ADOBE SYSTEMS INCORPORATED

Patent Trials and Appeals Board

Jun 19, 2020

2019005671 (P.T.A.B. Jun. 19, 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.
14/316,317 06/26/2014 BENJAMIN DAVID FOLLIS 3990US01/39913.206932 1045
121363 7590 06/19/2020
Shook, Hardy & Bacon L.L.P.
(Adobe Inc.)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
EXAMINER
SHANKER, JULIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/19/2020 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):
IPDocket@shb.com
docket.shb@clarivate.com
seaton@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte BENJAMIN DAVID FOLLIS
________________

Appeal 2019-005671
Application 14/316,317
Technology Center 3600
________________

Before JOHN A. EVANS, JASON J. CHUNG, and
SCOTT B. HOWARD, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

INVENTION
The claimed invention relates to electronic contracts. Spec. ¶ 1. More
specifically, the content of an electronic contract may be altered with a
clause specifying a jurisdiction based on a mapping received from a sender

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Adobe Inc. is the real party in
interest. Appeal Br. 3.
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or a signer. Spec. ¶¶ 3, 27–29. Claim 20 is illustrative of the invention and is
reproduced below:
20. A computer-implemented system comprising:
one or more processors; and
a non-transitory computer storage medium storing
computer-useable instructions that, when used by the one or
more processors, cause the one or more processors to
operations comprising:
storing in a database by a jurisdiction computer system,
a sender mapping received from a sender device and a signer
mapping received from a signer device, the sender mapping
associating a contract class to first one or more jurisdictions and
the signer mapping associating the contract class to second one
or more jurisdictions;
analyzing, by the jurisdiction computer system, terms of
a digital contract document to identify keywords in the terms,
the digital cont[r]act document being sent by a sender to a
signer for electronic signature or signed by the signer using the
jurisdiction computer system;
automatically determining, by the jurisdiction computer
system, a contract class of the digital contract document and a
jurisdiction specified in the terms of the digital contract
document based on the identified keywords;
automatically determining, by the jurisdiction computer
system, using the sender mapping and the signer mapping from
the database, the specified jurisdiction fails to match at least
one of the first one or more jurisdictions and the second one or
more jurisdictions associated with the determined contract
class;
automatically determining, by the jurisdiction computer
system, a new jurisdiction based on the new jurisdiction
matching both the sender mapping and the signer mapping for
the contract class;
based on the analyzing, altering, by the jurisdiction
computer system, the terms of the digital contract document to
include a clause specifying the new jurisdiction;
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transmitting, by the jurisdiction computer system, a
notification to at least one of the sender and the signer of the
altering of the terms; and
sending over a network, by the jurisdiction computer
system, the digital contract document comprising the clause to
the signer.

Appeal Br. 31–33 (Claims App.) (emphases added to indicate additional,
i.e., non-abstract, elements).

REJECTIONS
Claims 15–17 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to point out and distinctly claim the subject matter
which the inventor regards as the invention. Final Act. 2–3.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 3–8.

ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs.2, 3 Arguments Appellant could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).

2 In the instant appeal, claims 1–19 are not argued separately from claim 20
in either of Appellant’s Briefs (Appeal Br. 10–26; Reply Br. 2–8), and will
not be addressed separately.
3 Appellant does not provide page numbers in the Reply Brief. We numbered
the pages in the Reply Brief in consecutive order starting from page 1 on the
first page up to page 8, with the “Remarks” commencing on page 2. We
refer to those page numbers in our Decision.
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SECTION 112 REJECTION
“Indefiniteness under 35 U.S.C. § 112[(b)] is an issue of claim
construction and a question of law that we review de novo.” Cordis Corp. v.
Boston Sci. Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009) (citing Praxair, Inc.
v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008)).
We agree with the Examiner’s determination that “the method” lacks
antecedent basis in claim 15. Final Act. 3.
However, we disagree as a matter of law with the Examiner’s
indefiniteness rejection of claim 15 for the term “a jurisdiction service.” Id.
Here, Appellant’s Specification provides that “[a] ‘jurisdiction service’
refers to an on-line service that is accessed via a network by senders and/or
signers to provide the benefits described herein.” Spec. ¶ 15. In view of the
description provided in paragraph 15 of the Specification, a skilled artisan
would understand the metes and bounds of the claim language. See id. As
long as those of ordinary skill in the art would understand that a jurisdiction
service refers to an on-line service that is accessed via a network by senders
and/or signers, 35 U.S.C. § 112(b) requires nothing more. See Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Although we conclude that the skilled artisan, upon reading the claims
in light of the Specification, would be able to ascertain the scope of the
claimed invention, specifically the term “a jurisdiction service” in claim 15,
we sustain the Examiner’s rejection of claims 15–17 under 35 U.S.C.
§ 112(b), in view of the lack of antecedent basis for “the method” in claim
15.
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SECTION 101 REJECTION
A. Principles of Law
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,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
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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
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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B. USPTO Section 101 Guidance
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”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also Update at 1.
Under the 2019 Revised Guidance and the 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”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

