Ex Parte AKUSHEVICH et al

Patent Trial and Appeal Board

Aug 22, 2018

14184129 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/184,129 02/19/2014
103765 7590 08/24/2018
IBM Corp-Rochester Drafting Center
1701 North Street Building 256-3
Department SHCB
Endicott, NY 13760
FIRST NAMED INVENTOR
MARYNA AKUSHEVICH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920l400l4US1 5650
EXAMINER
LE, LINH GIANG
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
rocdrctr@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARYNA AKUSHEVICH, PEI-YUN HSUEH,
PETER MOOIWEER, SREERAM RAMAKRISHNAN,
SHWETA SHARMA, and KE YU
Appeal2018-005318 1
Application 14/184,1292
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
December 8, 2017) and Reply Brief ("Reply Br.," filed April 30, 2018), and
the Examiner's Answer ("Ans.," mailed March 5, 2018) and Final Office
Action ("Final Act.," mailed July 21, 2017).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal2018-005318
Application 14/184,129
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 2-10, 12-15, and 17-20. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED INVENTION
Appellants describe that the claimed invention "relates ... to the use
of computers in analyzing data" and, more particularly, "to abstracting and
selecting optimal sets of variance-related features related to health care
patients" (Spec. ,r 1 ).
Claims 6, 15, and 20 are the independent claims on appeal. Claim 6,
reproduced below, is illustrative of the claimed subject matter:
6. A method to automatically abstract and select an
optimal set of variance-related features that are indicative of an
individual outcome in health care, the method comprising:
generating, by one or more processors, an abstracted set of
candidate variance-related patient features, wherein the
abstracted set of candidate variance-related patient features are
temporally heteroskedastic features;
optimizing, by one or more processors, each patient
feature from the abstracted set of candidate variance-related
patient features by identifying a time period in which variances
and heteroskedasticity of each patient feature are maximized,
wherein said optimizing creates an optimal abstracted set of
variance-related patient features from the time period in which
the variances and heteroskedasticity of each patient feature are
maximized;
comparing, by one or more processors, the optimal
abstracted set of variance-related patient features to a historical
set of data for a population of patients to create a predictive set
of variance-related patient features, wherein the predictive set of
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variance-related patient features predicts a target health-related
outcome of the population of patients;
generating, by one or more processors, a current patient
optimal set of variance-related patient features for a current
patient;
comparing, by one or more processors, the optimal set of
variance-related patient features for the population of patients to
the current patient optimal set of variance-related patient features
for the current patient;
in response to the optimal set of variance-related patient
features for the population of patients matching the current
patient optimal set of variance-related patient features for the
current patient within a predefined limit, determining, by one or
more processors, whether the target health-related outcome
matches a predefined health-related outcome for the current
patient; and
in response to the target health-related outcome matching
the predefined health-related outcome for the current patient,
issuing, by one or more processors, an alert related to the
predefined health-related outcome for the current patient,
wherein the alert represents an automatic diagnosis of an
increased risk of a medical condition;
wherein the abstracted set of candidate variance-related
patient features is generated by one or more processors by
maximizing a V ARiance trend Over Time (V AROT), wherein:
V AROT = f(x, ts, wl, dt, pt, s)
where x = measurements of a predefined measured patient
trait,
ts = a starting point of an observation window for
observing the predefined measured patient trait,
wl = a length of the observation window,
dt = an incremental period of length for a subunit of the
observation window,
pt= a period type for the observation window, wherein the
period type is selected from a group consisting of a discrete
period and a rolling period, and
s = a sparsity constraint that defines a required minimum
number of data points for x within the incremental period in the
observation window.
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REJECTION
Claims 2-10, 12-15, and 17-20 are rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.
ANALYSIS
Appellants argue claims 2-10, 12-15, and 17-20 as a group (App.
