Ex Parte Carvajal et al

Patent Trials and Appeals Board

Jul 8, 2019

14560083 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/560,083 12/04/2014
26674 7590 07/10/2019
Driggs, Hogg, Daugherty & Del Zoppo Co., LP.A.
38500 CHARDON ROAD
DEPT. ADP
WILLOUGHBY HILLS, OH 44094
Isabel Espina Carvajal
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.
ES2014018_l_ADP107667 5559
EXAMINER
SECK, ABABACAR
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
usptocommunications@driggslaw.com
carole@driggslaw.com
mwheeler@driggslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISABEL ESPINA CARVAJAL, ROBERTO A. MASIERO,
JIGESH SAHEBA, and UMAKANT SARASWAT
Appeal 2018-008619
Application 14/560,083
Technology Center 2100
Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and MATTHEW J.
McNEILL, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-5, 7-17, 19, and 20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention uses data input from an individual in an
organization including identification data and the individual's position
within the organization to update the organization's database and to
determine further database fields that may also need to be updated. Based on
the data input, the invention prompts the individual for additional data that is
1 Appellants identify the real party in interest as ADP, LLC. App. Br. 1.
Appeal 2018-008619
Application 14/560,083
used to provide additional updates to the organization's database. See
generally Abstract; Spec. 9-11. Claim 1 is illustrative:2
1. A computer-implemented method for event-driven
behavior prediction, the method comprising executing on a
processor the steps of:
in response to a first data input that comprises an
effective date of the input and identification data that is unique
to an individual and a role of the individual within an
organization, mapping the first data input to first key
descriptive canonical name data of an API envelope schema of
a first event of a plurality of pre-defined events as a function of
the identification data, the role and the effective date;
in response to the mapping to the first event, predicting,
as a function of the identification data, the role, the effective
date and second key meta code within the API envelope schema
of the first event that corresponds to an object of the first key
descriptive canonical name data, that a second event of the pre-
defined events that is linked to the first event requires an
additional, second data input for the individual that is different
from the first data input;
triggering an automated process in response to the
predicting that the second event requires the additional, second
data input;
the automated process prompting a user to enter the
second data input;
determining whether an entry of response data that is
received in response to prompting the user to enter the second
data input satisfies a satisfaction threshold specified by the
automated process for the response data;
2 Appellants present a unified argument for independent claims 1, 11, and
16. See App. Br. 6; Reply Br. 2. We, therefore, group these claims
accordingly. Accord Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,210
(2014) (" [T]he system claims are no different in substance from the method
claims."); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374
(Fed. Cir. 2011) ( noting that the underlying invention for both the method
and computer-readable medium claims was a method for detecting credit
card fraud-not a manufacture for storing computer-readable information).
2
Appeal 2018-008619
Application 14/560,083
in response to determining that the response data satisfies
the satisfaction threshold, closing the linked second event; and
in response to determining that the response data does not
satisfy the satisfaction threshold, iteratively repeating until a
response data input is received that satisfies the satisfaction
threshold steps of predicting that the second event requires an
additional second data input, triggering the automated process
in response to the predicting that the second event requires the
additional second data input and prompting the user to enter the
second data input.
THE REJECTION
The Examiner rejected claims 1-5, 7-17, 19, and 20 under 35 U.S.C.
§ 101 as directed to ineligible subject matter. Ans. 3-4.3
THE INELIGIBILITY REJECTION
The Examiner determines that the claims are directed to an abstract
idea, namely collecting information, analyzing it, and displaying certain
results of the collection and analysis. Ans. 3-5, 21. The Examiner further
determines claim 1 contains steps directed to the abstract idea of collecting
and analyzing information to make a determination and notifying a user of
the determination, which can be performed as a mental process. Ans. 4.
The Examiner adds that the claims do not include additional elements that
add significantly more than the abstract idea, but merely recite a generic
processor. Id. at 5, 25-26.
3 Throughout this Opinion, we refer to (1) the Final Office Action delivered
September 20, 2017 (Final Act.); (2) the Appeal Brief filed February 1, 2018
("App. Br."); (3) the Examiner's Answer delivered July 2, 2018 ("Ans.");
and ( 4) the Reply Brief filed August 31, 2018 ("Reply Br.").
