Ex Parte Dolen

Patent Trials and Appeals Board

Mar 7, 2019

14625531 - (D) (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/625,531 02/18/2015
21971 7590 03/11/2019
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael Dolen
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.
47248-701.201 1030
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
03/11/2019 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL DOLEN
Appeal2018-001764
Application 14/625,531
Technology Center 3600
Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and SCOTT E. BAIN,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 11-30 and 39--42. 2 We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant's invention involves an intermediary application to
facilitate and manage negotiations between a buyer and multiple sellers in
1 Appellant identifies the real party in interest as Bidora, Inc. App. Br. 3.
2 Although the Examiner's Final Rejection includes cancelled claims 1-10
and 31-38, the Examiner nonetheless omits these claims in the restatement
of the rejection on page 3 of the Answer. Accordingly, we present the
correct claim listing here for clarity.
Appeal2018-001764
Application 14/625,531
online reverse auctions. Unlike an ordinary auction where buyers compete
to purchase a good or service, sellers compete in a reverse auction to sell a
good or service to a buyer. To this end, an intermediary application is used
to facilitate and manage negotiations and transactions between the buyer and
sellers. See generally Abstract; Spec. ,r,r 1-7.
Claim 11 is illustrative:
11. Non-transitory computer-readable storage media encoded with a
computer program including instructions executable by a processor to create
an intermediary application integrating with an existing online reverse
auction environment, the reverse auction environment comprising a
database, in a computer memory, of a plurality of sellers, the intermediary
application facilitating and managing negotiations between a buyer and the
plurality of sellers in the existing online reverse auction
environment by providing at least:
a) a software module configured to receive, from the buyer, an offer
to buy prior to the start of the reverse auction or during the reverse
auction and transmit the offer to buy to the existing online reverse
auction environment while offering an anonymity option for the
buyer, wherein the buyer is an individual person or entity, the offer
to buy directed to an item, the item having a price, the off er to buy
comprising a proposed purchase price for the item from the buyer,
the proposed purchase price being equal to or less than the price,
wherein an amount less than or equal to the proposed purchase
price is disclosed to the plurality of sellers;
b) a software module configured to verify availability of funds from
the buyer in the amount of at least a portion of the proposed
purchase price before or concurrent with selection of one or more
bidding sellers and transmit the verification of availability of funds
to the existing online reverse auction environment while
maintaining the anonymity option for the buyer;
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c) a software module configured to receive, from the existing online
reverse auction environment, bids from one or more of the
plurality of sellers, the bids for sale of the item, each bid having a
price for the item, wherein the offer is binding to the buyer if at
least two or more of buyer's criteria for winning the reverse auction
are satisfied;
d) a software module configured to select the one or more bidding
sellers upon the expiration of a time period, each selected seller
bidding on the item at a price equal to or less than the proposed
purchase price;
e) a dynamic sale allocation module configured to apply an algorithm
to allocate sale of the item to a selected seller, the seller receiving
the allocation based on two or more seller characteristics
simultaneously, the two or more seller characteristics selected at
beginning of the reverse auction from the group consisting of:
price, shipping speed, shipping provider, local delivery
availability, local pickup availability, seller rating, seller ranking,
number of previous sales, warranty, payment methods accepted,
and condition of previously delivered items, the allocation
immediately making the sale binding; and
f) a software module configured to distribute the verified funds to the
seller via the existing online reverse auction environment.
THE REJECTION
The Examiner rejected claims 11-30 and 39--42 under 35 U.S.C.
§ 101 as directed to ineligible subject matter. Final Act. 4--8; Ans. 3
( correcting the claim listing). 3
3 Throughout this opinion, we refer to (1) the Final Rejection mailed
December 27, 2016 ("Final Act."); (2) the Appeal Brief filed July 26, 2017
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CONTENTIONS
The Examiner finds that the claims are directed to the abstract idea
of conducting reverse auctions, which is said to be a method of organizing
human activity and/or a fundamental economic practice. Final Act. 4--5.
The Examiner adds that the claims do not include additional elements that
add significantly more than the abstract idea, but merely recite conventional
generic computer functions. Id. 6-7. Based on these findings, the Examiner
concludes that the claims are ineligible under § 101. Id. 4--8.
Appellant argues that the claimed invention is not directed to an
abstract idea. App. Br. 12-17; Reply Br. 5-11. According to Appellant, the
Examiner not only fails to account for the specific recited limitations that are
not directed to an abstract idea, but the recited limitations also add
significantly more to the purported abstract idea to render the claims
eligible. See App. Br. 17-23. Appellant adds that the Examiner's Answer
improperly introduces a new ground of rejection by citing cases different
from those relied upon in the Final Office Action; and, consequently, there
was no opportunity to react to this "new thrust." Reply Br. 5.