Br. 8-18). We select independent claim 6 as representative. The remaining
claims stand or fall with claim 6. See 37 C.F.R. § 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
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( quoting Mayo, 566 U.S. at 79, 78). Step two is, thus, "a search for an
'inventive concept'-i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Alice Corp., 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 73).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "the abstract idea of
automatically abstracting and selecting an optimal set of variance-
related features that are indicative of an individual outcome in health
care" (Final Act. 3). The Examiner reasoned that the claims are analogous
to the claims at issue in Fair Warning IP, LLC v. Iatric Systems, Inc.,
839 F.3d 1089 (Fed. Cir. 2016) (claims directed to collecting information,
analyzing the information according to one of several rules and determining
[a] notification as a result of the analysis) and Classen Immunotherapies,
Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (claims directed to
collecting and comparing known information), which the court held were
patent-ineligible, and that the claimed steps for collecting, analyzing, and
comparing information, and determining [a] notification as a result of the
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analysis are "examples of an idea 'of itself' that could be performed in the
human mind or by a human using a pen and paper" (Final Act. 6).
The Examiner also determined that the claims do not include
additional elements or a combination of elements that is sufficient to amount
to significantly more than the judicial exception because "the additional
computer elements, which are recited at a high level of generality, provide
conventional computer functions that do not add meaningful limits to
practicing the abstract idea" (id. at 3). More particularly, the Examiner
determined that the additional elements in the claims, other than the abstract
idea per se, amount to no more than a recitation of "[g]eneric computer
structure ... that serves to perform generic computer functions that ....
merely link the abstract idea to a particular technological environment (i.e.[,]
a processor, computer system, computer readable memory, computer
readable storage medium)" (id. at 6-7) and that "generating, optimizing
comparing, determining, and issuing" are "[g]eneric computer functions that
are well-understood, routine, and conventional activities previously known
to the pertinent industry" ( id. at 7).
Addressing the first step of the Mayo/Alice framework, Appellants
argue that the pending claims are not directed to an abstract idea, and are
patent-eligible for the same reason that the court determined that the claims
in McRO are patent-eligible (App. Br. 9). We do not agree with Appellants
that there is any parallel between the present claims and the claims at issue
in McRO. Instead, we conclude, as did the Examiner, that the present claims
are analogous to the claims held patent-ineligible in Fair Warning.
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Claim 1 of the '57 6 patent, 3 at issue in McRO, is directed to a method
for automatically animating the lip synchronization and facial expressions of
three-dimensional animated characters, and recites that the method
comprises, inter alia, "obtaining a first set of rules that define output morph
weight set stream as a function of phoneme sequence and time of said
phoneme sequence." McRO, 837 F.3d at 1307---08. The Federal Circuit
determined that the claim, when considered as a whole, is directed to a
technological improvement over existing, manual 3-D animation techniques,
and uses limited rules in a process specifically designed to achieve an
improved technological result relative to conventional industry practice. Id.
at 1316. As such, the court determined that the claim is not directed to an
abstract idea, and is patent-eligible under 35 U.S.C. § 101. Id.
Appellants argue here that the pending claims are not directed to an
abstract idea because, similar to the claim in McRO, the claims are directed
to an improvement in computer-related technology (App. Br. 9-12). More
particularly, Appellants maintain that, similar to McRO, Appellants' claims
"improve computer technology by enabling accurate computer performance
of a traditionally subjective human activity" (id. at 9), i.e., by allowing
computers to create an accurate individually adapted plan for a particular
patient, which previously could only be created by human medical
professionals, making subjective determinations based on their knowledge
and experience (id. at 1 O; see also id. at 13).
The Examiner asserts that "[i]t is not accurate to say that prior to
Applicant's [sic] application, computers could not analyze or make medical
3 U.S. Patent No. 6,307,576, issued October 23, 2001.
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determinations and only humans were making medical determinations"
(Final Act. 9). And Appellants concede, "[i]t may be possible that a
computer could have been used in attempts to diagnose current medical
conditions or predict future medical conditions prior to Appellant's [sic]
claimed invention" (App. Br. 12). But Appellants argue that "the resulting
diagnoses and predictions would have been inaccurate as compared to
diagnoses and predictions using Appellant's [sic] claimed invention" (id.).
