.
The preamble of claim 1 states it is, “for retrieving and consolidating
data associated with a plurality of records.”
Claim 1 recites in pertinent part:
receive, . . . at least one request to retrieve and
consolidate data from a plurality of data sources associated with
the plurality of records, wherein each one of the plurality of
data sources is associated with a respective one of the plurality
of records and the request comprises an apportionment rule
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indicating data to be retrieved from each one of the plurality of
data sources and consolidated for transmission . . . ;
determine which of the plurality of records and the
plurality of data sources is associated with [an] entity . . . ;
retrieve data according to the apportionment rule in
respect of each one of the plurality of data sources associated
with the entity . . . ;
store the retrieved data in a consolidated data source; and
transmit, . . . , one of the consolidated data source and
data stored in the consolidated data source for receipt by [a]
second entity . . . ;
wherein, in respect of each one of the plurality of data
sources associated with the entity . . . :
prior to the retrieval,
determine a first data source state and whether the
first data source state conflicts with the apportionment
rule, wherein the first data source state comprises an
indication of at least one of a data type, a data size and a
data format, and
when the first data source state conflicts with the
apportionment rule, transmit, . . . , alert data for receipt
by the second entity . . . .

Preliminarily, we construe the scope of claim 1 as follows. Claim 1
recites “a first data source state.” The claim then goes on to identify items
which are comprised by this term, namely, “at least one of a data type, a data
size and a data format.” We construe what the claim refers to as “states”
(“at least one of a data type, a data size and a data format”) to be in reality
“attributes.” The word “state” suggests transitory, changing machine
operation–which these items are not. Instead, “data type, a data size and a
data format,” are fixed descriptors that characterize something at all times
until that something itself is altered. Thus, according to our claim
construction, “the data source states” are fixed descriptors and, as such, are
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terms which are comprehended and processable by the human mind and are
not necessarily appurtenant to machine processing functions.
The Examiner found claim 1, “describes a process for retrieving and
consolidating data associated with plurality of records for transmission
between a first entity and a second entity. . . . [O]ther than reciting ‘via a
processing device,’ nothing in the claim precludes the limitations from
practically being performed by organizing human activity” (Final Act. 3).
Accordingly, all this intrinsic evidence shows that claim 1 recites
fulfilling requests for the retrieval and transmission of data to be retrieved
based on determining a data source state of that data prior to retrieval. This
is consistent with the Examiner’s determination. Consolidating records
based on human understandable attributes using rules constitutes, “following
rules or instructions,” which is one of certain methods of organizing human
activity that are judicial exceptions. Guidance, 84 Fed. Reg. at 52.
In addition, we find that the verbs7 identified above in italics in the
truncated version of claim 1 are mental steps because they mimic human
thought processes, 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).

