Chen, Gao et al.Download PDFPatent Trials and Appeals BoardMar 27, 202012362209 - (D) (P.T.A.B. Mar. 27, 2020) 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. 12/362,209 01/29/2009 Gao Chen 2011-0016US01 9630 74739 7590 03/27/2020 Potomac Law Group, PLLC (Oracle International) 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER RIFKIN, BEN M ART UNIT PAPER NUMBER 2123 NOTIFICATION DATE DELIVERY MODE 03/27/2020 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): bgoldsmith@potomaclaw.com eofficeaction@appcoll.com patents@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GAO CHEN and CLAIRE M. BAGLEY ____________ Appeal 2019-001050 Application 12/362,209 Technology Center 2100 ____________ Before JOHN A. JEFFERY, KRISTEN L. DROESCH, and CARL L. SILVERMAN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL This application returns to us after another panel of this Board1 reversed the Examiner’s decision to reject then-pending claims 1–19 as obvious over various prior art references under 35 U.S.C. § 103. Ex parte Chen, Appeal No. 2015-006195 (PTAB Jan. 11, 2017). Prosecution reopened after that decision, and Appellant2 now appeals under 35 U.S.C. § 134(a) from the Examiner’s subsequent rejection of claims 1–19 as 1 The panel for this appeal is the same as the earlier appeal except that Judge Droesch replaces Judge Kumar. 2 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 Oracle International Corporation. Appeal Br. 2. Appeal 2019-001050 Application 12/362,209 2 ineligible under 35 U.S.C. § 101. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellant’s invention is a constraint-based computer system that solves dynamic constraint satisfaction problems (CSPs), namely those where sub-problems of variables and constraints can be added incrementally as required. Specifically, a problem solver includes a resource sum constraint and a port for coupling sub-problems to the port. See generally Spec. ¶¶ 1– 7. Claim 1 is illustrative: 1. A non-transitory computer readable medium having instructions stored thereon that, when executed by a processor, cause the processor to implement a product configurator that solves a dynamic constraint satisfaction problem to configure a product, the problem comprising a resource sum constraint and a port for coupling zero or more sub-problems to the problem, the solving the dynamic constraint satisfaction problem comprising: coupling a first sub-problem to the port in response to an interaction by a user with the dynamic constraint satisfaction problem, wherein the first sub-problem comprises a plurality of variables and a plurality of constraints, and the port comprises a definition of a first problem that can be connected to the port and a cardinality, and the coupling comprises assigning a first value to a first variable of the port that causes all of the variables and constraints that comprise the first sub-problem to be coupled to the port; based at least on the coupling, determining a revised resource sum domain for the problem, the revised resource sum domain comprising a contribution from existing participants comprised of existing sub-problems coupled to the port and a contribution from potential participants comprised of potential additional sub-problems coupled to the port based on the resource sum constraint; and Appeal 2019-001050 Application 12/362,209 3 based on the determined revised resource sum domain, dynamically generating a new sub-problem coupled to the port by assigning a second value to a second variable of the port to instantiate a new sub-problem without user interaction and before another interaction by the user; wherein the resource sum constraint comprises a numerical range of allowable resources provided by the zero or more sub-problems coupled to the port; wherein each problem corresponds to a component of the product, and each sub-problem corresponds to a sub-component of the product. THE REJECTION The Examiner rejected claims 1–19 under 35 U.S.C. § 101 as ineligible. Ans. 2–4.3 FINDINGS, CONCLUSIONS, AND CONTENTIONS The Examiner determines that the claimed invention is directed to an abstract idea, namely (1) gathering data, such as variables, constraints, and a problem definition; and (2) analyzing the data to revise a resource sum domain by trying different variables within a CSP to find the optimal configuration for a mathematical problem. See Ans. 2–3, 5–6. The Examiner adds that the claims do not include elements that add significantly more than the abstract idea, but merely recite elements, including a non- transitory medium and processor, whose generic computer functions are well-understood, routine, and conventional. See Ans. 3–4, 8–10. 3 Throughout this opinion, we refer to (1) the Appeal Brief filed May 14, 2018 (“Appeal Br.”); (2) the Examiner’s Answer mailed September 20, 2018 (“Ans.”); and (3) the Reply Brief filed November 20, 2018 (“Reply Br.”). Appeal 2019-001050 Application 12/362,209 4 Appellant argues that the claimed invention is directed to a technical solution to a technical problem. Appeal Br. 4–8. According to Appellant, the Examiner not only oversimplified the claims and ignored this technical solution, but also failed to identify court decisions with abstract ideas corresponding to the alleged abstract idea. Appeal Br. 4–8. Appellant emphasizes that by reducing the resource sum domain, the invention saves space, thus allowing a computer to run faster and more efficiently when solving a CSP. Appeal Br. 4–6. Appellant adds that the computer’s generating a new sub-problem dynamically, without user input, likewise generates a product configuration