Appellants point specifically to the claimed V AROT function and the
claimed comparison of optimal abstracted features for a population with
optimal abstracted features for a current patient as giving computers the
capacity to produce accurate personal diagnoses and treatment plans (id.
at 10-11 ). And Appellants argue that even if computers may have been
used, prior to Appellants' claimed invention, to diagnose current medical
conditions or predict future medical conditions, "the accuracy of the
automation of these subjective activities [was] not previously possible
without [Appellants'] VAROT function" (id. at 12).
The difficulty with Appellants' argument is that it, at best, merely
establishes that the V AROT function is a new and improved mathematical
formula/algorithm, i.e., an improved abstract idea, for use in diagnosing
health conditions. As the court observed in SAP America, Inc. v.
InvestPic, LLC, No. 2017-2081, 2018 WL 3656048 (Fed. Cir. Aug. 2,
2018), the claims in McRO were directed to "the creation of something
physical- namely, the display of 'lip synchronization and facial
expressions' of animated characters on screens for viewing by human eyes"
and "[t]he claimed improvement was to how the physical display operated
(to produce better quality images)." Id. at *5. Here, like the claims at issue
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in SAP America, the claimed improvement is a "mathematical technique
with no improved display mechanism." Id. However valuable or useful the
results obtained using the V AROT function may be, its value or usefulness
is not dispositive of patent-eligibility. See Parker v. Flook, 437 U.S. 584,
594--95 (1978) (holding claims to "a new and presumably better method for
calculating alarm limit values," of undisputed usefulness, to be directed to
patent-ineligible subject matter); see also Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) ("Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.").
Further responding to the Examiner's assertion that computers were
previously used to make medical determinations, Appellants argue that there
is no suggestion in McRO that computers were previously unable to produce
any degree of lip synchronization. Rather, according to Appellants, to the
extent computers were used in the lip synchronization process, they
produced inaccurate results (App. Br. 11 (citing McRO, 837 F.3d at 1306)).
Appellants, thus, maintain that, similar to the claims in McRO, Appellants'
claims enable computers to accurately perform an activity that was
previously only accurately performed by human medical professionals (id.
at 11-12).
The McRO '576 patent describes that, prior to the claimed invention,
character animation and lip synchronization were accomplished by human
animators, with the assistance of a computer, and involved the use of a so-
called "keyframe" approach, in which animators set appropriate parameters,
i.e., morph weights, at certain important times, i.e., "keyframes," in order to
produce accurate and realistic lip synchronization and facial expressions.
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McRO, 837 F.3d at 1305. Animators knew what phoneme a character
pronounced at a given time from a time-aligned phonetic transcription (i.e., a
"timed transcript"). Id. In accordance with the prior technique, animators,
using a computer, thus, manually determined the appropriate morph weight
sets for each keyframe, based on the phoneme timings in the timed
transcript. Id.
Although Appellants ostensibly contend otherwise, in McRO, the
shortcoming in the prior art method was not that computers produced
inaccurate results (although the '576 patent criticizes the keyframe approach
as time-consuming, tedious and inaccurate (see McRO, 837 F.3d at 1306)).
Instead, the shortcoming was that in order to produce accurate lip
synchronization, animators had to manually determine the appropriate
morph weight sets for each keyframe. McRO, 837 F.3d at 1305. The
improvement in computer animation was realized by using "rules, rather
than artists [i.e., human animators], to set the morph weights and transitions
between phonemes" (id. at 1313), i.e., in McRO, the invention used "rules to
automatically set a keyframe at the correct point to depict more realistic
speech, achieving results similar to those previously achieved manually by
animators." Id. at 13 07.