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 (“Update”)
(available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
5 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. at 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.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes that the claims recite mental processes. Final
Act. 4–7; Ans. 4–6. The Examiner additionally concludes that the additional
elements in the claims, considered individually and as a whole, do not
integrate the abstract idea into a practical application, because they are
generic components that do not provide an improvement to a technology or
technical field or provide meaningful limitations. Final Act. 6–7; Ans. 6–7
(citing Spec. ¶ 43). The Examiner concludes that the additional elements do
not offer significantly more than the abstract idea, because they amount to
mere instructions to apply the exception using generic computer
components. Final Act. 7–8; Ans. 8.
Appellant disagrees, arguing that the claims are not directed to an
abstract idea, because they are specifically directed to a technical solution
for “ensuring that a digital cont[r]act document being sent by a sender to a
signer for electronic signature or signed by the signer includes a clause with
an appropriate jurisdiction for its contract class.” Appeal Br. 13, 16, 17, 19;
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see also Reply Br. 5–6. Appellant contends that the claims focus on mapping
and how it improves the technology of electronic signatures (Appeal Br. 19),
and recite a particular way to achieve the technical solution. Id. at 20–22;
Reply Br. 2–5, 7–8 (citing McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016)). Furthermore, Appellant argues that the
present claims allow computer performance of a function not previously
performable, citing a lack of an anticipation or obviousness rejection.
Appeal Br. 21, 25; Reply Br. 4. Appellant additionally argues that the claim
elements are not well-understood, routine, and conventional, but instead
represent an unconventional technological approach to ensure that a digital
contract document includes a particular clause, such as one with an
appropriate jurisdiction. Appeal Br. 22–25 (citing BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); Amdocs
(Isr.) Ltd. V. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)).
Appellant contends that the present claims additionally “do not foreclose
alternative solutions.” Appeal Br. 25.
D. Step 2A, Prong One
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). Claim 20 requires storing a sender mapping and a signer
mapping, the mappings associating a contract class to first and second one or
more jurisdictions; analyzing terms of a digital contract document to identify
keywords; determining a contract class of the digital contract document and
a jurisdiction based on the identified keywords; determining, using the
sender and signer mappings, the specified jurisdiction fails to match at least
one of the first or second one or more jurisdictions; determining a new
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jurisdiction; altering the terms of the digital contract document to include a
clause specifying the new jurisdiction; transmitting a notification; and
sending the digital contract document. We, therefore, conclude the non-
emphasized portions of claim 20, reproduced above (see supra at 2–3), recite
concepts relating to commercial or legal interactions or concepts that can be
practically performed in the human mind with the assistance of using pen
and paper. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14.
The present claims recite concepts relating to commercial or legal
interactions, which fall into the category of certain methods of organizing
human activity. See id. Moreover, those certain methods of organizing
human activity are a type of abstract idea. See id. Namely, the claims recite
features such as, “storing . . . a sender mapping . . . and a signer mapping
. . ., the sender mapping associating a contract class to first one or more
jurisdictions and the signer mapping associating the contract class to second
one or more jurisdictions;” “analyzing . . . terms of a digital contract
document to identify keywords in the terms, the digital cont[r]act document
being sent by a sender to a signer for electronic signature or signed by the
signer”; “automatically determining . . . a contract class of the digital
contract document and a jurisdiction specified in the terms of the digital
contract document based on the identified keywords;” “automatically
determining . . . using the sender mapping and the signer mapping . . . the
specified jurisdiction fails to match at least one of the first one or more
jurisdictions and the second one or more jurisdictions associated with the
determined contract class;” “automatically determining . . . a new
jurisdiction based on the new jurisdiction matching both the sender mapping
and the signer mapping for the contract class;” “based on the analyzing,
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altering . . . the terms of the digital contract document to include a clause
specifying the new jurisdiction;” “transmitting . . . a notification to at least
one of the sender and the signer of the altering of the terms;” and “sending