ISSUE
Under § 101, has the Examiner erred in rejecting claims 11-3 0 and
39--42 as directed to ineligible subject matter? This issue turns on whether
the claims are directed to an abstract idea and, if so, whether recited
elements----considered individually and as an ordered combination-
("App. Br."); (3) the Examiner's Answer mailed October 10, 2017 ("Ans.");
and (4) the Reply Brief filed December 6, 2017 ("Reply Br.").
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transform the nature of the claims into a patent-eligible application of that
abstract idea.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g., Alice Corp. Pty. 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 Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). That
said, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks and citation
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
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monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
In January 2019, the USPTO published revised guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("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 interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
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ANALYSIS
Claims 11-30 and 39--42: Alice/Mayo Step One
Independent claim 11 recites non-transitory computer-readable
storage media encoded with a computer program including instructions
executable by a processor to create an intermediary application integrating
with an existing online reverse auction environment, where the environment
comprises a database in computer memory of plural sellers, and the
intermediary application facilitates and manages negotiations between a
buyer (which can be an individual person or entity) and the sellers in the
environment by providing at least five software modules and a dynamic sale
allocation module.
The first software module is configured to ( 1) receive, from the buyer,
an offer to buy an item either before or during the reverse auction, and (2)
transmit the offer to the existing online reverse auction environment while
offering an anonymity option for the buyer, where the offer comprises a
proposed purchase price being equal to or less than the item's price, where
an amount less than or equal to the proposed purchase price is disclosed to
the sellers.
The second software module is configured to ( 1) verify availability of
funds from the buyer in the amount of at least a portion of the proposed
purchase price before or concurrent with selecting one or more bidding
sellers, and (2) transmit the verification to the existing online reverse auction
environment while maintaining buyer anonymity.
The third software module is configured to receive bids from the
online reverse auction environment from sellers, where the offer is binding
to the buyer if at least two or more of the buyer's criteria are satisfied.
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The fourth software module is configured to select bidding sellers
upon expiration of a time period, where each selected seller bids on the item
at a price equal to or less than the proposed purchase price.
A dynamic sale allocation module is configured to apply an algorithm
to allocate sale of the item to a selected seller, the seller receiving the
allocation based on two or more seller characteristics simultaneously, where
the characteristics are selected from the recited group when the reverse
auction begins, and the allocation immediately makes the sale binding.
The fifth software module is configured to distribute the verified
funds to the seller via the existing online reverse auction environment.
As the Specification explains, the claimed invention enables
purchasing products and services in reverse auctions via an intermediary
application that solves traditional problems associated with these
transactions, particularly where it is difficult to discern the buyer's
seriousness or veracity, or the buyer may be inexperienced or otherwise lack
negotiating skills-factors that could be exploited that may hinder the
transaction or render it unfair. See Spec. ,r,r 2-7.
By using an intermediary application, however, sellers only know that
a verified buyer is willing to purchase a good or service by committing the
money to make that purchase. Spec. f 7. Notably, sellers do not know who
they are negotiating with, let alone know the buyer's personal information
that would indicate the buyer's background, education, and experience, thus
yielding a more "democratic" negotiation process. Id.
Turning to claim 11, we first note that the claim recites computer-
readable storage media and, therefore, falls within the manufacture category
of § 101. But despite falling within this statutory category, we must still
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determine whether the claim is directed to a judicial exception, namely an
abstract idea. See Alice, 573 U.S. at 217. To this end, we must determine
whether (1) the claim recites a judicial exception, and (2) fails to integrate
the exception into a practical application. See Guidance, 84 Fed. Reg. at 52-
55. If both elements are satisfied, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.
In the rejection, the Examiner finds that claim 11 is directed to the
abstract idea of conducting reverse auctions that organizes human activity
and is a fundamental economic practice. Final Act. 4. To determine
whether a claim recites an abstract idea, we ( 1) identify the claim's specific
limitations that recite an abstract idea, and (2) determine whether the
identified limitations fall within certain subject matter groupings, namely (a)
mathematical concepts4; (b) certain methods of organizing human activity5;
or ( c) mental processes. 6
Here, apart from the recited ( 1) storage media; (2) application; (3)
online environment; ( 4) database; ( 5) computer memory; ( 6) software
4 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
5 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
6 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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modules; and (7) dynamic sale allocation module that can apply an
algorithm, every limitation of claim 11 recites an abstract idea, namely
organizing human activity, by using an intermediary to facilitate and manage
negotiations between a buyer and sellers in a reverse auction. These
mediated commercial interactions fit squarely within the human activity
organization category of the agency's guidelines. See Guidance, 84 Fed.
