Ex Parte Jenkins et al

Patent Trials and Appeals Board

Jun 5, 2019

13660711 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/660,711 10/25/2012
87220 7590 06/05/2019
Walder Intellectual Property Law (END)
C/0 Walder Intellectual Property Law, P.C.
1701 N. Collins Blvd.
Suite 2100
Richardson, TX 75080
FIRST NAMED INVENTOR
Jana H. Jenkins
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.
AUS920120326US 1 2100
EXAMINER
ZAMAN, SADARUZ
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
06/05/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JANA H. JENKINS, DAVID C. STEINMETZ, and
WLODEK W. ZADROZNY 1
Appeal2018-003354
Application 13/660,711
Technology Center 3700
Before JENNIFER D. BAHR, JEFFREY A. STEPHENS, and
SEAN P. O'HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-25 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter because they are directed to a judicial exception
( an abstract idea) without significantly more. 2 Final Act. 3. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 International Business Machines Corporation (Appellant) is the applicant
as provided in 3 7 C.F .R. § 1.46 and is identified as the real party in interest.
Appeal Br. 2.
2 The Examiner withdrew a rejection of claims 1-25 under 35 U.S.C. § 112,
first paragraph. Ans. 7; see Final Act. 7.
Appeal2018-003354
Application 13/660,711
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method, in a data processing system comprising at least
one processor and at least one memory, for identifying
information gaps in electronic content, wherein the at least one
processor implements a Question and Answer Creation (QAC)
system, the method comprising:
receiving, by the QAC system of the data processing
system, the electronic content to be analyzed;
analyzing, by the QAC system, the electronic content to
identify at least one of topics or questions within the electronic
content to produce a collection of at least one of topics
or questions associated with the electronic content, wherein the
analysis comprises performing natural language processing of
the electronic content to produce the collection of the at least
one of topics or questions;
comparing, by the QAC system, the collection to the
electronic content, and to a corpus of previously analyzed
electronic content, to produce a set of information gaps in the
electronic content, wherein the comparison of the collection to
the electronic content and to the corpus of previously analyzed
electronic content identifies an actual information coverage of
the electronic content and an expected information coverage of
the electronic content, and the set of information gaps is
determined based on a difference between the actual
information coverage of the electronic content and the expected
information coverage of the electronic content; and
outputting, by the QAC system, a notification of the set
of information gaps to a computing device of a user associated
with the electronic content.
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.
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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 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,
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.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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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
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. ( 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. See USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
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Subject Matter Eligibility Guidance ("2019 Eligibility Guidance"). Under
that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities, such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(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 are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Eligibility Guidance.
DISCUSSION
Appellant relies on the arguments presented for claim 1 in contesting
the rejection of independent claim 13. Appeal Br. 16. Appellant presents
additional argument contesting the rejection of independent claim 25. Id.
Appellant does not present any separate arguments for the dependent claims.
See id. at 28-29. The statements on pages 28-29 of the Appeal Brief do not
constitute separate arguments for patentability of the dependent claims
pursuant to 37 C.F.R. § 4I.37(c)(l)(iv). See In re Lovin, 652 F.3d 1349,
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1357 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted
37 C.F.R. § 4I.37(c)(l)(vii) (the predecessor to§ 4I.37(c)(l)(iv)) as
requiring "more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art"). Appellant has waived any
argument for separate patentability of these dependent claims. See id. We
decide this appeal on the basis of claim 1, and claims 2-25 stand or fall with
claim 1.
(1) Do the claims recite a judicial exception?
The Examiner found that the claims
are directed to the abstract idea of a method, computer program
product and apparatus as that relates to the comparing new and
stored information about electronic content of a data processing
system and using Question and Answer Creation (QAC) logic
determines or identify sets of information gaps between actual
and expected coverage of electronic document. These are
activities that involve comparison of data as received in an
electronic content format to be analyzed with respect to a
previously reported data also stored in an electronic content
format. The resultant set of information gaps of actual and
expected values are compared under instructions to implement
the idea under a QAC logical algorithm or rules. The options
are like observed in the case of Cybersource Corp. v. Retail
Decisions Inc.[, 654 F.3d 1366] (Fed. Cir. 2011)[.] The claims
therein simply require[] one to obtain and compare intangible
data pertinent to business risks, and mere collection and
organization of data regarding credit card numbers and internet
addresses is insufficient to meet "transformation" prong, since
language of [the] claim does not require [the] method to be
performed by [a] particular machine. It calls on a computer to
do nothing that is even arguably an advance in physical
implementations of routine mental information.