more efficiently. Appeal Br. 5. Appellant also contends that the claims recite an inventive concept because, among other things, they do not merely recite conventional functionality, nor did the Examiner provide the requisite evidence of such conventionality. See Appeal Br. 8–11; Reply Br. 2–3. According to Appellant, the Examiner failed to provide evidence that the recited functional limitations, including those beyond mere hardware components, are well-understood, routine, and conventional as required. Reply Br. 2–3. ISSUE Under § 101, has the Examiner erred in rejecting claims 1–19 as directed to ineligible subject matter? This issue turns on whether the claims are directed to an abstract idea and, if so, whether the recited elements— considered individually and as an ordered combination—transform the nature of the claims into a patent-eligible application of that abstract idea. Appeal 2019-001050 Application 12/362,209 5 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, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 187 n.7 (quoting Corning v. Burden, 56 U.S. Appeal 2019-001050 Application 12/362,209 6 (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 67 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; 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.”). That said, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2019-001050 Application 12/362,209 7 In January 2019, the United States Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101. See USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). 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 MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)). 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 is not well-understood, routine, and conventional in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. ANALYSIS Claims 1–19: Alice/Mayo Step One Representative independent claim 1 recites: Appeal 2019-001050 Application 12/362,209 8 A non-transitory computer readable medium having instructions stored thereon that, when executed by a processor, cause the processor to implement a product configurator that solves a dynamic constraint satisfaction problem to configure a product, the problem comprising a resource sum constraint and a port for coupling zero or more sub-problems to the problem, the solving the dynamic constraint satisfaction problem comprising: coupling a first sub-problem to the port in response to an interaction by a user with the dynamic constraint satisfaction problem, wherein the first sub-problem comprises a plurality of variables and a plurality of constraints, and the port comprises a definition of a first problem that can be connected to the port and a cardinality, and the coupling comprises assigning a first value to a first variable of the port that causes all of the variables and constraints that comprise the first sub-problem to be coupled to the port; based at least on the coupling, determining a revised resource sum domain for the problem, the revised resource sum domain comprising a contribution from existing participants comprised of existing sub-problems coupled to the port and a contribution from potential participants comprised of potential additional sub-problems coupled to the port based on the resource sum constraint; and based on the determined revised resource sum domain, dynamically generating a new sub-problem coupled to the port by assigning a second value to a second variable of the port to instantiate a new sub-problem without user interaction and before another interaction by the user; wherein the resource sum constraint comprises a numerical range of allowable resources provided by the zero or more sub-problems coupled to the port; wherein each problem corresponds to a component of the product, and each sub-problem corresponds to a sub-component of the product. As noted above, the claimed invention includes instructions that cause a processor to solve a dynamic CSP comprising a resource sum constraint Appeal 2019-001050 Application 12/362,209 9 and a port. A key aspect of the recited solution is that after a first sub- problem is coupled to the port responsive to user interaction with the problem, (1) a revised resource sum domain for the problem is determined dynamically based on this coupling, and (2) a new sub-problem coupled to the port is generated dynamically. As shown in Appellant’s Figure 2, a “port” is a structural variable 208, and is defined as “a container for problems and connects sub-problems to the problem or another sub-problem.” Spec. ¶ 17. Claim 1 further requires the recited port to comprise (1) a definition of a first problem that can be connected to the port, and (2) a cardinality which, according to paragraph 17 of Appellant’s Specification, is a numeric domain representing how many instances of the problem is required or allowed in the port. Paragraph 19 of Appellant’s Specification further explains that a “resource sum constraint computes the sum of all resources provided by the problems within a port, and when there is a requirement (i.e., a Required Resource variable) on the sum that cannot be fulfilled by the existing problems, it will drive the instantiation of new problems in one embodiment.” Moreover, by the terms of claim 1, the resource sum constraint must comprise a numerical range of allowable resources. Turning to claim 1’s eligibility, we first note that the claim recites a computer readable medium and, therefore, falls within the manufacture category of § 101. But despite falling within this statutory category, we must still determine whether the claim