. . . the digital contract document comprising the clause to the signer,” which
recite agreements in the form of contracts, and therefore fall under certain
methods of organizing human activity.
Further, the present claims recite concepts that can be performed in
the mind or by using pen and paper, which are concepts performed in the
human mind (including an observation, evaluation, judgment, opinion).
Concepts performed in the human mind fall under the category of mental
processes (i.e., an abstract idea). Namely, the claims require features such as,
“[a] sender mapping associating a contract class to first one or more
jurisdictions and the signer mapping associating the contract class to second
one or more jurisdictions;” “analyzing . . . terms of a digital contract
document to identify keywords in the terms, the digital cont[r]act document
being sent by a sender to a signer”; “determining . . . a contract class of the
digital contract document and a jurisdiction specified in the terms of the
digital contract document based on the identified keywords;” “determining
. . . using the sender mapping and the signer mapping . . . the specified
jurisdiction fails to match at least one of the first one or more jurisdictions
and the second one or more jurisdictions associated with the determined
contract class;” “determining . . . a new jurisdiction based on the new
jurisdiction matching both the sender mapping and the signer mapping for
the contract class;” “based on the analyzing, altering . . . the terms of the
digital contract document to include a clause specifying the new
jurisdiction;” “transmitting . . . a notification to at least one of the sender and
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the signer of the altering of the terms;” and “sending . . . the digital contract
document comprising the clause to the signer,” which are all features that
can be performed practically in the human mind with the assistance of using
pen and paper, and, therefore, are abstract ideas. In particular, these claim
features are similar to tasks that humans in the legal or contract-drafting
profession have routinely and for many years performed mentally or with
pen and paper. In other words, including jurisdiction-specific clauses in
contracts has been routinely performed by humans.
We are therefore not persuaded by Appellant’s argument that the steps
involved in the claims are not analogous to human mental work (Appeal Br.
14), for the reasons discussed above. Namely, humans have routinely
included appropriate jurisdiction-specific clauses in contracts based on the
mapping of the sender and the signer and the content of the contract, i.e., a
contract class.
We must still determine whether the abstract idea is integrated into a
practical application, namely, whether the claim applies, relies on, or uses
the abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at
54–55. We therefore (1) identify whether there are any additional recited
elements beyond the abstract idea, and (2) evaluate those elements both
individually and collectively to determine whether they integrate the
exception into a practical application. See id.
Accordingly, we proceed to Prong Two.
E. Step 2A, Prong Two
Here, the only elements in the claims beyond the abstract idea are
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“one or more processors,” “a non-transitory computer storage medium,” “a
database,” “a jurisdiction computer system,” “a sender device,” “a signer
device,” and “a network.” See 2019 Revised Guidance, 84 Fed. Reg. at 52.
The additional elements of the present claims do not integrate the abstract
idea into a practical application because they do not impose any meaningful
limits on practicing the abstract idea for the following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The Update addresses how we consider
evidence of improvement that is presented to us. The Update states
the evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will apply,
rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial
exception.
Update at 11 (emphases added). The Update further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
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one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Id. at 13 (emphasis added) (footnote omitted).
Here, the Examiner concludes that the additional elements, when
considered individually or as an ordered combination, “do not recite an
improvement to another technology or technical field, an improvement to the
functioning of any computer itself, or provide meaningful limitations beyond
generally linking an abstract idea . . . to a particular technological
environment.” Final Act. 7; Ans. 7 (citing Spec. ¶ 43). Consequently, we
focus on any evidence Appellant cites, as discussed in the Update.
In this case, Appellant argues that the claimed invention ensures that a
digital contract document includes a clause with an appropriate jurisdiction
for its contract class and focuses on the mappings and how they are used.
Appeal Br. 11, 16–19. However, these alleged improvements are
improvements in agreements in the form of contracts, which fall within the
category of an abstract idea, as discussed supra, not an improvement to
