Ex Parte Collopy et al

Patent Trial and Appeal Board

Jan 10, 2018

12624366 (P.T.A.B. Jan. 10, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/624,366 11/23/2009 Fred Collopy VSBLP101USH 8172
23623 7590 01/12/2018
AMIN, TUROCY & WATSON, LLP
127 Public Square
57 th Floor, Key Tower
CLEVELAND, OH 44114
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
hmckee@thepatentattomeys.com
rveri@thepatentattorneys.com
docket @ thepatentattorney s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRED COLLOPY,
CRAIG ALLEN NARD, HIMANSHU S. AMIN,
GREGORY TUROCY, SEYED VAHID SHARIFI TAKIEH,
RONALD CHARLES KROSKY, DAVID NOONAN,
GUSTAVO ARNALDO NARVAEZ, and BRIAN ASQUITH
Appeal 2016-006910
Application 12/624,366
Technology Center 3600
Before ERIC S. FRAHM, STEVEN M. AMUNDSON, and
JASON M. REPKO, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 4, 5, 7—11, 15, 16, 18, and 20-25, i.e., all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Great Lakes Incubator,
LLC. Br. 2.
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Application 12/624,366
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates generally to
insurance benefits and optimization thereof and, more specifically, to
monetization of knowledge of operation[al] characteristics of an insured
entity.” Spec. 12.2 The Specification explains that “[a] provider of
insurance benefit(s) supplies knowledge of operation[al] characteristics of an
insured entity in exchange for a financial compensation,” and “[t]he provider
of insurance benefit(s) can exploit the financial compensation to afford, at
least in part, incentives directed to discounted insurance benefit(s) or
subsidized service(s).” Abstract.
Exemplary Claims
Independent claims 1 and 11 exemplify the claims at issue and read as
follows:
1. A system, comprising:
a processor that executes or facilitates execution of
computer executable components stored in a memory, the
computer executable components comprising:
a collection component that receives information related
to performance of a vehicle;
a transaction component that commits an agreement to
supply at least a portion of the information to a third party
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed November 23, 2009; “Non-Final Act.” for the Non-Final
Office Action, mailed October 27, 2014; “Final Act.” for the Final Office
Action, mailed June 24, 2015; “Br.” for the Appeal Brief, filed February 24,
2016; and “Ans.” for the Examiner’s Answer, mailed April 22, 2016.
Although Appellants submitted a Supplemental Appeal Brief on
November 1, 2016, to correct a typographical error, the citations in this
decision refer to the earlier filed Appeal Brief.
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advertiser and provide an incentive offer to an operator of the
vehicle to receive an advertisement in exchange for financial
compensation from the third party advertiser;
a benefit generation component that supplies at least the
portion of the information to the third party advertiser in
accordance with the agreement;
a benefit display component that renders the
advertisement to the operator, wherein the advertisement is
customized based in part on at least the portion of the
information supplied to the third party advertiser;
an interface component that receives a response to the
advertisement by the operator; and
a billing component that receives at least a part of the
financial compensation from the third party advertiser based on
the response to the advertisement.
11. A method, comprising:
collecting, by a system comprising a processor,
information related to an operation of a vehicle;
committing, by the system, an agreement to supply at
least a portion of the information to a third party device
associated with a third party advertiser and provide an incentive
offer to an occupant of the vehicle in exchange for financial
compensation from the third party advertiser;
conveying, by the system, at least the portion of the
information to the third party device in accordance with the
agreement;
rendering, by the system, the incentive offer to the
occupant based on an inferred safety level for the operation of
the vehicle, wherein the incentive offer is tailored to the
occupant based in part on at least the portion of the information
conveyed to the third party;
receiving, by the system, a response to the incentive
offer, wherein the response is received during the inferred
safety level for the operation of the vehicle;
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allocating, by the system, resources for the incentive
offer that comprises advertisement of a product, wherein the
resources comprise a component located in the vehicle or a
device communicatively coupled to the vehicle; and
collecting, by the system, payment from the third party
advertiser based on receiving the response to the incentive
offer, the collecting payment comprises receiving compensation
from the third party advertiser if a transaction related to the
product is completed as a result of the advertisement of the
product.