is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. To this end, we must determine whether the claim (1) recites a judicial exception, and (2) fails to integrate the exception into a practical application. See Guidance, 84 Fed. Appeal 2019-001050 Application 12/362,209 10 Reg. at 52–55. If both elements are satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. In the rejection, the Examiner determines that claim 1 is directed to an abstract idea, namely (1) gathering data, such as variables, constraints, and a problem definition; and (2) analyzing the data to revise a resource sum domain by trying different variables within a CSP to find the optimal configuration for a mathematical problem. See Ans. 2–3, 5–6. To determine whether a claim recites an abstract idea, we (1) identify the claim’s specific limitations that recite an abstract idea, and (2) determine whether the identified limitations fall within certain subject matter groupings, namely, (a) mathematical concepts4; (b) certain methods of organizing human activity5; or (c) mental processes.6 Here, apart from the recited “computer readable medium,” “processor,” “product configurator,” and instantiation “without user interaction,” all of claim 1’s recited limitations fit squarely within at least one of the above categories of the USPTO’s guidelines. When read as a 4 Mathematical concepts include mathematical relationships, mathematical formulas or equations, and mathematical calculations. See Guidance, 84 Fed. Reg. at 52. 5 Certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See Guidance, 84 Fed. Reg. at 52. 6 Mental processes are concepts performed in the human mind including an observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg. at 52. Appeal 2019-001050 Application 12/362,209 11 whole, the recited limitations are directed to solving a CSP by revising a domain for the problem based on sub-problems, and generating a new sub- problem based on that revision. First, the limitations calling for “instructions . . . that . . . solve[] a dynamic constraint satisfaction problem to configure a product, the problem comprising a resource sum constraint and a port for coupling zero or more sub-problems to the problem” where “the resource sum constraint comprises a numerical range of allowable resources provided by the zero or more sub- problems coupled to the port” and “each problem corresponds to a component of the product, and each sub-problem corresponds to a sub- component of the product,” where “the solving the dynamic constraint satisfaction problem compris[es] . . . coupling a first sub-problem to the port in response to an interaction by a user with the dynamic constraint satisfaction problem . . .” can be done entirely mentally or with pen and paper by merely cognitively associating a sub-problem, including its variables and constraints, with a “port” that, according to the Specification’s paragraph 17, is a structural variable, and is defined as “a container for problems and connects sub-problems to the problem or another sub- problem.” The coupling step, then, merely associates the sub-problem to the port—an association that involves mere observation and logical reasoning that can be done entirely mentally or with pen and paper. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a recited step that utilized a map of credit card numbers to determine the validity of a credit card transaction could be performed entirely mentally by merely using logical reasoning to identify a likely instance of fraud by merely observing that numerous transactions using different credit cards all Appeal 2019-001050 Application 12/362,209 12 originated from the same IP address). That the recited coupling comprises “assigning a first value to a first variable of the port that causes all of the variables and constraints of the first sub-problem to be coupled to the port” does not change our conclusion, for this assignment could be likewise done entirely mentally or with pen and paper, as well as its associated result, namely coupling all the first sub-problem’s variables and constraints to the port. Therefore, the recited coupling step fits squarely within the mental processes category of the USPTO’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observation and evaluation). Furthermore, because the claimed coupling also recites mathematical relationships, it also fits squarely in the mathematical concepts category of the USPTO’s guidelines and, therefore, recites an abstract idea for that additional reason. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mathematical processes including mathematical relationships); see also In re Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989) (“Words used in a claim operating on data to solve a problem can serve the same purpose as a formula.