technology. “[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). “[U]nder the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or 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).
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Furthermore, the additional elements in the present claims, namely
“processors,” “non-transitory computer storage medium,” “database,”
“jurisdiction computer system,” “sender device,” “signer device,” and
“network,” do not, either individually or in combination, integrate the
abstract idea into a practical application. Appellant’s Specification discloses
that these elements encompass generic components, such as generic
processors (Spec. ¶¶ 25–26, 44, 46, Fig. 6), a generic non-transitory
computer storage medium (id. at ¶¶ 43, 45), a generic database (id. at ¶¶ 18,
26, Fig. 1), a generic jurisdiction computer system (id. at ¶¶ 25, 44–47, Fig.
6), generic sender and signer devices (id. at ¶ 26, Fig. 1), and a generic
network (id.). Merely adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying
“merely includ[ing] instructions to implement an abstract idea on a
computer” as an example of when an abstract idea has not been integrated
into a practical application).
We disagree with Appellant’s argument that, similar to the claims in
McRO, the present claims recite an improvement in allowing computers to
automatically determine an improper jurisdiction specified in a contract and
incorporate an appropriate new jurisdiction, which previously could only be
done by human actors. Appeal Br. 20–22; Reply Br. 2–6. In particular,
Appellant argues that the claims are similar to those in McRO, because they
improve the prior art using rules, rather than humans, to implement the
claimed steps. Reply Br. 4. The subject claim considered by the McRO court
concerned a method for automatically animating lip synchronization and
facial expressions. McRO, 837 F.3d at 1303. The McRO court concluded the
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subject claims did not recite an abstract idea because the computer animation
improved the prior art through the use of rules, rather than artists, to set
morph weights and transitions between phonemes. Id. at 1308. Thus, the
claimed invention in McRO allowed for computer performance of animation
steps that previously had to be performed by human animators. Id. at
1313. Notably, the court in McRO determined that the process required by
the claims was not a process previously used by human animators. Id. at
1314. As such, the court determined that the present claims were “unlike
Flook, Bilski, and Alice, where the claimed computer-automated process and
the prior art method were carried out in the same way.” Id. at 1314–15
(emphasis added). Therefore, the subject claims in McRO used “limited rules
in a process specifically designed to achieve an improved technological
result” over “existing, manual 3–D animation techniques.” Id. at 1316.
Here, in contrast to McRO, the present claims do not recite a
computer-automated process that uses rules unlike those previously
employed by humans. As discussed supra, the claimed process recites rules
such as, “the sender mapping associating a contract class to first one or more
jurisdictions and the signer mapping associating the contract class to second
one or more jurisdictions;” “analyzing . . . terms of a digital contract
document to identify keywords in the terms, the digital cont[r]act document
being sent by a sender to a signer”; “determining . . . a contract class of the
digital contract document and a jurisdiction specified in the terms of the
digital contract document based on the identified keywords;” “determining .
. . using the sender mapping and the signer mapping . . . the specified
jurisdiction fails to match at least one of the first one or more jurisdictions
and the second one or more jurisdictions associated with the determined
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contract class;” “determining . . . a new jurisdiction based on the new
jurisdiction matching both the sender mapping and the signer mapping for
the contract class;” “based on the analyzing, altering . . . the terms of the
digital contract document to include a clause specifying the new
jurisdiction;” “transmitting . . . a notification to at least one of the sender
and the signer of the altering of the terms;” and “sending . . . the digital
contract document comprising the clause to the signer,” which are all rules
routinely performed by human contract drafters to incorporate correct or
appropriate jurisdiction clauses, based on the sender and signer jurisdictions
and the jurisdiction for the type of contract, into legal contracts.
Furthermore, Appellant’s argument that the Examiner has not applied
prior art to anticipate or render obvious the present claims (Appeal Br. 21,
25; Reply Br. 4) improperly conflates the requirements for eligible subject
matter (§ 101) with the independent requirements of novelty (§ 102) and
non-obviousness (§ 103). “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.” Diehr, 450 U.S. at 188–89; see also
Genetic, 818 F.3d at 1376 (stating that, “under the Mayo/Alice framework, a
claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility”).
Appellant’s argument that the present claims do not preempt any
abstract idea (Appeal Br. 25; Reply Br. 4, 7) does not persuade us that the
