Ex Parte Brooker et al

Patent Trials and Appeals Board

Apr 22, 2019

12718556 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/718,556 03/05/2010
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 900
DALLAS, TX 75201-2980
04/24/2019
FIRST NAMED INVENTOR
David E. Brooker
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.
002328.0784 5106
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVIDE. BROOKER, CARLETON D. BURTT,
CHRISTOPHER D. SCHOTT, and DANIEL STRINGHAM
Appeal2018-000634 1
Application 12/718,5562
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
June 26, 2017) and Reply Brief ("Reply Br.," filed October 26, 2017), and
the Examiner's Answer ("Ans.," mailed August 29, 2017) and Final Office
Action ("Final Act.," mailed October 24, 2016).
2 Appellants identify "The Prudential Insurance Company of America" as
the real party in interest. App. Br. 2.
Appeal2018-000634
Application 12/718,556
CLAIMED INVENTION
Appellants' claimed invention "relates in general to the field of
financial systems, and more particularly to a system and method for
managing a group insurance policy" (Spec. 1, 11. 7-8).
Claims 1, 15, and 21 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for managing a group life insurance
policy with a plurality of certificates funded by a sponsor, each
certificate providing a death benefit to at least one beneficiary
designated by a respective person insured under the certificate,
the method comprising:
[ (a)] determining, by a computing system, an initial
payment to be paid by the sponsor as a lump sum in exchange for
the plurality of certificates;
[ (b)] allocating, by the computing system, at least a
respective portion of the initial payment to each certificate of the
plurality of certificates;
[ ( c)] monitoring, by the computing system, for a non-
death-related event that affects one of the plurality of certificates;
and
[ ( d)] in response to detection of the non-death-related
event, exchanging, by the computing system, the one of the
plurality of certificates for a new certificate providing a death
benefit to at least one beneficiary designated by a person insured
under the new certificate, wherein the exchanging comprises
reallocating to the new certificate at least a portion of the
respective portion of the initial payment allocated to the one of
the plurality of certificates.
REJECTION
Claims 1-25 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
2
Appeal2018-000634
Application 12/718,556
PRINCIPLES OF LAW
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
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
3
Appeal2018-000634
Application 12/718,556
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
USPTO SECTION 101 GUIDANCE
The U.S. Patent and Trademark Office (the "USPTO") published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101; that guidance
"extracts and synthesizes key concepts identified by the courts as abstract
ideas to explain that the abstract idea exception includes" the following three
groupings: (1) mathematical concepts; (2) certain methods of organizing
human activity, e.g., fundamental economic principles or practices,
commercial or legal interactions; and (3) mental processes. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52
(Jan. 7, 2019) (the "2019 Revised Guidance"). 3
Under the 2019 Revised Guidance, in determining whether a claim is
patent-eligible, we first look to whether the claim recites a judicial
exception, including one of the enumerated groupings of abstract ideas
("Step 2A, Prong One"). Id. at 54. If so, we next consider whether the
claim includes additional elements, beyond the judicial exception, "that
integrate the uudicial] exception into a practical application," i.e., apply, rely
on, or use the judicial exception in a manner that imposes a meaningful limit
on the judicial exception, such that the clam is more than a drafting effort
designed to monopolize the judicial exception. ("Step 2A, Prong Two"). Id.
at 54-55.
3 The Revised Guidance, by its terms, applies to all applications, and to all
patents resulting from applications, filed before, on, or after January 7, 2019.
84 Fed. Reg. 50.
4
Appeal2018-000634
Application 12/718,556
Only if the 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 "[a]dds a specific limitation or combination of
limitations" that is not "well-understood, routine, conventional activity in the
field" or simply "appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception" ("Step 2B"). Id. at 56.
With the legal principles outlined above, and the 2019 Revised
Guidance in mind, we tum to the Examiner's§ 101 rejection.
ANALYSIS
Appellants argue the pending claims as a group (App. Br. 6-9). We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 37 C.F.R. §4I.37(c)(l)(iv).
We are not persuaded, as an initial matter, by Appellants' argument
that the Examiner has failed to establish a prima facie case of patent-
eligibility (App. Br. 6-8). The Federal Circuit has observed repeatedly that
"the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d.
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for the rejection, "together with such information and references
as may be useful in judging of the propriety of continuing the prosecution of
[the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alteration in original). Thus, what is required of the Office is that it sets
5
Appeal2018-000634
Application 12/718,556
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. Id.; see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) ("Section 132 is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.").