Reg. at 52 (listing exemplary methods of organizing human activity).
That is, the particular functions of the recited modules, namely ( 1)
receiving an offer to buy an item; (2) verifying the buyer's funds
availability; (3) receiving bids from sellers; (4) selecting a bidding seller
upon time period expiration; ( 5) allocating the item's sale to the selected
seller based on the recited characteristics; and ( 6) distributing the verified
funds to the seller are all functions that a human facilitator or mediator could
perform on behalf of the relevant parties, namely the buyer and sellers in the
reverse auction.
Although the claim recites an abstract idea based on these methods of
organizing human activity, we nevertheless must still determine whether the
abstract idea is integrated into a practical application, namely whether the
claim applies, relies on, or uses the abstract idea in a manner that imposes a
meaningful limit on the abstract idea, such that the claim is more than a
drafting effort designed to monopolize the abstract idea. See Guidance, 84
Fed. Reg. at 54--55. To this end, we (1) identify whether there are any
additional recited elements beyond the abstract idea, and (2) evaluate those
elements individually and collectively to determine whether they integrate
the exception into a practical application. See id.
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Here, the recited (1) storage media; (2) application; (3) online
environment; (4) database; (5) computer memory; (6) software modules; and
(7) dynamic sale allocation module that can apply an algorithm are the only
recited elements beyond the abstract idea, but those additional elements do
not integrate the abstract idea into a practical application when reading claim
11 as a whole. First, we are not persuaded that the claimed invention
improves the computer or its components' functionality or efficiency, or
otherwise changes the way those devices functions, at least in the sense
contemplated by the Federal Circuit in Enfzsh LLC v. Microsoft Corporation,
822 F.3d 1327 (Fed. Cir. 2016), despite Appellant's arguments to the
contrary (App. Br. 14--15; Reply Br. 6-7). The claimed self-referential table
in Enfzsh was a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory. Enfzsh, 822 F.3d at 1339. To
the extent Appellant contends that the claimed invention uses such a data
structure to improve a computer's functionality or efficiency, or otherwise
change the way that device functions (see App. Br. 14--15; Reply Br. 6-7),
there is no persuasive evidence on this record to substantiate such a
contention.
Appellant's reliance on DDR Holdings, LLC v. Hotels.Com, L.P., 773
F.3d 1245 (Fed. Cir. 2014) (App. Br. 17-20; Reply Br. 7-8, 11) is likewise
unavailing. There, instead of a computer network operating in its normal,
expected manner by sending a website visitor to a third-party website
apparently connected with a clicked advertisement, the claimed invention in
DDR generated and directed the visitor to a hybrid page that presented (1)
product information from the third party, and (2) visual "look and feel"
elements from the host website. DDR, 773 F.3d at 1258-59. Given this
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particular Internet-based solution, the court held that the claimed invention
did not merely use the Internet to perform a business practice known from
the pre-Internet world, but rather was necessarily rooted in computer
technology to overcome a problem specifically arising in computer
networks. Id. at 1257.
That is not the case here. As noted previously, Appellant's claimed
invention, in essence, organizes human activity by using an intermediary to
facilitate and manage negotiations between a buyer and sellers in a reverse
auction. Despite Appellant's arguments to the contrary (App. Br. 17-20;
Reply Br. 7-8, 11 ), the claimed invention here is not necessarily rooted in
computer technology in the sense contemplated by DDR where the claimed
invention solved a challenge particular to the Internet. Although the
Appellant's invention uses various computer-based components, including
(1) a computer-based processor used to create an intermediary application
that integrates with an online reverse auction environment comprising a
database in computer memory, and (2) computer-based modules, the claimed
invention does not solve a challenge particular to the computer or the
network used to implement this functionality.
Although the claimed invention requires computer components, it is
the incorporation of those components-not a claimed rule-that
purportedly improves the existing process. Cf Fair Warning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016). In short, the
claimed invention does not focus on improving computers as tools, but
rather certain independently abstract ideas that use computers as tools. See
also Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d
1314, 1324--25 (Fed. Cir. 2016) (noting that components such an "interface,"
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"network," and "database" are generic computer components that do not
satisfy the inventive concept requirement); see also Guidance, 84 Fed. Reg.
at 55 ( citing MPEP § 2106.05([)).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional elements merely (1) apply the abstract
idea on a computer; (2) include instructions to implement the abstract idea
on a computer; or (3) use the computer as a tool to perform the abstract idea.
