Ex Parte CHAUBAL et al

Patent Trials and Appeals Board

May 30, 2019

12886242 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/886,242 09/20/2010
49683 7590 06/03/2019
BOND SCHOENECK & KING, PLLC
ONE LINCOLN CENTER
SYRACUSE, NY 13202
FIRST NAMED INVENTOR
AMRISH VAS ANT CHAUBAL
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.
IN920100125US1 1209
EXAMINER
PRATT, EHRINLARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
BSKPTO@BSK.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMRISH V ASANT CHAUBAL, DIPTIMAN DASGUPTA,
GIRIDHAR KRISHNAMURTHI, MYNAMPATI PRABHAKAR,
SIDDHARTH N. PUROHIT, and AMARDEEP RAIKER 1
Appeal2018-001953
Application 12/886,242
Technology Center 3600
Before JAMES R. HUGHES, STEVEN M. AMUNDSON, and
JASON M. REPKO, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 2, 5-9, 12-16, 19, and 20. Claims 3,
4, 10, 11, 17, and 18 have been canceled. See Final Act. 1-2; Appeal Br. 1. 2
We have jurisdiction under 35 U.S.C. § 6(b).
1 International Business Machines Corp. ("Appellant") is the applicant as
provided in 37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal Br. 3.
2 We refer to Appellant's Specification ("Spec.") filed Sept. 20, 2010;
Appeal Brief ("Appeal Br.") filed Aug. 18, 2017; and Reply Brief ("Reply
Br.") filed Dec. 15, 2017. We also refer to the Examiner's Final Office
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We affirm.
Appellant's Invention
The invention "relates generally to independent software vendors and
related solutions. More particularly, the invention relates to methods for
evaluating independent software vendors and related solutions that may be
used within services oriented architectures." Spec. ,r 1; see Spec. ,r,r 9-15;
Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A computer implemented method for evaluating an
independent software vendor solution, the method comprising:
defining within a computer system a structured
information capture framework for evaluation of a plurality of
independent software vendor solutions, wherein the computer
system comprises a processor;
defining within the computer system a scoring model that
correlates with the structured information capture framework and
comprises a multilevel weighted scoring algorithm, wherein said
multilevel weighted scoring algorithm comprises:
a plurality of dimensions associated with at least
one of said plurality of independent software vendor solutions,
wherein each of said plurality of dimensions is assigned a
primary weighting factor with the sum of all primary weighting
factors being equal to 100%;
at least one subject correlated with at least one of
said dimensions, wherein all of said subjects correlated with each
of said at least one dimensions is assigned a secondary weighting
factor with the sum of all secondary weighting factors for all
Action ("Final Act.") mailed Feb. 16, 2017; and Answer ("Ans.") mailed
Oct. 16, 2017.
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subjects correlated with each of said at least one dimensions
being equal to 100%;
at least one parameter correlated with at least one of
said subjects;
receiving within the computer system parameter level data
for at least one of the plurality of independent software vendor
solutions while using the structured information capture
framework;
assigning, based on said received parameter level data, a
ranking to said at least one parameter;
automatically calculating, utilizing said processor and
further utilizing said multilevel weighted scoring algorithm, a
subject score for each of said at least one subjects, comprising
the step of calculating said subject score as a summation of the
assigned ranking for all parameters correlated with the subject
divided by the total number of parameters correlated with the
subject;
automatically assigning, utilizing said processor and
further utilizing said multilevel weighted scoring algorithm, the
secondary weighting factor to each subject score to create a
weighted subject score for each of said at least one subjects;
automatically calculating, utilizing said processor and
further utilizing said multilevel weighted scoring algorithm, a
dimension score for each of said plurality of dimensions,
comprising the step of calculating said dimension score as a
summation of the weighted subject score for all subjects
correlated with the dimension;
automatically assigning, utilizing said processor and
further utilizing said multilevel weighted scoring algorithm, the
primary weighting factor to each dimension score to create a
weighted dimension score for each of said plurality of
dimensions;
automatically calculating, utilizing said processor and
further utilizing said multilevel weighted scoring algorithm, a
total score as a summation of the weighted dimension score for
all dimensions; and
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automatically ranking, using said total score, at least one
of the-plurality [sic] of independent software vendor solutions.
Appeal Br. 20-21 (Claims App 'x).
