Ex Parte de Vries et al

Patent Trial and Appeal Board

Mar 4, 2019

14492597 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/492,597 09/22/2014
127350 7590 03/06/2019
Steptoe & Johnson LLP
1330 Connecticut Avenue NW
Washington, DC 20036
FIRST NAMED INVENTOR
Glen de Vries
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.
20622.0050 (IDF-50) 3537
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
hfox@steptoe.com
rgreenfeld@steptoe.com
ipdocketing@steptoe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLEN DE VRIES,
MLADEN LAUDANOVIC,
and ANGEL JANEVSKI
Appeal2017-003229 1
Application 14/492,5972
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 6 and 8-14. We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was conducted on February 14, 2019.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
August 1, 2016), Supplemental Brief (Supp. Br., filed "February 5, 2019),
Reply Brief ("Reply Br.," filed January 4, 2017), and the Examiner's
Answer ("Ans.," mailed November 4, 2016) and Final Office Action ("Final
Act.," mailed September 30, 2015).
2 Appellants identify Medidata Solutions, Inc., as the real party in interest.
Appeal Br. 3.
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We AFFIRM.
CLAIMED INVENTION
Appellants' claims relate to a method and system for monitoring
clinical trial progress which "includes calculating progress curves for
clinical trial states" (Abstract).
Claims 6 and 11 are the independent claims on appeal. Claim 6,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
6. A system for monitoring progress of a clinical trial,
compnsmg:
[a] a data collector including a processor for collecting
data from at least one clinical trial database and for producing
current statuses of the trial and historical audits;
[b] an historical statuses reconstructer including a
processor for converting the current statuses and historical audits
to generate aggregated tracking data;
[ c] a progress curve generator including a processor for
converting the aggregated tracking data to calculate a first
progress curve for a first state of the clinical trial over a time
period and a second progress curve for a second state of the
clinical trial over the same time period; and
[ d] a progress tracking service for transmitting first and
second progress curves to a user, wherein the progress curve for
a state comprises an amount of datapages within that state.
REJECTION
Claims 6 and 8-14 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
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ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue the pending claims as a group (Appeal Br. 5-17;
Reply Br. 3-15). We select independent claim 6 as representative, and the
The remaining claims stand or fall with claim 6. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
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 id. 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
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
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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, 192
(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 (Gottschalk, 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."). Having
said that, 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
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
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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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("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, i.e., that "apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception." Guidance at 53; see also MPEP § 2106.05(a}-(c), (e}-
(h).
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
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Guidance.
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims "are directed to the abstract idea of
organizing clinical trial documents using a progress curve" (Final Act. 2;
Ans. 2), and more particularly,
directed towards using a general processor to carry out basic
computer functions of organizing clinical trial documents using
a progress curve. The abstract idea is similar to the abstract idea
of using categories to organize, store, and transmit information
( categorize the different aggregated tracking curve into progress
curves) ( Cyberfone ); comparing new ( collecting data from
clinical trial databases) and stored information (historical
statuses) and using rules (how to generate progress curves based
on information) to identify options (progress curves)
( SmartGene).
Ans. 3; see also id. at 4--5. The Examiner also determined that the claims do
not include limitations that amount to "significantly more" than the abstract
idea itself "because the claims are using general computer [sic] to carry out
general computer functions" (Final Act. 2).
We are not persuaded, as an initial matter, by Appellants' argument
that the Examiner erred in determining that claim 6 is directed to an abstract
idea (Appeal Br. 5-12; see also Reply Br. 3-9; Supp. Br. 7-11). The
Federal Circuit has explained that "the 'directed to' inquiry applies a stage-
one filter to claims, considered in light of the [S]pecification, based on
whether 'their character as a whole is directed to excluded subject matter."'
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
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(quoting Internet Patents Corp. v. Active Network, Inc, 790 F.3d 1343, 1346
(Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
"abstract idea" for which computers are invoked merely as a tool. See id.
at 1335-36. Here, the Specification, including the claim language, make
clear that the claims focus on an abstract idea, and not on any improvement
to computer technology and/or functionality.
The Specification is titled "METHOD AND SYSTEM FOR
MONITORING CLINICAL TRIAL PROGRESS." The Background section
of the Specification describes that clinical trials "are generally very
expensive to undertake and they often take a long time to complete" (Spec.
,r 1 ). The Specification identifies that
[ s ]ite and study monitoring have typically been performed with
significant time lags and with a fairly coarse view of the data
collection and management. Traditional data monitoring tools
may utilize only the current status of data elements (sometimes
called "object status") and may not include input from historical
changes in the data collection process.