7 We note humans regularly “transmit” information by writing or through
spoken word to one another. Transmit: “to send or convey from one person
or place to another.” Merriam-Webster Online Dictionary,
https://www.merriam-webster.com/dictionary/transmit.
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Finally, we note, claim 1 ends with, “transmit[ing], via the secure
intermediary network, alert data for receipt by the second entity computing
system,” which we find is merely an insignificant extrasolution activity and
thus is afforded no weight in the eligibility analysis. Bilski, 561 U.S. at 610–
11 (“Flook stands for the proposition that the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.”’ (quoting Diehr, 450 U.S. at 191–92)); Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a memory,” “at least one processing device,” and “at
least one computing device.” These components are described in the
Specification at a high level of generality. See, e.g., Spec. ¶¶ 21–26, Figs. 1
and 2. We fail to see how the generic recitations of these most basic
computer components and/or of a system so integrates the judicial exception
as to “impose[] a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort designed to monopolize the judicial
exception.” Guidance, 84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exceptions of a certain
method of organizing human activity and a mental process.
That the claims do not preempt all forms of the abstraction or may be
limited to data consolidation, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
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Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step the Examiner found the following:
Viewing the limitations as an ordered combination does
not add anything further than looking at the limitations
individually. When viewed either individually, or as an ordered
combination, the additional limitations do not amount to a claim
as a whole that is significantly more than the abstract idea itself.
Therefore, the claim does not amount to significantly more than
the recited abstract idea.
Final Act. 4. We agree with the Examiner. “[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea . . . on a generic computer.” Alice, 573 U.S.
at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. In short, each step does no more
than require a generic computer to perform generic computer functions. The
claims do not, for example, purport to improve the functioning of the
computer itself. The Specification spells out different generic equipment
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
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information access under different scenarios. See, e.g., Spec. ¶¶ 21–26,
Figs. 1 and 2. Thus, the claims at issue amount to nothing significantly
more than instructions to apply the abstract idea using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
(receive/determine/retrieve/store/transmit/determine/transmit) and storing is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract); Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101 (Appeal Br. 11–18; Reply Br. 2–9). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
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Appellant argues: “[u]nder current Office examination procedures, a
claim cannot recite a ‘mental process’ when it does not include ‘limitations
that can practically be performed in the human mind, for instance when the
human mind is not equipped to perform the claim limitations.’” Appeal
Br. 11–12.
Appellant presents no evidence that “a user would not be able to
perform practically at least the following operations mentally or with the
aid of pen and paper.” Id at 12. Speed and data volume are insufficient to
confer eligibility.
[W]e do not rely on the pen and paper test to reach our holding
of patent eligibility in this case. At the same time, we note that,
in viewing the facts in FairWarning’s favor, the inability for the
human mind to perform each claim step does not alone confer
patentability. As we have explained, ‘the fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.’
FairWarning, 839 F.3d at 1098 (citations omitted). The claims recite no
technological implementation details. As we set forth above, the recited
“data source state” is read as meaning a human understandable fixed
descriptor that characterizes something at all times until that something itself
is altered (as in, data type, size, or format). Thus, according to this claim
construction, the data source states are comprehensible and processable by
human mind and are not necessarily exclusively appurtenant to machine
executable processes.
We also disagree with Appellant that under the holding in Enfish, 822
F.3d 1327, our decision would be different (Appeal Br. 13). We fail to see
how claim 1 is directed to an improvement in computer technology like that
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of claim 17 in Enfish, and therefore are patent eligible. In Enfish, the
invention at issue was directed at a wholly new type of logical model for a
computer database: a self-referential table that allowed the computer to store
many different types of data in a single table and index that data by column
and row information. Enfish, 822 F.3d at 1330–32. In finding the claims
“not directed to an abstract idea,” but, “to a specific improvement to the way
computers operate,” the Federal Circuit noted that “the claims are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database.” Id. at 1336–37.
We find nothing in the claims before us arising to this level of
technical improvement in the generically claimed “a memory,” “at least one
processing device,” and “at least one computing device,” which arises to the
level of technical proficiency as found in Enfish. “[A]fter Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Nothing in claim 1
resembles the detail of a self-referential table for a computer database found
in DDR Holdings. Here, claim 1 simply recites functional results to be
achieved by any means. See, e.g., Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir.
2014).
Although we agree with Appellant that the claims must be read, as a
whole (Appeal Br. 13), we nevertheless find, on balance, that claim 1 is
directed to fulfilling requests for the retrieval and transmission of data to be
retrieved based on determining a data source state of that data prior to
retrieval. As found supra, claim 1 only includes the following generically
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recited device limitations: the generically claimed “a memory,” “at least one
processing device,” and “at least one computing device.” What remains in
the claim after disregarding these device limitations, are abstractions, i.e.,
“determine a first data source state and whether the first data source state
conflicts with the apportionment rule, wherein the first data source state
comprises an indication of at least one of a data type, a data size and a data
format.” “[A] claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (citing Mayo, 566 U.S. at 90).
Appellant argues:
Appellant recognized that situations may arise in which a
computing system associated with one entity requires data from
a computing system associated with another entity to fulfill a data
request. See, e.g., Appellant’s Specification, paragraphs [0019],
[0020], and [0037]. Being associated with different entities, data
that is accessible to one computing system may not be accessible
to the other computing system or otherwise more difficult to
retrieve than data it controls or has access to. See, e.g., id. Some
entity computing systems may impose particular restrictions or
requirements for receiving data from computing systems
associated with other entities, such as data size, data type or
format. See, e.g., id.
Appeal Br. 14.
We disagree with Appellant because improvements to computer
functionality overcoming a problem specifically arising in the realm of
computers does not cause the claims to be automatically patent eligible.
DDR Holdings, 773 F.3d at 1265 (Mayer, J., dissenting); see also
Berkheimer v. HP, 881 F.3d 1360, 1369–1370 (Fed. Cir. 2018). Here,
Appellant asserts the problem specifically arising in the realm of computers
is “a computing system associated with one entity requires data from a
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computing system associated with another entity to fulfill a data request.”
(Appeal Br. 14). But, improvements to computer functionality need to be
claim based. See Berkheimer, 881 F.3d at 1369. On page 15 of Appellant’s
Appeal Brief, Appellant asserts the problem is solved by “the at least one
processing device [being] configured to link the retrieval of the requested
data with its associated entity computing system,” but claim 1 does not recite
a link.
Appellant argues:
Appellant further submits that the claimed computer
components are not ‘generic,’ since they operate in a novel and
inventive manner to achieve the claimed technological solution.
Indeed, the Examiner’s withdrawal of the 35 U.S.C. § 103
rejection supports the novelty and inventiveness of the
technological solution achieved by the claimed subject matter
(noting that the cited references described various computing
components and their operation). Appellant submits that a novel
and inventive technological solution cannot reasonably be
considered “conventional activity.”
Appeal Br. 16.
Although the second step in the Mayo/Alice framework is termed a
search for an “inventive concept,” the analysis is not an evaluation of
novelty or non-obviousness, but rather, a search for “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (citation omitted).
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Appeal 2021-001341
Application 15/720,414

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Mayo, 566 U.S. at 90; see also Diehr, 450 U.S. at 188–89 (“The ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.”).
Appellant argues “elements of the independent claims, considered in
combination, impose meaningful limits so as to amount to significantly
more than any alleged abstract idea” (Appeal Br. 16).
We disagree with Appellant because, as we found above, the claimed
sequence of data reception-analysis (receive/determine/retrieve/store/
transmit/determine/transmit) and storing is generic and conventional or
otherwise held to be abstract. Taken with the abstract concepts of fulfilling
requests for the retrieval and transmission of data to be retrieved based on
determining a data source state of that data prior to retrieval, they “fail to
transform th[e] abstract idea into a patent-eligible invention.” Alice, 573
U.S. at 221.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 2, 4–9,
11–15, and 17–20 under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–9,
11–15,
17–20
101 Eligibility 1, 2, 4–9,
11–15,
17–20

Appeal 2021-001341
Application 15/720,414

19

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).
AFFIRMED