ADP, LLC

Patent Trials and Appeals Board

Dec 24, 2020

2020004148 (P.T.A.B. Dec. 24, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/663,732 03/20/2015 Richard F. Guinness 6235-40001 1036
124840 7590 12/24/2020
Roberts Calderon Safran & Cole, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
HENRY, MATTHEW D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/24/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@rmsc2.com
lgallaugher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD F. GUINNESS, MICHELLE D. NORTHEY, and
VENKATA V. PEDDINTI
Appeal 2020-004148
Application 14/663,732
Technology Center 3600
Before DANIEL S. SONG, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.
GREENHUT, 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 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted
December 10, 2020.
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as ADP, LLC. Appeal
Br. 2.
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2
CLAIMED SUBJECT MATTER
The claims are directed to a trending chart representation of healthcare
law compliance. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of analyzing compliance with a healthcare law,
comprising:
obtaining employee information about plural employees
by querying at least one data source via computer-based network
communication, the at least one data source comprises plural
different databases which include disparate information and
disparate fields between the plural different databases;
selecting a trending process from a plurality of available
trending processes;
determining a respective trending parameter based on the
selected trending process for each of the plural employees;
generating and displaying a trending chart in a user
interface, wherein the trending chart includes:
a first curve based on the determined trending parameters
of ones of the plural employees designated as part time, and a
second curve based on the determined trending parameters of
ones of the plural employees designated as full time and a visual
indication of an area in which the first curve and the second curve
overlap which is representative of a number of the ones of the
plural employees designated as part time trending as full time
and ones of the plural employees designated as full time trending
as part time;
generating an industry baseline for insurance provided to
industry employees; and
comparing the industry baseline to the trending chart to
determine how a practice of providing insurance to the plural
employees compares to an industry average, wherein the
obtaining, the determining, and the generating and displaying are
performed by a trending tool running on a computing device, the
trending tool configured to search the plural different databases
by a search query and to receive data which satisfies the search
query from the plural different databases for generating the
trending chart.
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REJECTION
Claims 1–20 are rejected under a judicial exception to 35 U.S.C.
§ 101 because the claimed invention is directed to an abstract idea. Final
Act. 11–12.
OPINION
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.
Nonetheless, the Supreme Court has long interpreted § 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 Supreme Court’s two-step 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.”).
In Diamond v. Diehr, 450 U.S. 175 (1981), 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.” 450 U.S. at 176; see also id. at 191
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(“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 Gottschalk v. Benson, 409 U.S. 63 (1972), and
Parker v. Flook, 437 U.S. 584 (1978)). The Court also indicated, however,
that “an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.” Id. at 187.
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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 Under that Revised
Guidance, one looks to whether the claim recites:

2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf
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(1) a judicial exception, i.e., a law of nature, a natural phenomenon, or
subject matter within the groupings of abstract ideas enumerated in the
Revised Guidance (i.e., mathematical concepts, certain methods of
organizing human activity, and mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see, e.g., MPEP § 2106.05(a)–(c), (e)–(h)).
(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.