Rejection on Appeal
The Examiner rejects claims 1, 2, 5-9, 12-16, 19, and 20 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
ISSUE
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in determining Appellant's claims were directed
to patent-ineligible subject matter, without significantly more, under 35
U.S.C. § 101?
ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 566 U.S. 66, 77-80 (2012), "for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 573 U.S. at 217.
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Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts" (id.), e.g., to an abstract idea. See Alice,
573 U.S. at 219 ("On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
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, but are not limited to, certain
methods of organizing human activity, such as fundamental economic
practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental
processes ( Gottschalk v. 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.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). The
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Supreme Court continued by qualifying its findings, indicating that a claim
"seeking patent protection for that formula in the abstract ... is not accorded
the protection of our patent laws, ... and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment." Id. ( citing Benson and Flook); see, e.g., id. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
This second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ineligible concept] itself."' Id. at 217-218 ( alteration in original)
(quoting Mayo, 566 U.S. at 72-73). "A claim that recites an abstract idea
must include 'additional features' to ensure 'that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea]."' Alice, 573 U.S.
at 221 (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic
computer implementation[] fail[ s] to transform that abstract idea into a
patent-eligible invention." Id.
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
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claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance").
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes) (hereinafter "Step 2A, prong 1 "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h))
(hereinafter "Step 2A, prong 2").
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception. 3
See 2019 Revised Guidance.
Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
3 Items (3) and (4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
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asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfish, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1853)).
The Examiner rejects claims 1, 2, 5-9, 12-16, 19, and 20 as a group
based on claim 1 (see Final Act. 2---6) and concludes claim 1 is directed to
patent-ineligible subject matter because claim 1 is directed to the abstract
idea of "a multilevel weighted scoring algorithm comprising a plurality of
dimensions associated with at least one of said plurality of independent
software vendor solutions" (Final Act. 2), and when "taken alone" or "as an
ordered combination" "the additional elements do not amount to
significantly more than the identified judicial exception" (Final Act. 5) in
that "the additional elements" are recited "at a high-level of generality and
the broadest reasonable interpretation includes generically recited computer
elements ... which do not add a meaningful limitation to the abstract idea
because they would be routine in any computer implementation" (Final Act.
4). See Final Act 2---6; Ans. 2-11.
Here, in rejecting the claims (in particular claim 1) under 35 U.S.C.
§ 101, the Examiner analyzed the claims using the Mayo/Alice two-step
framework, consistent with the guidance set forth in the USPTO's "2014
Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
(Dec. 16, 2014), in effect at the time the rejection was made, i.e., on Feb. 16,
2017.
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Conversely, Appellant contends that the Examiner erred in rejecting
the claims as being directed to patent-ineligible subject matter. See Appeal
Br. 14--19; Reply Br. 2-3. Specifically, Appellant contends, with respect to
the first step of the Alice analysis, that:
[the] claims must be examined in their entirety in view of the
specification, and should not be deconstructed or described at
such a high level of abstraction that it ensures patent ineligibility.
Here, the claims are focused on a specific improvement in
selecting an independent software vendor solution from among a
plurality of independent software vendor solutions using a
structured framework and complex multi-level scoring method,
rather than simply utilizing a computer to complete a known
process.
Thus, the "character as a whole" of the claims is not
directed generally to an algorithm or an abstract idea, but to a
specific novel and non-obvious flavor of identifying an
independent software vendor solution from among a plurality of
independent software vendor solution, the identified independent
software vendor solution being best suited to satisfy a request for
a solution based on one or more weighted factors. Accordingly,
the claims are not directed to an abstract idea.
Appeal Br. 17. Appellant further contends that similar to Thales Visionix,
Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017), the instant claims
do not seek to protect-and thus are not directed to----a
mathematical equation; in other words, the claims do not seek to
protect the mathematics underlying the analysis performed on the
independent software vendor solutions. Rather, the claims seek
to protect a multi-step method or multi-component system that
utilizes the claimed algorithm or mathematical analysis to derive
a useful and concrete outcome, namely a ranking of a plurality
of independent software vendor solutions.
Reply Br. 3.
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For the reasons discussed below, we conclude Appellant's claim 1
( and the other pending claims) recites abstract ideas, these abstract ideas are
not integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we clarify and expand the
Examiner's reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant's claim 1 (see Appeal Br. 20-21 (Claims App'x)). Claim 1 recites
"[a] computer implemented method for evaluating an independent software
vendor solution." That is, utilizing a computer to perform a process of
evaluating vendor hardware and software combined in an integrated
information technology solution (see Spec. ,r,r 2--4).
