Ex Parte Algranati

Patent Trials and Appeals Board

May 22, 2019

14178507 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/178,507 02/12/2014
22874 7590
GANZ POLLARD, LLC
POBOX2200
HILLSBORO, OR 97123
05/24/2019
FIRST NAMED INVENTOR
David Algranati
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.
SMS-2.001.US.CON2 9114
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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):
docketing@ganzlaw.com
mail@ ganzlaw .com
uspto@ganzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ALGRANATI 1
Appeal 2018-001100
Application 14/178,507
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JOHN D. HAMANN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-24, which constitute all the claims
pending in this application. See Non-Final Act. 1-2; Appeal Br. 4. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Simmons Research LLC. ("Appellant") is the applicant as provided in 37
C.F .R. § 1.46 and is identified as the real party in interest. Appeal Br. 4.
2 We refer to Appellant's Specification ("Spec.") filed Feb. 21, 2014
(claiming benefit of US 60/532,659 filed Dec. 23, 2003); Appeal Brief
("Appeal Br.") filed Apr. 24, 2017; and Reply Brief ("Reply Br.") filed Nov.
13, 2017. We also refer to the Examiner's Non-Final Office Action ("Non-
Final Act.") mailed Sept. 23, 2016; and Answer ("Ans.") mailed Sept. 11,
2017.
Appeal 2018-001100
Application 14/178,507
We affirm.
Appellant's Invention
The invention "relates, in general, to database management systems
and, more particularly, to a system, method and software, using ... a
database, for modeling and projecting demographic, attitudinal and
behavioral information into a geographic region, to support statistical
inferences, where the region would otherwise hav[ e] an insufficient sample
size for supporting such inferences." Spec. ,r 2; see Spec. ,r,r 10-18;
Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A computer-implemented method of inferring
geographically distributed characteristics of a population within
a selected geographic region having a plurality of geographic
subregions using non-resident survey information, wherein the
population has a plurality of members numbering fewer than a
lower threshold number of members suitable to support a direct
statistical analysis of the population, the method comprising:
using a processing device, profiling one or more members
of the population located in a selected geographic subregion of
the plurality of geographic subregions using a plurality of
profiling variables stored in a memory to determine a population
profile corresponding to the selected geographic subregion;
using a processing device, assigning a plurality of survey
respondents located in the selected geographic subregion and a
first plurality of survey respondents located outside of the
geographic subregion to create a virtual representation of the
population corresponding to the selected geographic subregion,
wherein the first plurality of survey respondents located outside
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of the geographic subregion are located in a plurality of
neighboring geographic subregions;
using a processing device, further determining the
population profile of the selected geographic subregion using a
weighted combination of a plurality of profiling variables stored
in the memory for the plurality of survey respondents located in
the geographic subregion and a plurality of profiling variables
stored in the memory for the first plurality of survey respondents
located in the plurality of neighboring geographic subregions;
using a processing device, assigning a second plurality of
survey respondents located outside of the selected geographic
subregion to the virtual representation of the population of the
selected geographic subregion, wherein the assignment is
weighted based on a representation probability of each survey
respondent of the second plurality of survey respondents for the
population profile of the selected geographic subregion; and
using a processing device, outputting, in a user-
perceivable form, geographically distributed characteristics of
the population within the geographic region based at least in part
on the survey information stored in the memory for the first
plurality of survey respondents and the assigned second plurality
of survey respondents.
Rejection on Appeal
The Examiner rejects claims 1-24 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
ISSUE
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding Appellant's claims were directed to
patent-ineligible subject matter, without significantly more, under 35 U.S.C.
§ 101?
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ANALYSIS
The Examiner rejects claims 1-24 as a group based on claim 1 (see
Non-Final Act. 8-11) and concludes claim 1 is directed to patent-ineligible
subject because claim 1 is "directed to the abstract idea of modeling and
projecting population data for census purposes and market assessment
purposes, which is reasonably considered to be fundamental economic
practice" (Non-Final Act. 9), and when "[v]iewed as a whole, [the]
additional claim element( s) do not provide meaningful limitation( s) to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claim[ ] amounts to significantly more than the abstract
idea itself' (Non-Final Act. 10). See Non-Final Act 8-11; Ans. 2-13.