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner analyzed the claims in accordance with the Mayol Alice two-step
framework, and consistently with the USPTO guidance in effect at the time
the Final Office Action was mailed. The Examiner, thus, notified
Appellants that the claims are directed to "group insurance coverage
management," which the Examiner concluded is similar to other concepts
that the courts have held abstract. (Final Act. 2-3; see also id. at 16); and
that the claims do not include additional elements or a combination of
elements sufficient to amount to significantly more than the abstract idea
itself (id. at 4--15). The Examiner, in our view, set forth the statutory basis
of the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of 35 U.S.C. § 132. And we find that, in doing so,
the Examiner established a prima facie case of patent-ineligibility.
See July 2015 Update, p. 6 (setting forth a general notice requirement to
establish a prima facie rejection under 35 U.S.C. § 101); May 4, 2016
Memorandum to the Patent Examining Corps on "Formulating a Subject
Matter Eligibility Rejection and Evaluating the Applicant's Response to a
Subject Matter Eligibility Rejection," p. 2 (available at
https://www.uspto.gov/sites/default/ files/ documents/ ieg-may-2016-
memo.pdf) ("[T]he rejection ... must provide an explanation ... which [is]
sufficiently clear and specific to provide applicant sufficient notice of the
6
Appeal2018-000634
Application 12/718,556
reasons for ineligibility and enable the applicant to effectively respond.")
( emphasis added).
Step One of the Mayo/Alice Framework (USPTO Guidance Step 2A)
Focusing now more particularly on step one of the Mayo/Alice
framework, we are not persuaded that the Examiner overgeneralized the
claims as directed to "group insurance coverage management" (App.
Br. 6-7), 4 or that the Examiner otherwise 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."' Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting 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
"abstract idea" for which computers are invoked merely as a tool. See id.
at 1335-36. Here, the Specification, including the claim language, make
4 The Examiner's characterization of claim 1 is, in our view, fully consistent
with the Specification, including the claim language. That the claim
includes more words than the phrase the Examiner used to articulate the
abstract idea, and that the Examiner, thus, articulates the abstract idea at a
higher level of abstraction than would Appellants is an insufficient basis to
persuasively argue that the claim language has been mischaracterized. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.").
7
Appeal2018-000634
Application 12/718,556
clear that the claims focus on an abstract idea, and not on any improvement
to computer technology and/or functionality.
The Specification is entitled "SYSTEM AND METHOD FOR
MANAGING A GROUP INSURANCE POLICY," and states that the
disclosure relates, in particular, "to a system and method for managing a
group insurance policy" (Spec. 1 ). The Specification describes, in the
Background section, that life insurance policies typically provide a monetary
benefit to a designated beneficiary, which is payable to the beneficiary
( either as a lump sum or an annuity) upon the death of the insured person
(id. at 2). The Specification describes group life policies as insurance
policies typically offered to a group of people who share a qualifying
characteristic or membership, e.g., employees of an organization (id.).
The Specification describes that, "[a]ccording to one embodiment, a
method for providing a group life insurance policy with a plurality of
certificates funded by a sponsor is provided" (id. at 3). Each certificate
provides a death benefit to at least one beneficiary designated by the person
insured under the certificate, and is allocated a portion of the initial payment
made by the sponsor in exchange for the certificates (id.). The method
monitors for a non-death related event that terminates the death benefit
provided by a certificate, e.g., the insured employee reaches retirement age
or leaves the employer sponsor's employ; if such an event is detected, the
affected certificate is exchanged for a new certificate, which provides a
death benefit to at least one beneficiary designated by the person insured
under the new certificate, e.g., a newly hired employee, and a portion of the
initial payment previously allocated to the affected certificate is reallocated
to the new certificate (id.)