3
Appeal 2018-008619
Application 14/560,083
Appellants argue the Examiner generalizes and oversimplifies the
claim, but ignores that the claimed invention recites specific improvements
in computer related technology beyond well-understood, routine and
conventional activities, thus rendering the invention patent eligible. App.
Br. 5; Reply Br. 1-6. According to Appellants, similar to Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), the claimed
invention recites an improvement in efficiencies of computer related
technology. App. Br. 5, 8. Specifically, the claimed invention is said to
automatically predict additional input requirements "entirely without the
requirement of human attention and discernment" and yields a technological
improvement in efficiencies of computer related Human Capital
Management system technology. App. Br. 7; Reply Br. 4-5. Appellants
add, similar to BASCOM Global Internet Ser., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016), the claimed invention as a whole amounts to
significantly more to the purported abstract idea by reciting an
unconventional solution to a technical problem involving incomplete and
inefficient data collection in organizational databases. App. Br. 5-8; Reply
Br. 3-5. According to Appellants, this technical solution, among other
things, (1) automatically maps a first data input to name data of an API
envelope schema of a first event; (2) predicts that a second event that is
linked to the first event requires additional input; (3) prompts a user to enter
second data input; ( 4) determines if the second data input satisfies a
threshold; and ( 5) if the threshold is satisfied, closing the second event, and
if the threshold is not satisfied, repeating steps (2)-(4). App. Br. 6.
4
Appeal 2018-008619
Application 14/560,083
ISSUE
Under § 101, has the Examiner erred in rejecting claims 1-5, 7-1 7,
19, and 20 as directed to ineligible subject matter? This issue turns on
whether the claims are directed to an abstract idea and, if so, whether
additional elements recited-considered individually and as an ordered
combination-transform the nature of the claims into a patent-eligible
application of that abstract idea.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g., Alice, 573 U.S. at 216 (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
5
Appeal 2018-008619
Application 14/560,083
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267-68 (1854))); 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."). That
said, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
6
Appeal 2018-008619
Application 14/560,083
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
In January 2019, the USPTO published revised guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 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 activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08. 2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
7
Appeal 2018-008619
Application 14/560,083
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of§ 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we determine (1) whether claim 1 recites a judicial
exception (Revised Guidance Step 2A - Prong 1) and, if so, (2) whether the
identified judicial exception is integrated into a practical application
(Revised Guidance Step 2A- Prong 2). See Revised Guidance, 84 Fed.
Reg. at 52-55.
Revised Guidance Step 2A - Prong 1
In the rejection, the Examiner determines that claim 1 is directed to an
abstract idea, namely collecting information, analyzing it, and displaying
certain results of the collection and analysis. Ans. 3-5, 21. In particular, the
Examiner determines claim 1 contains a series of steps of collecting and
analyzing information and notifying a user of the analysis, which can be
performed as a mental process. Ans. 4. To determine whether a claim
recites an abstract idea, we (1) identify the claim's specific limitations that
recite an abstract idea, and (2) determine whether the identified limitations
fall within certain subject matter groupings, namely (a) mathematical
8
Appeal 2018-008619
Application 14/560,083
concepts;4 (b) certain methods of organizing human activity5; or ( c) mental
processes. 6
Here, apart from the recited ( 1) executing various steps on a
processor, including automated process steps; and (2) AP! envelope schema
using a second key meta code, all of claim l's recited limitations, which
collectively are directed to requesting and receiving user provided data to
identify and update files in a database, fit squarely within at least one of the
above categories of the agency's guidelines.
First, the steps of claim 1 reciting receiving "a first data input that
comprises an effective date of the input and identification data that is unique
to an individual and a role of the individual within an organization"; and
''prompting a user to enter the second data input" involve certain methods
of organizing human activity, such as managing personal behavior or
relationships, by facilitating data collection using rules or instructions. Cf
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
776 F.3d 1343, 1345-49 (Fed. Cir. 2014) (holding ineligible claims reciting
4 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Revised
Guidance, 84 Fed. Reg. at 52.
5 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Revised Guidance, 84 Fed. Reg. at 52.
6 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Revised Guidance, 84
Fed. Reg. at 52.