Claim 1 also recites "defining within a computer system a structured
information capture framework for evaluation of a plurality of independent
software vendor solutions, wherein the computer system comprises a
processor." That is, defining (setting boundaries of, delineating) an
information structure for capturing data relating to the evaluation of software
vendor solutions, in a computer system including a processor (see Spec.
,r,r 29-30, 34--35). Additionally, claim 1 recites "defining within the
computer system a scoring model that correlates with the structured
information capture framework and comprises a multilevel weighted scoring
algorithm." That is, delineating a scoring model ( a predictive representation
to determine a score), in the computer system, interrelated with the
structured information capture framework, that includes a multilevel
weighted scoring algorithm.
Claim 1 further describes the multilevel weighted scoring algorithm,
reciting that the "multilevel weighted scoring algorithm comprises:" "a
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plurality of dimensions associated with at least one of said plurality of
independent software vendor solutions, wherein each of said plurality of
dimensions is assigned a primary weighting factor with the sum of all
primary weighting factors being equal to 100%." That is, the algorithm
includes multiple "dimensions"-high-level characteristics, aspects,
attributes, or factors of an entity or situation (the software vendor solution)
(see Spec ,r,r 20, 31; Figs. 1, 4A-B}-to be considered in the evaluation.
The dimensions are assigned a weight (totaling 100). Claim 1 also recites
the multilevel weighted scoring algorithm comprising "at least one subject
correlated with at least one of said dimensions, wherein [the] subjects ...
[are] assigned a secondary weighting factor with the sum of all secondary
weighting factors for all subjects ... being equal to 100%." That is, the
algorithm includes multiple "subj ects"-mid-level characteristics of the
software vendor solution (see Spec ,r,r 20, 32; Figs. 1, 4A-B}-correlated
with (a subdivision of) one or more dimensions. The subject(s) are assigned
a weight (totaling 100). Additionally, claim 1 also recites the multilevel
weighted scoring algorithm comprising "at least one parameter correlated
with at least one of said subjects." That is, the algorithm includes multiple
"parameters"-low-level (specific) characteristics of the software vendor
solution (see Spec ,r,r 20, 32; Figs. 1, 4A-B}-correlated with (a subdivision
of) one or more subjects.
Claim 1 continues, reciting several additional limitations, including:
"receiving within the computer system parameter level data for at least one
of the plurality of independent software vendor solutions while using the
structured information capture framework." In other words, receiving
information (parameter level data or specific software vendor solution
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characteristic data) using the structured information capture framework.
Claim 1 also recites "assigning, based on said received parameter level data,
a ranking to said at least one parameter." That is, assigning a rank to each
parameter (see Spec. ,r,r 54, 60; Figs. 1, 4A-B, 7). Claim 1 further recites
"automatically calculating, utilizing said processor and further utilizing said
multilevel weighted scoring algorithm, a subject score for each of said at
least one subjects" by "calculating said subject score as a summation of the
assigned ranking for all parameters correlated with the subject divided by the
total number of parameters correlated with the subject." That is,
automatically calculating a subject score for each subject using the
multilevel weighted scoring algorithm operating on the processor. The
calculation entails a summation of (summing or adding) the rankings of each
correlated parameter and dividing the sum by the number of correlated
parameters (i.e., determining the average of the correlated parameter
ranking). See Spec ,r 63; Fig. 7. Claim 1 additionally recites "automatically
assigning, utilizing said processor and further utilizing said multilevel
weighted scoring algorithm, [a] primary weighting factor to each dimension
score to create a weighted dimension score for each of said plurality of
dimensions." That is, assigning (automatically, using the processor) a
weight (primary weighting factor) to each dimension score according to
( utilizing) the multilevel weighted scoring algorithm to create a weighted
dimension score for each dimension.
The method also details calculating a total score and ranking the
results. Claim 1 recites "automatically calculating, utilizing said processor
and further utilizing said multilevel weighted scoring algorithm, a total score
as a summation of the weighted dimension score for all dimensions." In
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other words, automatically calculating a total score using the multilevel
weighted scoring algorithm operating on the processor, where the total score
is the sum of the weighted dimension scores. Claim 1 also recites
"automatically ranking, using said total score, at least one of the-plurality of
independent software vendor solutions." That is, automatically ranking
( ordering) the evaluated software vendor solutions according to the total
score.