8
Appeal2018-000634
Application 12/718,556
Consistent with this disclosure, claim 1 recites a method for managing
a group life insurance policy with a plurality of certificates comprising:
(1) determining a lump sum initial payment for the life insurance policy, i.e.,
"determining, by a computing system, an initial payment to be paid by the
sponsor as a lump sum in exchange for the plurality of certificates"
(step (a)); (2) allocating a portion of the initial payment to each certificate,
i.e., "allocating, by the computing system, at least a respective portion of the
initial payment to each certificate of the plurality of certificates" (step (b ));
(3) monitoring for a non-death-related event that affects one of the
certificates, i.e., "monitoring, by the computing system, for a non-death-
related event that affects one of the plurality of certificates" ( step ( c) ); and
( 4) exchanging the affected certificate for a new certificate and reallocating
the portion of the initial payment to the new certificate, i.e.,
in response to detection of the non-death-related event,
exchanging, by the computing system, the one of the plurality of
certificates for a new certificate providing a death benefit to at
least one beneficiary designated by a person insured under the
new certificate, wherein the exchanging comprises reallocating
to the new certificate at least a portion of the respective portion
of the initial payment allocated to the one of the plurality of
certificates
(step (d)). These limitations, when given their broadest reasonable
interpretation, recite a method for administering a group life insurance
policy, i.e., a fundamental economic practice, which is a method of
organizing human activity, and, therefore, an abstract idea. See 2019
Revised Guidance, 84 Fed. Reg. at 52.
The courts have held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that managing an insurance policy is a
fundamental economic practice, i.e., an abstract idea. See, e.g., Bancorp
9
Appeal2018-000634
Application 12/718,556
Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1280
(Fed. Cir. 2012) (concluding that "managing a stable value protected life
insurance policy by performing calculations and manipulating the results" is
an abstract idea); Accenture Global Servs., GmbH v. Guidewire Software,
Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (finding ineligible claims
directed to generating rule-based tasks for processing an insurance claim).
And an integral part of managing an insurance policy is processing data
related to the policy and determining a premium amount to be paid by the
policy holder or, in this case, the policy sponsor.
It also is significant here, as the Specification describes, that
"[i]nsurance, in law and economics, is a form of risk management primarily
used to hedge against the risk of a contingent loss" (Spec. 2). And the
Supreme Court has held that claims directed to "the basic concept of
hedging, or protecting against risk" recite "a fundamental economic
practice," i.e., an abstract idea. Bilski v. Kappas, 561 U.S. 593, 611 (2010)
( citations omitted).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites additional elements
that integrate the judicial exception into a practical application. Here, the
only additional element recited in claim 1, beyond the abstract idea, is the
claimed "computing system" that performs the method steps. And this
element is described in the Specification at a high level of generality, i.e., as
an assembly of generic computer components (see, e.g., Spec. 14--17).
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
10
Appeal2018-000634
Application 12/718,556
i.e., a particular machine, invoke any assertedly inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See 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.").
Citing McRO, Appellants argue that the claims "effect an
improvement in managing a group life insurance policy" (App. Br. 8).
Appellants, thus, assert that the "claims perform particular, automatic
actions ( e.g., determining and allocating payments to certificates) on a
particular type of group insurance" (id.). And Appellants argue that
" [ a ]utomatic performance of these tasks reduces the computer resources
(CPU resources, memory resources, network bandwidth, etc.) used to
transfer the certificates from one individual to another" (id.; see also Reply
Br. 3).
We find nothing in the Specification, nor do Appellants direct us to
anything in the Specification, that attributes any improvement in computer
resource utilization to the claimed invention. Instead, it clearly appears,
from our review of the Specification, that automatically reallocating
payments among multiple certificates, at best, increases the likelihood that
investments associated with the group life policy will enjoy tax-preferred
investment growth (Spec. 3). This may well provide certain business
advantages, but it is not an improvement in computer technology and/or
functionality.
Appellants' argument that the claims "recite a physical transformation
of data" is similarly unpersuasive (Reply 2; see also id. at 4). Appellants
11
Appeal2018-000634
Application 12/718,556
note that claim 1 involves a certificate of a group life insurance policy being
replaced by a new certificate in response to detection of a non-death related
event (Reply Br. 2). And Appellants argue that the group life insurance
policy is "physically transformed by its replacement of one certificate for
another, and by its reallocation of at least a portion of the respective portion
of the initial payment to the first certificate to the new certificate" (id.).
We do not agree with Appellants that the replacement of one
certificate for another involves a physical transformation, as contemplated in
Bilski v Kappas, 561 U.S. 593 (2010). Instead, we agree with the Examiner
that this replacement, at best, involves the manipulation of data (see Ans. 5),
which the Federal Circuit has held does not satisfy the transformation prong
of the Bilski machine-or-transformation test. See Cy her Source Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (holding that
"[t]he mere manipulation or reorganization of data ... does not satisfy the
transformation prong" of the machine-or-transformation test).
Appellants further argue that the claims are directed to a concrete and
tangible system that includes an inventive concept (App. Br. 9). 5
Appellants, thus, maintain that the claimed system and method are
associated with a number of advantages over known methods of managing
group life insurance policies (id. (citing Spec. 3, 11. 14--22 and 13, 1. 1- 14,
1. 28)), and that the claims, accordingly, "recite an inventive concept of
managing a group life insurance policy which includes particular steps of
5 We acknowledge that these considerations may be properly evaluated
under step two of the Mayol Alice framework (Step 2B of the 2019 Revised
Guidance). Solely for purposes of maintaining consistent treatment within
the Office, we evaluate them here under step one of the Mayo/Alice
framework (Step 2A of the 2019 Revised Guidance).
12
Appeal2018-000634
Application 12/718,556
determining and allocating payments to certificates that confer death
benefits" (id.). Appellants' argument is not persuasive at least because the
relevant inquiry is not whether there is a business challenge resolved by the
instant invention, but whether the challenge is one rooted in technology, or
one where the proposed solution is merely using computers as a tool. See
Enfish, 822 F.3d at 1335-36.
The Specification discloses that embodiments of the claimed
invention provide certain advantages, including, for example, a reduction in
administrative costs, and that the automatic and/or semi-automatic
reallocation of portions of a financial account can be configured to increase
the likelihood that investments associated with the group insurance policy
have tax-preferred investment growth (Spec. 3, 11. 14--22; see also id. at 14,
11. 20-25). The Specification also describes that an advantage may be
attained by funding the group policy in multiple payments that cover the
expenses, fees, taxes, premiums, etc. as they arise or at periodic intervals (id.
at 13, 1. 29-14, 1. 1), and that the growth of the financial account may be
maximized by minimizing the deductions made to its principal balance over
time (id. at 14, 11. 13-15). Yet, putting aside whether Appellants' argument
is commensurate with the scope of claim 1, these advantages merely
constitute an improvement in the fundamental economic practice of "group
insurance coverage management." And an improved abstract idea, e.g., an
improvement on the abstract idea of managing a group life policy, is still an
abstract idea. Cf Mayo, 566 U.S. at 90 (holding that a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible ).
13
Appeal2018-000634
Application 12/718,556
In sum, we are not persuaded by Appellants' arguments that claim 1
includes additional elements or a combination of elements that improves
computer technology and/or functionality, effects a transformation or
reduction of a particular article to a different state or thing, or otherwise
integrates the abstract idea into a "practical application," as that phrase is
used in the Revised Guidance. 6 We conclude that claim 1 recites a
fundamental economic practice, i.e., an abstract idea, and that the additional
element recited in the claim is no more than a generic computer used as a
tool to perform the abstract idea of administering a group life insurance
policy. As such, it does not integrate the recited abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223-24 ("[W]holly generic
computer implementation is not generally the sort of' additional feature[ e ]'
that provides any 'practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself."' (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea. 7
6 The Revised Guidance references MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") §§ 2106.05(a}-(c) and (e}-(h) in describing the
considerations that are indicative that an additional element or combination
of elements integrates the judicial exception, e.g., the abstract idea, into a
practical application. Id. at 5 5. If the recited judicial exception is integrated
into a practical application, as determined under one or more of these MPEP
sections, the claim is not "directed to" the judicial exception.
7 Because we conclude that claim 1 reasonably may be characterized as
directed to a fundamental economic practice, we need not determine whether
claim 1 recites a process that can be performed in the human mind or by a
human using pen and paper, and, therefore, also characterized reasonably as
directed to a mental process, which is considered an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52.
14
Appeal2018-000634
Application 12/718,556
Step Two of the Mayo/Alice Framework (USPTO Guidance, Step 2B)
Having determined under Step 2A that claim 1 is directed to an
abstract idea, we next consider under Step 2B, the second step of the
Mayo/Alice framework, whether claim 1 adds specific limitations beyond the
judicial exception that are not "well-understood, routine, conventional" in
the field, or simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
As described above, the only claim element beyond the abstract idea
is the claimed "computing system" that performs the method steps.
Appellants cannot reasonably maintain, nor do they, that there is a genuine
issue of material fact regarding whether operation of this component is well-
understood, routine, or conventional, where, as here, 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, e.g., receiving, processing, and
transmitting 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 v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir.
2018) (Moore, J., concurring) (citations omitted); see also BSG Tech. LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) ("BSG Tech does
not argue that other, non-abstract features of the claimed inventions, alone or
15
Appeal2018-000634
Application 12/718,556
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 independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of claim 1, and claims 2-25, which fall with
claim 1.
DECISION
The Examiner's rejection of claims 1-25 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
16