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (noting that analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, are essentially mental processes within the abstract idea category); Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”); Benson, 409 U.S. 63 (holding ineligible claims involving a mathematical algorithm and directed to Appeal 2019-001050 Application 12/362,209 13 converting binary-coded-decimal (BCD) numerals into pure binary numerals for use with a computer). Accord CyberSource, 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in [Benson].”). We reach the same conclusion regarding the recited revised resource sum domain determination that is based on the recited coupling. That the revised resource sum domain comprises existing and potential sub-problems from existing and potential participants, respectively, does not change our conclusion for, here again, the revised resource sum domain determination could be done entirely mentally or with pen and paper by using mere observation and logical reasoning and, therefore, fits squarely within the mental processes category of the USPTO’s guidelines and, thus, recites an abstract idea. Cf. CyberSource, 654 F.3d at 1372 (noting that a recited step that utilized a map of credit card numbers to determine the validity of a credit card transaction could be performed entirely mentally by merely using logical reasoning to identify a likely instance of fraud by merely observing that numerous transactions using different credit cards all originated from the same IP address); see also Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observation and evaluation). Furthermore, because the recited revised resource sum domain determination also involves mathematical relationships, it also fits squarely in the mathematical concepts category of the USPTO’s guidelines and, therefore, recites an abstract idea for that additional reason. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mathematical processes including mathematical relationships). Appeal 2019-001050 Application 12/362,209 14 We reach the same conclusion regarding “dynamically generating a new sub-problem coupled to the port by assigning a second value to a second variable of the port to instantiate a new sub-problem . . . before another interaction by the user” where this generation is based on the determined revised resource sum domain. Here again, a new sub-problem could be generated dynamically entirely mentally or with pen and paper by using mere observation and logical reasoning and, therefore, fits squarely within the mental processes category of the USPTO’s guidelines and, therefore, recites an abstract idea. Cf. CyberSource, 654 F.3d at 1372 (noting that a recited step that utilized a map of credit card numbers to determine the validity of a credit card transaction could be performed entirely mentally by merely using logical reasoning to identify a likely instance of fraud by merely observing that numerous transactions using different credit cards all originated from the same IP address); see also Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observation and evaluation). Furthermore, because the recited dynamic new sub-problem generation also involves mathematical relationships, it also fits squarely in the mathematical concepts category of the USPTO’s guidelines and, therefore, recites an abstract idea for that additional reason. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mathematical processes including mathematical relationships). Therefore, apart from the recited “computer readable medium,” “processor,” “product configurator,” and instantiation “without user interaction,” all of claim 1’s recited limitations are within the mental processes and mathematical concepts categories of the USPTO’s guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52. Appeal 2019-001050 Application 12/362,209 15 Notably, the recited “computer readable medium,” “processor,” “product configurator,” and instantiation “without user interaction” are the only recited elements beyond the abstract idea, but these additional elements, considered individually and in combination, do not integrate the abstract idea into a practical application when reading claim 1 as a whole. We also find unavailing Appellant’s contention that the claimed invention is eligible because it is ostensibly directed to a technical solution to a technical problem. Appeal Br. 4–8. First, the claimed invention does not improve a computer or associated components’ functionality or efficiency, or otherwise change the way those devices function, at least in the sense contemplated by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that the claimed invention uses such a data structure to improve a computer’s functionality or efficiency, or otherwise change the way that device functions, there is no persuasive evidence on this record to substantiate such a contention. Nor is this invention analogous to that which the court held eligible in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016). There, the claimed process used a combined order of specific rules that rendered information in a specific format that was applied to create a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315. Notably, the recited process automatically animated characters using particular information and techniques—an improvement over manual three- Appeal 2019-001050 Application 12/362,209 16 dimensional animation techniques that was not directed to an abstract idea. Id. at 1316. But unlike the claimed invention in McRO that improved how the physical display operated to produce better quality images, the claimed invention here is directed to, at a high level of generality, solving a CSP by revising a domain for the problem based on sub-problems, and generating a new sub-problem based on that revision. The claimed invention not only recites abstract ideas, namely mental processes and mathematical concepts as noted previously, but also does not improve a display mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO). To the extent Appellant contends that the claimed invention is rooted in technology because it is ostensibly directed to a technical solution (see Appeal Br. 5), we disagree. Even assuming, without deciding, that the claimed invention enables a computer to run faster and more efficiently when solving a CSP than doing so manually as Appellant seems to suggest (see id.), any speed increase comes from the capabilities of the generic computer components—not the recited process itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App. 