Appellant contends the Examiner erred in rejecting claim 1 as being
directed to patent-ineligible subject matter. See Appeal Br. 12-23; Reply
Br. 4--9. Specifically, Appellant contends claim 1 (and the other pending
claims) are similar to the claims in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014), in that the claims provide "a technical
improvement over the prior art" by "allow[ing] a physical, actual survey to
be replaced by a simulated survey, to obtain additional geodemographic
information that otherwise would remain unavailable or would require
separate surveys to be conducted absent inventive methods." Appeal Br. 13.
Appellant further contends the claims recite "substantially more than any
mere abstract idea," similar to the claims in Diamond v. Diehr, 450 US 175
( 19 81 ), in that the instant claims "recite[] methods to infer a geographical
distribution of characteristics based on statistically incomplete sample size"
and "outputting in a user-perceivable form an approximation of the
geographically distributed characteristics." Appeal Br. 13-14.
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Appellant also contends the claims satisfy "the machine-or-
transformation test," in that the claims "transform otherwise an insufficiently
sized sample of survey data contained within a database to a user-
perceivable output of a statistically meaningful, geographically distributed
set of characteristics of the population without having to resort to conducting
a separate survey." Appeal Br. 14. Appellant contends "'the machine-or-
transformation test' ... remains 'a useful and important clue' that each
respective claim is patent eligible." Appeal Br. 14 (citing Bilski v. Kappas,
561 U.S. 593, 604 (2010)).
Specifically, with respect to claim 1, Appellant contends "[t]he
claimed method represents a technological advance in the field of database
management" because it "infer[ s] statistically meaningful characteristics
from a population which has an insufficient sample size" (Appeal Br. 16)
and "allow[ s] simulated survey information to substitute for actual new
surveys that otherwise would need to be conducted to obtain meaningful
results" (Appeal Br. 17). These features "address [a] long-standing problem
with a technological solution that obviates the need to conduct a separate
survey to obtain ... meaningful information." Appeal Br. 17.
Appellant further contends claim 1 employs specific rules and utilizes
the rules "in a specific technological way to automatically obtain statistically
meaningful characteristics of a population, notwithstanding its deficient
sample size, in lieu of conducting new, separate surveys" similar to McRO.
Appeal Br. 18 (internal quotations omitted) (citing McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellant
additionally contends claim 1 does not recite "a mathematical algorithm" or
"a fundamental economic ... practice." Appeal Br. 19.
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Appellant also reiterates the limitations of claim 1 and contends that
claim 1 "amounts to significantly more than any mere abstract idea."
Appeal Br. 20; see Appeal Br. 21. Additionally, Appellant contends the
claims "recite a specific process for automatically obtaining statistically
meaningful characteristics of a population, notwithstanding its deficient
sample size" and "do not preempt approaches that use other or different
statistical methods or techniques to obtain such characteristics." Appeal Br.
22; see Appeal Br. 21.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77-80 (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, 573 U.S. at 217. Assuming
that a claim nominally falls within one of the statutory categories of
machine, manufacture, process, or composition of matter, the first step in the
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts" (id.), e.g., to an abstract idea. 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
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settlement risk."); see also Bilski, 561 U.S. at 611 ("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, but are not limited to, 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. at 594--95); and mental processes ( Gottschalk v. Benson, 409 U.S.
at 67). Concepts determined to be patent eligible include physical and
chemical processes, such as "molding rubber products" (Diehr, 450 U.S. at
191 ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-
68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing
Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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."). The
Supreme Court continued by qualifying its findings, indicating 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
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mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
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 second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ineligible concept] itself."' Id. at 217-218 ( alteration in original)
(quoting Mayo, 566 U.S. at 72-73). "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]."' Alice, 573 U.S.
at 221 (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic
computer implementation[] fail[ s] to transform that abstract idea into a
patent-eligible invention." Id.
