Ex Parte Anderson

Patent Trials and Appeals Board

Feb 15, 2019

13486691 - (D) (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/486,691 06/01/2012
50659 7590
BUTZEL LONG, P.C.
IP DEPARTMENT
41000 Woodward A venue
Stoneridge West
Bloomfield Hills, MI 48304
02/20/2019
FIRST NAMED INVENTOR
Patrick L. Anderson
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.
144077-0003 7584
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
patent@butzel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PATRICKL. ANDERSON
Appeal 2017-003110 1
Application 13/486,691 2
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
March 25, 2016) and Reply Brief ("Reply Br.," filed December 14, 2016),
and the Examiner's Answer ("Ans.," mailed October 14, 2016) and Final
Office Action ("Final Act.," mailed September 2, 2015). The record
includes a transcript of the January 31, 2019 hearing.
2 Appellant identifies the inventor, Patrick L. Anderson, as the real party in
interest. App. Br. 3.
Appeal 2017-003110
Application 13/486,691
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-19 and 21-25. An oral hearing was held on
January 31, 2019. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED INVENTION
Appellant's claimed invention "relates to the field of decision making
and particularly to methods and systems employing a sequential decision
making model" (Spec. ,r 2).
Claims 1, 8, and 9 are the independent claims on appeal. Claim 1,
reproduced below (with added paragraphing), is illustrative of the claimed
subject matter:
1. A computer-aided decision-making system,
compnsmg:
(a) a user input interface;
(b) a user output device; and
( c) a processor programmed to evaluate decision
making opportunities available to a subject, the programmed
processor
(A) facilitating input of information from a user
via the user input interface, including facilitating user
selection of (i) a type of problem to be solved, (ii) at least
one state available to the subject of the selected problem,
(iii) at least one action available to the subject of the
selected problem, (iv) a reward associated with the
selected problem, (v) a discount rate and a growth rate
available to the subject of the selected problem, and (vi) a
time index expressed in periods available to the subject of
the selected problem,
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(B) validating and checking user provided inputs
by determining whether at least one user provided input
has a value within a predetermined limit, and performing
a convergence check to determine whether the problem is
solvable, wherein the convergence check (a) evaluates
whether the reward function produces, for all
combinations of state and actions, a reward that is less than
an upper bound, which upper bound is a real number less
than infinity; and (b) evaluates whether the discount factor
is a real number strictly less than one,
(C) generating the following elements from the
information: (i) a set of states that describe possible
outcomes, (ii) a set of possible actions by a decision
maker, (iii) a transition probability function representative
of the likelihood of a particular state occurring at a future
time based on the current state and a particular action taken
by the user, (iv) a reward function representative of the
benefits and costs associated with each possible
combination of state and action, (v) a discount factor
determined from the growth rate and the discount rate and
( vi) a time index that establishes a sequential ordering of
events,
(D) formulating the elements into a functional
equation,
(E) solving the functional equation, and
(F) presenting the user with decision-making
advice via the user output device, wherein the advice
includes (a) a representation of a value function consisting
of a mapping from each state to a value, and (b) the
representation of a companion policy function consisting
of a mapping of each state to a value-maximizing action.
REJECTION
Claims 1-19 and 21-25 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
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ANALYSIS
Appellant argues the pending claims as a group (see, e.g., App.
Br. 10). We select independent claim 1 as representative. The remaining
claims stand or fall with claim 1. See 3 7 C.F .R. §41.3 7 ( c )( 1 )(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, 573 U.S.
208,216 (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., 573 U.S. at 217.
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. (quoting Mayo,
566 U.S. at 79, 78).
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
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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 § 101, the Examiner determined
that the claims are directed to a "method and system of decision making,"
which comprise functions or steps that "evaluate a decision making
opportunity available to a subject" - a process that the Examiner concludes
"merely employs mathematical relationships to manipulate existing
information to generate additional information" and is similar to other
concepts the courts have identified as abstract (Final Act. 2--4). The
Examiner notes, "[ t ]he claims require the additional limitations of a
computer with a processor and a tangible, non-transitory memory," which
"at each step of the process perform purely generic computer functions" (id.
at 4--5). And the Examiner determines, "[a]s such, there is no inventive
concept sufficient to transform the claimed subject matter into a patent-
eligible application" (id. at 5).