Appellants argue that Appellants' claims, like those in McRO,
"transform 'a traditionally subjective process performed by human' medical
professionals (e.g., the accurate, personalized alerts of recognized medical
risks, the accurate, personalized treatment plans for medical conditions) into
an 'automated process executed on computers"' (App. Br. 12-13). But, we
agree with the Examiner that "the VAROT analysis (specific rules) does not
enable the computer to perform medical determinations in the same way the
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specific rules enable the computer in McRO to generate the computer
animated characters" (Final Act. 8-9). As the Examiner correctly observes,
"[t]he rules in McRO allowed the computer to produce accurate and realistic
synchronization in animated characters that could only previously be
produced by humans" (id. at 9). We find no evidence of record here to
support the argument that the present situation is like the one in McRO
where computers were unable to make certain subjective determinations, i.e.,
regarding morph weight and phoneme timings, which could only be made
prior to the claimed invention by human animators. The Background section
of the McRO '576 patent includes a description of the admitted prior art
method and the shortcomings associated with that prior method. See McRO,
837 F.3d at 1303---06. There is no comparable discussion in Appellants'
Specification or elsewhere of record.
Citing paragraph 2 of the Specification in their Reply Brief,
Appellants assert, "Appellant [sic] has provided evidence that, prior to
Appellant's [sic] claims, 'an accurate individually adapted plan for a
particular patient ... could only be created by human medical
professionals."' (Reply Br. 4). But, we fail to see how, and Appellants do
not adequately explain how, the disclosure in paragraph 2 provides any such
evidence.
Rather than paralleling the claims in McRO, claim 6 is substantially
similar to the claims that the Federal Circuit determined were patent-
ineligible in Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350
(Fed. Cir. 2016), and, shortly thereafter, in FairWarning. In Electric Power,
the court found that the claims were directed to an abstract idea because
"[t]he advance they purport to make is a process of gathering and analyzing
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information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions."
Electric Power, 830 F.3d at 1354; see also id. at 1353-54 (characterizing
collecting information, analyzing information by steps people go through in
their minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas). Citing Electric Power in Fair Warning, the Federal
Circuit held there that the claims were directed to collecting and analyzing
information to detect misuse and notifying a user when misuse is detected,
i.e., to a combination of abstract idea categories, Fair Warning, 839 F.3d
at 1093-94, and that, as in Electric Power, "the focus of the claims is not on
... an improvement in computer as tools, but on certain independently
abstract ideas that use computers as tools." Id. at 1095 (alteration in
original) ( citation omitted).
Similarly here, we find that claim 6 involves nothing more than
(1) collecting data (i.e., generating an optimal abstracted set of candidate
variance-related patent features for the general population and an optimal set
of variance-related patient features for the current patient using the VAROT
function); (2) analyzing the data (i.e., comparing the optimal abstracted set
of variance-related patient features to a historical set of data for a population
of patients to create a predictive set of variance-related patient features that
predicts a target health-related outcome of the patient population; comparing
the optimal set of variance-related patient features for the population of
patients to the current patient optimal set of variance-related patient features
for the current patient; and determining whether the target health-related
outcome matches a predefined health-related outcome for the current
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patient); and (3) presenting the results of the collection and analysis (i.e.,
issuing an alert if the target health-related outcome matches a predefined
health-related outcome for the current patient)-without any asserted
inventive technology for performing these functions. For example, there is
no indication in the record that the particular operations, called for in
claim 6, require any specialized computer hardware or other inventive
computer components, or that the claimed invention is implemented using
other than generic computer components to perform the claimed method
steps. Instead, the Specification suggests just the opposite, i.e., that the
claimed invention is implemented using only generic computer components
(see, e.g., Spec. ,r,r 12-18), which is not enough for patent-eligibility. DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
("[ A ]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.").
Appellants argue that the present claims are distinguishable from
those at issue in Fair Warning because "Appellant's [sic] claims do not
merely implement an old practice in a new environment (as did the claims in
Fair Warning), because no practice previously utilized heteroskedastic
variation in diagnosing and predicting medical conditions with a variance
trend over time function" (App. Br. 14). Appellants assert that although
"medical professionals may have viewed patients' health histories and
analyzed variables while making medical determinations, as contended by
the Office (Office Action page 9), ... they did not do so with procedures
similar to Appellant's [sic] claimed use of the VAROT function" (id. at 13).