Analysis
The Examiner correctly considers the claim language and concludes
that the claims before us are directed to the abstract idea of organizing
human activity: determining compliancy with a healthcare law and costs
associated therewith. Final Act. 12–14. Numerous cases cited in the Revised
Guidance demonstrate that neither the Court of Appeals for the Federal
Circuit nor the Supreme Court recognizes a distinction between so-called
methods of organizing human activity and organizing data representative of
human activity. See Appeal Br. 7, 30–31, 40–41; (cases cited at) Revised
Guidance at 52 n. 13. We also cannot agree with Appellant that the
Examiner’s guidelines regarding § 101 created a de facto rule that the
Examiner must identify some case or example in which similar claims were
held ineligible under § 101 to support a § 101 rejection. See Appeal Br. 8–
10, 31–32, 41–42. First, rejections at the PTO must necessarily be able to
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antedate cases in which the particular legal principles involved undergo
judicial review. Second, such a requirement would run counter to the
principle of not allowing eligibility determinations to hinge on the so-called
draftsman’s art. See Alice, 134 S.Ct. at 2358–59 (quoting Parker v. Flook,
437 U.S. 584, 593 (1978)). The fact that a database is queried does not make
a process non-commercial activity. Appeal Br. 9. A fundamental goal in
determining compliance with a healthcare law is determining the costs
associated therewith. Spec. 2, 14, 56, 59.
Appellant further contends the claims are not directed to an abstract
idea like the claims of Elec. Power Grp., LLC v. Alstom, S.A. (830 F.3d 1350
(Fed. Cir. 2016)) because Appellant is not just manipulating available
information; Appellant is generating new types of information. Appeal Br.
11–14, 32–35, 44–45. Appellant expounds on this concept, analogizing steps
of Appellant’s process to standardizing information which example 42 in the
USPTO 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
PEG”) deemed a “practical application.” Appeal Br. 15–20, 35–37, 45–48.
We agree with the Examiner that the claim lacks sufficient recitations with
regard to “generating new types of information” or transforming that
information as in example 42 to suffice to integrate the claimed abstract
idea into a so-called “practical application.” Final Act. 14–15.
First, even were we to accept Appellant’s argument that the
generation of new types of information creates a distinction over Electric
Power for eligibility purposes, Appellant does not direct our attention to any
specific algorithm in the claims for “generating new types of information.”
Rather, the portions of the claim Appellant cites (Appeal Br. 11–12, 33, 42–
43) just appear to be graphing data from plural sources for visualization (see
Fig. 4). Second, we do not doubt that in appropriate circumstances there
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could be some algorithm reduced to a non-abstract method for data
standardization as alluded to by example 42 of the 2019 PEG cited by
Appellant. However, we do not find any such algorithm within Appellant’s
claims, nor has Appellant identified such algorithm. Further, the
hypothetical examples from the 2019 PEG are just those, hypothetical
examples. They are general guidelines instructive mainly with regard to how
to conduct an analysis under § 101; they are intended to serve neither as a
basis for rejection, nor citable precedent for eligibility. See MPEP § 2106.07.
Such determinations “must be based on failure to comply [or compliance
with] with the substantive law under 35 U.S.C. 101 as interpreted by judicial
precedent.” Id.
Here, our reviewing court has considered claims very similar in nature
to Appellant’s in Trading Technologies International v. IBG LLC, 921 F.3d
1084 (Fed. Cir. 2019). There, data from multiple sources, bids and offers,
was placed on a chart with visual indicators, and the chart was able to be
further “reconfigure[d]” in response to user input (as in Appellant’s claims
17 and 20) indicating price or quantity for an order (Claim 1 of the ’056
patent) or manipulating certain icons (Claim 1 of the ’999 patent). In
Trading Technologies the court held that the receipt and visualization of
information were within the realm of abstract ideas. Trading Technologies,
921 F.3d at 1092, 1093–94. Further, the selection and moving (i.e.
“reconfiguring”) did not amount to anything more, practical application or
otherwise, to undermine such a conclusion. Id. at 1092–93. The court held
the same of the generic computer-related recitations which are similar to
those recited here. Id. at 1093.
Finally, the court agreed with the Board that “data gathering, and
displaying information as indicators along a [chart] is well-understood,
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routine, conventional activity that does not add something significantly more
to the abstract idea.” Id.; see Final Act. 15–16 (for the Examiner’s analysis
under “Step 2B”). We reject Appellant’s contention that the absence of a
rejection under §§ 102 or 103(a) provides evidence that all aspects of the
claimed subject matter are neither generic nor conventional. Appeal Br. 24,
38–39, 48–50. The absence of a prior-art rejection may be predicated on the
novelty or non-obviousness of the abstract idea itself. Indeed, our reviewing
court has recognized there may be instances where such is the case and
reminded: “[t]he abstract idea itself cannot supply the inventive concept, ‘no
matter how groundbreaking the advance.’” Trading Technologies, 921 F.3d
at 1093 (citation omitted); Synopsys, Inc. v. Mentor Graphics, Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (“A claim for a new abstract idea is still an
abstract idea.”). Appellant’s view that the absence of a prior-art rejection for
the overall claimed subject matter as a whole is evidence that individual
elements or combinations thereof cannot be well-understood, routine, or
conventional is clearly flawed. The avoidance of piecemeal examination is
merely a preferential examination practice. See MPEP § 707.07(g). How
Examiners choose to allocate their time and resources is ultimately a
procedural matter within the Examiner’s discretion. The absence of a prior-
art rejection does not create any binding legal effect for purposes of an
analysis under § 101.
Ultimately, we reach the same conclusions here with regard to
independent claims 1, 17, and 20 as our reviewing court did in Trading
Technologies and adopt the Examiner’s analysis (Final Act. 11–17; Ans. 3–
11) as our own. See, e.g., In re Paulsen, 30 F.3d 1475, 1478 n. 6 (Fed. Cir.
1994) accord In re Cree, 818 F.3d 694, 698 n. 2 (Fed. Cir. Mar. 21, 2016).
With regard to the dependent claims (Appeal Br. 26–30, 39–42), 37 C.F.R.
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§ 41.37(c)(1)(iv) requires more substantive arguments in an appeal brief than
a mere recitation of the claim elements and a naked assertion that the
elements somehow render the claims patent eligible. See, e.g., In re Lovin
652 F.3d 1349, 1357 (Fed. Cir. 2011).
CONCLUSION
The Examiner’s rejection is AFFIRMED.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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