The 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. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
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84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised 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 activities such as a fundamental economic practice, or mental
processes) (hereinafter "Step 2A, prong 1 "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h))
(hereinafter "Step 2A, prong 2").
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, conventional" in the field (see MPEP
§ 106.05(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. 3
See 2019 Revised Guidance.
Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfish, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, 837 F.3d at 1312 (quoting
O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)).
3 Items (3) and (4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
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The Examiner determines independent claim 1 is "directed to the
abstract idea of modeling and projecting population data for census purposes
and market assessment purposes" (Non-Final Act. 9), which is an abstract
idea similar to a number of precedential cases. See Non-Final Act. 8-11;
Ans. 5-13. Here, in rejecting the claims (in particular claim 1) under
35 U.S.C. § 101, the Examiner analyzed the claims using the Mayo/Alice
two-step framework, consistent with the guidance set forth in the USPTO' s
"2014 Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg.
74618 (Dec. 16, 2014), in effect at the time the rejection was made, i.e., on
Sept. 23, 2016.
For the reasons discussed below, we conclude Appellant's claim 1
( and the other pending claims) recite abstract ideas, these abstract ideas are
not integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we clarify and expand the
Examiner's reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant's claim 1. Claim 1 recites "[a] computer-implemented method of
inferring geographically distributed characteristics of a population" "using
non-resident survey information, wherein the population has ... members
numbering fewer than a lower threshold number of members suitable to
support a direct statistical analysis of the population." That is, utilizing a
computer to perform a process of statistical analysis for deriving population
characteristics from survey results of non-residents (non-members of the
particular geographic region or sub-region population) where the population
is statistically insufficient ( for direct statistical analysis of the particular
population).
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Claim 1 further recites "using a processing device, profiling one or
more members of the population ... in a ... geographic subregion" "using a
plurality of profiling variables stored in a memory to determine a population
profile corresponding to the ... geographic subregion." That is, determining
a population profile by characterizing population members using attributes
(profiling variables) stored in memory to determine population
characteristics ( a population profile) utilizing a processing device ( a
computer, processor, or the like). Additionally, claim 1 recites the
processing device "assigning ... survey respondents ... in the ...
geographic subregion" as well as "survey respondents ... outside of the
geographic subregion to create a virtual representation of the population" ( of
the selected geographic subregion), "wherein the ... survey respondents
located outside of the geographic subregion are located in ... neighboring
geographic subregions." That is, creating a representative population by
assigning member and non-member respondents to the virtual population
with the criteria that non-member respondents are located in neighboring
sub-regions.
Claim 1 also recites the processing device "further determining the
population profile" of the geographic sub-region "using a weighted
combination of ... profiling variables stored in the memory" for the survey
respondents in the geographic sub-region and "profiling variables stored in
the memory" for the survey respondents located in the neighboring
geographic subregions. That is, determining the population profile (see
above) utilizing "weighted" "profiling variables" for the resident survey
respondents and "profiling variables" for non-resident respondents-put
more simply, adding a weight to resident responses. Additionally, claim 1
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recites the processing device "assigning a second plurality of survey
respondents located outside of the selected geographic subregion to the
virtual representation of the population of the selected geographic
subregion," such that "the assignment is weighted based on a representation
probability of each survey respondent of the second plurality of survey
respondents for the population profile of the selected geographic subregion."
That is, assigning additional non-resident survey respondents to the virtual
population representation such that the assignment is weighted based on a
"representation probability" for each (additionally) assigned respondent.
The representation probability is "a likelihood of an individual being
representative of members of the population of the selected subregion"
(Spec. ,r 12).
Claim 1 finally recites utilizing the processing device to output
( outputting) "geographically distributed characteristics of the population
within the geographic region" based on "the survey information stored in the
memory" for assigned survey respondents (that is the first plurality and the
second plurality of assigned non-resident survey respondents).