Br. 65—67 (Claims App.).
The Rejection on Appeal
Claims 1, 4, 5, 7—11, 15, 16, 18, and 20-25 stand rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter. Non-Final
Act. 2—3; Final Act. 2.
ANALYSIS
We have reviewed the rejection in light of Appellants’ arguments that
the Examiner erred. For the reasons explained below, we disagree with
Appellants’ assertions regarding Examiner error. We concur with the
Examiner’s conclusion concerning unpatentability under § 101. We adopt
the Examiner’s findings and reasoning in the Non-Final Office Action
(Non-Final Act. 2—3), Final Office Action (Final Act. 4—7), and Answer
(Ans. 2—10). We add the following to address and emphasize specific
findings and arguments.
The § 101 Rejection of Claims 1, 4, 5, 7—11, 15, 16, 18, and 20—25
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
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manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 “contains an important implicit exception” for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, “determine whether the claims at issue are directed to” a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements” add enough to
transform the “nature of the claim” into “significantly more” than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayo!Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an “inventive concept.” Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An “inventive concept” requires more than “well-
understood, routine, conventional activity already engaged in” by the
relevant community. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79—80). But “an
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inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.” BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Under step two, “an inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
A Prima Facie Case of Unpatentability
Appellants argue that the Examiner erred in rejecting the independent
claims 1,11, and 20 under § 101 because the Examiner “fails to address
each element of the independent claim separately as required under the law
in a 35 U.S.C. § 101 analysis of patent-eligible subject matter,” and
therefore “has not made a prima facie case that the independent claim is
abstract and not patentable . . . .” Br. 27, 43 44, 58. Appellants similarly
argue that the Examiner “fails to address each element of’ each dependent
claim, and therefore “has not made a prima facie case that the dependent
claim is abstract and not patentable . . . .” Id. at 58—63. Appellants assert
that the Examiner “fails to meet the burden required to reject these claims.”
Id. at 27, 44, 58.
Appellants’ arguments do not persuade us of Examiner error because
they rest on an incorrect view a patent-eligibility analysis according to Mayo
and Alice. Under Mayo!Alice step one, “the claims are considered in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Further, the Federal Circuit has repeatedly explained 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.
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2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
“PTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies 35 U.S.C. § 132, in ‘notifying] the applicant. . . [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.’” In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132) (alterations
in original). The PTO violates § 132 “when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to counter the
grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.
1990). But if the PTO “adequately explain[s] the shortcomings it perceives
. . . the burden shifts to the applicant to rebut the prima facie case with
evidence and/or argument.” Hyatt, 492 F.3d at 1370.
We conclude that the Non-Final Office Action and Final Office
Action adequately explain the § 101 rejection. See Non-Final Act. 2—3;
Final Act. 2, 4—7. The Examiner determines that the claims are “directed to
the abstract idea of business principles,” in particular, “a fundamental
economic practice of monetizing] knowledge of operational]
characteristics of an insured entity.” Final Act. 5, 7 (emphasis omitted); see
Non-Final Act. 2; Ans. 6. The Examiner also determines that the additional
elements in the claims individually and in combination amount to “no more
than: (i) mere instructions to implement the [abstract] idea on a computer,
and/or (ii) recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.” Final
Act. 5, 7; see Non-Final Act. 2—3.
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The Examiner’s statements satisfy § 132 because they apply the
Mayo!Alice analytical framework and apprise Appellants of the reasons for
the § 101 rejection under that framework. As discussed in more detail
below, Appellants recognize the Examiner’s Mayo!Alice analysis and
present arguments regarding each step. See Br. 13—58. Appellants do not
respond by alleging a failure to understand the rejection. Id. at 13—63.