Id. ,r 16. According to the Specification, traditional monitoring techniques
provide adequate information about the present status of a clinical trial, "but
may not allow adequate insight into the events that preceded the current
state" (id.). To address these drawbacks, the present claims "allow the
monitoring of a clinical trial by viewing the current and prior statuses of
various data elements" (id. f 16), and thus, enable the progress of a clinical
trial to be expressed in terms of states in the lifetime of a datapage (id. ,r 17).
Understood in light of the Specification, independent claim 6 is, thus,
directed to "[a] system for monitoring progress of a clinical trial," and
includes a processor for "collecting data," "converting the [data] to generate
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aggregated tracking data," "converting the aggregated tracking data to
calculate a first [and second] progress curve for a first [and second] state of
the clinical trial over a time period," and "transmitting" the progress curves
to a user. Thus, we agree with the Examiner that independent claim 6 is
directed broadly to monitoring or tracking the progress of a clinical trial
usmg a process curve.
The Federal Circuit has consistently held that abstract ideas include
the concepts of collecting data, analyzing the data, and displaying the results
of the collection and analysis, including when limited to particular content.
See, e.g., 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); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) ("As many cases make clear, even if a process of collecting
and analyzing information is 'limited to particular content' or a particular
'source,' that limitation does not make the collection and analysis other than
abstract." (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing
cases))). Cf Guidance at 52-53.
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in independent claim 6 invoke
any assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
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or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
("[ A ]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.").
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a "practical application,"
as that phrase is used in the revised Guidance. See Guidance, 55.
It also is significant here that although independent claim 6 recites
that the system processes are performed by "a processor," the processes can
be performed by a human, e.g., mentally or manually, using a pen and paper,
without the use of a computer network or any other machine. 3 For example,
the data can be collected manually (see Spec. ,r,r 27, 56), the collected data
can be converted into aggregated data and subsequently converted into a first
and second progress curves, either mentally or manually (see Spec. ,r,r 26,
28, 51-52), and then the first and second progress curves can be transmitted
to a user orally or through a written communication (see Spec. ,r,r 29-30).
The law is clear that a claim whose steps can be performed in the
human mind or by a human using a pen and paper is directed to a patent-
ineligible mental process, i.e., to an abstract idea. See CyberSource Corp. v.
3 We note that independent claim 11 does not even recite that the method
steps are performed by a processor or a computer.
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Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011); see also
Gottschalk, 409 U.S. at 67 ("Phenomena of nature ... , mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work."). Moreover, 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. 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.").
Appellants argue that the Examiner has overgeneralized the claims
and that the Examiner's characterization "of the claims as being directed to
'organizing clinical trial documents using a progress curve"' is incorrect
(Appeal Br. 5-9; Reply Br. 4--5). Appellants' argument is not persuasive at
least because there is no requirement that the Examiner's formulation of the
abstract idea copy the claim language. The Examiner's characterization
here, moreover, is fully consistent with the Specification, as discussed
above. That independent claim 6 includes more words than the phrase the
Examiner used to articulate the abstract idea to which the claim is directed is
an insufficient basis to persuasively argue that the claim language has been
mischaracterized or that the Examiner has otherwise failed to consider all of
the limitations of the claim. See Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).
An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed
abstract idea could be described as generating menus on a
computer, or generating a second menu from a first menu and
sending the second menu to another location. It could be
described in other ways, including, as indicated in the
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specification, taking orders from restaurant customers on a
computer.
Appellants also argue that the claims are not directed to an abstract
idea because "Appellant[s'] invention does not prevent others from tracking
the progress of a clinical trial in other ways" (Appeal Br. 15-17; Reply
Br. 14). That argument is not persuasive of Examiner error at least because
preemption is not the sole test for patent-eligibility.
There is no dispute that the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption." Alice Corp., 573 U.S. at 216. But,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ f]or this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 215). "[P]reemption may
signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility." Id.
Appellants further argue that the pending claims are directed to an
improvement in computer operation by claiming improved approaches to
"convert[ing] the data fields, data records, and datapages to current and
historical statuses of the clinical trial, generat[ing] aggregated tracking data,
convert[ing] that data to calculate progress curves for various states of the
trial over specific time periods, and, in some cases, determin[ing] the delay
in a trial using those calculated progress curves" (Appeal Br. 12-15 (citing
Enfish, 822 F.3d at 1327). However, there is a fundamental difference
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between computer functionality improvements, on the one hand, and uses of
existing computers as tools to perform a particular task, on the other.
Indeed, the Federal Circuit applied this distinction in Enfzsh in rejecting a
§ 101 challenge at the step one stage of the Mayo/Alice analysis because the
claims at issue focused on a specific type of data structure, i.e., a self-
referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data, and
not on asserted advances in uses to which existing computer capabilities
could be put. Enfzsh, 822 F.3d at 1335-36.