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to accelerate the process of finding errant files and to reduce error, we have held that speed and Appeal 2019-001050 Application 12/362,209 17 accuracy increases stemming from the ordinary capabilities of a general- purpose computer do not materially alter the patent eligibility of the claimed subject matter.”) (quotation marks, bracketed alteration, and citation omitted). Nor is this a case involving eligible subject matter as in DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). There, instead of a computer network operating in its normal, expected manner by sending a website visitor to a third-party website apparently connected with a clicked advertisement, the claimed invention in DDR generated and directed the visitor to a hybrid page that presented (1) product information from the third party, and (2) visual “‘look and feel’” elements from the host website. DDR, 773 F.3d at 1258–59. Given that particular Internet-based solution, the court held that the claimed invention did not merely use the Internet to perform a business practice known from the pre-Internet world, but rather was necessarily rooted in computer technology to overcome a problem specifically arising in computer networks. Id. at 1257. That is not the case here. As noted previously, Appellant’s claimed invention, in essence, is directed to mental processes and mathematical concepts, namely solving a CSP by revising a domain for the problem based on sub-problems, and generating a new sub-problem based on that revision —albeit by using computer-based components to achieve that end. The claimed invention here is not necessarily rooted in computer technology in the sense contemplated by DDR where the claimed invention solved a challenge particular to the Internet. Although Appellant’s invention uses various computer-based components, the claimed invention does not solve a challenge particular to the components used to implement this functionality. Appeal 2019-001050 Application 12/362,209 18 In short, the claim’s focus is not on improving machines or computers as tools, but rather on certain independently abstract ideas that use those tools. See FairWarning, 839 F.3d at 1095 (quotation marks and citations omitted). As with the ineligible claimed invention in BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1284–91 (Fed. Cir. 2018), the claimed invention does not improve a computer’s functionality or that of its associated components. See BSG, 899 F.3d at 1288 (“While the presentation of summary comparison usage information to users improves the quality of the information added to the database, an improvement [in] . . . the information stored by a database is not equivalent to an improvement in the database’s functionality.”). On this record, then, the claimed invention does not recite additional elements that (1) improve a computer itself; (2) improve another technology or technical field; (3) implement the abstract idea in conjunction with a particular machine or manufacture that is integral to the claim; (4) transform or reduce a particular article to a different state or thing; or (5) apply or use the abstract idea in some other meaningful way beyond generally linking the abstract idea’s use to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)– (c), (e)). In short, the claim’s additional elements do not integrate the abstract idea into a practical application when reading claim 1 as a whole. Lastly, we find unavailing Appellant’s contention the Examiner failed to show that the claims preempt using the alleged abstract idea in all fields. App. Br. 11. Where, as here, the claims cover a patent-ineligible concept, preemption concerns “are fully addressed and made moot” by an analysis Appeal 2019-001050 Application 12/362,209 19 under the Alice framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). In conclusion, although the recited functions may be beneficial by solving a CSP by revising a domain for the problem based on sub-problems, and generating a new sub-problem based on that revision, a claim for a useful or beneficial abstract idea is still an abstract idea. See id. at 1379–80. We, therefore, agree with the Examiner that claim 1 is directed to an abstract idea. Claims 1–19: Alice/Mayo Step Two Turning to Alice/Mayo step two, claim 1’s additional recited elements, namely the recited “computer readable medium,” “processor,” “product configurator,” and instantiation “without user interaction”—considered individually and as an ordered combination—do not provide an inventive concept that amounts to significantly more than the abstract idea when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the claimed invention merely uses generic computing components to implement the recited abstract idea. To the extent Appellant contends that the recited limitations, including those detailed above in connection with Alice step one, add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two (see App. Br. 8–11; Reply Br. 2–3), these limitations are not additional elements beyond the abstract idea, but rather are directed to the abstract idea as noted previously. See BSG, 899 F.3d at 1290 (explaining that the Supreme Court in Alice “only assessed whether the claim limitations other than the invention’s use of the ineligible concept to Appeal 2019-001050 Application 12/362,209 20 which it was directed were well-understood, routine and conventional”) (emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that