Charles F. Thell et al.Download PDFPatent Trials and Appeals BoardAug 2, 201913468326 - (D) (P.T.A.B. Aug. 2, 2019) Copy Citation 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. 13/468,326 05/10/2012 Charles F. Thell TRCP.P0042USC1/1000223283 8869 29053 7590 08/02/2019 NORTON ROSE FULBRIGHT US LLP 2200 ROSS AVENUE SUITE 3600 DALLAS, TX 75201-7932 EXAMINER STERRETT, JONATHAN G ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 08/02/2019 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): doipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHARLES F. THELL, WILLIAM C. WHITE, and CINDY LARSON ____________________ Appeal 2018-005088 Application No. 13/468,3261 Technology Center 3600 ____________________ Before MARC S. HOFF, JENNIFER L. McKEOWN, and JASON J. CHUNG, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 24–37.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ invention is a system and method for identifying excellent performance of individuals within a profession. Candidates are identified by creating a candidate pool from independent research and a peer nomination 1 Appellants state that the real party in interest is Thomson Reuters Global Resources. App. Br. 2. 2 Claims 1–23 have been cancelled. Appeal 2018-005088 Application No. 13/468,326 2 process. Identified candidates then obtain a score according to an independent research and objective evaluation process; peer evaluators contribute to this score by evaluating top-scoring candidates. Candidates with scores in a top percentage of the candidates are recognized as demonstrating excellent performance. Abstract. Claim 24 is reproduced below: 24. A data management tool for use in detecting data associated with a level of performance by individuals of a plurality of individuals within a profession group, the data management tool comprising: at least one processor in which the data management tool executes; a database for storing data related to the plurality of individuals; an independent research component provided by the data management tool, the independent research component configured to identify the data related to respective individuals of the plurality of individuals based on electronic information sources associated with each individual of the plurality of individuals, the information sources determined based on the profession group, wherein the data related to the plurality of individuals in the database is divided into subgroups; a scoring view of a graphical user interface provided by the data management tool for calculating a total point scale value for each individual of the plurality of individuals, the scoring view comprising: at least a listing of objective criteria available for correlating the objective criteria to a standardized scoring system, wherein correlating the objective criteria assigns a point scale to each objective criterion of the objective criteria; and an interface for selecting and applying the objective criteria to the data related to the plurality of individuals, identified by the independent research component, in the database to determine a total point scale value for each individual of the plurality of individuals; a survey component provided by the data management tool, the survey component configured to: Appeal 2018-005088 Application No. 13/468,326 3 transmit, based on the subgroups, a survey to at least one peer of an individual of the plurality of individuals when the total point scale value of the individual calculated by the scoring view meets or exceeds a predetermined threshold, to solicit a performance value for the individual; receive the performance value for the individual from the at least one peer; and apply, to the data related to the individual in the database, a weighted combination based on the total point scale value and the received performance value to generate a total performance value for the individual; and a selection component provided by the data management tool, the selection component configured to identify data in the database as associated with the level of performance when the data represents an individual of the plurality of individuals with a total performance value generated by the survey component exceeding a pre-established threshold. Claims 24–37 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Claims 24 and 37 stand rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1–13 of U.S. Patent No. 8,412,564. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed Nov. 21, 2017), the Reply Brief (“Reply Br.,” filed Apr. 16, 2018), and the Examiner’s Answer (“Ans.,” mailed Feb. 16, 2018) for their respective details. ISSUES 1. Is the claimed invention directed to a judicial exception? 2. Is the judicial exception integrated into a practical application? Appeal 2018-005088 Application No. 13/468,326 4 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 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. See, 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.”). 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 184 n.7 (quoting Corning Appeal 2018-005088 Application No. 13/468,326 5 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 at 176; see also id. at 192 (“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. (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. Appeal 2018-005088 Application No. 13/468,326 6 The PTO recently published revised guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“Memorandum”). 