claims are eligible. Although preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, IP, LLC v.
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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 does not make any other arguments pertaining to Step 2A,
Prong Two. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
F. Step 2B
We disagree with Appellant’s argument that that the additional
elements are not well-understood, routine, and conventional or include
unconventional steps that amount to significantly more than the abstract
idea. Appeal Br. 22–24 (citing BASCOM, Amdocs).
Here, the Examiner finds that the additional elements amount to mere
instructions to apply the exception using generic computer components,
which cannot provide an inventive concept. Ans. 7–8 (citing Spec. ¶ 43). An
inventive concept “cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.” Genetic, 818 F.3d at 1376; see
also 2019 Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217
(explaining that, after determining a claim is directed to a judicial exception,
“we then ask, ‘[w]hat else is there in the claims before us?”’ (alteration in
original) (quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception itself.
Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech
LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining
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that the Supreme Court in Alice “only assessed whether the claim limitations
other than the invention’s use of the ineligible concept to which it was
directed were well-understood, routine and conventional” (emphasis
added)). Because the present claims merely use generic computer
components in a conventional manner, we disagree with Appellant’s
argument that the claims overcome the deficiencies of existing electronic
signature systems (Appeal Br. 11, 24).
Furthermore, we disagree with Appellant’s argument that the
additional elements are not well-understood, routine, and conventional
(Appeal Br. 22–24), because the Specification explains that “processors,”
“non-transitory computer storage medium,” “database,” “jurisdiction
computer system,” “sender device,” “signer device,” and “network” are
generic computer components and describes the additional elements at a
high level of generality. Spec. ¶¶ 18, 25–26, 43–47, Figs. 1, 6. We,
therefore, find that “processors,” “non-transitory computer storage medium,”
“database,” “jurisdiction computer system,” “sender device,” “signer
device,” and “network” are additional elements that are well-understood,
routine, and conventional. Id.
We disagree with Appellant’s contention that the present claims,
similar to those in BASCOM, use a specific method that is not conventional
or generic. Appeal Br. 23. In BASCOM, the claims were directed to “a filter
implementation versatile enough that it could be adapted to many different
users’ preferences while also installed remotely in a single location.”
BASCOM, 827 F.3d at 1348–51. The inventive concept was “the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user” that “gives the
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filtering tool both the benefits of a filter on a local computer and the benefits
of a filter on the ISP server.” Id. at 1350. Thus, when considered as an
ordered combination, the court concluded the claims provided “an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.” Id. Here, however, the present claims recite
an abstract idea using additional elements that are generic computer
components as discussed supra, or at best, improving an abstract idea—not
an inventive concept for the reasons discussed above.
We also disagree with Appellant’s argument that, similar to Amdocs,
the present claims provide an unconventional technological solution to a
technological problem. Appeal Br. 23–24. The subject claim considered by
the Amdocs court related to distributed architecture that led to load
distribution, which was an advantage over the prior art because it made it
easier to keep up with record flows, allowed for smaller databases, and
minimized impact on network and system resources. Amdocs (Isr.) Ltd., 841
F.3d at 1303. Additionally, the court construed the claimed “enhance” to
mean “to apply a number of field enhancements in a distributed fashion.” Id.
at 1292, 1300. In contrast to the claims of Amdocs, the present claims do not
pertain to components working together in an unconventional distributed
fashion. Instead, the claims are directed to components that work together in
a conventional fashion—collecting data from known and routinely-used
sources of determining an appropriate jurisdiction—to improve the abstract
idea of contract drafting. Accordingly, Appellant’s assertions and citations to
BASCOM and Amdocs fail to identify error in the Examiner’s analysis.
For at least the above reasons, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 1–20, considered as a whole, is
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directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept. We
therefore sustain the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101.

CONCLUSION

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. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
15–17 112(b) Indefiniteness 15–17
1–20 101 Eligibility 1–20
Overall
Outcome
1–20