Mayo!Alice Step One
Appellants assert that independent claims 1,11, and 20 “are clearly
not an abstract idea” because they recite: (1) “a combination of components,
elements, steps or means plus function that in total describe a meaningful
improvement to the field of vehicle operation monitoring coupled with
customized advertising and incentive provisioning”; (2) “using a particular
machine”; (3) a “transformation of information”; and (4) “specific
limitations that confine the claims to the particular useful application” of
providing performance information to a third-party advertiser and
commercial information to a vehicle operator. Br. 13—15, 28—30, 44-46.
Appellants’ assertions do not persuade us of Examiner error because
we agree with the Examiner that the claims are “directed to the abstract idea
of business principles,” in particular, “a fundamental economic practice of
monetizing] knowledge of operation[al] characteristics of an insured
entity.” Final Act. 5, 7 (emphasis omitted); see Non-Final Act. 2; Ans. 6.
The claims encompass the business practice of obtaining “financial
compensation” for providing performance information to a third-party
advertiser and commercial information to a vehicle operator.
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Further, the Examiner reasons that:
[t]his is similar to ideas that the courts have found to be abstract
such as concepts relating to advertising, marketing and sales
activities or behaviors abstract, such as using advertising as an
exchange or currency (Ultramercial), managing an insurance
policy (Bancorp), obtaining and comparing intangible data
(Cybersource), and comparing new and stored information and
using rules to identify options (SmartGene).
Ans. 6. Appellants did not file a reply brief and did not distinguish the cases
the Examiner cites.
Appellants’ contentions concerning “a meaningful improvement to the
field of vehicle operation monitoring coupled with customized advertising
and incentive provisioning” do not persuade us of Examiner error because
the claimed systems and methods do not improve the functioning of any
product or technological process. See Alice, 134 S. Ct. at 2358 (explaining
that “the claims in Diehr were patent eligible because they improved an
existing technological process”); see also Ans. 2—3. For example, the claims
do not cover an improved vehicle-monitoring system or method. Rather, the
claims concern “monetization of knowledge of operational] characteristics
of an insured entity.” Spec. 12; see Final Act. 5; Ans. 6.
Appellants’ contentions concerning “using a particular machine” do
not persuade us of Examiner error because implementing an abstract idea
using a “physical machine” does not impart patent eligibility. See Mayo,
566 U.S. at 84. In Alice, for example, “[a]ll of the claims [we]re
implemented using a computer.” 134 S. Ct. at 2353, 2360. “[N]ot every
claim that recites concrete, tangible components escapes the reach of the
abstract-idea inquiry.” In re TLI Commc ’ns LLC Patent Litig., 823 F.3d
607,611 (Fed. Cir. 2016).
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Appellants’ contentions concerning a “transformation of information”
do not persuade us of Examiner error because the Federal Circuit has ruled
that claims covering the transformation of information in one form
(“a functional description of a logic circuit”) into another form (“a hardware
component description of the logic circuit”) were directed to abstract ideas.
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 1150—51
(Fed. Cir. 2016); see Gottschalkv. Benson, 409 U.S. 63, 71—74 (1972)
(holding that claims covering methods for converting binary-coded decimal
numbers to binary numbers did not satisfy § 101).
Appellants’ contentions concerning a “particular useful application”
do not persuade us of Examiner error because “limiting an abstract idea to
one field of use” does not impart patent eligibility. See Bilski v. Kappos,
561 U.S. 593, 612 (2010); see also Parker v. Flook, 437 U.S. 584, 589—90
(1978); Affinity Labs, 838 F.3d at 1259.