See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)).
That the claimed invention uses an intermediary to perform various
functions-including facilitating anonymous transactions----does not
integrate the abstract idea into a practical application. It is well settled that
using computer-based, third-party intermediaries, such as brokers, to
facilitate transactions is a fundamental economic practice and, therefore,
organizes human activity under the agency's guidelines. See LendingTree,
LLC v. Zillow, Inc., 656 F. App'x 991, 993-94, 996 (Fed. Cir. 2016)
(unpublished) (holding ineligible claims using a broker to coordinate loan
applications between an Internet user and plural lenders to enable the lenders
to compete with each other for the user's business because a third-party
intermediary or clearinghouse is a "building block of the modem
economy"); see also Mortgage Grader, 811 F.3d at 1318, 1324 (holding
ineligible claims enabling borrowers to shop for loan packages anonymously
using a computer); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1334 (Fed.
Cir. 2012) (noting that using a clearinghouse, without more, is of no
consequence in determining eligibility); Guidance, 84 Fed. Reg. at 52.
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Similar to the computer-based anonymous loan shopping system in
Mortgage Grader, and the computer-based system in LendingTree that
enabled multiple lenders to compete simultaneously for a potential
borrower's business, the claimed invention here is not directed to specific
improvements in the way computers and networks carry out their basic
functions. Rather, the claimed invention merely uses computers to facilitate
and manage negotiations between a buyer and sellers anonymously-a
fundamental economic practice-and does not, therefore, integrate the
abstract idea into a practical application.
In conclusion, although the recited functions may be beneficial by
using an intermediary to facilitate and manage negotiations between a buyer
and sellers in a reverse auction, a claim for a useful or beneficial abstract
idea is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379-80 (Fed. Cir. 2015).
We, therefore, agree with the Examiner that claim 11 is directed to an
abstract idea.
Claims 11-30 and 39-42: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 11 's additional recited
elements, namely the (1) storage media encoded with a computer program;
(2) an application; (3) an online environment; (4) a database; (5) a computer
memory; ( 6) software modules; and (7) a dynamic sale allocation module
that can apply an algorithm----considered individually and as an ordered
combination----do not provide an inventive concept such that these additional
elements amount to significantly more than the abstract idea. See Alice, 573
U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the
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claimed invention merely uses generic computing components to implement
the recited abstract idea.
To the extent that Appellant contends that the recited limitations,
including the modules' particular recited functionality, add significantly
more to the abstract idea to provide an inventive concept under Alice/Mayo
step two (see App. Br. 17-23; Reply Br. 8-11 ), these limitations are not
additional elements beyond the abstract idea, but rather are directed to the
abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56
(instructing that additional recited element(s) should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitation( s)
that are not well-understood, routine, and conventional in the field, or (2)
simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d)).
Rather, the (1) storage media encoded with a computer program; (2)
an application; (3) an online environment; (4) a database; (5) a computer
memory; ( 6) software modules; and (7) a dynamic sale allocation module
that can apply an algorithm are the additional recited elements whose
generic computing functionality is well-understood, routine, and
conventional. Accord Ans. 6-7 (finding that the claims' additional recited
computer-based elements provide routine computer functionality to
automate the recited auction functionality and transfer funds). Appellant's
arguments in this regard (see App. Br. 17-23; Reply Br. 8-11) are, therefore,
unpersuasive.
In conclusion, we do not find that the additional recited elements-
considered individually and as an ordered combination-add significantly
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more to the abstract idea to provide an inventive concept under Alice/Mayo
step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 11, and claims 12-30 and 39--42 not argued separately with
particularity. 7
CONCLUSION
The Examiner did not err in rejecting claims 11-30 and 39--42 under
§ 101.
DECISION
We affirm the Examiner's decision to reject claims 11-30 and 39--42.
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
7 Although Appellant contends that the Examiner's Answer improperly
introduced a new ground of rejection (Reply Br. 5), this matter is
petitionable-not appealable-and is, therefore, not before us. See 37
C.F.R. § 41.40; see also MPEP 1207.03(b) (explaining this rule); MPEP §
706.01 ("[T]he Board will not hear or decide issues pertaining to objections
and formal matters which are not properly before the Board."); MPEP §
1201 ("The Board will not ordinarily hear a question that should be decided
by the Director on petition .... ").
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