We find no parallel here between claim 6 and the claims in Enfzsh nor
any comparable aspect in claim 6 that represents "an improvement to
computer functionality." In this regard, we note that the Specification
discloses that "[t]here are several ways to calculate the progress curves,"
e.g., "calculate and store in real-time all datapage status rollups and changes
at any datapoint state change," "compute datapage states periodically at
regular time intervals ( e.g. daily) and then calculate and store the resulting
progress curves," and by "reconstructing datapage statistics historically from
a historical trail of datapoint state changes ( e.g., audit trails)" (Spec. ,r 25).
The alleged advantages that Appellants identify do not concern an
improvement to computer capabilities or provide details on the technological
manner in which the steps are performed, but instead relate to an alleged
improvement in "monitor[ing] the progress of a trial, which, up until now,
has not been adequately performed" (Spec. ,r 1) through a process in which a
computer is used as a tool in its ordinary capacity (see, e.g., Spec. ,r 28).
We also find no parallel between claim 6 and the claim at issue in
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
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2016) (see Reply Br. 9--11). Appellants assert that like the claims in McRO,
independent claim 6 is patent-eligible because it provides a rule-based type
of clinical trial monitoring that "was not performed by a computer or was
done very simply" (Reply Br. 10). To support its argument, Appellants
assert that
[b ]efore Appellant[ s '] invention, to the extent the progress of a
clinical trial was tracked, a tracker may have needed to track
individual patients, possibly by traveling to each site to do so.
See Specification ,r 0056. Such tracking involved "significant
time lags" without a "detailed view of the data collection and
management."
Reply Br. 10.
The Federal Circuit premised its determination that the claims in
McRO were patent-eligible, not merely on the specificity of the claimed
animation scheme, but rather on the fact that the claims, when considered as
a whole, were directed to a technological improvement over the existing,
manual 3-D animation techniques and used limited rules in a process
specifically designed to achieve an improved technological result in
conventional industry practice. We are not persuaded that a comparable
situation is presented here. As our reviewing court has made clear, "relying
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).
Appellants further argue that independent claim 6 is patent eligible
under the new Guidance because the "claims are directed to a practical,
limited application" (Supp. Br. 7-11). However, we determine that
independent claim 6 does not "apply, rely on, or use the judicial exception in
a manner that imposes a meaningful limit on the judicial exception, such that
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the claim is more than a drafting effort designed to monopolize the judicial
exception," i.e., the claim does not integrate the abstract idea into a practical
application. See Guidance, 55. Here, independent claim 6 recites a generic
processor that performs the functions of the abstract idea, i.e., collecting,
converting, calculating, and transmitting data, without particularity. And, as
our reviewing courts have made clear, the addition of a generic computer or
other conventional technology does not improve the computer so as to
transform an abstract idea into a patent-eligible application. 4 See Alice, 573
U.S. at 225-26 ("the claims at issue amount to 'nothing significantly more'
than an instructions to apply the abstract idea of intermediated settlement
using some unspecified, generic computer."); Elec. Power Grp., 830 F.3d at
1355.
Nothing in the claims, understood in light of the
specification, requires anything other than off-the-shelf,
conventional computer, network, and display technology ....
We have repeatedly held that such invocations of computers
and networks that are not even arguably inventive are
insufficient to pass the test of an inventive concept in the
application of an abstract idea.
(internal quotations omitted).
Appellants last argue that the present claims are patent-eligible
because they are similar to claim 1 of the USPTO's Example 42 in the
"Subject Matter Eligibility Examples: Abstract Ideas," published January 7,
2019 ("2019 Eligibility Examples") (Supp. Br. 7-11). More particularly,
4 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See 2019 Revised
Guidance, 84 Fed. Reg. at 55.
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Appellants argue that the limitations of independent claim 6 provide "a
marked improvement over the prior art that was 'performed with significant
time lags and with a fairly coarse view of the data collection and
management' process and did 'not allow adequate insight into the events that
preceded the current state"' (Supp. Br. 10-11).
The difficulty with Appellants' argument is that exemplary claim 1 of
Example 42 was deemed patent-eligible because it provided a specific
improvement over prior art systems by allowing remote users to share
information in real time in a standardized format regardless of the format in
which the information was input by the user (see 2019 Eligibility Examples,
18-19). Thus, exemplary claim 1 of example 42 addressed technological
difficulties related to incompatible computer formats, disparate geographic
locations, and the untimely sharing of information (see id. at 17). Appellants
have not demonstrated that the present claims provide such a specific
improvement over prior art systems.