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Final Act. 3--4 (italics added). The Examiner analogizes the claims in the
present application to the claims in CyberSource, which recite obtaining
intangible data and comparison of results from data gathering activities, and
were held to be directed to an abstract idea, and to Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), in which a "machine is
used for automation and efficient computation but not found patent eligible
though the data manipulation was done in an environment of determining
electric grid performance." Ans. 11-12.
Claim 1 recites analyzing electronic content to identify at least one of
topics or questions to produce a collection of at least one of topics or
questions associated with the electronic content. Appeal Br. 35 (Claims
App.). This analysis is an evaluation that can be performed in the human
mind, which is a mental process, which is one of the groupings of abstract
ideas enumerated in the 2019 Eligibility Guidance. See also Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (holding ineligible claims "drawn to the abstract
idea of 1) collecting data, 2) recognizing certain data within the collected
data set, and 3) storing that recognized data in a memory" and stating: "The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions. And banks
have, for some time, reviewed checks, recognized relevant data such as the
amount, account number, and identity of account holder, and stored that
information in their records.").
Claim 1 also recites comparing the collection to the electronic content
and to a corpus of previously analyzed content to produce a set of
information gaps in the electronic content, wherein the comparison identifies
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an actual information coverage of the electronic content and an expected
information coverage of the electronic content, and the set of information
gaps is determined based on a difference between the actual information
coverage and the expected information coverage. Appeal Br. 35 (Claims
App.). This comparison is an evaluation that can be performed in the human
mind, which is a mental process, which is one of the groupings of abstract
ideas enumerated in the 2019 Eligibility Guidance. See also In re BR CAI &
BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 763
(Fed. Cir. 2014) (concluding that the concept of "comparing BRCA
sequences and determining the existence of alterations" is an "abstract
mental process").
Independent claim 25 recites "a processor comprising content gap
checking (CGC) logic" configured to perform the aforementioned analyzing
and comparing steps recited in claim 1. Appeal Br. 44--45. Thus, claim 25
also recites evaluations that can be performed in the human mind, which are
mental processes, which is one of the grouping of abstract ideas enumerated
in the 2019 Eligibility Guidance.
Accordingly, the Examiner correctly found that independent claims 1
and 25 recite an abstract idea (mental processes).
(2) Do the claims recite additional elements that integrate the judicial
exception into a practical application?
Following our Office guidance, having found that claims l and 25
recite a judicial exception, namely, mental processes, we are instructed next
to determine whether the claim recites "additional elements that integrate the
judicial exception into a practical application (see MPEP § 2106.05(a}-(c),
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( e }-(h) ). " See 2019 Eligibility Guidance. This evaluation requires us to
determine whether an additional element or a combination of additional
elements in the claim applies, relies on, or uses 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
exception. If the recited judicial exception is integrated into a practical
application, the claim is not "directed to" the judicial exception.
The additional limitations of claim 1 are steps of receiving, by the
QAC system of a data processing system, electronic content and outputting,
by the QAC system, a notification of the set of information gaps produced in
the comparing step. Appeal Br. 35 (Claims App.). Claim 25 recites a
processor comprising content gap checking (CGC) logic and a
structure/coverage information storage device coupled to the processor,
wherein the CGC logic is configured to perform the aforementioned
analyzing and comparing steps, as well as steps of receiving electronic
content and outputting a notification of the set of information gaps produced
in the comparing step. Id. at 44--45.
The processor and information storage device are simply generic
computer components. Simply reciting a generic computer component that
performs in a generic manner does not integrate an abstract idea into a
practical application. See, e.g., Alice, 573 U.S. at 223 ("[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention."); see also 2019 Eligibility Guidance
(identifying "merely us[ing] a computer as a tool to perform an abstract
idea" as an example of when an abstract idea has not been integrated into a
practical application). The CGC logic is software provided in the processor
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to perform the analysis and comparing steps to determine if there are
information gaps in the content as set forth in claim 1, and "may be
configured with algorithms and logic for performing such analysis on
unstructured content using pattern matching, keyword matching, image
analysis, or any known analysis techniques for extracting information from
unstructured content." See Spec. ,r,r 59-62. We find no indication in the
Specification, nor does Appellant direct us to any indication, that the
operations recited in claims 1 and 25 invoke any assertedly inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. See Final Act. 5 (pointing out that the
machine (i.e., the computer) is recited only nominally and generically, such
that the claims cover "any machine capable of performing the claimed steps
when proper instructions are provided"); 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.").