9
Appeal 2018-008619
Application 14/560,083
( 1) receiving output representing diverse types of hard copy documents from
an automated digitizing unit, and (2) storing information from those
documents into memory); see also CyberSource, 654 F.3d at 1372 (noting
that limitation reciting obtaining information about transactions that have
used an Internet address identified with a credit card transaction can be
performed by a human who simply reads records of Internet credit card
transactions from a pre-existing database); In re Salwan, 681 F. App'x 938,
939-41 (Fed. Cir. 2017) (unpublished) (holding ineligible claims reciting,
among other things, receiving medical records information and transmitting
reports where the claimed invention's objective was to enable electronic
communication of tasks that were otherwise done manually using paper,
phone, and facsimile machine); Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1344 (Fed. Cir. 2018) (noting that a nontechnical human activity
of passing a note to a person who is in a meeting or conversation as
illustrating the invention's focus, namely providing information to a person
without interfering with the person's primary activity); LendingTree, LLC v.
Zillow, Inc., 656 F. App'x 991, 993-94, 996 (Fed. Cir. 2016) (unpublished)
(holding ineligible claims reciting, among other things, receiving selection
criteria from lending institutions and credit data from a computer user, and
forwarding the credit data to selected lending institutions as directed to an
abstract idea).
Accordingly, steps reciting receiving first input data and prompting a
user to input additional data fall squarely within the methods of organizing
human activity category of the agency's guidelines and, therefore, recite an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52 (listing exemplary
10
Appeal 2018-008619
Application 14/560,083
methods of organizing human activity, including managing personal
behavior or relationships following rules or instructions).
Second, as discussed infra, steps [l]-[6] recited below, can also be
done entirely mentally or by using pen and paper in a correspondence or
conversation between two people.
[l] in response to a first data input ... mapping the first data
input to first key descriptive canonical name data ... of a first
event of a plurality of pre-defined events as a function of the
identification data, the role and the effective date; [2] in
response to the mapping to the first event, predicting, as a
function of the identification data, the role, the effective date ..
. of the first event that corresponds to an object of the first key
descriptive canonical name data, that a second event of the pre-
defined events that is linked to the first event requires an
additional, second data input for the individual that is different
from the first data input;[3] triggering [a] ... process in
response to the predicting that the second event requires the
additional, second data input;[4] determining whether an entry
of response data that is received in response to prompting the
user to enter the second data input satisfies a satisfaction
threshold specified by the ... process for the response data; [5]
in response to determining that the response data satisfies the
satisfaction threshold, closing the linked second event; and [ 6]
in response to determining that the response data does not
satisfy the satisfaction threshold, iteratively repeating until a
response data input is received that satisfies the satisfaction
threshold steps of predicting that the second event requires an
additional second data input, triggering the ... process in
response to the predicting that the second event requires the
additional second data input and prompting the user to enter
the second data input.
Steps [ 1 ]-[ 6] recited in italics above could be carried out as a mental
process, or by a human mind using a pen and paper by [ 1] merely reading or
hearing the first data input from a first person including an "effective date"
11
Appeal 2018-008619
Application 14/560,083
and "identification data" and associating the first data with a first event
stored in the mind; [2] mentally associating the first event with a second
event and thinking about whether there are unresolved questions associated
with the second event; [3] asking the first person for additional information
if there are any unresolved questions associated with the second event; [4]
mentally determining if the additional information resolves the questions
associated with the second event; [5] if the question is resolved, determining
no further questions about the second need to be asked; and [ 6] if the
question is not resolved, asking the user for further additional information.
This conclusion follows from CyberSource Corp. v. Retail Decisions,
Inc., where our reviewing court held that section 101 did not embrace a
process defined simply as using a computer to perform a series of mental
steps that people, aware of each step, can and regularly do perform in their
heads. 654 F.3d 1366, 1373 (Fed. Cir. 2011); see also In re Grams, 888 F.2d
835, 840-41 (Fed. Cir. 1989); In re Meyer, 688 F.2d 789, 794-95 (CCPA
1982). Additionally, mental processes remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. See CyberSource, 654 F.3d at 1375 ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
As the court in CyberSource explained, those precedents rest on
Supreme Court decisions indicating that section 101 covers neither "mental
processes"-associated with or as part of a category of "abstract ideas"-nor
processes that merely invoke a computer and its basic functionality for
implementing such mental processes, without specifying even arguably new
physical components or specifying processes defined other than by the
12
Appeal 2018-008619
Application 14/560,083
mentally performable steps. See Gottschalk v. Benson, 409 U.S. 63, 67-68
(1972); Parker v. Flook, 437 U.S. 584, 589 (1978).