In summary, claim 1 recites a computer implemented statistical
analysis process for deriving population characteristics from survey results
of a virtual population including of non-residents where the population is
statistically insufficient for direct statistical analysis of the particular
population. Hereinafter, we refer to this system as the "statistical analysis
process."
We find that claim 1 recites a "computer-implemented method"
(supra }-the statistical analysis process. A process is a statutory category of
invention (subject matter) (USPTO's Step 1). Utilizing our interpretation of
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claim 1 (supra), we analyze whether the claim is directed to an abstract idea
(USPTO's Step 2A).
Here, Appellant's claims generally, and independent claim 1 in
particular ( as summarized, supra), recite a process for deriving population
characteristics and determining a population profile. This is consistent with
how Appellant describes the claimed invention. See Spec. ,r,r 2, 10-18; see
also Spec. ,r 12 ("The exemplary method embodiment comprises ...
profiling a selected geographic subregion ... using a plurality of profiling
variables."). Performing statistical analysis, including deriving
characteristics of a population from survey information-including creating
a representative population by assigning resident and non-resident
respondents to the virtual population, weighting the assignments, and
weighting the profiling variables-recites processes and analysis that may be
accomplished using one's mind or utilizing pen and paper.
Appellant's contentions (supra) focus on the purported technological
improvements or advances provided by the recited statistical analysis
process, as well as the tangible acts ( observing data and outputting data,
performing a survey) performed in the process. Claim 1, however, recites no
substantive limitations on how the statistical analysis process derives the
various population characteristics and weightings (the algorithms by which
the various population characteristics and weightings are determined and
implemented). The limitations are entirely functional in nature-for
example, claim 1 recites "profiling ... members of the population ... using
... profiling variables ... to determine a population profile," "assigning ...
survey respondents ... to create a virtual representation of the population,"
"determining the population profile ... using a weighted combination of ...
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profiling variables," and "assigning ... survey respondents ... to the virtual
representation of the population ... wherein the assignment is weighted
based on a representation probability." See claim 1 (Appeal Br. 38-39
(Claim App'x)), our claim construction (supra), as well as Spec. ,r,r 2, 10-
18. Nowhere does Appellant point to specific claim limitations that
distinguish over a human process. Indeed, the limitations of claim 1
delineated above do not specify particular criteria (profiling variables),
specific processes, or particular algorithms for profiling the populations,
assigning respondents, or determining weighting of the variables and
assignments.
Appellant's claim 1 recites a judicial exception (US PTO' s Step 2A,
Prong 1; see 2019 Revised Guidance). Specifically, claim 1 recites a
computer implemented statistical analysis process for deriving population
characteristics discussed supra. The statistical analysis process consists of
mental processes performed in the human mind including observation,
evaluation, or judgment.
Performing statistical analysis is an abstract concept that is not patent
eligible. See SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161, 1165,
1167---68 (Fed. Cir. 2018) (claims reciting "[a] method for providing
statistical analysis" (id. at 1165) focused on "improved mathematical
analysis" (id. at 1168) and were found to be "directed to an abstract idea"
(id.)).
Eligibility Analysis-Revised Guidance Step 2A, Prong 2
Appellant's claim 1 also recites additional elements beyond the
abstract statistical analysis process (the judicial exception) (supra). These
elements include, as previously discussed (supra), the computer (for the
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"computer-implement[ation]"), the processing device, the memory, and the
output ("outputting, in a user-perceivable form, geographically distributed
characteristics"). We evaluate these additional elements to determine
whether the additional elements integrate the abstract buying power limit
constrained order entry interface process/system (the judicial exception) into
a practical application of the exception (USPTO's Step 2A, Prong 2; see
2019 Revised Guidance).
Appellant contends (supra) that "the claimed solution is necessarily
rooted" in computer technology-"statistical methods"-"in order to
overcome a [technical] problem specifically arising in the realm of'
"[]physical measurements[]" (Appeal Br. 13) similar to the claims in DDR
Holdings. Appellant also contends the claims meet "the machine-or-
transformation test" of Bilski. See Appeal Br. 14. Appellant further
contends the claims employ specific rules similar to McRO. Appeal Br. 18.