The receiving step is simply a generic step of data collection, which is
insignificant extra-solution activity. See, e.g., CyberSource, 654 F.3d at
1370 ("We have held that mere '[data-gathering] step[s] cannot make an
otherwise nonstatutory claim statutory."' (alterations in original) ( quoting In
re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see also 2019 Eligibility
Guidance (identifying "add[ing] insignificant extra-solution activity to the"
abstract idea as an example of when an abstract idea has not been integrated
into a practical application). Likewise, the step of outputting a notification
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of the set of information gaps ( the result of the comparing step) is simply
insignificant post-solution activity. See Elec. Power Grp., 830 F.3d at 1353
(pointing out "that merely presenting the results of abstract processes of
collecting and analyzing information, without more ( such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis").
Further, we 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 2019 Eligibility Guidance. See Final Act. 5
(finding that, "[ v ]iewed as a whole, the claims do not purport to improve the
functioning of the computer itself, or improve any other technology or
technical field").
Appellant argues that "the claimed invention is specifically directed to
improvements rooted in computer technology and directed to solving a
problem in the software arts with regard to processing electronic content for
purposes of question and answer creation." Appeal Br. 19; see also id. at 5
( arguing that the present invention provides a technological solution,
namely, "computer mechanisms specifically configured to operate on
electronic content and identify information gaps when a QA system is
searching electronic documents for answers to questions, and to notify
content providers of these information gaps" so they can be corrected).
Appellant adds that "the claimed invention may be used to identify a variety
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of different types of information gaps," as described in the Specification,
thereby offering "clear advantages" as described in the Specification. Id. at
19 (citing Spec. ,r,r 64--70). The information gaps described in paragraphs
64--70 of the Specification are not unique to software or electronic content,
but, rather, may reside in any information content, whether stored
electronically or in any other form. Moreover, the analysis and reasoning
used to identify such gaps can be performed in the human mind, with pen
and paper. Accordingly, we do not agree with Appellant that the claimed
invention is directed to improvements rooted in computer technology or to
solving a problem specific to the software arts.
Appellant argues that the claims on appeal are like the claims in
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018),
which were held to be patent eligible. Reply Br. 8-10. According to
Appellant, "the present claims are 'directed to a non-abstract improvement
in computer functionality,' rather than any alleged generic abstract idea of
comparing new and stored information." Id. at 10. Appellant's reliance on
Finjan is misplaced. In Finjan, the claims were directed to an improvement
in computer functionality. The Finjan claims employed "a new kind of file
that enables a computer security system to do things it could not do before,"
namely, tailoring access for different users and identifying threats before a
file reaches a user's computer. Finjan, 879 F.3d at 1305. Claims 1 and 25
before us, on the other hand, use generic computer components and generic
computer functionality to analyze electronic content (i.e., data) to draw
conclusions about that content, namely, information gaps in the content, and
output notification of any such information gaps.
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Appellant contends that "the claimed invention does not merely
receive data and compare it to stored data, but rather performs a complex,
and computer specific, operation of performing natural language processing
on electronic content to obtain the collection of topics and/or questions
which is the basis for the comparisons with the electronic content and the
corpus." Appeal Br. 8. The Examiner finds that natural language processing
"is a pre-computer era technique," and Appellant does not specifically
contest this finding. See Ans. 10 (citing Dictionary.com); Reply Br. 10-11.
Instead, Appellant argues that "[t]he recitation of natural language
processing in the present claims ... is clearly directed to the technological
computer-based process of performing natural language processing on
natural language content." Rep 1 y Br. 10-11. This argument is not
persuasive because merely implementing mental processes, including natural
language techniques, on a computer does not integrate the mental processes
into a practical application. See Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044, 1055 (Fed. Cir. 2017) ("mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology."). As explained in the 2019
Eligibility Guidance, "[i]f a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind."
Appellant attempts to distinguish the claims on appeal before us from
the claims in CyberSource. Appeal Br. 9. Appellant contends that the
CyberSource claims recited individual steps that could be performed in the
human mind in such a manner that "the machine did not play a significant
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part in permitting the claimed method to be performed" while, in contrast,
the operations recited in Appellant's claims "cannot be performed in the
human mind and ... the specifically recited QAC system, specifically
configured to perform natural language processing to generate" the
collection of topics and/or questions, compare the collection to a corpus of
previously analyzed electronic content to identify actual and expected
information coverage and generate a set of information gaps based on this
comparison, and output a notification of the information gaps, "is required
for the method." Id. at 9-10.
