WEISS, DAVID et al.

Patent Trials and Appeals Board

Jun 11, 2020

12210826 - (D) (P.T.A.B. Jun. 11, 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.
12/210,826 09/15/2008 DAVID WEISS 07-2172 7327
63710 7590 06/11/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
ANDERSON, JOHN A
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WEISS and ANTONIO PAPAGEORGIOU
Appeal 2019-003183
Application 12/210,826
Technology Center 3600
Before ERIC S. FRAHM, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 10–13, 17, and 19–37. See Final Act. 1.
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. Appellant identifies the real party in interest as CFPH, LLC. Appeal
Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to methods and systems that incorporate an
order and/or quote engine that automatically adjusts bid, ask, or any other
type of order prices to reflect some or all of the costs associated with a trade
in an underlying item between a particular party receiving the order or
orders and a particular counter-party or parties submitting the order or
orders. Spec. ¶ 3. Claim 10, reproduced below, is illustrative of the claimed
subject matter:
10. A method comprising:
receiving, by a processor, a request for market data on an
item from a computing device associated with a first user;
receiving, by the processor, a request for market data on
the item from a computing device associated with a second user;
retrieving, by the processor, market data for the item, the
market data comprising a price associated with an order for the
item;
retrieving, by the processor, user specific cost data
associated with each of the first and second users;
determining, by the processor, a normalized price for the
order for each of the first and second users based on the
respective user specific cost data associated with each of the first
and second users;
causing, by the processor, an interface screen to be
displayed at the first and second user computing devices, the
interface screen displayed for the first user comprising the
normalized price for the first user and the interface screen
displayed for the second user comprising the normalized price
for the second user, wherein the normalized price for the first
user differs from the normalized price for the second user;
wherein the market data comprises a price for each of a
plurality of orders for the item;
wherein the method further comprises determining, by the
processor, a normalized price for each of the plurality of orders
for each of the first and second users;
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wherein the interface screen displayed for the first user
comprises a listing of the orders sorted by the normalized price,
wherein the interface screen displayed for the second user
comprises a listing of the orders sorted by the normalized price,
and wherein the sorting for the first user differs from the sorting
for the second user;
wherein the method further comprises refreshing and re-
sorting, by the processor, the respective interface screens to
reflect real time changes in the market data for the item; and
wherein the respective interface screens comprise at least
one element therein for a user to alternatively re-sort the orders
based on the non-normalized price and the normalized price.
REJECTION2
Claims 10–13, 17, and 19–38 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 2–3.
ANALYSIS
Appellant argues that the Examiner’s rejection of claim 10 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error.
Appeal Br. 6–15. To the extent Appellant has not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues claims 10–13, 17,
and 19–37 as a group. Appeal Br. 13. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 10–13, 17, and 19–
37 based on representative claim 10.

2 In an Advisory Action, dated August 10, 2016, the Examiner withdrew a
rejection of claim 38 under 35 U.S.C. § 112, second paragraph, because
claim 38 was cancelled after the Final Action issued.
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Principles of Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. 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 Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as 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,
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such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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 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. (citation omitted)
(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 part
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
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requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
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)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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
(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”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