In other words, Appellant contends the claims recite meaningful limitations
that sufficiently limit the practical application of the alleged abstract idea.
Appellant's contentions correspond to the reasoning in MPEP
§§ 2106.05(a}-(c), where additional elements integrate the judicial exception
into a practical application. We disagree. Appellant's additional elements
( or the combination of the additional elements) do not apply or use the
statistical analysis process (the judicial exception) in a manner that imposes
a meaningful limit on the judicial exception, such that it is more than a
drafting effort designed to monopolize the exception. See Alice, 573 U.S. at
221-24 (citing Mayo, 566 U.S. at 78-85). Rather, Appellant's claims recite
computers (the processing device) and memory that are utilized as tools to
carry out the statistical analysis process (the abstract idea). Utilizing a
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computer as a tool to perform the abstract idea does not impose a meaningful
limit on the abstract idea. See MPEP § 2106.05([); see also Alice, 573 U.S.
at 223 ( finding "if [the] recitation of a computer amounts to a mere
instruction to implement an abstract idea on a computer that addition cannot
impart patent eligibility" ( quotations and internal citations omitted)).
With respect to Appellant's Bilski (MPEP §§ 2106.05(b) and (c))
argument, Appellant's claim 1 does not invoke a "particular machine," or
transform data (survey data) into a different state. As set out in MPEP
§ 2106.05(b), "invok[ing] computers ... merely as a tool ... will generally
not amount to significantly more than a judicial exception" ( citing Versata
Development Group v. SAP America, 793 F.3d 1306, 1335 (Fed. Cir. 2015)).
Further, with respect to MPEP § 2106.05(c), the analysis or manipulation of
electronic (survey) data is not a "transformation or reduction of an article
into a different state or thing constituting patent-eligible subject matter."
See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en bane), aff'd sub nom,
Bilski v. Kappas, 561 U.S. 593 (2010); see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("The mere
manipulation or reorganization of data ... does not satisfy the
transformation prong."). Applying this guidance, we conclude Appellant's
claims fail to satisfy the transformation prong of the Bilski machine-or-
transformation test.
Appellant's claims can be distinguished from patent-eligible claims
such as those in McRO, Enfish, Bascom Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and DDR Holdings that are
directed to "a specific means or method that improves the relevant
technology" (McRO, 837 F.3d at 1314), or "a specific improvement to the
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way computers operate" (Enfzsh, 822 F.3d at 1336), solving a technology-
based problem (BASCOM, 827 F.3d at 1349-52), or a method "rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]" (DDR Holdings, 773 F.3d at 1257).
Contrary to Appellant's arguments, claim 1 is not a technological
improvement or an improvement in a technology. Appellant's claim 1 does
not "improve the functioning of the computer itself' or "any other
technology or technical field." Alice, 573 U.S. at 225. Nor, does it provide
a technological solution to a technological problem. See DDR Holdings, 773
F.3d at 1257; MPEP § 2106.05(a). As previously discussed (supra), nothing
in claim 1, aside from the bare instruction to perform each step "using a
processing device," precludes a human from performing the statistical
analysis process. The fact that a computer or processing device may
increase efficiency by "eliminat[ing] the need to make further surveys"
(Appeal Br. 15) does not change the abstract idea analysis. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying
on a computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible."). Moreover, even if
Appellant's claimed process includes an improved algorithm for deriving
population characteristics, claim 1 does not specify any improvement in how
a computer processor performs the underlying statistical analysis necessary
to perform the algorithm. In other words, only the abstract ideas in claim 1
are potentially new ( although we make no determination as to novelty or
obviousness), not the way a computer processor operates.