We are not persuaded that the Examiner erred in determining that
claim 1 is directed to an abstract idea. The Federal Circuit has explained
that "the 'directed to' inquiry applies a stage-one filter to claims, considered
in light of the [S]pecification, based on whether 'their character as a whole is
directed to excluded subject matter."' See Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (citing Internet Patents Corp.,
790 F.3d at 1346). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
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"abstract idea" for which computers are invoked merely as a tool. See id.
at 1335-36.
The Specification is titled "SYSTEM AND METHOD FOR
EVALUATING DECISION OPPORTUNITIES," and states that the
disclosure relates, in particular, to "methods and systems employing a
sequential decision making model" (Spec. ,r 2). The Background section of
the Specification describes that investors, business managers, public
officials, entrepreneurs, financiers, and individuals routinely make decisions
that require considering the effects of future events that cannot be predicted
with certainty (id. ,r 3). Spreadsheets are the standard tool used, across the
United States and much of the world, for analyzing investment opportunities
and other business situations (id. ,r 4). However, according to Specification,
discounted cash flow ("DCF") analyses done with spreadsheets fail when
used to evaluate a multi-period decision problem where asymmetric risk and
real options are present (id. ,r 5), i.e., standard DCF analyses "disregard vast
amounts of available information and fail to explicitly consider the
flexibility ( often called 'real options') available to managers and investors"
(id. ,r 6). "An array of ad-hoc adjustments is commonly used to compensate
for the weaknesses of the standard DCF model"; but, the Specification
states, "there is no commercially available alternative to the spreadsheet that
properly addresses these deficiencies, especially in the context of business,
personal and policy problems" (id. ,r 7). The claimed invention is ostensibly
intended to address this issue by providing a computer-aided decision-
making system and method for providing advice, recommendations, and/or
evaluations based on information from a database and/or user input (id.
,r,r 8-11).
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Understood in light of the Specification, claim 1 is, thus, directed to a
computer-aided decision-making system comprising, inter alia, a processor
programmed to perform a method comprising a series of steps, including
(1) receiving user input regarding a problem to be solved (step (c)(A));
error-checking and validating the user input, including checking for
convergence (step ( c )(B)); generating problem elements from the user input
(step (c)(C)); formulating the problem elements into a mathematical
functional equation (step (c)(D)); solving the functional equation
(step (c)(E)); and reporting the results, i.e., the decision-making advice
( step ( c )(F) ). Simply put, claim 1 is directed to assisting a user in making a
decision by collecting information from the user regarding the type of
problem or decision to be made, formulating and solving a mathematical
equation, and presenting the results, i.e., the decision making advice (see,
e.g., Spec. ,r,r 9, 37--43). In other words, claim 1 is directed to a method of
organizing human activities, e.g., managing personal behavior or
relationships or interactions between people, and/or mathematical concepts
and, therefore, to an abstract idea.
The Federal Circuit has held consistently that collecting and analyzing
information, without more, is an abstract idea, and that merely presenting the
results of the abstract process of collecting and analyzing information is
abstract as an ancillary part of the collection and analysis. See, e.g., Elec.
Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
( 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); see also e.g., SAP Am., Inc. v.
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InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) ("As many cases
make clear, even if a process of collecting and analyzing information is
'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." (quoting Elec.
Power Grp., 830 F.3d at 1353, 1355 (citing cases)); Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)
(identifying the abstract idea of collecting, displaying, and manipulating
data). Thus, for example, in Clarilogic, Inc. v. FormFree Holdings Corp.,
681 F. App'x 950, 954 (Fed. Cir. 2017), the Federal Circuit concluded that
claims reciting "collecting financial data, transforming the data into a
desired format, validating the data by 'applying an algorithm engine,'
analyzing certain exceptions, and generating a report" were directed to an
abstract idea, explaining that "a method for collection, analysis, and
generation of information reports, where the claims are not limited to how
the collected information is analyzed or reformed, is the height of
abstraction." Id. And in Electric Power, where the method claims at issue
were directed to performing real-time performance monitoring of an electric
power grid by collecting data from multiple data sources, analyzing the data,
and displaying the results, Elec. Power Grp., 830 F.3d at 1351-52, the court
held that the claims were directed to an abstract idea because "[t]he advance
they purport to make is a process of gathering and analyzing information of
a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions." Id.
at 1354. Similarly here, we find that claim 1 involves nothing more than
collecting information (step (c)(A)); analyzing the information (steps (c)(B)
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through ( c )(E) ); and displaying the results of the collection and analysis
(step (c)(F))- activities squarely within the realm of abstract ideas.