Appellants argue that “the present application is a clear improvement
over existing computerized technologies” and existing “technological
systems (e.g., existing vehicle monitoring systems and customized
advertising/incentive systems, etc.).” Br. 13, 15—16, 21, 28, 30, 32, 36—37,
44, 46-47, 51—52. Appellants also argue that “the various embodiments
disclosed by the present application provide improvements to the
functionality and use of a conventional computerized device (e.g., a server,
computer, controller device, a wireless device, etc.).” Id. at 15, 30, 46.
Appellants’ arguments do not persuade us of Examiner error.
“[RJelying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Here, the
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claimed “processor” performs routine tasks involving data collection,
manipulation, and display. See Ans. 5,7. The Federal Circuit has ruled that
claims covering data collection, manipulation, and display were directed to
abstract ideas. See, e.g., Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044, 1047, 105A-56 & n.6 (Fed. Cir. 2017); Intellectual
Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332, 1339-40
(Fed. Cir. 2017); Elec. Power Grp., 830 F.3d at 1351—54.
Appellants assert that: (1) claims 1,11, and 20 require acts that
“inherently cannot be done by humans because humans cannot” perform the
claimed acts; and (2) “the impossibility of implementation by a human”
establishes patent eligibility. Br. 15—16, 20—21, 31—32, 36, 47, 51. But the
inability of a human to accomplish each limitation “does not alone confer
patentability.” See FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).
Appellants cite Intellectual Ventures I v. Capital One and quote the
special master’s analysis for one patent, i.e., the ’081 patent. Br. 24—25,
40-41, 55; see Intellectual Ventures I LLC v. Capital One Fin. Corp.,
No. PWG-14-111, 2015 WL 13609788, at *8 (D. Md. May 12, 2015).
Based on that analysis, Appellants contend that claims 1,11, and 20 are
directed to a “specific implementation” and “not an ‘abstract idea’ of
‘vehicle monitoring and advertising’.” Br. 25, 41, 55—56. Appellants
misplace their reliance on the special master’s analysis in Intellectual
Ventures I v. Capital One. The district court rejected the special master’s
conclusions concerning patent eligibility for the asserted ’081 patent claims
and decided that they did not satisfy § 101. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 127 F. Supp. 3d 506, 509, 515-26 (D. Md. 2015).
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On appeal, the Federal Circuit concluded that “the asserted claims of the
’081 patent d[id] not meet the standard for eligibility under § 101 and
affirm[ed] the district court’s entry of summary judgment” against the
patentee. Intellectual Ventures I, 850 F.3d at 1340-42.
Appellants cite Intellectual Ventures I v. Symantec and quote the
district court’s analysis for one asserted claim, i.e., ’610 patent claim 7.
Br. 25—26, 41—42, 56; see Intellectual Ventures ILLC v. Symantec Corp.,
100 F. Supp. 3d 371, 396, 400 (D. Del. 2015). Based on that analysis,
Appellants contend that claims 1,11, and 20 are directed to an “insurance
centric problem” having “specific computer and network centric
implications,” and therefore patent eligible under Mayo!Alice step one.
Br. 26, 42, 56—57. Appellants misplace their reliance on the district court’s
analysis in Intellectual Ventures I v. Symantec. On appeal, the Federal
Circuit decided that all asserted claims, including ’610 patent claim 7, did
not satisfy § 101. Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d
1307, 1316, 1319—22 (Fed. Cir. 2016). Further, the Examiner determines
that “[t]he claims [here] do not solve a network, internet-centric or
technology centric challenge.” Ans. 2.
Appellants argue that “the claims clearly do not preempt or cover the
full abstract idea of ‘conducting an auction’, and thus are eligible for patent
protection . . . .” Br. 24, 40, 54. That argument does not persuade us of
Examiner error. See Ans. 9—10 (addressing preemption). While preemption
may denote patent ineligibility, its absence does not demonstrate patent
eligibility. See FairWarning, 839 F.3d at 1098. For claims covering a
patent-ineligible concept, preemption concerns “are fully addressed and
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made moot” by an analysis under the Mayo!Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellants note that in PNC Bank v. Secure Axcess, LLC, CBM2014-
00100, 2014 WL 4537440, at *12 (PTAB Sept. 9, 2014), the Board cited
Alice footnote 3 in its analysis under step one. Br. 18—19, 34, 49-50.