Yet, we find no evidence of record that medical professionals could not or
were not using a type of analysis similar to VAROT. And we do not agree
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with Appellants that the fact that the claims "have been found to be free of
disclosure by the prior art" is evidence that medical professionals could not
have been practicing the same procedures previously (id.). Moreover, even
if that were so, a finding of novelty or non-obviousness does not
automatically lead to the conclusion that the claimed subject matter is
patent-eligible. A novel and non-obvious claim directed to a purely abstract
idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also
Diamond v. Diehr, 450 U.S. 17 5, 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.").
We also are not persuaded of Examiner error by Appellants' argument
that the claims are patent-eligible because, like the claims held patent-
eligible in Classen, the "comparing limitations" in the present claims are put
to practical use, i.e., in the case of a match, an alert is issued that the current
patient may be at risk of a health condition (App. Br. 14--15). Classen was
decided before Mayo and Alice and, in view of this later and controlling
precedent, cannot be relied on to support the notion that putting information
to practical use in a claim otherwise directed to collecting and comparing
known information automatically transforms the claim into patent-eligible
subject matter. We agree with the Examiner that generating an alert, as
recited in claim 6, is merely an output step, and is considered insignificant
extra-solution activity (Ans. 7), which may not be relied for patent-
eligibility. See Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) ("Flook
stands for the proposition that the prohibition against patenting abstract ideas
'cannot be circumvented by attempting to limit the use of the formula to a
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particular technological environment' or adding 'insignificant postsolution
activity."') (quoting Diehr, 450 U.S. at 191-92).
It also is significant here, and further supports the Examiner's
determination that the claims are directed to an abstract idea, that although
claim 6, for example, recites the use of "one or more processors," the
operations recited in claim 6 are acts that could be performed by a human,
e.g., manually, using pen and paper, without the use of a computer. 4
See Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature
... , mental processes, and abstract intellectual concepts are not patentable,
as they are the basic tools of scientific and technological work."); Electric
Power, 830 F.3d at 1354 ("[W]e have treated analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category.").
4 Appellants do not deny that the claimed method could be performed
manually (see Reply Br. 7 ("Appellant [sic] does not here concede or dispute
that Appellant's claims could be performed mentally or with pencil and
paper"); see also App. Br. 9-10). Instead, Appellants maintain that the
claims are patent-eligible regardless of whether they can be performed using
pencil and paper "for the same reasons that McRO 's claims were patent
eligible in spite of being able to be performed with pencil and paper" (Reply
Br. 7). Appellants note that they have found no suggestion in the McRO
opinion that the claims could not be performed solely with pencil and paper
(id.). But neither is there any suggestion in the McRO opinion that the
claims could be performed using pencil and paper. Critically, in McRO, the
court determined that the claim at issue, when viewed as a whole, uses
limited rules in a process specifically designed to achieve an improved
technological result relative to conventional industry practice, and therefore,
that the claim is not directed to an abstract idea. McRO, 837 F.3d at 1316.
We are not persuaded that a comparable situation is presented here.
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Turning to the second step of the Mayo/Alice analysis, Appellants
argue that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible, because the claims include limitations that
transform the nature of the claims into a patent-eligible application of the
abstract idea (App. Br. 15-18). Citing Section IV of the USPTO's "July
2015 Update: Subject Matter Eligibility,"5 Appellants first charge that the
§ 101 rejection cannot be sustained because the Examiner has not clearly
articulated the reasons why the claimed invention is not patent-eligible,
including why the additional elements do not amount to significantly more
than the judicial exception (id. at 15-16). In fact, the Examiner provided a
reasoned analysis that identifies the judicial exception recited in the claims,
i.e., an abstract idea, and explains why it is considered a judicial exception,
and also explains why the additional elements in the claim do not amount to
significantly more than the judicial exception (Final Act. 2-8).