In summary, claim 1 recites a computer implemented process for
evaluating independent software vendor solutions (integrated information
technology solutions) utilizing an information structure for capturing data (a
structured information capture framework) and a scoring model including a
multilevel weighted scoring algorithm to determine a score for and rank the
independent software vendor solutions. Hereinafter, we refer to this process
as the "evaluation process."
We find that claim 1 recites a "computer implemented method"
(supra }-the evaluation process. A process is a statutory category of
invention (subject matter) (USPTO's Step 1). Utilizing our interpretation of
claim 1 (supra), we analyze whether the claim is directed to an abstract idea
(USPTO's Step 2A).
Here, Appellant's claims generally, and independent claim 1 in
particular ( as summarized, supra), recite a process for deriving a score for
independent software vendor solutions. This is consistent with how
Appellant describes the claimed invention. See Appeal Br. 7-8; Spec. ,r,r 1,
9-12, 14, 15, 29, 30, 32-37, 41--44, 47, 54, 60, 62---64; see also Spec. ,r 13
("A particular method in accordance with the invention includes ...
calculating for each of the plurality of independent software vendor
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solutions while using the multilevel weighted scoring algorithm a final score
to provide an independent software vendor solution ranking."). Performing
data analysis (an evaluation}--including delineating an information
structure, deriving data to be analyzed, and delineating a predictive scoring
representation (a scoring model) including criteria for the analysis (a
multilevel weighted scoring algorithm) to determine a score and rank results
(according to the score }--recites processes and analysis that may be
accomplished using one's mind or utilizing pen and paper. See, e.g.,
Appellant's Figs. 2-7, 9-14.
Appellant's contentions (supra) focus on the purported technological
improvements or advances provided by the recited evaluation process, as
well as the tangible acts (defining a framework (for deriving information to
be evaluated) and a model, inputting the received information using the
framework, and utilizing the model (which includes an algorithm))
performed in the process. Claim 1, however, recites no substantive
limitations on how the evaluation process "defines" the framework or the
model, how the information to be evaluated is derived (the process for
determining the various dimensions, subjects, and parameters), or how the
various characteristic weightings are determined. The limitations are
entirely functional in nature-for example, claim 1 recites "defining ... a
structured information capture framework for evaluat[ing] ... independent
software vendor solutions," "defining ... a scoring model that ... comprises
a multilevel weighted scoring algorithm," the multilevel weighted scoring
algorithm comprising: multiple high-level characteristics of the software
vendor solutions (i.e., "dimensions") that are "assigned a primary weighting
factor," one or more mid-level characteristics of the software vendor
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solutions corresponding to the dimensions (i.e., "subjects") that are
"assigned a secondary weighting factor," and at least one specific
characteristic corresponding to the subject(s) (i.e., parameter(s)). Claim 1
further recites "receiving ... parameter level data ... using the structured
information capture framework," "assigning ... a ranking to [the]
parameter[ ( s)]," "automatically calculating, utilizing ... [the] multilevel
weighted scoring algorithm, a subject score for each" subject by adding
(summing) "the assigned ranking for all parameters," and "divid[ing] by the
total number of parameters," and "automatically calculating, utilizing" the
"multilevel weighted scoring algorithm, a total score ... for all dimensions."
See claim 1 (Appeal Br. 20-21 (Claims App'x)), our claim construction
(supra), as well as Spec. ,r,r 1, 9-15. A person can perform the function of
each of the limitations delineated above by using pen and paper to draw
representative graphs, charts, or tables depicting the information to be
evaluated, assigning weights or ranks to the information, and utilizing basic
math for the recited calculations. See, e.g., Appellant's Figs. 2-7, 9-14.
Now here does Appellant point to specific claim limitations that distinguish
over a human process.
Performing information analysis, and the collection and exchange of
information related to such analysis, may be an abstract concept that is not
patent eligible. See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161,
1165, 1167-68 (Fed. Cir. 2018) (Claims reciting "[a] method for providing
statistical analysis" (id. at 1165) were determined to be "directed to an
abstract idea" (id. at 1168). "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
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other than abstract" (id. ( quotations omitted)). See also 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); 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); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1345,
1347 (Fed. Cir. 2014) (finding the "claims generally recite ... extracting
data ... [ and] recognizing specific information from the extracted data" and
that the "claims are drawn to the basic concept of data recognition");
Bancorp Servs., L.L.C. 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.").