Appellant does not assert that the operations recited in claim 1 ( or any
other claim, for that matter) involve any assertedly inventive programming,
e.g., for performing a convergence check, for generating a transition
probability function and/or a reward function, or for formulating the user
input information into a mathematical functional equation. Nor do we find
any such disclosure in the Specification.
Appellant also does not direct us to any indication in the Specification
that the operations recited in claim 1 require any specialized computer
hardware or other inventive computer components, i.e., a particular machine.
In fact, the Specification explicitly discloses that the "systems and methods
disclosed herein may be implemented using any of a variety of computer
devices," including personal computers (Spec. ,r 33; see also id. ,r,r 34, 35).
And we find nothing of record, short of attorney argument, that attributes
any improvement in the functioning of these devices to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a "practical application," as that phrase is used in the
USPTO's "2019 Revised Patent Subject Matter Eligibility Guidance,"
84 Fed. Reg. 50, 55 (January 7, 2019). 3
Appellant asserts that the Supreme Court has never found a process
claim ineligible under § 101 when the claimed process "achieves a new and
useful result that is naturally and necessarily linked to the limitations"
3 We note for the record that, in addition to Appellant's briefs, we also
considered the appended Declaration of Patrick L Anderson dated March 19,
2014.
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recited in the claim, and that both the Supreme Court and the Federal Circuit
have, in fact, suggested that "such claims necessarily meet the requirement
for eligibility" under§ 101 (App. Br. 10). Thus, according to Appellant, any
claim to a new and useful process, machine, or manufacture is patent-
eligible when a new and useful result is necessarily achieved as a
consequence of the arrangement of the structure or steps recited in the claim
(id. at 14--15).
Appellant takes the position that the claimed invention, as recited in
claim 1, for example, "achieves a new and useful result" (i.e., solving real-
world sequential decision problems that include real options and asymmetric
risks), and is patent-eligible because this new and useful result is a necessary
consequence of the recited steps (i.e., composing a sequential decision
problem based on user input, error-checking the user input, validating that
the problem is solvable, formulating the problem into a functional equation,
solving the functional equation, and reporting the results) (id. at 15-16).
Yet, however valuable or useful the results obtained using the claimed
method may be, the value or usefulness of the claimed method 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.").
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Appellant further argues that the present claims are analogous to the
claims in Example 3 of the USPTO's "Examples: Abstract ldeas"4 (App.
Br. 17). We disagree.
The claims in Example 3 are hypothetical claims modeled after the
technology in Research Corporation Technologies Inc. v. ]vficrosqfi Corp.,
627 F.3d 859 (Fed. Cir. 2010), not actual claims at issue in that case. In
Research Cmp., the Federal Circuit detennined that the claims were patent
eligible because the claimed invention presented "functional and palpable
applications in the field of computer technology" and addressed "a need in
the art for a method of and apparatus for the halftone rendering of gray scale
images in which a digital data processor is utilized in a simple and precise
manner to accomplish the halftone rendering." Id. at 868-69. Addressing
hypothetical claim l in Example 3, the Office posited that claim 1,
when taken as a whole, does not simply describe the generation
of a blue noise mask via a mathematical operation and receiving
and storing data, but combines the steps of generating a blue
noise mask with the steps for comparing the image to the blue
noise mask and converting the resulting binary image array to a
halftoned irnage.
'·"
Examples: Abstract Ideas 9. The Office deterrnined that this goes "beyond
the mere concept of simply retrieving and combining data using a
computert and that the claimed process further improves the functioning of
the computer itself in that it "allows the computer to use less memory,
results in faster computation times without sacrificing the quality of
resulting image as occurred in prior processes, and produces an improved
digital image." Id. The Office, thus, concluded that the hypothetical claim
4 Available at https://www.uspto.gov/sites/default/files/documents/
abstract_idea_examples.pdf.
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is an "an innovation in computer technology, namely digital image
processing ... [and] reflects both an improvement in the functioning of the
computer and an improvement in another technology." id.
Appellant maintains here that the claimed subject matter comprises
"an inventive combination of steps that improve[s] the efficiency of the
computer in the same manner as hypothetical claim l" (App. Br. 17). In this
regard, Appellant posits that "[p ]rior to the claimed method, certain
sequential decision problems were solvable, but the process was long,
unce1iain, and inefficient"; that '"software (and theory) available prior to
discoverv of the invention was inetlicient and difficult to use at best or it
N ;
simply did not work"; and that "[t]he claimed method provides the first and
only process for reliably solving sequential decision problems" (id.).