Footnote 3 concerns step two, not step one. Alice, 134 S. Ct. at 2355 & n.3.
Footnote 3 and the sentence it relates to read as follows:
We have described step two of this analysis as a search for an
‘“inventive concept’”—i.e., an element or combination of
elements that is “sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible
concept] itself.”3
3 Because the approach we made explicit in Mayo considers all
claim elements, both individually and in combination, it is
consistent with the general rule that patent claims “must be
considered as a whole.” Diamond v. Diehr, 450 U.S. 175,
188 (1981).
Alice, 134 S. Ct. at 2355 & n.3 (alteration in original) (additional citations
omitted).
Mayo!Alice Step Two
Appellants assert that claims 1,11, and 20 satisfy Mayo!Alice step two
because: (1) they recite “complex” and “demonstrably innovative” systems
and methods “with respect to existing technological systems in this field”;
(2) “no art has disclosed or suggested the subject claims”; and (3) the
Examiner “fails to cite suitable references that anticipate or make obvious”
the claimed subject matter. Br. 17, 20—22, 24, 32—33, 35, 37—38, 40, 48-49,
51-53,55.
Appellants’ assertions do not persuade us of Examiner error. “The
search for a § 101 inventive concept is . . . distinct from demonstrating § 102
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novelty.” Synopsys, 839 F.3d at 1151; see Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017). “[Ujnderthe
Mayo!Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.” Genetic
Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
“[A] claim for a new abstract idea is still an abstract idea.” Synopsys,
839 F.3d at 1151. Similarly, a claim for a beneficial abstract idea is still an
abstract idea. SeeAriosa Diagnostics, 788 F.3d at 1379-80. Further, the
Federal Circuit has expressly rejected the notion that “abstract ideas remain
patent-eligible under § 101 as long as they are new ideas not previously well
known, and not routine activity.” Ultramercial, Inc. v. Hulu LLC, 772 F.3d.
709, 714—16 (Fed. Cir. 2014). Thus, the claims’ alleged novelty,
nonobviousness, and benefits fail to provide an “inventive concept” needed
to satisfy § 101. See Ans. 9-10.
We agree with the Examiner that the additional elements in the claims
do not provide meaningful limitations and do not individually or in
combination transform the claims into “significantly more” than patent-
ineligible abstract ideas. See Non-Final Act. 2—3; Final Act. 5, 7; Ans. 7—9.
As additional elements, system claim 1 recites a “processor” for executing
software modules and implicitly requires a “display” and an “interface,”
while method claim 11 recites a “processor,” a “third party device,” and
either a “component” or a “device” attached to a vehicle. Br. 65—67 (Claims
App.) ; see Spec. 127. Thus, the claims recite generic computer components
and nonspecific devices that operate conventionally for data collection,
manipulation, and display. Ans. 5, 7—9; see, e.g., Spec. 129 (disclosing
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“computers (desktop and mobile), smart phones, personal digital assistants
(PDAs), and other electronic devices both wired and wireless”). The
recitation of generic computer components “cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 134 S. Ct.
at 2358.
Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellants assert that the claims “are directed to a vehicle
performance or operation monitoring and customized advertising/
incentivizing problem that did not exist before the recently developed
advanced technologies associated with” data collection and analysis.