Furthermore, Appellants' Specification also supports the conclusion
that steps [ 1 ]-[ 6] could be practically performed alternatively as a mental
process. For example, the Specification provides an example of steps [ 1 ]-
[ 6] in the context of an employee entering a change in marital status to a
human resources system. Spec. ,i,i 9-11. After the employee enters the
marital status change ( step [ 1]) the behavior predictor uses the relations of
the predefined event(s) mapped to a given data input (step [l]). Spec. ,i 58.
Then, "[t]he predictor ... determines that the data input context establishes a
high likelihood that the user will wish to change their tax withholding status
or their name in response to the change in marital status, and therefore map
the data input to a 'change in marital status' event, also to tax withholding
status change and name change events" (step [2]). Spec. Id. "Accordingly,
the behavior predictor will prompt the individual to confirm or change their
withholding status and/or name at 108" (step [3]). Spec. Id. For example,
the prompt may ask "Oh, I see you got married. Would you like to change
your tax withholdings?" Furthermore, "[ s Jatisfaction of a response to the
prompt may include a response from the individual, or a change or
confirmation of no change by a human relations person with requisite status
or authority within the organization" (steps [4]-[5]). Spec. f 58.
Additionally, under step [6], if a "satisfaction threshold" is not satisfied,
steps (2)-( 4) are repeated.
Accordingly, steps [ 1 ]-[ 6] recite a mental process that can
alternatively be performed entirely in the human mind or with the aid of pen
and paper. For example, a human resources employee is capable of
13
Appeal 2018-008619
Application 14/560,083
receiving information an employee is changing their marital status and
further consider what other data associated with the organization will likely
need to be updated, such as name change data, based on the received
information. A human resources employee is also capable of asking follow
up questions such as "Oh, I see you got married. Would you like to change
your tax withholdings?" or "Did you also change your name?" and listening
to a response from the employee. Id. As noted above, the Specification
indicates the determination of whether a response meets a "satisfaction
threshold," as recited in claim 1, can be made by a human being. Id.
For the above reasons, we determine claim 1 recites both (1) certain
methods of human activity and (2) mental processes, identified as abstract
ideas in the Revised Guidance. See 84 Fed. Reg. at 52.
Revised Guidance Step 2A - Prong 2
Although the claim recites an abstract idea including methods of
organizing human activity and mental processes, we nevertheless must still
determine whether the abstract idea is integrated into a practical application,
namely whether the claim applies, relies on, or uses the abstract idea in a
manner that imposes a meaningful limit on the abstract idea, such that the
claim is more than a drafting effort designed to monopolize the abstract idea.
See Revised Guidance, 84 Fed. Reg. at 54-55. To this end, we (1) identify
whether there are any additional recited elements beyond the abstract idea,
and (2) evaluate those elements individually and collectively to determine
whether they integrate the exception into a practical application. See id.
Here, ( 1) executing various steps on a processor, including automated
process steps; and (2) AP! envelope schema using a second key meta code
14
Appeal 2018-008619
Application 14/560,083
are the only recited elements beyond the abstract idea, but these additional
elements do not integrate the abstract idea into a practical application when
reading claim 1 as a whole.
First, we are not persuaded that the claimed invention improves the
computers or its components' functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corp., and McRO, Inc. v.
Bandai Namco Games Am. Inc., despite Appellants' arguments to the
contrary (App. Br. 5, 8). The claimed self-referential table in Enfish was a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent
Appellants contends that the claimed invention uses such a data structure to
improve a computer's functionality or efficiency, or otherwise change the
way that device functions, there is no persuasive evidence on this record to
substantiate such a contention. Rather, the additional element ( 1) a generic
processor executing automated process steps is merely a tool used to
implement the abstract idea. Spec. ,i 77 ("processor of a general purpose
computer ... instructions which execute via the processor ... create means
for implementing the functions/acts specified in the flowchart and/or block
diagram"), ,i 80 ("[ e ]xamples of well-known computing systems ... include
... microprocessor based systems"). With respect to additional element (2)
an API envelope schema using a key in the format of meta code fails to
transform the claim beyond a conventional computer practice for facilitating
database searches. See Intellectual Ventures I LLC v. Erie Indem. Co., 850
F.3d 1315, 1328-1329 ("[W]e fail to see how the use of a well-known tag,
i.e., XML tag-to form an index-sufficiently transforms the claims into a
15
Appeal 2018-008619
Application 14/560,083
patent eligible invention ... [ s ]imilarly, the metafiles associated with these
tags do not transform the claim into something beyond a conventional
computer practice for facilitating searches").