To the extent Appellant contends outputting data "in a user-
perceivable form" ( claim 1) demonstrates significant non-abstract subject
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matter (see, e.g., Appeal Br. 13-14, 18-19), such activity is merely extra
solution activity. See MPEP § 2106.05(g).
In summary, "the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016); see also MPEP § 2106.05(±) (instructing Examiners
to consider "[ w ]hether the claim invokes computers or other machinery
merely as a tool to perform an existing process" in determining whether the
claim recites mere instructions to apply the exception), cited in 2019
Revised Guidance, 84 Fed. Reg. at 55, n.30. Thus, we conclude the claims
are directed to an abstract idea that is not integrated into a practical
application.
Step 2B Analysis-"Significantly More"
Having concluded Appellant's claims are directed to an abstract idea
under the 2019 Revised Guidance Step 2A analysis, we next address
whether the claims add significantly more to the alleged abstract idea. As
directed by our reviewing court, we search for an "'inventive concept'
sufficient to 'transform the nature of the claim into a patent-eligible
application."' McRO, 837 F.3dat 1312 (quoting Alice, 573 U.S. at217).
The implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (alteration in
original) ( quoting Alice, 573 U.S. at 225). The "inventive concept" "must be
significantly more than the abstract idea itself, and cannot simply be an
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Application 14/178,507
instruction to implement or apply the abstract idea on a computer." Bascom,
827 F .3d at 1349 ( citation omitted).
Here, the Examiner determined that Appellant's claims do not add
significantly more. See Final Act. 5-11; Ans. 5-13. Appellant, conversely,
discusses the operation of claim 1 at length, reiterates the limitations of
claim 1, and contends "the claimed combination, as a whole, amounts to
significantly more than any mere abstract idea" (Appeal Br. 20), but does
not point to any specific elements recited in claim 1 that add anything
significantly beyond the abstract idea. See Appeal Br. 13-21.
Appellant fails to persuade us of error in the Examiner's rejection
with respect to the second Alice step. We agree with the Examiner that
Appellant's claim 1 ( and the other pending claims) does not evince an
"inventive concept" that is significantly more than the abstract idea itself. In
particular, Appellant fails to explain how the additional elements (above)
add specific limitations beyond the judicial exception that are not well-
understood, routine, and conventional in the field.
As previously discussed, claim 1 ( and the other pending claims)
merely recites additional non-abstract elements ( above }--specifically the
processing device and the memory-to perform the statistical analysis
process (the abstract idea). Appellant's Specification describes the
processor as conventional (generic) computers performing traditional
computer functions. See, e.g., Spec. ,r,r 28 ("systems ... may be
programmed or configured ... to perform the in accordance with the
teachings of the present invention" where the "computer system" embodies,
for example, "a mainframe computer, a personal computer, a computer
workstation, or any other computer"), 33 (the "system ... include[s] one or
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Application 14/178,507
more processors" such that "these implementations may include use of a
single integrated circuit ... may include use of a plurality of integrated
circuits or other components connected, arranged or grouped together, such
as microprocessors, digital signal processors," "application specific
integrated circuits (' ASICs ')," and "associated memory").
Accordingly, Appellant's Specification itself describes the additional
elements as being well-understood, routine, and conventional. Such
conventional computer processes operating on conventional computer
hardware "do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under § 101 of independent claim 1 and dependent
claims 2-12, which were not separately argued with specificity.
As pointed out by the Examiner (see Ans. 2-3), Appellant simply
reiterates the contentions made with respect to claim 1 (supra) for
independent claims 13 and 24. See Appeal Br. 23-37. Appellant does not
address dependent claims 14--23 that depend from claim 13. Accordingly,
for the same reasons as claim 1 (supra), we sustain the Examiner's rejection
under § 101 of independent claims 13 and 24, and dependent claims 14--23.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
1-24 under 35 U.S.C. § 101.
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Application 14/178,507
DECISION
We affirm the Examiner's rejection of claims 1-24.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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