additional recited elements should be evaluated in Alice/Mayo step two to determine whether they (1) add specific limitations that are not well- understood, routine, and conventional in the field, or (2) simply append well-understood, routine, and conventional activities previously known to the industry (citing MPEP § 2106.05(d)). Rather, the the recited “computer readable medium,” “processor,” “product configurator,” and instantiation “without user interaction” are the only additional recited elements whose generic computing functionality is well-understood, routine, and conventional. See Mortgage Grader, 811 F.3d at 1324–25 (noting that components such an “interface,” “network,” and “database” are generic computer components that do not satisfy the inventive concept requirement); buySAFE 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.”). Accord Spec. 12–15 (describing generic computer components used to implement the invention); Ans. 3, 8–9 (determining that the recited memory, processors, and computers are additional elements that do not add significantly more than the abstract idea). We find unavailing Appellant’s contention that the Examiner allegedly did not comply with the evidentiary requirements under the April 2018 USPTO memorandum mandating these requirements for ineligibility rejections after Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). See Appeal Br. 9–10; Reply Br. 2–3. To be sure, the Examiner must show—with supporting facts—that certain claim elements are well- Appeal 2019-001050 Application 12/362,209 21 understood, routine, and conventional where such a finding is made. See Berkheimer, 881 F.3d at 1369 (noting that whether something is well- understood, routine, and conventional to a skilled artisan at the time of the invention is a factual determination). In light of this factual determination, the USPTO issued a memorandum requiring that Examiners support a finding that an additional element of a claim is well-understood, routine, and conventional. Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO, Apr. 19, 2018 (“Berkheimer Memo.”), at 2–3 (noting that the Berkheimer decision clarifies the inquiry whether an additional element (or combination of additional elements) represents well-understood, routine, and conventional activity). Appellant’s contention, then, that the additional elements for which evidence must be provided include the functional elements beyond the mere hardware components which, according to Appellant, are all functional limitations (Reply Br. 3), is unavailing. In short, Appellant’s argument is not commensurate with the more limited scope of the Examiner’s findings in this regard that pertain only to the elements other than the abstract idea, namely the additional computer-based elements, such as the medium and processor, whose generic computing functionality is well-understood, routine, and conventional. See Ans. 3, 8–9. As noted previously, there is ample evidence of this generic computing functionality in not only the cited case law, but also Appellant’s own Specification. See, e.g., Fair Warning, 839 F.3d at 1096 (noting that using generic computing components like a microprocessor or user interface do not transform an otherwise abstract idea into eligible subject matter); Appeal 2019-001050 Application 12/362,209 22 Spec. ¶¶ 12–15 (describing generic computer components used to implement the invention). Therefore, the additional recited elements, namely the recited “computer readable medium,” “processor,” “product configurator,” and instantiation “without user interaction”—when considered individually and as an ordered combination—do not add significantly more than the abstract idea to render the claim patent-eligible when reading claim 1 as a whole. Appellant’s reliance on the earlier Board decision (Appeal Br. 8–11; Reply Br. 2–3) is also unavailing in this regard. Not only is the Board’s earlier decision inapposite to the ineligibility rejection at issue here as the Examiner correctly indicates (Ans. 6), it is well settled that an invention’s novelty and non-obviousness are not dispositive to patent eligibility—a separate statutory inquiry. See Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). Although the second step in the Alice/Mayo test is a search for an “inventive concept,” the analysis is not directed to novelty or nonobviousness, but rather searches for elements sufficient to ensure that the claimed invention is directed to more than a patent ineligible concept, such as an abstract idea. See Alice, 573 U.S. at 217–18. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“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.”); Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an Appeal 2019-001050 Application 12/362,209 23 eligibility finding does not turn on the novelty of using a user-downloadable application for the particular purpose recited in the claims). Therefore, the earlier panel’s reversing the Examiner’s obviousness rejection is irrelevant to the ineligibility rejection at issue here. In conclusion, the additional recited elements—considered individually and as an ordered combination—do not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two when reading the claims as a whole. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. Therefore, we are not persuaded that the Examiner erred in rejecting claims 1–19 as ineligible under § 101. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–19 101 Ineligibility 1–19 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)(1). AFFIRMED Copy with citationCopy as parenthetical citation