Appellant, thus, explains that "[c]onventional, well understood techniques
for solving sequential decision problems ( e.g., spreadsheet-discounted cash
flow, decision tree, and J\1onte Carlo techniques) did not formulate a
functional equation, and therefore convergence checking was not applicable"
(id. at 15).
The difficulty with that argument is that it, at best, establishes that the
claimed invention provides an improved mathematical model or
formula/algorithm, i.e., an improved abstract idea, for use in solving
sequential decision problems. \Ne fail to see how, and Appellant does not
adequately explain how, the claimed invention improves the "efficiency of
the computer" in a manner comparable to that of hypothetical claim L
Responding to the Examiner's Answer, Appellant asserts in the Reply
Brief that the Federal Circuit's reasoning and holding in Enfzsh "strongly
suggest[ ] a reversal of the claims at issue," and that McRO and Amdocs
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(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) "also
support a determination that the claims at issue are drawn to eligible subject
matter" under 35 U.S.C. § 101 (Reply Br. 1).
Focusing first on Enjzsh, Appellant describes that the present claims
are directed to a "decision making system for composing a sequential
decision problem based on user input, error-checking the user input,
validating that the problem is solvable, formulating the problem into a
functional equation, solving the functional equation, and reporting the
results" (id. at 2). Appellant asserts that conventional computer
implemented decision making systems only solve a preconceived problem
for a set of user selected constraints whereas the claimed invention "allows
the user to not only select constraints, but also compose the problem and test
for convergence before solving the problem" (id.). Appellant maintains that,
by allowing the user to evaluate a broader range of opportunities, the
claimed invention provides greater flexibility, as compared to conventional
systems (id.), and that, by "allowing the user to refine the problem before
proceeding [i.e., where convergence testing indicates that the problem, as
defined, is not likely to be solved using available solution methods]," the
claimed invention also makes more efficient use of computer hardware -
advantages that Appellant argues are the types of advantages that, according
to E'nfish, "provide [a] basis for finding that the claims are not directed to
abstract concepts" (id. at 3 ).
In Er?/ish, the Federal Circuit held that claims reciting a self-
referential table for a computer database were patent-eligible under step one
of the Afayo/Alice framework, because the claims were directed to an
improvement in the computer's functionality. En/ish, 822 F.3d at 1336. The
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specification described the benefits of using a self-referential table - faster
searching and more effective data storage - and highlighted the differences
between the claimed self-referential table and a conventional database
structure. Id. at 1333, 1337. The Federal Circuit, thus, rejected the district
court's characterization of the claims as directed to abstract idea of "storing,
organizing, and retrieving memory in a logical table," id. at 1337,
emphasizing that the key question is whether the focus of the claims is on
the specific asse1ied improvement in computer capabilities or, instead, on a
process that qualifies as an abstract idea for which computers are invoked
merely as a tool. Id. at 1335-36.
Appellant ostensibly maintains that providing greater flexibility (by
allowing a user to compose different types of problems) and more efficient
use of computer hardware (by using convergence testing to avoid wasting
computer resources and time on insoluble problems) constitute
improvements in computer functionality analogous to Enfish' s self-
referential table (Reply Br. 6). Yet, as the court expressly recognized in
Enfzsh, there is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. The alleged advantages that
Appellant touts do not concern an improvement to computer capabilities but
instead relate to an alleged improvement in a method of providing decision
making advice - a process in which a computer is used as a tool in its
ordinary capacity.
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\Ve also are not persuaded by Appellant's further argument that the
Office's November 2, 2016 Memorandum5 supports the patent-eligibility of
the pending claims (Reply Br. 6-7). Appellant ostensibly maintains that the
present claims are patent-eligible because, like the claims in McRO, the
present claims enable computing systems to perform functions not
previously performable by a computer (id. at 6 ( describing that the goal of
the claimed technology is to improve computer-related technology by
allowing computer performance of a function not previously performable by
a computer); see also id. at 7 ("An 'improvement in computer-related
technology' is not limited to improvements in the operation of a computer or
a computer network per se, but may also be claimed as a set of 'rules'
(basically mathematical relationships) that improve computer-related
technology by allowing computer performance of a function not previously
performable by a computer.")). But, we are not persuaded that the present
claims include "rules" that enable the computer to provide decision-making
advice in the same way the specific rules enabled the computer in McRO to
generate the computer animated characters. We also find no evidence of
record here 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.