84 Fed. Reg. 50. Under that 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); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are 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. See Memorandum. Appeal 2018-005088 Application No. 13/468,326 7 ANALYSIS SECTION 101 REJECTION With regard to subject matter eligibility, Appellants make a unitary argument directed to all pending claims. App. Br. 11–20. Accordingly, we select independent claim 24 as representative of the rejected claims. Claim 24 recites the following limitations: (a) at least one processor, in which a data management tool for use in detecting data associated with a level of performance by individuals within a profession group executes; (b) a database for storing data related to those individuals; (c) an independent research component that is configured to identify data related to respective individuals, based on electronic information sources that are determined based on the profession group; (d) a graphical user interface, including a scoring view, for calculating a total point scale for each individual, the scoring view comprising: (1) a listing of objective criteria having a standardized scoring system; (2) an interface for selecting and applying the objective criteria to the data regarding the individuals, in order to determine a total point scale value for each individual; (e) a survey component configured to transmit a survey to at least one peer of an individual, when the total point scale of that individual meets or exceeds a predetermined threshold; receive the performance value for that individual from that peer; and apply to that individual’s data a weighted combination based on the total point scale value and the performance value received via the survey, to generate a total performance value for the individual; and (f) a selection component that identifies data as associated with the level of performance, when the total performance value exceeds a predetermined threshold. We regard the claimed limitations of identifying data concerning individuals in a profession, determining a point score for each individual Appeal 2018-005088 Application No. 13/468,326 8 based on a listing of objective criteria, soliciting a performance value from an individual’s peer and combining that performance value with the point score to generate a total performance value, and selecting individuals whose total performance value exceeds a threshold, to constitute a mental process classified as an abstract idea under the Memorandum. Assigning points to an individual based on objective criteria, combining those points with a performance value derived from a survey filled out by another person, and selecting individuals with a total performance value above a threshold constitute concepts that could be performed in the human mind. 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.3 3 See 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.”); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) (holding that computer-implemented method for “anonymous loan shopping” was an abstract idea because it could be “performed by humans without a computer”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of “computer” or “computer readable medium” does not make a claim otherwise directed to process that “can be performed in the human mind, or by a human using a pen and paper” patent eligible); id. at 1376 distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that “could not, as a practical Appeal 2018-005088 Application No. 13/468,326 9 Further, we regard the claim limitations concerning calculating a total point scale value by applying objective criteria to individual data, and performing a weighted combination of the total point scale value and the received performance value to generate a total performance value for an individual, as reciting a mathematical concept, specifically mathematical calculations.4 matter, be performed entirely in a human’s mind”). Mayo, 566 U.S. at 71 (“‘[M]ental processes[ ] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’” (quoting Benson, 409 U.S. at 67)); Flook, 437 U.S. at 589 (same); Benson, 409 U.S. at 67, 65 (noting that the claimed “conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally,” i.e., “as a person would do it by head and hand.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, (Fed. Cir. 2016) (holding that claims to the mental process of “translating a functional description of a logic circuit into a hardware component description of the logic circuit” are directed to an abstract idea, because the claims “read on an individual performing the claimed steps mentally or with pencil and paper”); In re BRCA1 & BRCA2- Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (concluding that concept of “comparing BRCA sequences and determining the existence of alterations” is an “abstract mental process”); In re Brown, 645 F. App’x. 1014, 1017 (Fed. Cir. 2016) (non-precedential) (claim limitations “encompass the mere idea of applying different known hair styles to balance one’s head. Identifying head shape and applying hair designs accordingly is an abstract idea capable, as the Board notes, of being performed entirely in one’s mind”). 4 See, e.g., Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . . reduced to a mathematical formula . . . is an unpatentable abstract idea[.]”); Diamond v. Diehr, 450 U.S. 175, 191 (1981) (“A mathematical formula as such is not accorded the protection of our patent laws’’) (citing Benson, 409 U.S. 63); Parker v. Flook, 437 U.S. 584, 594 (1978) (“ [T]he discovery of [a mathematical formula] cannot support a patent unless there is some other inventive concept in its application.”); Benson, 409 U.S. at 71–72 (concluding that permitting a patent on the claimed invention ‘‘would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself’’); Mackay Radio & Appeal 2018-005088 Application No. 13/468,326 10 Accordingly, we conclude that the claims recite a mental process, one of the categories of abstract ideas recognized in the Memorandum. 84 Fed. Reg. at 52. We further conclude that the claims also recite calculations, which constitute one of the mathematical concepts identified in the Memorandum. Id. We thus conclude that the claims recite an abstract idea. Appellants argue that the arrangement of features of the present claims does not represent a previously known process; recite a unique, previously unknown process; and automate the identification, scoring, and threshold comparison steps for identifying top individuals in their field by creating a technological environment that allows such automation based on an arrangement of rules and steps that was previously unknown. App. Br. 7. Appellants suggest that the claims address a specific problem in conventional industry practice by providing a distinct technical solution. App. Br. 8. Like the Examiner, we are not persuaded that such a “technical solution” is presented. Ans. 8. Appellants purport to solve the problems in the art concerning data analysis for determining excellent performers. Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) (“ [A] scientific truth, or the mathematical expression of it, is not patentable invention[.]”); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of mathematical calculations based on selected information” are directed to abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) holding that claims to a “process of organizing information through mathematical correlations” are directed to an abstract idea); Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (identifying the concept of “managing a stable value protected life insurance policy by performing calculations and manipulating the results” as an abstract idea). Appeal 2018-005088 Application No. 13/468,326 11 Appellants complain that data is not always current and up-to-date; that data may be biased and subjective; and that the scoring process may not be based on an objectively defined set of criteria. App. Br. 7–8; Spec. ¶¶ 8, 9. Appellants purport to solve these problems by providing a computer-based data management tool “that enables a computer with capabilities for identifying relevant data [and] applying well-defined objective criteria to the data.” App. Br. 8. But Appellants’ solutions – identifying relevant data, providing objective criteria, and defining criteria well – are improvements to the underlying abstract idea, the mental process of evaluating professionals, by using the “right” criteria on the “right” raw data. Appellants have not disclosed an improvement to the existing technological process such as that found in McRO. See McRO, 837 F.3d at 1310. In the Reply Brief, Appellants argue that the claimed invention is analogous to the invention in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018). Appellants argue that Core Wireless Licensing stands for the proposition that a claim is patent- eligible when it presents a solution, implemented in a particular manner, that “improves the function of the computer system, or that improves the utilization of the computer system’s functionality.” Reply Br. 2. We do not agree that the holding in Core Wireless Licensing is nearly as expansive as Appellants argue. The court in Core Wireless Licensing founded its conclusion of patent eligibility on the claimed invention’s “improved user interface for electronic devices, particularly those with small screens.” Core Wireless Licensing, 880 F.3d at 1360. The disclosed invention improved the “efficiency of using the wireless device by bringing together ‘a limited list of common functions and commonly accessed stored data,’ which can be accessed directly from the main menu . . . allow[ing] the user to see the most Appeal 2018-005088 Application No. 13/468,326 12 relevant data or functions ‘without actually opening the application up,’” thus speeding the user’s navigation through various views and windows. Id. at 1361. The court concluded that the claimed invention thus demonstrated a particular improvement in the computer’s functionality – “the claims are directed to an improvement in the functioning of computers, particularly those with small screens” – and not merely “improved utilization of the computer system’s functionality,” as Appellants characterize the holding. Reply Br. 2. Appellants’ reference to Trading Technologies Int’l, Inc. V. CQG, Inc., 675 Fed. Appx. 1001 (Fed. Cir. 2017)(nonprecedential) is similarly unavailing. Reply Br. 4. The court in Trading Technologies, similar to Core Wireless Licensing, found that the claimed subject matter was “directed to a specific improvement to the way computers operate,” to wit, “a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure.” Id. at 1003. Appellants admit that Trading Technologies concerned “a particular GUI structure paired with particular functionality,” rather than simply an improvement in the utilization of a computer system, as Appellants argue initially. Reply Br. 2, 4. We are also not convinced by Appellants’ argument that the claimed invention demonstrates a particular improvement in a computer’s functionality. Reply Br. 6. As stated supra, the “improvements” disclosed and claimed by Appellants amount to improvements in the underlying abstract idea of identifying outstanding professionals within a profession group, rather than any technological improvements. We conclude that the Appeal 2018-005088 Application No. 13/468,326 13 claimed invention is directed to the mere adaptation of an abstract idea to a computerized environment. INTEGRATED INTO A PRACTICAL APPLICATION We next evaluate whether the claims integrate the identified abstract idea of identifying outstanding professionals in a field through ratings, and mathematical calculation of said ratings, into a practical application. See Memorandum, 84 Fed. Reg. at 51. We consider whether there are any additional elements beyond the abstract ideas that, individually or in combination, “integrate the [abstract ideas] into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit.” Id. at 54–55. The Examiner finds that “the claim does not amount to significantly more than the abstract idea itself.” Final Act. 6. “[W]hile the claims recite computer systems to process the data to perform the datamining and analysis, this is merely a nominal and routine use of a computing system to process data and therefore does not provide ‘something more’ to make the claims patent eligible.” Final Act. 7. Appellants argue that “the present claims provide features that create a technological environment that addresses the foregoing problems using a ‘more dynamic and efficient’ technical approach than conventional implementations, as in Bascom.” App. Br. 11. Appellants contend that “the features of claim 24 provide specific technical implementations of rules for controlling the flow of data within the system, using specific components, to ensure the integrity of the processed data.” Appellants argued “specific implementation” includes a claimed data management tool, processor, database, independent research component, graphical user interface, survey component, and selection component. Appeal 2018-005088 Application No. 13/468,326 14 Appellants’ Specification does not set forth technical details concerning why or how these components are not well-understood, routine, or conventional. See Ans. 8–9. The claimed “data management tool” is not described in the Specification. The claimed “research component” is not described in the Specification. The “scoring section 22” of graphical user interface is mentioned only in passing, as being useful to “enable scoring of characteristics of the individual.” The “scoring data area 22” is described as containing boxes having editable fields used to record the research scores. Spec. ¶¶ 43–46. We determine that the disclosed scoring view forms a part of the claimed mental process that is merely adapted to use on a computer. The graphical user interface is disclosed as being usable “for assisting with independent research and data collection in accordance with the present invention.” The interface “is divided in several section, each section including a number of fields which contain information and information Appeal 2018-005088 Application No. 13/468,326 15 inputs for a selected practicing professional.” Spec. ¶ 42; Fig. 2. Figure 2 is an illustration of a graphic user interface utilized within a processing configuration in accordance with one embodiment of the invention. Spec. ¶ 20. As disclosed and illustrated, the user interface is a conventional interface for data entry, analogous to a paper form that would be used with a mental process. We determine that Appellants’ user interface is a conventional tool for data gathering (i.e., insignificant extra-solution activity). Appellants disclose performing a peer survey of professionals and how to choose peers for such a survey. Spec. ¶¶ 28–31. Appellants’ Appeal 2018-005088 Application No. 13/468,326 16 disclosure does not express any aspects in which the peer survey is not well- understood, routine, and conventional. Appellants argue, without supplying evidence, that claim 24 as a whole “amounts to significantly more than merely automating ‘the identification, scoring and threshold comparison steps for identifying individuals who are top in their field.’” App. Br. 12–13. We do not agree with Appellants’ contention that the features of claim 24 provide “specific and concrete improvements” such as were found in Bascom. App. Br. 13. We conclude that none of the claim limitations, viewed “both individually and as an ordered combination,” amount to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355 (internal quotations omitted) (quoting Mayo, 132 S. Ct. at 1297). In particular, we determine that claim 24 does not recite: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; (iii) an application of the abstract idea with, or by use of, a particular machine; (iv) a transformation or reduction of a particular article to a different state or thing; or (v) other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h). INVENTIVE CONCEPT Last, we consider whether claims 24–37 have an inventive concept, i.e., whether any additional claim elements “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the Appeal 2018-005088 Application No. 13/468,326 17 additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, and conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Memorandum, 84 Fed. Reg. at 50, 56. The examiner finds, limitation by limitation, that the claim calls for the use of “the routine and conventional aspects of a computer,” that “the use of a GUI is routine and conventional use of a computer to input data,” that “transmitting and receiving surveys and performing the associated processing uses the routine and conventional aspects of the computer,” etc. Final Act. 7–11. “Taken as a whole and in any ordered limitation, the claimed invention clearly recites an abstract idea whose implementation is merely routine and conventional and does not provide significantly more.” Final Act. 11. Appellants do not make any specific argument that the claims contain additional elements that transform the nature of the claim into a patent- eligible application. As discussed supra, we determine that Appellants do not recite claim elements that are disclosed to function in ways beyond well- understood, routine, and conventional activities in the field. Thus, we conclude that the claims do not recite an inventive concept that would transform the nature of the claim(s) into a patent-eligible application. SUBJECT MATTER ELIGIBILITY - CONCLUSION We conclude that the claims recite a mental process of identifying outstanding professionals in a particular field, combined with mathematical calculations for arriving at performance values. We further conclude that the claims do not integrate the identified abstract ideas into a practical application. Appeal 2018-005088 Application No. 13/468,326 18 We conclude that the claims do not recite an inventive concept that would transform the nature of the claim(s) into a patent-eligible application. Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of claims 24–37. NON-STATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION Appellants do not contest the rejection of claims 24 and 37 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1–13 of U.S. Patent No. 8,412,564, proposing to file a terminal disclaimer once allowable subject matter has been indicated. App. Br. 4. Accordingly, we sustain the rejection of claims 24 and 37 on obviousness-type double patenting grounds. CONCLUSIONS 1. The claimed invention is directed to a judicial exception. 2. The judicial exception is not integrated into a practical application. DECISION The Examiner’s decision to reject claims 24–37 under 35 U.S.C. § 101 is affirmed. The Examiner’s decision to reject claims 24 and 37 on non-statutory obviousness-type double patenting grounds is affirmed. TIME PERIOD 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). 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