Turning to step two of the Mayo/Alice framework, Appellants argue
that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because they recite significantly more than an
abstract idea in light of BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (Reply Br. 10-16).
However, we can find no parallel between the present claims and those at
issue in either BASCOM or Amdocs.
Appellants argue that independent claim 6, like BASCOM, is patent-
eligible because it "includes concrete steps regarding converting current
statuses and historical audits to generate aggregated tracking data, which are
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then used to calculate progress curves" (Reply Br. 12). We do not agree,
however, that BASCOM is sufficiently analogous to control the outcome
here.
In BASCOM, the Federal Circuit held that the second step of the
Mayo/ Alice framework was satisfied because the claimed invention
"represents a 'software-based invention[] that improve[s] the performance
of the computer system itself."' BASCOM, 827 F.3d at 1351 (stating that
like DDR Holdings, where the patent "claimed a technical solution to a
problem unique to the Internet," the patent in BASCOM claimed a
"technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems ...
making it more dynamic and efficient") ( citations omitted). Here,
Appellants argue that independent claim 6 is patent-eligible because it
"includes concrete steps regarding converting current statuses and historical
audits to generate aggregated tracking data, which are then used to calculate
progress curves" (Reply Br. 12). The difficulty with Appellants' argument
is that Appellants do not persuade us that "converting current statuses and
historical audits to generate aggregated tracking data, which are then used to
calculate progress curves" is a technological improvement, as opposed to an
improvement in a business practice for which generic computer components
are used in their ordinary capacity (see Spec. ,r,r 14, 28, 30).
We also see no parallel between the present claims and the claims in
Amdocs (see Reply Br. 15-16). In Amdocs, the Federal Circuit held the
claim was patent eligible because the claim entails an unconventional
technological solution ( enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
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massive databases). Although the solution required generic components, the
court determined that "the claim's enhancing limitation necessarily requires
that these generic components operate in an unconventional manner to
achieve an improvement in computer functionality" and that the "enhancing
limitation depends not only upon the invention's distributed architecture, but
also depends upon the network devices and gatherers - even though these
may be generic - working together in a distributed manner." Amdocs, 841
F.3d at 1300--01.
Appellants argue that independent claim 6 is patent-eligible in light of
Amdocs because its "arrangement is an 'unconventional technological
solution' to the problems of time lag in tracking the progress of a clinical
trial and a lack of accurate information" (Reply Br. 16). However,
Appellants' argument is not persuasive because Appellants do not identify
any "distributed architecture" comparable to that in Amdocs or otherwise
establish that the generic components recited in the pending claims operate
in an unconventional manner.
Appellants further argue the Examiner has failed to establish that the
additional elements of independent claim 6 are well-understood, routine, and
conventional to a skilled artisan in the relevant field (Supp. Br. 3 ( citing
Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018))).
Appellants' argument is not persuasive, at least because it could not
be clearer from Alice, that under step two of the Mayo/Alice framework
(i.e., step 2B), the elements of each claim are considered both individually
and "as an ordered combination" to determine whether the additional
elements, i.e., the elements other than the abstract idea itself, "transform the
nature of the claim" into a patent-eligible application. Alice Corp.,
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573 U.S. at 217. See Mayo, 566 U.S. at 72-73 (requiring that "a process that
focuses upon the use of a natural law also contain other elements or a
combination of elements, sometimes referred to as an 'inventive concept,'
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the natural law itself' (emphasis added)). Stated
differently, the inventive concept under step two of the Mayo/Alice test
cannot be the abstract idea itself:
It is clear from Mayo that the "inventive concept" cannot be the
abstract idea itself, and Berkheimer ... leave[ s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged "inventive concept" is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring). See also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290-91 (Fed. Cir. 2018) ("Our precedent has consistently employed this
same approach. If a claim's only 'inventive concept' is the application of an
abstract idea using conventional and well-understood techniques, the claim
has not been transformed into a patent-eligible application of an abstract
idea.").
As discussed above, there is no indication here that the operations,
recited in independent claim 6, require any specialized computer or
inventive computer components - the Specification indicates just the
opposite (see, e.g., Spec. ,r,r 14, 26-34). Here, the only claim element in
independent claim 6 beyond the abstract idea is the claimed "processor," i.e.,
a generic component, operating in its routine and ordinary capacity to
collect, convert, calculate, and transmit data.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 6 under 35 U.S.C. § 101. Therefore, we
18
Appeal2017-003229
Application 14/492,597
sustain the Examiner's rejection of claim 6, and claims 8-14, which fall with
independent claim 6.
DECISION
The Examiner's rejection of claims 6 and 8-14 under 35 U.S.C. § 101
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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