Appellant does not persuasively explain why the analyzing and
comparing steps recited in claim 1 could not be performed in the human
mind. Analyzing content and generating a collection of topics and/or
questions associated with the content, and identifying information gaps in
the content by comparing an expected information coverage to an actual
information coverage are nothing more than fundamental editorial functions
performed by humans for centuries using the human mind and pen and
paper. Merely implementing such editorial functions on a generic computer
does not transform the judicial exception (the mental processes) into a
practical application.
For the above reasons, we determine that no additional element or
combination of additional elements in claim 1 or claim 25 applies, relies on,
or uses the judicial exception (mental processes) 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 exception. In other words, claims
1 and 25 are "directed to" an abstract idea.
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(3) Do the claims add any specific limitations beyond the judicial
exception that are not "well-understood, routine, and conventional"
in the field?
Because we determine that claims 1 and 25 fail to recite additional
elements that integrate the judicial exception into a practical application, in
accordance with the 2019 Eligibility Guidance we next consider whether the
claims add a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field or instead "simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception." See 2019 Eligibility Guidance.
The Examiner found that the additional elements or combination of
elements other than the abstract idea amount "to no more than mere
instructions to implement the idea on a computer, and/or are generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry." Final Act. 4.
According to the Examiner, "[t]he incorporation of natural language
processing" does not add significantly more because this is well understood
technology known for use in the industry. Id. The Examiner cites evidence
that computer-implemented natural language processing (NLP) was a well-
understood and conventional technique prior to Appellant's invention, and
that "theory and algorithms needed for building NLP tools allowing students
and researchers to construct their own computer implementations for
collocation finding, word sense disambiguation, probabilistic parsing,
information retrieval etc." were readily available well before Appellant's
invention. Ans. 10.
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Aside from asserting baldly that natural language processing "is not"
"a generic or 'routine' computer function" (Appeal Br. 11 ), Appellant does
not specifically refute the Examiner's finding that the steps recited in claims
1 and 25 are "well-understood, routine, and conventional activities
previously known to the pertinent industry" (Final Act. 4), much less proffer
any evidence or technical reasoning to counter the Examiner's proffered
evidence showing that theory and algorithms for building NLP tools for
constructing computer implementations for the types of functions used in
analyzing the electronic content as recited in claims 1 and 25 were well
understood and readily available before Appellant's invention. See Reply
Br. 10-11. Thus, Appellant does not apprise us of error in the Examiner's
finding that the computer components and computer functions recited in
claims 1 and 25 are well-understood, routine, and conventional.
Appellant argues that
everything in the claims and the present [S]pecification clearly
demonstrates that [ Appellant is] claiming a new and non-
obvious computer tool for identifying information gaps in
electronic content that specifically implements the ordered
combination of operations set forth in the claims performed by
the specifically configured computing device and technological
environment recited in the claims.
Appeal Br. 7.
As the Supreme Court has stated, "[t]he 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diehr, 450 U.S. at 188-
89. In other words, to the extent Appellant is arguing that the claimed
invention is not directed to an abstract idea because it is novel and
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nonobvious, we are not persuaded because a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013) ("Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry.") and
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
("[U]nder the 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.").
Appellant argues that the claims "are not preempting any alleged
abstract idea of comparing new and stored information to identify sets of
information gaps" and contends that "the claimed invention is instead
directed to a specific Question and Answer Creation system" that performs
"specific non-generic operations to determine information gaps in electronic
content based on analysis of [actual and expected coverage] as determined
through comparison of topics and/or questions with a corpus of previously
analyzed electronic content." Appeal Br. 14. Appellant misapprehends the
controlling precedent to the extent Appellant maintains that the claims are
patent-eligible because there is no risk of preemption. Although 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, 573 U.S. at 216, 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
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"[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., 134 S. Ct. at 2354).
"[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility." Id.
For the reasons discussed above, we find no element or combination
of elements recited in claim 1 or claim 25 beyond the judicial exception that
is not "well-understood, routine, conventional" in the field or that contains
any "inventive concept" or adds anything "significantly more" to transform
the abstract concept into a patent-eligible application. Alice, 573 U.S. at
221. Accordingly, we sustain the rejection of claims 1 and 25, as well as
claims 2-24, which fall with claim 1, under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
DECISION
The Examiner's decision rejecting claims 1-25 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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