Appellant's claim 1 recites a judicial exception (USP TO' s Step 2A,
Prong 1; see 2019 Revised Guidance). Specifically, claim 1 recites a
computer implemented evaluation process for determining a score and
ranking of independent software vendor solutions using a multilevel
weighted scoring algorithm as discussed supra. The evaluation process
consists of mental processes performed in the human mind ( or utilizing pen
and paper) including observation, evaluation, or judgment.
Eligibility Analysis-Revised Guidance Step 2A, Prong 2
Appellant's claim 1 also recites additional elements beyond the
abstract evaluation process (the judicial exception) (supra). These elements
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include, the computer (for the "computer implemented method"), computer
system, and processor ("wherein the computer system comprises a
processor"). See claim 1 (Appeal Br. 20-21 (Claims App'x)) and our claim
construction (supra). We evaluate these additional elements to determine
whether the additional elements integrate the evaluation process ( the judicial
exception) into a practical application of the exception (USPTO's Step 2A,
Prong 2; see 2019 Revised Guidance).
Appellant contends that "the claimed invention is a tool with which a
user can select a particular independent software vendor solution without
bias, while being more efficient and reproducible" (Appeal Br. 18), and the
claims recite "improvements in the tangible outcome of the method, namely
an output that provides improved rankings to a user" (Reply Br. 3), in other
words, the claims recite a technological improvement that amounts to more
than simply utilizing a computer as a tool to accomplish the evaluation
process.
Appellant's contentions correspond to the reasoning in MPEP
§§ 2106.05(a}-(c), where additional elements integrate the judicial exception
into a practical application. We disagree. Appellant's additional elements
( or the combination of the additional elements) do not apply or use the
evaluation process (the judicial exception) in a manner that imposes a
meaningful limit on the judicial exception, such that it is more than a
drafting effort designed to monopolize the exception. See Alice, 573 U.S. at
221-24 (citing Mayo, 566 U.S. at 78-85). Rather, Appellant's claims recite
computers (including the processor) that are utilized as tools to carry out the
evaluation process (the abstract idea). Utilizing a computer as a tool to
perform the abstract idea does not impose a meaningful limit on the abstract
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idea. See MPEP § 2106.05([); see also Alice, 573 U.S. at 223 (finding "if
[the] recitation of a computer amounts to a mere instruction to implement an
abstract idea on a computer that addition cannot impart patent eligibility"
( quotations and internal citations omitted)).
Appellant's claims can be distinguished from patent-eligible claims
such as those in McRO, Enfish, BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) that are directed to
"a specific means or method that improves the relevant technology" (McRO,
837 F.3d at 1314), or "a specific improvement to the way computers
operate" (Enfish, 822 F.3d at 1336), solving a technology-based problem
(BASCOM, 827 F.3d at 1349-52), or a method "rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer [technology]" (DDR Holdings, 773 F.3d at 1257). Contrary to
Appellant's arguments, claim 1 is not a technological improvement or an
improvement in a technology. Appellant's claim 1 does not "improve the
functioning of the computer itself' or "any other technology or technical
field." Alice, 573 U.S. at 225. Nor does it provide a technological solution
to a technological problem. See DDR Holdings, 773 F.3d at 1257; MPEP
§ 2106.05(a). Appellant fails to sufficiently and persuasively explain how
the instant claims are directed to an improvement in the way computers
operate, nor has Appellant identified any technical advance or improvement
or specialized computer components. See Appeal Br. 1 7-19.
As discussed supra, nothing in claim 1, aside from the bare instruction
to perform each step using a "computer system" or a "processor," precludes
a human from performing the evaluation process. The mere automation of a
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process that can be performed by a human is not sufficient to show an
improvement in computer functionality, and the fact that a computer or
processor may increase efficiency-be "more efficient and reproducible"
(Appeal Br. 18}-does not change the abstract-idea analysis. See
Intellectual Ventures, 792 F.3d at 1370 (holding that "merely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea"); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
("[R ]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016).
Moreover, even if Appellant's claimed process includes an improved
algorithm for determining an independent software vendor solution score,
claim 1 does not specify any improvement in how a computer processor
performs the underlying mathematical analysis necessary to perform the
algorithm. In other words, only the abstract ideas in claim 1 are potentially
new (although we make no determination as to novelty or obviousness), not
the way a computer processor operates.