Appellants' Specification concedes the use of databases in
conjunction with API' s to respond to data changes are "conventional." See
Spec. ,i 60. The database index comprising tags and metafiles in Intellectual
Ventures is analogous to the envelope schema recited in claim 1. The
envelope schema similarly functions as an index defining associations
between input data and events to map input data to events stored in a
database using identifiers and second key meta codes. See Spec. ,i 19-20. In
Intellectual Ventures, our reviewing court characterized using an index
constructed of specific XML tags and metadata to facilitate searches as a
"generic computer implementation" which failed to "transform the patent-
ineligible abstract idea here into a patent-eligible invention". Intellectual
Ventures, F.3d 1315 at 1328 (citations and quotations omitted). Similarly, in
this case the additional element reciting "AP I envelope schema" using a
"second key meta code" is generic tool used to implement an abstract idea.
Furthermore, in McRO, the claimed process used a combined order of
specific rules that rendered information in a specific format that was applied
to create a sequence of synchronized, animated characters. McRO, 837 F.3d
at 1315. Notably, the recited process automatically animated characters
using particular information and techniques-an improvement over manual
three-dimensional animation techniques that was not directed to an abstract
idea. Id. at 1316. But, unlike the claimed invention in McRO that improved
how the physical display operated to produce better quality images, the
claimed invention here merely uses a generic processor to receive and
16
Appeal 2018-008619
Application 14/560,083
request user provided data to identify and update files in a database. This
generic computer implementation is not only directed to methods of
organizing human activity and mental processes, but also does not improve a
display mechanism as was the case in McRO. See SAP Am. v. InvestPic,
LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
To the extent that Appellants contend that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution
(see App. Br. 7-8), we disagree. Even assuming, without deciding, that the
claimed invention can automatically determine additional input requirements
for a human capital management database more efficiently than a human, the
increased efficiency comes from the capabilities of the generic computer
components-not the recited process itself. See Fair Warning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (alteration in original)
(citing Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.")); see also Intellectual
Ventures I LLC v. Erie Indem. Co., 711 F. App'x 1012, 1017 (Fed. Cir.
2017) (unpublished) ( alteration in original) ( citation omitted) ("Though the
claims purport to accelerate the process of finding errant files and to reduce
error, we have held that speed and accuracy increases stemming from the
ordinary capabilities of a general-purpose computer 'do[] not materially alter
the patent eligibility of the claimed subject matter."'). Like the claims in
Fair Warning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
17
Appeal 2018-008619
Application 14/560,083
generic computing components as tools. See FairWarning, 839 F.3d at
1095.
Additionally, the limitations reciting "a first data input that comprises
an effective date of the input and identification data that is unique to an
individual and a role of the individual within an organization"; and an
"automated process prompting a user to enter the second data input" not
only organize human activity and use generic computing components to
perform the abstract idea as noted above, but these data transmitting and
receiving functions are also insignificant extra-solution activity that merely
gather data and, therefore, do not integrate the exception into a practical
application for that additional reason. See In re Bilski, 545 F.3d 943, 963
(Fed. Cir. 2008) (en bane), aff'd on other grounds, 561 U.S. 593 (2010)
( characterizing data gathering steps as insignificant extra-solution activity);
see also CyberSource, 654 F.3d at 1371-72 (noting that even if some
physical steps are required to obtain information from a database (e.g.,
entering a query via a keyboard, clicking a mouse), such data-gathering steps
cannot alone confer patentability). Accord Revised Guidance, 84 Fed. Reg.
at 55 (citing MPEP § 2106.05(g)).
Lastly, Appellants contend the claimed invention does not monopolize
or pre-empt the relevant technical field. See App. Br. 8-9. However,
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility" or render a
claim any less abstract. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015); see OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt
18
Appeal 2018-008619
Application 14/560,083
all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract.").