We also are not persuaded by Appellants' further argument that "the
Office's conclusion with respect to this [second] stage of the two-part test is
incorrect" (App. Br. 16). Appellants assert that the activities involved in
Appellants' claim limitations, individually and in combination, are not
routine, well understood, and conventional, and, in particular, that it is not
routine or conventional to take advantage of variance patterns in patient-
generated information when diagnosing risks of health conditions (id.).
However, we agree with the Examiner that "[t]aking advantage of variance
patterns in patient-generated information" is the abstract idea itself; it is "not
an additional limitation to be considered when determining whether the
5 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf.
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additional limitation teaches significantly more [than] the judicial exception"
(Ans. 9).
Responding to the Examiner's Answer in the Reply Brief, Appellants
argue that that there is no "bright-line distinction between steps 2A and 2B
[i.e., steps one and two] of the Alice test" (Reply Br. 8), and that "it is
improper for the Office to dismiss any limitation of Appellant's [sic] step 2B
analysis simply because that limitation is one of the limitations accused of
being directed to an abstract idea" (id. at 9). Appellants note that the Federal
Circuit has held that whether a claim element or combination of elements is
well-understood, routine, and conventional is a question of fact (id.). And
Appellants argue that, by improperly dismissing Appellants' arguments, and
without further evidence, the Office has not met its burden of establishing,
by clear and convincing evidence, that Appellants' claim limitations are
well-understood, routine, and conventional to a skilled artisan in the relevant
field (id. (citing Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018); the
US PTO' s April 19, 2018 Memorandum, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF))).
Appellants' argument is not persuasive, at least because it could not
be clearer from Alice, that under step two of the Mayo/Alice framework
(i.e., step 2B), the elements of each claim are considered both individually
and "as an ordered combination" to determine whether the additional
elements, i.e., the elements other than the abstract idea itself, "transform the
nature of the claim" into a patent-eligible application. Alice Corp.,
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134 S. Ct. at 2355. See Mayo, 566 U.S. at 72-73 (requiring that "a process
that focuses upon the use of a natural law also contain other elements or a
combination of elements, sometimes referred to as an 'inventive concept,'
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the natural law itself' ( emphasis added)). Stated
differently, the inventive concept under step two of the Mayo/Alice test
cannot be the abstract idea itself:
It is clear from Mayo that the "inventive concept" cannot be the
abstract idea itself, and Berkheimer ... leave[ s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged "inventive concept" is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring). The Federal Circuit, in accordance with Alice, also has
"repeatedly recognized the absence of a genuine dispute as to eligibility"
where claims have been defended as involving an inventive concept based
"merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality." Id.
at 1373 (citations omitted).
As described above, there is no indication here that the operations,
recited in claim 6, require any specialized computer or inventive computer
components - the Specification indicates just the opposite. Although the
V AROT function may be an improved mathematical formula/algorithm "an
invocation of already-available computers that are not themselves plausibly
asserted to be an advance, for use in carrying out improved mathematical
calculations, amounts to a recitation of what is 'well-understood, routine,
[and] conventional."' SAP Am., 2018 WL 3656048, at *7 (quoting Mayo,
566 U.S. at 73).
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Appeal2018-005318
Application 14/184,129
Finally, we are not persuaded by Appellants' argument that the
present claims are analogous to the claims held patent-eligible in BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016) (App. Br. 17).
In BASCOM, the claims described an inventive concept in the non-
conventional and non-generic arrangement of known, conventional pieces.
BASCOM, 827 F.3d at 1350. Specifically, the Federal Circuit determined
that the claimed installation of a filtering tool at a specific location, remote
from the end users, with customizable filtering features specific to each end
user, provided an inventive concept in that it gave the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server. Id. Appellants do not identify any comparable non-conventional,
non-generic arrangement of elements that is recited in the present claims.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 6 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 6, and claims 2-5, 7-10, 12-15, and 17-20,
which fall with claim 6.
DECISION
The Examiner's rejection of claims 2-10, 12-15, and 17-20 under
35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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