To the extent Appellant contends ranking the scored results (the
independent software vendor solutions) demonstrates significant non-
abstract subject matter (see, e.g., Appeal Br. 18), such activity is merely
extra-solution activity. See MPEP § 2106.05(g).
In summary, "the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools." Elec. Power Grp., 830 F.3d at 1354; see also
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MPEP § 2106.05(±) (emphasis omitted) (instructing Examiners to consider
"[ w ]hether the claim invokes computers or other machinery merely as a tool
to perform an existing process" in determining whether the claim recites
mere instructions to apply the exception), cited in 2019 Revised Guidance,
84 Fed. Reg. at 55, n.30. Thus, we conclude the claims are directed to an
abstract idea that is not integrated into a practical application.
Step 2B Analysis-"Significantly More"
Having concluded Appellant's claims are directed to an abstract idea
under the 2019 Revised Guidance Step 2A analysis, we next address
whether the claims add significantly more to the alleged abstract idea. As
directed by our reviewing court, we search for an "'inventive concept'
sufficient to 'transform the nature of the claim into a patent-eligible
application."' McRO, 837 F.3dat 1312 (quoting Alice, 573 U.S. at217).
The implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (alteration in original) ( quoting Alice, 573 U.S. at 225). The "inventive
concept" "must be significantly more than the abstract idea itself, and cannot
simply be an instruction to implement or apply the abstract idea on a
computer." BASCOM, 827 F.3d at 1349 (citation omitted).
Here, the Examiner rejects claims 1, 2, 5-9, 12-16, 19, and 20 as
being directed to patent-ineligible subject (supra), and concludes that when
"taken alone" or "as an ordered combination" "the additional elements do
not amount to significantly more than the identified judicial exception"
(Final Act. 5) in that "the additional elements" are recited "at a high-level of
generality and the broadest reasonable interpretation includes generically
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recited computer elements ... which do not add a meaningful limitation to
the abstract idea because they would be routine in any computer
implementation" (Final Act. 4 ). See Final Act. 2-6; Ans. 2-11. In other
words, the Examiner determined that Appellant's claims do not add
significantly more. See id.
Appellant, on the other hand, contends the claims "comprise[]
unconventional elements which supply an inventive concept" in that "the
system does not merely use a known or preexisting algorithm or series of
steps to arrive at a ranking of vendor solutions." Instead, "the system ...
assigns weights to a plurality of different factors using a multilevel weighted
scoring process, and determines which of the plurality of possible
independent software vendor solutions is best suited to produce the desired
result, based on ranking." Appeal Br. 18.
Additionally, Appellant contends that because the USPTO did not
make a prior-art rejection in the Final Office Action, the claims "suppl[y] an
inventive concept, and therefore amount[] to significantly more than an
abstract idea" in that the claims "recite a specific, detailed, non-conventional
sequence of steps which do not preempt the entire field, as evidenced by the
novelty and non-obviousness of the claims." Appeal Br. 18.
Appellant fails to persuade us of error in the Examiner's rejection
with respect to the second Alice step. We agree with the Examiner that
Appellant's claim 1 ( and the other pending claims) does not evince an
"inventive concept" that is significantly more than the abstract idea itself. In
particular, Appellant fails to explain how the additional elements (above)
add specific limitations beyond the judicial exception that are not well-
understood, routine, and conventional in the field.
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As previously discussed, claim 1 (and the other pending claims)
merely recites additional non-abstract elements ( above }-specifically the
computer and processor-to perform the evaluation process (the abstract
idea).
Appellant's Specification describes the processor and computer as
conventional (generic) computers performing traditional computer functions.
See, e.g., Spec. ,r,r 77 ("These computer program instructions may be
provided to a processor of a general purpose computer ... or other
programmable data processing apparatus ... such that the instructions,
which execute via the processor of the computer ... [ carry out] the
functions/ acts specified.").
Accordingly, Appellant's Specification itself describes the additional
elements as being well understood, routine, and conventional. Such
conventional computer processes operating on conventional computer
hardware "do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning, 839 F.3d at 1096 (citing DDR
Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under§ 101 of independent claim 1, independent
claims 8 and 15, and dependent claims 2, 5-7, 9, 12-14, 16, 19, and 20,
which depend from claims 1, 8, and 15 (respectively) and which were not
separately argued with specificity.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims 1,
2, 5-9, 12-16, 19, and 20 under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner's rejection of claims 1, 2, 5-9, 12-16, 19,
and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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