Br. 17—18, 33—34, 49. DDR Holdings does not help Appellants. There, the
Federal Circuit determined that certain claims satisfied Mayo/Alice step two
because “the claimed solution amounted] to an inventive concept for
resolving [a] particular Internet-centric problem,” i.e., a challenge unique to
the Internet. DDR Holdings, 773 F.3d at 1257—59; see Synopsys, 839 F.3d
at 1151 (noting that “[i]n DDR Holdings, we held that claims ‘directed to
systems and methods of generating a composite web page that combines
certain visual elements of a ‘host’ website with content of a third-party
merchant’ contained the requisite inventive concept”). The Federal Circuit
explained that the patent-eligible claims specified “how interactions with the
Internet are manipulated to yield a desired result. . . that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.” DDR Holdings, 773 F.3d at 1258. The court reasoned that
those claims recited a technological solution “necessarily rooted in computer
technology” that addressed a “problem specifically arising in the realm of
computer networks.” Id. at 1257.
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The claims here do not address a similar problem and do not contain a
similar inventive concept as the patent-eligible claims in DDR Holdings.
See Ans. 5. The claims here address monetizing knowledge using
information conveyed over a network. See, e.g., Spec. ]Hf 2, 108 (describing
communication over a “conventional network”). Use of a network “does not
transform an otherwise abstract idea into patent-eligible subject matter.”
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014); see
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) (reasoning that use of the Internet to verity a credit-card transaction
does not meaningfully add to the abstract idea of verifying the transaction);
see also Ans. 8—9.
According to the Federal Circuit, “DDR Holdings does not apply
when ... the asserted claims do not ‘attempt to solve a challenge particular
to the Internet.’” Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting TLI Commons, 823 F.3d
at 613). The claims here do not attempt to solve a challenge particular to the
Internet. As the Examiner determines, “[t]he problem solved by the
specification is business related, not technology related.” Ans. 3.
Citing Messaging Gateway Solutions, LLC v. Amdocs, Inc., Nos.
14-732-RGA to 14-737-RGA, 2015 WL 1744343 (D. Del. Apr. 15, 2015),
Appellants contend that claims 1,11, and 20 are “tethered to the technology
(e.g. networks and contextual data) that created issues associated with
equitable and accurate vehicle performance monitoring and advertising/
incentivizing based on the vehicle performance,” and therefore patent
eligible under Mayo!Alice step two. Br. 26—27, 43, 57. That case does not
support Appellants. There, the district court determined that the asserted
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claims resembled the patent-eligible claims in DDR Holdings because they
addressed a “problem specifically arising in the realm of computer
networks,” i.e., a “problem unique to text-message telecommunication
between a mobile device and a computer.” 2015 WL 1744343, at *5
(quoting DDR Holdings, 773 F.3d at 1257). As explained above, however,
the claims here do not address a “problem specifically arising in the realm of
computer networks” and do not contain a similar inventive concept as the
patent-eligible claims in DDR Holdings. See Ans. 2—3.
Although Appellants contend that the claims include “enough to
escape the ineligibility exception under Alice,” Appellants wrongly rely on
the features constituting the abstract ideas to support those contentions.
Br. 22—23, 38, 53. See Intellectual Ventures /, 850 F.3d at 1340-41 (noting
that “the underlying concept embodied by the limitations [alleged to provide
a concrete solution] merely encompasses the abstract idea itself’); see also
Ans. 5 (citing Spec. ^fl[ 28—30, 117—18).
Summary for Independent Claims 1,11, and 20
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claims 1,11, and 20 under
§101. Hence, we sustain the § 101 rejection.
Dependent Claims 4, 5,7-10,15,16,18, and 21-25
For dependent claims 4, 5, 7—10, 15, 16, 18, and 21—25, Appellants
do not argue patent eligibility separately under Mayo!Alice step one or
step two. Br. 27, 44, 58—63. Because Appellants do not argue the claims
separately, we sustain the § 101 rejection of the dependent claims for the
same reasons as the independent claims. See 37 C.F.R. § 41.37(c)(l)(iv).
17
Appeal 2016-006910
Application 12/624,366
DECISION
We affirm the Examiner’s decision to reject claims 1, 4, 5, 7—11, 15,
16, 18, and 20-25.
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(f).
AFFIRMED
18