3 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.p
df).
4 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 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Prima Facie Case
Appellant argues that the Examiner failed to make a prima facie case
of subject matter ineligibility by overgeneralizing and ignoring certain claim
elements. Appeal Br. 7–13.
We disagree. The procedural burden of establishing a prima facie case
is carried when the rejection satisfies the requirements of 35 U.S.C. § 132. In
re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). “Section 132 is violated
when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). That is, the Examiner must set
forth the rejection’s statutory basis “in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132.” Jung, 637
F.3d at 1363.
This is not a case where the “rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” Id. at 1362. Rather, the Examiner has provided a rationale that
identifies the abstract idea recited in the claim and why it is considered an
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exception. See Final Act. 5–8. And Appellant clearly identifies the abstract
idea identified by the Examiner. See, e.g., Appeal Br. 9.
Accordingly, we are not persuaded that the Examiner has failed to set
forth a prima facie case of patent ineligibility for representative claim 10.
Step 1
Claim 10, as a method claim, falls within the process category of
§ 101. See 2019 Revised Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 10 is directed to “transmitting
data to conduct financial transactions,” which is a fundamental economic
practice and, thus, an abstract idea. Final Act. 2–3. The Examiner identified
the “receiving,” “retrieving,” “determining,” and “causing” steps as part of
the recited abstract idea. Id. at 3.
Consistent with Appellant’s description of the claims (Spec. ¶ 3), we
find that the limitations we summarize above describe transmitting data to
conduct financial transactions, where the data includes a generated price that
takes underlying costs into account, which is fairly characterized as a
fundamental economic practice, and which falls into the certain methods of
organizing human activity category of abstract ideas. See 2019 Revised
Guidance, 84 Fed. Reg. at 52.
Appellant argues that the Examiner erred because the Examiner’s
“generalized concept fails to even recognize that the claims are directed at
orders presented at normalized prices.” Appeal Br. 9.
We are not persuaded that the Examiner erred. Our reviewing court
has held similar fundamental economic business practices and methods of
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organizing human activity to be abstract ideas, like a “method of pricing a
product for sale” in OIP. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362 (Fed. Cir. 2015) (internal quotations and citation omitted. Like
the fundamental economic practice of offer-based price optimization in OIP,
Appellant’s claim 10 generates and displays price information. See id.
Appellant’s arguments fail to demonstrate why the concept of generating
and displaying prices based on user-specific cost data is dissimilar to other
fundamental economic concepts found abstract by the Supreme Court and
our reviewing court.
Moreover, at least the “determining . . . a normalized price” step, as
recited in claim 10, recites a process that can be performed in the human
mind or with pen and paper. The Office Guidance explains that “mental
processes” include acts that people can perform in their minds or using pen
and paper, even if the claim recites that a generic computer component
performs the acts. See Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under
its broadest reasonable interpretation, covers performance in the mind but
for the recitation of generic computer components, then it is still in the
mental processes category unless the claim cannot practically be performed
in the mind.”); see also Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”), quoted in Office Guidance, 84 Fed. Reg. at 52 n.14.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
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integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determine that claim 10 recites a patent-ineligible
concept, we next determine whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Revised Guidance at 55 n.24. In claim 10, the additional elements include
the limitations “processor,” “interface screen,” and “user computer devices,”
as well as the “receiving,” “retrieving,” “causing, by the processor, an
interface screen to be displayed at the first and second user computing
devices,” and “refreshing and re-sorting, by the processor, the respective
interface screens to reflect real time changes in the market data for the item”
limitations.
The Examiner determined that none of the additional elements is
sufficient to amount to significantly more than the judicial exception
because the additional generic computer elements do not add a meaningful
limitation to the abstract idea. Final Act. 3; Ans. 16.
We agree with the Examiner. The use of generic computer elements
like a processor, interface screen, or user computer device to perform
conventional computer functions “do[es] not alone transform an otherwise
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abstract idea into patent-eligible subject matter.” FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings
v. Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014)). The Specification
makes clear that the recited “processor” is a generic component performing
known functions of receiving data, performing calculations using the input
data, and outputting data. See, e.g., Spec. ¶¶ 4, 19, 20. Similarly, the
Specification describes generically that the “interface screen” displays data.
See, e.g., ¶¶ 4, 8. What data is displayed, and in what order, does not
meaningfully limit the fundamental economic practice. The Specification
also describes the “user computer devices” generically. See Spec. ¶¶ 19–20.
The components, then, considered individually, do not link the abstract idea
to a particular machine or technology or describe an improvement to the
functioning of a computer.
The recited “receiving” and “retrieving” limitations amount to mere
data gathering. These are common examples of inconsequential steps the
courts have determined insufficient to render an otherwise ineligible claim
patent-eligible. See MPEP § 2106.05(g); 2019 Revised Guidance, 84 Fed.
Reg. at 55 n.31; see also Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d at 1266
(explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”).
Similarly, the “causing” limitation, as recited in claim 10, is recited at a high
level of generality and amounts to insignificant extra-solution activity. See
2019 Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(g).
Appellant contends that the “causing” limitation combined with the
last three “wherein” clauses of claim 10, which describe the order that
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information is presented on the display and “refreshing and re-sorting, by the
processor, the respective interface screens to reflect real time changes in the
market data for the item” limitations, recite “significantly more” than the
abstract idea. Appeal Br. 11.
Appellant, however, has not persuaded us that such limitations
integrate the abstract idea into a practical application. Rather Appellant
argues that “the lack of a prior art rejection indicates the claims must recite
significantly more than ‘transmitting data to conduct financial transactions.’”
Id.
Appellant’s prior art argument is not persuasive because 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. Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981). Our reviewing court further guides that
“[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular claimed
feature was novel does not “avoid the problem of abstractness”).