5 The memorandum, entitled, "Recent Subject Matter Eligibility Decisions"
(available at https://www.uspto.gov/sites/default/files/documents/McRo-
Bascom-Memo.pdf), provides a discussion of the Federal Circuit's decisions
in McRO and BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
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The '576 patent, at issue in McRO, 6 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. McRO, 837 F.3d. at 1305. Animators knew what phoneme a
character pronounced at a given time from a time-aligned phonetic
transcription (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.
In McRO, 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 1307. The rules in McRO, thus,
allowed the computer to produce accurate and realistic synchronization in
animated characters that could only previously be produced by humans.
As the court observed in SAP America, 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
6 U.S. Patent No. 6,307,576.
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the physical display operated (to produce better quality images)." 898 F.3d
at 1167. Here, like the claims at issue in SAP America, the claimed
improvement is a "mathematical technique with no improved display
mechanism." Id.
Further urging that the November 2, 2016 Memorandum supports the
patent-eligibility of the pending claims, Appellant asserts that unlike prior
systems where it was possible to achieve results for some types of decision
problems, it is possible, with the claimed system, to get results for a whole
set of decision problems (Reply Br. 6). Appellant also assert that the
claimed system includes a "specific set of steps" that, "if done as claimed,
produce a clear improvement" (id. at 7).
To the extent Appellant is arguing that the claimed invention is
patent-eligible because claim 1, for exarnp1e, recites a "specific" rnethod, we
note that a specific abstract idea is still an abstract idea. Thus, for example,
"cases have not distinguished among different laws of nature according to
whether or not the principles they embody are sufficiently narrow." Mayo,
566 U.S. at 88-89 ( citing Parker v. Flook, 437 U.S. 584 (1978) (holding a
narrow mathematical formula unpatentable)). See also, e.g., Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016)
("A narrow claim directed to an abstract idea, however, is not necessarily
patent-eligible"); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287
(Fed. Cir. 2018) ("[A] claim is not patent eligible merely because it applies
an abstract idea in a narrow way."). Also, as the Court remarked in Flook,
"[i]f a claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific purpose, the
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claimed method is nonstatutory." Flook, 437 U.S. at 595 (internal
quotations omitted).
Further focusing on step two of the Mayo/Alice framework, Appellant
asserts that the claimed invention provides a real, new, and useful result by
analyzing user inputted information associated with a sequential
decision problem, error checking the information and performing
a convergence check to determine if the problem is solvable, and
then, if the problem is solvable, formulating the information
associated with the sequential decision problem into a functional
equation that can be solved to provide real, new and useful
recommendations[,]
and that none of these steps is well-understood, routine, or conventional
(App. Br. 17). Therefore, according to Appellant, the claims include an
inventive concept, i.e., a combination of elements that is sufficient to ensure
that the claims account to significantly more than a judicial exception (id.).
The difficulty with that argument is that the features that Appellant
identifies as the inventive concept are part of the abstract idea itself; as such,
these features cannot constitute the "inventive concept." See Berkheimer v.
HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) ("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."); see also BSG Tech., 899 F.3d at 1290 ("It
has been clear since Alice that a claimed invention's use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention 'significantly more' than that ineligible concept.").
The Examiner determined, and we agree, that the only additional
claim elements other than the abstract idea are a computer with a processor
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Application 13/486,691
and a tangible, non-transitory memory, i.e., generic computer components,
which at each step of the claimed method perform purely generic computer
functions (Final Act. 4--5). Appellant cannot reasonably contend that there
is a genuine issue of material fact regarding patent-eligibility, where, as
described above, there is nothing in the Specification to indicate that the
operations recited in claim 1 require any specialized hardware or inventive
computer components or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions, i.e., storing, retrieving, processing, and displaying information.
Indeed, the Federal Circuit, in accordance with Alice, 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." Berkheimer,
890 F.3d at 1373 (Moore, J., concurring) (citations omitted); see also BSG
Tech., 899 F.3d at 1291 ("BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.").
We are not persuaded on the present record that the Examiner erred in
rejecting claims 1-19 and 21-25 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection.
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Appeal 2017-003110
Application 13/486,691
DECISION
The Examiner's rejection of claims 1-19 and 21-25under 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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