For the above-stated reasons, we determine the additional elements
recited in independent claim 1 beyond the judicial exceptions, whether
considered alone or in combination, do not integrate the abstract idea into a
practical application.
Revised Guidance, Step 2B
Under the Revised Guidance, if a claim: ( 1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
We find Appellants' argument that automated processes on generic
computing devices does not bar patentability eligibility, citing BASCOM,
(App. Br. 5, 8; Ans. 3) unavailing. In BASCOM, the court held eligible
claims directed to a technology-based solution to filter Internet content that
overcame existing problems with other Internet filtering systems by making
a known filtering solution-namely a "one-size-fits-all" filter at an Internet
Service Provider (ISP)-more dynamic and efficient via individualized
filtering at the ISP. 827 F.3d at 1351. Notably, this customizable filtering
solution improved the computer system's performance and, therefore, was
patent-eligible. See id. But, unlike the filtering system improvements in
19
Appeal 2018-008619
Application 14/560,083
BASCOM that added significantly more to the abstract idea in that case, the
claimed invention here uses generic computing components to implement an
abstract idea as noted previously.
Appellants additionally argue the Examiner failed to provide a factual
finding that additional elements outside of the judicial exception are well
understood, routine or conventional, required under Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018). Reply Br. 1-3. According to Appellants,
the Examiner failed to provide a Berkheimer factual finding for essentially
all of the claimed steps recited in claim 1. Reply. Br. 2-3. However,
Berkheimer does not require the Examiner make a factual finding that all
claim elements are well-understood, routine or conventional. Rather, a
Berkheimer factual finding is required for additional elements or a
combination of additional elements outside of the identified abstract idea.
See Berkheimer Memo 7, p. 2 ("the Berkheimer decision ... does provide
clarification as to the inquiry into whether an additional element (or
combination of additional elements) represents well-understood, routine,
conventional activity" ( emphasis added)).
Here, the Examiner found that the additional element outside of the
abstract idea was a "generic processor" executing automated process steps.
Ans. 5. The Examiner further found that the combination of elements were
not directed to an improvement, but rather an abstract idea. Ans. 3-6, 21,
25-26. We further determine the "API envelope schema" and "a second key
7 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018) available at:
https: //www. uspto. gov/sites/default/ files/ do cum en ts/ memo-berkheimer-
20l80419. PDF
20
Appeal 2018-008619
Application 14/560,083
meta code within the API envelope schema", recited in claim 1, are
additional elements outside of the abstract idea.
As noted supra, we determine that the additional elements are generic
computer components and that the remaining claim limitations fail to recite a
technological improvement.
Accordingly, on the record before us, we disagree with Appellants
that the claims add a specific limitation beyond the judicial exception that is
not "well-understood, routine, [ and] conventional" in the field (see MPEP §
2106.05(d)). We find no reversible error in the Examiner's determination
that the additional element reciting a processor executing automated process
steps is nothing more than a generic element. See Ans. 5. In fact, as noted
supra, the Specification supports the Examiner's finding that additionally
recited elements are generic computer elements performing generic
computer functions, by providing non-limiting and exemplary descriptions
of generic computer components that are used to carry out receiving and
requesting user provided data to identify and update files in a database.
Spec. ,-i,-i 77, 80.
Furthermore, the claims do not sufficiently recite how additional
elements reciting an "API envelope schema" and "a second key meta code
within the API envelope schema" leads to an improvement in computer
database technology through some "non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM, 827 F.3d at 1349-
52. See Intellectual Ventures, F.3d 1315 at 1328 ("recitation of an index
employing XML tags to navigate a computerized database is simply not
enough to transform the patent-ineligible abstract idea here into a patent-
eligible invention").
21
Appeal 2018-008619
Application 14/560,083
Appellants do not argue dependent claims 2-5, 7-10, 12-15, 17, 19,
and 20 separately with particularity, but assert the rejection of those claims
should be withdrawn for at least the same reasons as argued for independent
claim 1. App. Br. 9. In light of the foregoing, we conclude that each of
claims 1-5, 7-17, 19, and 20, considered as a whole, is directed to a patent-
ineligible abstract idea that is not integrated into a practical application, and
does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner'srejectionunder35U.S.C. § 101 ofclaims 1-5, 7-17, 19,and
20. 8
DECISION
We affirm the Examiner's rejection of claims 1-5, 7-17, 19, and 20
under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
8 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
22