In the Reply Brief, Appellant argues for the first time that the
“causing” limitation, combined with the last three “wherein” clauses of
claim 10, “improve computer performance by displaying on interface
screens a listing of sorted orders and refreshing and re-sorting respective
interface screens to reflect real time changes.” Reply Br. 3 (emphasis
omitted). Appellant argues that “these techniques may help control activity
over the network and control computer workload including computer
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resources such as memory resources, processor resources, and network
resources such as network bandwidth.” Id.
Appellant has waived these arguments because they were presented
for the first time in the Reply Brief, without a showing of good cause. See
37 C.F.R. § 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473,
1473–74 (BPAI 2010 (informative opinion) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”). The
provisions of MPEP § 2106.05(a), entitled “Improvements to the
Functioning of a Computer or To Any Other Technology or Technical
Field,” on which Appellant’s arguments are based, have been used in
determining patent eligibility well before the 2019 Revised Guidance issued
and Appellant’s Appeal Brief was filed.
We note, however, that, while Appellant identifies paragraphs 29, 30,
and 32 of the Specification as describing advantages (Reply Br. 4),
Appellant fails to provide a citation to the Specification that provides
sufficient details such that an artisan of ordinary skill would recognize the
claimed invention as providing an improvement. See October 2019 Update
at 12. Nor does Appellant identify any evidence that practicing the claimed
invention conserves “memory resources, processor resources, and network
resources such as network bandwidth,” as Appellant contends. It is well
settled that mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence).
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Appellant further argues that claim 10 is directed to an improved user
interface that improves the efficiency of using electronic devices, as in Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed.
Cir. 2018). Reply Br. 6.
We are not persuaded. In Core Wireless, the court stated that “[t]he
disclosed invention improves the efficiency of using the electronic devices.”
Core Wireless, 880 F.3d at 1363. However, the court also explained that
“[w]e also ask whether the claims are directed to a specific improvement in
the capabilities of computing devices” (id. at 1361), and then determine that
“the claims are directed to an improvement in the functioning of computers”
(id. at 1363). Thus, in Core Wireless, the improved efficiency of using the
electronic devices was related to an identified improvement in the
functioning of computers.
The claims here, however, do not recite an improvement in the
functioning of computers or other technology. While a computer processor
may provide a faster “real-time” graphical representation of data than a
human performing calculations and manually providing data, the term “real-
time” does not in itself demand a specific improvement in computer
capabilities. That is, claim 10 does not embody a distinct computer process
that enables a computer to perform a method differently than how the
method would previously have been performed. Cf. McRO, Inc, v. Bandai
Namco Games Am., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (comparing a
method for automatic lip sync animation of 3D characters that differed from
the prior human method of animation to other cases “where the claimed
computer-automated process and the prior method were carried out in the
same way”). Here, the claim simply “includes instructions to implement an
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abstract idea on a computer” and “does no more than generally link the use
of a judicial exception to a particular technological environment or field of
use.” 2019 Revised Guidance, 84 Fed. Reg. at 55.
By contrast, in McRO, the patent-eligible claim focused on a specific
asserted improvement in computer animation. McRO, Inc, v. Bandai Namco
Games Am., 837 F.3d 1299 (Fed. Cir. 2016). The claims in McRO recited a
“specific . . . improvement in computer animation” using “unconventional
rules that relate[d] sub sequences of phonemes, timings, and morph weight
sets.” McRO, 837 F.3d at 1302–03, 1307–08, 1314–15. In McRO, “the
incorporation of the claimed rules, not the use of the computer,” improved
an existing technological process. Id. at 1314. Appellant does not direct us to
any evidence that the claimed steps correspond to unconventional rules.
Appellant further alleges claim 10 is patent-eligible because its
practice does not preempt practice by others. Appeal Br. 12. While
preemption may signal patent ineligible subject matter, the absence of
complete preemption “does not demonstrate patent eligibility, . . . . [w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“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”); see Ans. 18–19.
Considering claim 10 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in these cases.
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Claim 10 as a whole merely uses instructions to implement the abstract idea
on a computer or, alternatively, merely uses a computer as a tool to perform
the abstract idea. Here, the additional limitation(s) do not integrate the
judicial exception into a practical application. More particularly, claim 10
does not recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55. Rather, claim 10 recites an
abstract ideas as identified in Step 2A(i), supra, and none of the limitations
integrates the judicial exception into a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “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
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353). We look to see whether there
are any “additional features” in the claims that constitute an “inventive
concept,” thereby rendering the claims eligible for patenting even if they are
directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional
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features” must be more than “well-understood, routine, conventional
activity.” Mayo, 566 U.S. at 79.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving data,
looking up data in a database, attempting to execute commands, and storing
data in a database. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (“That a computer receives and sends the information over
a network—with no further specification—is not even arguably inventive”);
In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016)
(server that receives data, extracts classification information from the
received data, and stores the digital images insufficient to add an inventive
concept); Alice, 573 U.S. at 225-26 (receiving, storing, sending information
over networks insufficient to add an inventive concept).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant’s’
Specification, as cited above. See Berkheimer Memo5 § III.A.1; Spec. ¶¶ 4,
8, 19, 20. We conclude claim 10 does not have an inventive concept because

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
Appeal 2019-003183
Application 12/210,826

18
the claim, in essence, merely recites various computer-based elements along
with no more than mere instructions to implement the identified abstract idea
using the computer-based elements.
Because claim 10 is directed to a judicial exception, without
significantly more, we sustain the Examiner's § 101 rejection of independent
claim 10 and grouped claims 11–13, 17, and 19–38, not argued separately
with particularity.
DECISION
We affirm the decision of the Examiner rejecting claims 10–13, 17,
and 19–38.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
10–13, 17,
19–38
101 Eligibility 10–13, 17,
19–38

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED