Ex Parte Jobin

Patent Trials and Appeals Board

May 22, 2019

12523427 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/523,427 07/16/2009
7590
BERNARD JOBIN
1108 HUNT SEAT DR
AMBLER, PA 19002
05/22/2019
FIRST NAMED INVENTOR
Bernard Jobin
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.
9710
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
05/22/2019 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 BERNARD JOBIN
Appeal2018-005329
Application 12/523,427
Technology Center 3600
Before JOHN A. JEFFERY, LINZY T. McCARTNEY, and BETH Z.
SHAW, 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 221-225, 228-235, 238-242, 246-249, 253-255,
259,260, and 264--270. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
STATEMENT OF THE CASE
Appellant's invention collectively develops, manages, and markets
products and improvements by considering the contributions of various
participants, such as experts, communities, customers, or any other relevant
organization or individual. See Abstract; Spec. 14--15. In exchange for the
1 Appellant identifies the real party in interest as Bernard Jobin. App. Br. 3.
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Application 12/523,427
participants' involvement, potential compensation rights and entitlement
options are offered as incentives to participants. Spec. 14. Claim 221 is
illustrative:
221. A system corresponding to an online collaborative content
management system and operating with a data structure that enables
developing and evaluating and marketing products based on derivative
rights, comprising:
a server, and user devices, which user devices each corresponds
to a user of the system, the server containing a data structure and data,
which data structure describes associations of data records and of the
data contained in the server, which data includes a defined desired
outcome and content items and at least one entitlement option, which
entitlement options each defines a conditional entitlement, said
described associations indicating at least:
a) a plurality of sets of data records, which data records in each of
the sets are grouped into a plurality of comprised subsets of
data records, which subsets each comprises at least one
data record, which data records from the subsets each identifies
a content item by containing a content item or by being
otherwise associated to a content item, and consequently each
of the subsets identifying at least one content item; and
b) one entitled grouping, which entitled groupings each represents a
grouping of at least one set from the sets, each entitled grouping
being associated with at least one of the entitlement options; the
system being configured to at least:
communicate, from the server to each user device from a plurality of
the user devices, the defined desired outcome and at least one
description of a plurality of given sets from the sets from the
described data structure associations and of the subsets of data
records comprised in the given sets, which subsets of data records
identify content items, at least one of the given sets from each of
the descriptions corresponding to at least one of the sets comprised
in at least one of the entitled groupings;
receive, in the server, responses from multiple user devices from the
plurality of the user devices, and identify in the server as
contributions a plurality of the received responses, and store the
contributions in the server,
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a) which received responses result from each user device from the
multiple user devices receiving at least one of the descriptions of a
plurality of given sets and using the described given sets to at least:
(i) offer to its user an arrangement of content items by using and
conveying, in the arrangement, the data structure associations of
the described given sets and of their subsets of identified content
items, and
(ii) associate at least one discriminating user rating with at least one
of the subsets comprised in each of a plurality of the described
given sets, each of the subsets associated with a rating representing
a rated subset, and each user rating being indicative of a
comparative user evaluation of how well a given subset of
identified content items relates to the desired outcome when
compared to other subsets within the same described given set, and
each user rating being indicative of at least a user selection or a
user tagging of one
of the rated subsets of identified content items, and
(iii) generate a response and communicate the generated response to
the server which generated response describes at least one of the
rated subsets with its associated rating based on the received
descriptions of given sets,
b) which responses are identified in the server as contributions by
each at least describing one or a plurality of rated subsets that
corresponds, according to the described data structure associations,
to one or a plurality of the subsets comprised in one of the entitled
groupings, and which user devices, from which the responses
identified as contributions were received, each represents a
contributor device of the system;
create in the server one or more contribution options, which
contribution options each defines an association between a given
one of the contributions and one of the entitlement options
associated with one of the entitled groupings that comprises,
according to the described data structure associations, one or a
plurality of subsets which corresponds to the one or a plurality
of the rated subsets described in the given one of the contributions;
communicate from the server, to each of at least one of the contributor
devices from which at least one of the contributions was received,
at least one of the contribution options that associates the received
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at least one of the contributions with one of the entitlement
options;
generate in the server at least one insight grouping, which insight
groupings each represents a grouping of one or of a plurality of
the subsets comprised in a given one of the entitled groupings
based on (i) the number of described rated subsets that were
received in the contributions and that correspond, according to the
described data structure associations, to the one or plurality of the
subsets comprised in the given one of the entitled grouping and
(ii) the ratings associated with each of the described rated subsets
that were received, and
classify in the server, as valuable product information, each of one or
of a plurality of the content items identified by at least one of the
subsets from at least one of the insight groupings;
detect in the server at least one contribution options that each
associates one of the entitlement options with one of the
contributions that describes one or a plurality of rated subsets
which corresponds, according to the described data structure
associations, to one or to a plurality of the subsets from one of
the insight grouping;
receive in the server, from a given one of the user devices, a request
for granting a given one of the entitlement options that is
associated with one of the contributions defined in one of the
contribution option communicated to a given one of the
contributor devices, which request is indicative that the given one
of the user devices was previously communicated, from the
server or from the given one of the contributor devices, the one of
the contribution options;
grant in the server the given one of the entitlement options by
validating that the given one of the entitlement options was
previously detected in the server, and communicate said grant
to the given one of the user devices, said grant and said
communicate being executed: (i) without restriction, or (ii) after
one or more granting conditions are detected, in the server, to
have been met.
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THE REJECTION2
The Examiner rejected claims 221-225, 228-235, 238-242, 246-249,
253-255, 259, 260, and 264--270 under 35 U.S.C. § 101 as directed to
ineligible subject matter. Final Act. 2-15. 3
FINDINGS, CONCLUSIONS, AND CONTENTIONS
The Examiner determines that the claims are directed to an abstract
idea, namely obtaining and rating user input and rewarding users. Final Act.
2-13. The Examiner adds that the claims do not include elements that add
significantly more than the abstract idea, but merely recite, among other
things, generic computer components. Id. 13-15.
Appellant argues that the claimed invention is not directed to an
abstract idea. App. Br. 102-80; Reply Br. 4--25. According to Appellant,
not only did the Examiner fail to establish a prima facie case of ineligibility
by, among other things, oversimplifying and overgeneralizing the claimed
invention, the claimed invention is also said to yield a technological
improvement to a technical field, namely online collaborative content
management for product development. See id. Appellant adds that the
claimed invention adds significantly more to the purported abstract idea by
reciting an inventive concept that implements a specific way to enable online
collaborative content management for product development. App. Br. 31-
2 Because the Examiner withdrew rejections under§ 112 (see Ans. 3-7),
those rejections are not before us.
3 Throughout this opinion, we refer to (1) the Final Rejection mailed June
21, 2017 ("Final Act."); (2) the Appeal Brief filed November 18, 2017
("App. Br."); (3) the Examiner's Answer mailed April 3, 2018 ("Ans."); and
(4) the Reply Brief filed April 21, 2018 ("Reply Br.").
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34; Reply Br. 9-11. Among other things, Appellant contends that the
Examiner failed to address the particular limitations of various dependent
claims, let alone the associated arguments regarding their eligibility. App.
Br. 203-18; Reply Br. 26-27.
ISSUE
Under§ 101, has the Examiner erred in rejecting claims 221-225,
228-235, 238-242, 246-249, 253-255, 259, 260, and 264--270 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-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. Ltd. 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
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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 water-proof 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 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."). 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
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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
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 activity 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:
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(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.
ANALYSIS
Claim 221: Alice/Mayo Step One
Independent claim 221 recites a system corresponding to an online
collaborative content management system and operating with a data
structure that enables developing and evaluating and marketing products
based on derivative rights, comprising:
a server, and user devices, which user devices each corresponds to a
user of the system, the server containing a data structure and data, which
data structure describes associations of data records and of the data
contained in the server, which data includes a defined desired outcome and
content items and at least one entitlement option, which entitlement options
each defines a conditional entitlement, said described associations
indicating at least:
a) a plurality of sets of data records, which data records in each of
the sets are grouped into a plurality of comprised subsets of data records,
which subsets each comprises at least one data record, which data records
from the subsets each identifies a content item by containing a content item
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or by being otherwise associated to a content item, and consequently each of
the subsets identifying at least one content item; and
b) one entitled grouping, which entitled groupings each represents a
grouping of at least one set from the sets, each entitled grouping being
associated with at least one of the entitlement options;
the system being configured to at least:
communicate, from the server to each user device from a plurality of
the user devices, the defined desired outcome and at least one description of
a plurality of given sets from the sets from the described data structure
associations and of the subsets of data records comprised in the given sets,
which subsets of data records identify content items, at least one of the given
sets from each of the descriptions corresponding to at least one of the sets
comprised in at least one of the entitled groupings;
receive, in the server, responses from multiple user devices from the
plurality of the user devices, and identify in the server as contributions a
plurality of the received responses, and store the contributions in the server,
a) which received responses result from each user device from the
multiple user devices receiving at least one of the descriptions of a plurality
of given sets and using the described given sets to at least:
(i) offer to its user an arrangement of content items by using and
conveying, in the arrangement, the data structure associations of the
described given sets and of their subsets of identified content items, and
(ii) associate at least one discriminating user rating with at least one
of the subsets comprised in each of a plurality of the described given sets,
each of the subsets associated with a rating representing a rated subset, and
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each user rating being indicative of a comparative user evaluation of how
well a given subset of identified content items relates to the desired outcome
when compared to other subsets within the same described given set, and
each user rating being indicative of at least a user selection or a user
tagging of one of the rated subsets of identified content items, and
(iii) generate a response and communicate the generated response to
the server which generated response describes at least one of the rated
subsets with its associated rating based on the received descriptions of given
sets,
b) which responses are identified in the server as contributions by
each at least describing one or a plurality of rated subsets that corresponds,
according to the described data structure associations, to one or a plurality
of the subsets comprised in one of the entitled groupings, and which user
devices, from which the responses identified as contributions were
received, each represents a contributor device of the system;
create in the server one or more contribution options, which
contribution options each defines an association between a given one of the
contributions and one of the entitlement options associated with one of the
entitled groupings that comprises, according to the described data structure
associations, one or a plurality of subsets which corresponds to the one or a
plurality of the rated subsets described in the given one of the contributions;
communicate from the server, to each of at least one of the
contributor devices from which at least one of the contributions was
received, at least one of the contribution options that associates the received
at least one of the contributions with one of the entitlement options;
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generate in the server at least one insight grouping, which insight
groupings each represents a grouping of one or of a plurality of the subsets
comprised in a given one of the entitled groupings based on (i) the number
of described rated subsets that were received in the contributions and that
correspond, according to the described data structure associations, to the
one or plurality of the subsets comprised in the given one of the entitled
grouping and (ii) the ratings associated with each of the described rated
subsets that were received, and
classify in the server, as valuable product information, each of one or
of a plurality of the content items identified by at least one of the subsets
from at least one of the insight groupings;
detect in the server at least one contribution options that each
associates one of the entitlement options with one of the contributions that
describes one or a plurality of rated subsets which corresponds, according
to the described data structure associations, to one or to a plurality of the
subsets from one of the insight grouping;
receive in the server, from a given one of the user devices, a request
for granting a given one of the entitlement options that is associated with
one of the contributions defined in one of the contribution option
communicated to a given one of the contributor devices, which request is
indicative that the given one of the user devices was previously
communicated, from the server or from the given one of the contributor
devices, the one of the contribution options;
grant in the server the given one of the entitlement options by
validating that the given one of the entitlement options was previously
detected in the server, and communicate said grant to the given one of the
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user devices, said grant and said communicate being executed: (i) without
restriction, or (ii) after one or more granting conditions are detected, in the
server, to have been met. 4
As the disclosure explains, Appellant's invention collectively
develops, manages, and markets products and improvements by considering
the contributions of various participants, such as experts, communities,
customers, or any other relevant organization or individual. See Abstract;
Spec. 14--15. In exchange for the participants' involvement, potential
compensation rights and entitlement options are offered as incentives to
participants. Spec. 14. This cooperation and interaction between product
features, development, collaborative contributions, and potential participant
ownership and entitlements is said to create an appealing incentive that
ensures valuable results. Id.
In one aspect, a promoter requests that participants contribute in
developing desired product outcomes by using their knowledge and insight,
as well as proposing, evaluating, or rating alternative options. Id. 14--15.
These contributions are compiled, sorted, and filtered using various
valuation criteria, such as popularity or distinctiveness, and added to an
intellectual capital database. 5 Id. 15. Contributors are compensated when
their contributions rank as relatively insightful by exercising or selling their
granted compensation rights. Id.
4 Unless otherwise indicated, we italicize or quote text associated with
various recited limitations for emphasis and clarity.
5 According to the Specification's page 32, intellectual capital items in the
database consist of "any intangible thoughts or concepts of the mind that are
represented as tangible expressions, manifestations or realizations of
products."
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Turning to claim 221, we first note that the claim recites a system and,
therefore, falls within the machine category of§ 101. But despite falling
within this statutory category, we must still 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 the claim (1) 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 determines that claim 221 is directed to
an abstract idea, namely obtaining and rating user input and rewarding users.
Final Act. 2-13; Ans. 7-20. 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 concepts 6; (b)
certain methods of organizing human activity 7; or ( c) mental processes. 8
6 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
7 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.
8 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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Here, apart from the recited (1) online collaborative content
management system; (2) data structure; (3) server; and (4) user devices, all
of claim 221 's recited limitations, which collectively are directed to
soliciting and evaluating product development contributions received from
participants, and compensating participants according to that evaluation fit
squarely within at least one of the above categories of the agency's
guidelines.
First, the recited descriptions of associations of data records and of
data including a defined desired outcome, content items, and at least one
entitlement option where each option defines a conditional entitlement,
where the associations indicate at least (1) sets of data records grouped into
subsets, where each data record identifies a content item as claimed such
that each subset identifies at least one such item, and (2) one entitled
grouping that is associated with at least one entitlement option involve at
least personal interactions, including following rules or instructions, at least
to the extent that a person could obtain, store, associate, and group this data
either entirely mentally by merely reading pertinent records or other
associated information, or alternatively receive that information via face-to-
face or written communication with another person with such knowledge,
such as a colleague. Cf CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011) (noting that limitation reciting obtaining
information about transactions that have used an Internet address identified
with a credit card transaction can be performed by a human who simply
reads records of Internet credit card transactions from a pre-existing
database); In re Salwan, 681 F. App'x 938, 939--41 (Fed. Cir. 2017)
(unpublished) (holding ineligible claims reciting, among other things,
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receiving medical records information and transmitting reports where the
claimed invention's objective was to enable electronic communication of
tasks that were otherwise done manually using paper, phone, and facsimile
machine); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed.
Cir. 2018) (noting that a nontechnical human activity of passing a note to a
person who is in a meeting or conversation as illustrating the invention's
focus, namely providing information to a person without interfering with the
person's primary activity); LendingTree, LLC v. Zillow, Inc., 656 F. App'x
991, 993-94, 996 (Fed. Cir. 2016) (unpublished) (holding ineligible claims
reciting, among other things, (1) receiving selection criteria from lending
institutions and credit data from a computer user, and (2) forwarding the
credit data to selected lending institutions as directed to an abstract idea).
Therefore, the recited data associations and indications fall squarely within
the mental processes and methods of organizing human activity categories of
the agency's guidelines and, therefore, recite an abstract idea. See Guidance,
84 Fed. Reg. at 52 (listing exemplary (1) mental processes including
observation and evaluation, and (2) methods of organizing human activity,
including personal interactions and following rules or instructions).
Second, "the system being configured to at least [l] communicate ...
to each user ... the defined desired outcome and at least one description of
a plurality of given sets from the sets from the described data ...
associations and of the subsets of data records comprised in the given sets,
which subsets of data records identify content items, at least one of the given
sets from each of the descriptions corresponding to at least one of the sets
comprised in at least one of the entitled groupings; and [2] receive . ..
responses from multiple user[s] . .. and identify . .. as contributions a
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plurality of the received responses, and store the contributions ... , a) which
received responses result from each user ... receiving at least one of the
descriptions of a plurality of given sets and using the described given sets to
at least[] (i) offer to [the] user an arrangement of content items by using
and conveying, in the arrangement, the data ... associations of the
described given sets and of their subsets of identified content items, and (ii)
associate at least one discriminating user rating with at least one of the
subsets comprised in each of a plurality of the described given sets, each of
the subsets associated with a rating representing a rated subset, and each
user rating being indicative of a comparative user evaluation of how well a
given subset of identified content items relates to the desired outcome when
compared to other subsets within the same described given set, and each
user rating being indicative of at least a user selection or a user tagging of
one of the rated subsets of identified content items, and (iii) generate a
response and communicate the generated response ... which generated
response describes at least one of the rated subsets with its associated rating
based on the received descriptions of given sets, b) which responses are
identified ... as contributions by each at least describing one or a plurality
of rated subsets that corresponds, according to the described data ...
associations, to one or a plurality of the subsets comprised in one of the
entitled groupings, and which user devices, from which the responses
identified as contributions were received, each represents a contributor ...
of the system involve at least personal or commercial interactions, including
following rules or instructions, at least to the extent that a person could send,
receive, and evaluate the recited information via face-to-face or written
communication with others by, for example, (1) conducting a survey; (2)
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sending, receiving, and evaluating questionnaires; or (3) crowdsourcing
activities. Cf OIP Techs. v. Amazon.com, Inc., 785 F.3d 1359, 1361-63
(Fed. Cir. 2015) (holding ineligible claims reciting testing product prices by
(1) sending messages over a network, (2) gathering customer-response
statistics during testing, (3) selecting an appropriate sales price, and (4)
sending a second set of messages including offers at the selected price over
the network); LendingTree, 656 F. App'x 991, 993-94, 996 (Fed. Cir. 2016)
(unpublished) (holding ineligible claims reciting, among other things, (1)
receiving selection criteria from lending institutions and credit data from a
computer user, and (2) forwarding the credit data to selected lending
institutions as directed to an abstract idea); Salwan, 681 F. App'x at 939--41
(holding ineligible claims reciting, among other things, receiving medical
records information and transmitting reports where the claimed invention's
objective was to enable electronic communication of tasks that were
otherwise done manually using paper, phone, and facsimile machine);
Interval Licensing, 896 F.3d at 1344 (noting that a nontechnical human
activity of passing a note to a person who is in a meeting or conversation as
illustrating the invention's focus, namely providing information to a person
without interfering with the person's primary activity); Gust, Inc. v.
Alphacap Ventures, LLC, 905 F.3d 1321, 1325-26 (Fed. Cir. 2018)
(discussing Kickstarter, Inc. v. Fan Funded, LLC, No. 11-cv-6909, 2015 WL
3947178 (S.D.N.Y. 2015), ajf'd 654 F. App'x 481 (Fed. Cir. 2016) (noting
the district court's finding that "crowdfunding" is a fundamental economic
concept and a way of organizing human activity). Therefore, the recited
communication and response reception functions fall squarely within the
methods of organizing human activity category of the agency's guidelines
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and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52
(listing exemplary methods of organizing human activity, including personal
and commercial interactions and following rules or instructions).
We add that the above-noted recited function that identifies the
received responses as contributions can also be performed entirely mentally
by merely thinking about these identifications or writing them down-both
involving mere observation and logical reasoning. Cf CyberSource, 654
F.3d at 1372 (noting that a recited step that utilized a map of credit card
numbers to determine the validity of a credit card transaction could be
performed entirely mentally by merely using logical reasoning to identify a
likely instance of fraud by merely observing that numerous transactions
using different credit cards all originated from the same IP address).
Therefore, the recited contribution identification function also falls squarely
within the mental processes category of the agency's guidelines and,
therefore, recites an abstract idea for that additional reason. See Guidance,
84 Fed. Reg. at 52 (listing exemplary mental processes including
observation and evaluation).
We reach the same conclusion regarding the recited function that
create[s] . .. one or more contribution options, which contribution options
each defines an association between a given one of the contributions and
one of the entitlement options associated with one of the entitled groupings
that comprises, according to the described data ... associations, one or a
plurality of subsets which corresponds to the one or a plurality of the rated
subsets described in the given one of the contributions for, here again,
contribution options can also be created entirely mentally by merely thinking
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about these options or writing them down-both involving mere observation
and logical reasoning. Cf CyberSource, 654 F.3d at 1372.
In addition, communicat[ing] . .. to each of at least one of the
contributor[s] from which at least one of the contributions was received, at
least one of the contribution options that associates the received at least one
of the contributions with one of the entitlement options involves at least
personal or commercial interactions, including following rules or
instructions, at least to the extent that a person could send the recited
information via face-to-face or written communication with others. Cf OIP
Techs. v. Amazon.com, Inc., 785 F.3d 1359, 1361---63 (Fed. Cir. 2015)
(holding ineligible claims reciting testing product prices by (1) sending
messages over a network, (2) gathering customer-response statistics during
testing, (3) selecting an appropriate sales price, and ( 4) sending a second set
of messages including offers at the selected price over the network);
LendingTree, 656 F. App'x 991, 993-94, 996 (Fed. Cir. 2016) (unpublished)
(holding ineligible claims reciting, among other things, (1) receiving
selection criteria from lending institutions and credit data from a computer
user, and (2) forwarding the credit data to selected lending institutions as
directed to an abstract idea); Salwan, 681 F. App'x at 939--41 (holding
ineligible claims reciting, among other things, receiving medical records
information and transmitting reports where the claimed invention's objective
was to enable electronic communication of tasks that were otherwise done
manually using paper, phone, and facsimile machine); Interval Licensing,
896 F.3d at 1344 (noting that a nontechnical human activity of passing a
note to a person who is in a meeting or conversation as illustrating the
invention's focus, namely providing information to a person without
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interfering with the person's primary activity). Therefore, the recited
contribution option communication function falls squarely within the
methods of organizing human activity category of the agency's guidelines
and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52
(listing exemplary methods of organizing human activity, including personal
and commercial interactions and following rules or instructions).
Also, [1] generat[ing] . .. at least one insight grouping, which insight
groupings each represents a grouping of one or of a plurality of the subsets
comprised in a given one of the entitled groupings based on (i) the number
of described rated subsets that were received in the contributions and that
correspond, according to the described data structure associations, to the
one or plurality of the subsets comprised in the given one of the entitled
grouping and (ii) the ratings associated with each of the described rated
subsets that were received; [2] classifying ... as valuable product
information, each of one or of a plurality of the content items identified by at
least one of the subsets from at least one of the insight groupings; and [3]
detect[ing] ... at least one contribution option[] that each associates one of
the entitlement options with one of the contributions that describes one or a
plurality of rated subsets which corresponds, according to the described
data ... associations, to one or to a plurality of the subsets from one of the
insight grouping can be performed entirely mentally by merely thinking
about these groupings, classifications, and contribution options or writing
them down-both involving mere observation and logical reasoning. Cf
CyberSource, 654 F.3d at 1372. Therefore, the recited insight grouping
generation, valuable product classification, and contribution option detection
functions fall squarely within the mental processes category of the agency's
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guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed.
Reg. at 52 (listing exemplary mental processes including observation and
evaluation).
In addition, [1] receiv[ing] . .. from a given one of the user[s], a
request for granting a given one of the entitlement options that is associated
with one of the contributions defined in one of the contribution option[s]
communicated to a given one of the contributor[s], which request is
indicative that the given one of the user[s] was previously communicated . ..
the one of the contribution options; and [2] grant[ing] . .. the given one of
the entitlement options by validating that the given one of the entitlement
options was previously detected . .. , and communicat[ing] said grant to the
given one of the user[s], said grant and said communicat[ing] being
executed: (i) without restriction, or (ii) after one or more granting
conditions are detected ... to have been met involve at least personal or
commercial interactions, including following rules or instructions and
fundamental economic practices at least to the extent that a person could (1)
receive the recited entitlement-based information via face-to-face or written
communication with others; (2) decide whether to grant an entitlement if
certain conditions are satisfied; and (3) if so, communicate the grant to the
intended recipient via similar means. Cf Smartflash LLC v. Apple Inc., 680
F. App'x 977, 979-84 (Fed. Cir. 2017) (unpublished) (holding ineligible
recited terminal that retrieved and accessing protected multimedia content
by, among other things, validating payment as directed to abstract idea of
conditioning and controlling access to data based on payment-a
fundamental economic practice); Inventor Holdings, LLC v. Bed Bath &
Beyond, 876 F.3d 1372, 1374, 1378-80 (Fed. Cir. 2017) (holding ineligible
22
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claim reciting that the conditional steps of ( 1) receiving payment for a
remote order, and (2) transmitting data to a remote seller that payment was
received were performed only if a code received at a point-of-sale system
related to a remote order as directed to an abstract idea). Therefore, the
recited functions pertaining to granting an entitlement option fall squarely
within the methods of organizing human activity category of the agency's
guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed.
Reg. at 52 (listing exemplary methods of organizing human activity,
including personal and commercial interactions, following rules or
instructions, and agreements consistent with contractual or legal
obligations).
Although the claim recites an abstract idea based on these methods of
organizing human activity and mental processes, 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.
Here, the the recited (1) online collaborative content management
system; (2) data structure; (3) server; and (4) user devices are the only
recited elements beyond the abstract idea, but these additional elements do
not integrate the abstract idea into a practical application when reading claim
221 as a whole. First, we are not persuaded that the claimed invention
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improves the computer or its components' functionality or efficiency, or
otherwise changes the way those devices function, 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. 102, 106, 145--47; Reply Br. 20, 29-32). The claimed
self-referential table in Enfish was a specific type of data structure designed
to improve the way a computer stores and retrieves data in memory. Enfish,
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, there is no
persuasive evidence on this record to substantiate such a contention.
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
App. Br. 102-80, 201---02; Reply Br. 4--25), we disagree. Even assuming,
without deciding, that claimed invention can solicit and evaluate product
development contributions received from participants, and compensate
participants according to that evaluation faster than doing so manually, any
speed increase comes from the capabilities of the generic computer
components-not the recited process itself. See Fair Warning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir.
2012) ("[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.")); see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App'x 1012, 1017 (Fed. Cir. 2017) (unpublished)
("Though the claims purport to accelerate the process of finding errant files
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and to reduce error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-purpose computer do
not materially alter the patent eligibility of the claimed subject matter.").
Like the claims in Fair Warning, the focus of claim 221 is not on an
improvement in computer processors as tools, but on certain independently
abstract ideas that use generic computing components as tools. See
FairWarning, 839 F.3d at 1095 (citations and quotation marks omitted).
Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) despite
Appellant's arguments to the contrary (App. Br. 104, 110-11, 118, 137-39;
Reply Br. 12-13, 34--35). 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 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, is directed to soliciting and evaluating product
development contributions received from participants, and compensating
participants according to that evaluation-albeit using computer-based
components to achieve that end. The claimed invention here is not
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necessarily rooted in computer technology in the sense contemplated by
DDR where the claimed invention solved a challenge particular to the
Internet. Although Appellant's invention uses various computer-based
components noted previously, the claimed invention does not solve a
challenge particular to the computing components used to implement this
functionality.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016) despite Appellant's arguments to the contrary (App. Br. 102, 104,
119-20, 131-32, 140-42; Reply Br. 32-34). There, the claimed process
used a combined order of specific rules that rendered information in a
specific format that was applied to create a sequence of synchronized,
animated characters. McRO, 837 F.3d at 1315. Notably, the recited process
automatically animated characters using particular information and
techniques-an improvement over manual three-dimensional animation
techniques that was not directed to an abstract idea. Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to solicit and
evaluate product development contributions received from participants, and
compensate participants according to that evaluation. This generic computer
implementation is not only directed to fundamental human activity
organization, mathematical concepts, and mental processes, but also does
not improve a display mechanism as was the case in McRO. See SAP Am. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing
McRO).
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Appellant's reliance on the decision in Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (App. Br. 118, 147--49; Reply
Br. 38-39) is unavailing. There, the court held that a claim directed to using
accounting information with which a network accounting record is
correlated to enhance the record was held eligible because the claim
involved an unconventional technological solution ( enhancing data in a
distributed fashion) to a technological problem (massive record flows which
previously required massive databases). Although the court recognized that
this solution used generic components, the recited enhancing function
necessarily required these generic components to operate in an
unconventional manner to achieve an improvement in computer
functionality. Id. at 1300--01. Notably, the recited enhancement in Amdocs
depended on not only the network's distributed architecture, but also on the
network devices and "gatherers" working together in a distributed
environment. Id. at 1301. In reaching its eligibility conclusion, the court
noted the patent's emphasis on the drawbacks of previous systems where all
network information flowed to one location making it very difficult to keep
up with massive record flows from network devices and requiring huge
databases. Id. at 1300. The court also noted similar network-based
drawbacks that were overcome by similar unconventional distributed
solutions in other patents at issue. See id. at 1305---06.
That is not the case here. Although the claimed invention uses
conventional computing components that store and process data, there is no
persuasive evidence on this record to show that these generic components
operate in an unconventional manner to achieve an improvement in
computer functionality as in Amdocs.
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Appellant's reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 143--45;
Reply Br. 37-38) is likewise unavailing. There, the court held eligible
claims directed to a technology-based solution to filter Internet content that
overcame existing problems with other Internet filtering systems by making
a known filtering solution-namely a "one-size-fits-all" filter at an Internet
Service Provider (ISP}--more dynamic and efficient via individualized
filtering at the ISP. BASCOM, 827 F.3d at 1351. Notably, this customizable
filtering solution improved the computer system's performance and,
therefore, was patent-eligible. See id. But unlike the filtering system
improvements in BASCOM that added significantly more to the abstract idea
in that case, the claimed invention here uses generic computing components
to implement an abstract idea as noted previously.
We also find unavailing Appellant's reliance on Visual Memory LLC
v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) (App. Br. 154--56; Reply
Br. 41 ). There, the court held eligible claims directed to a computer memory
system with a main memory connected to a bus with a cache connected
thereto, where the system's programmable operational characteristics
determined the type of data stored by the cache. Visual Memory, 867 F.3d at
1257---62. Notably, the court emphasized the recited improvement in
computer capabilities in that case, namely by using programmable
operational characteristics that were configurable based on the processor's
type. Id. at 1259---60.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
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capabilities (see App. Br. 154--56; Reply Br. 41), there is no persuasive
evidence on this record to substantiate such a contention.
Appellant's reliance on Finjan, Inc. v. Blue Coat Systems, Inc., 879
F.3d 1299 (2018) (Reply Br. 23) is likewise unavailing. There, the court
held eligible claims directed to a behavior-based virus scanning system. In
reaching this conclusion, the court noted that the claimed invention
employed a new kind of file that enabled a computer security system to do
that which could not be done previously, including accumulating and using
newly-available, behavior-based information about potential threats. Finjan,
879 F.3d at 1305.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Reply Br. 23), there is no persuasive evidence on this record
to substantiate such a contention.
We reach the same conclusion regarding Appellant's reliance on Core
Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (2018)
(Reply Br. 21 ). There, the court held eligible claims reciting a computing
device that could display an application summary window that was not only
reachable directly from the main menu, but could also display a limited list
of selectable functions while the application was in an un-launched state.
Core Wireless, 880 F.3d at 1360-63. Upon selecting a function, the device
would then launch the application and initiate the selected function. Id. at
1360. In reaching its eligibility conclusion, the court noted that the claimed
invention was directed to an improved user interface for computing devices
that used a particular manner of summarizing and presenting a limited set of
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information to the user, unlike conventional user interface methods that
displayed a generic index on a computer. Id. at 1362---63.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Reply Br. 21 ), there is no persuasive evidence on this record
to substantiate such a contention.
Appellant's reliance on Thales Visionix Inc. v. United States, 850 F.3d
1343 (2017) (App. Br. 153-54; Reply Br. 39--40) is likewise unavailing.
There, the court held eligible claims reciting determining an orientation of
an object relative to a moving reference frame based on signals from two
inertial sensors mounted respectively on the object and on the moving
reference frame. Id. at 1345--49. In reaching its eligibility conclusion, the
court noted that the claimed invention used inertial sensors in an
unconventional manner to reduce errors in measuring a moving object's
relative position and orientation on a moving reference frame. Id. at 1348-
49.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see App. Br. 153-54; Reply Br. 39--40), there is no persuasive
evidence on this record to substantiate such a contention.
Accordingly, 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
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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([)).
We also find unavailing Appellant's contention that the claimed
invention does not preempt all ways of enabling online collaborative content
management for product development in its field. App. Br. 199. Where, as
here, the claims cover a patent-ineligible concept, preemption concerns "are
fully addressed and made moot" by an analysis under the Alice/Mayo
framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).
In conclusion, although the recited functions may be beneficial by
soliciting and evaluating product development contributions received from
participants, and compensating participants according to that evaluation, a
claim for a useful or beneficial abstract idea is still an abstract idea. See id.
at 1379-80.
We, therefore, agree with the Examiner that claim 221 is directed to
an abstract idea.
Claim 221: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 221 's additional recited
elements, namely the recited (1) online collaborative content management
system; (2) data structure; (3) server; and ( 4) user devices----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 claimed invention merely uses generic
computing components to implement the recited abstract idea.
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To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see App. Br. 181-199; Reply Br. 25--48), 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 elements should be evaluated
in Alice/Mayo step two to determine whether they (1) add specific
limitations 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 recited (1) online collaborative content management
system; (2) data structure; (3) server; and (4) user devices are the additional
recited elements whose generic computing functionality is well-understood,
routine, and conventional. See In re Warmerdam, 33 F.3d 1354, 1361---62
(Fed. Cir. 1994) (quoting computer dictionary definition of "data structure"
as "[a] physical or logical relationship among data elements, designed to
support specific data manipulation functions") ( emphasis omitted);
Intellectual Ventures, 792 F.3d at 1368 (noting that a recited user profile
(i.e., a profile keyed to a user identity), database, and communication
medium are generic computer elements); Mortgage Grader Inc. v. First
Choice Loan Services, Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)
(noting that components such an "interface," "network," and "database" are
generic computer components that do not satisfy the inventive concept
requirement); buySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) ("That a computer receives and sends the information over a
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network-with no further specification-is not even arguably inventive.");
US 2008/0046307 Al (describing an Internet-based market research system
that uses generic computing components, including a server and database,
that extends an offer to grant an ownership interest in a company in
exchange for receiving feedback from respondent members of a target
market). Accord Final Act. 13-14; Ans. 20-21 (concluding that the claims'
general-purpose computing devices do not add significantly more than the
abstract idea).
In conclusion, the additional recited elements----considered
individually and as an ordered combination----do not add significantly more
than 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 221.
Independent claims 229, 231, and 239
For reasons similar to those indicated previously with respect to
independent claim 221, we also sustain the Examiner's ineligibility rejection
of independent claims 229,231, and 239. Final Act. 2-15; Ans. 7-21, 23-
33. Despite Appellant's arguments to the contrary (App. Br. 199-202), the
minor differences between the independent claims, including the ( 1)
methods recited in claims 231 and 239 versus the systems recited in claims
221 and 229, 9 and (2) the server (a) containing the recited data structure
9 See Alice, 573 U.S. at 208 ("[T]he system claims are no different from the
method claims in substance."); see also CyberSource, 654 F.3d at 1374
(noting that the underlying invention for both the method and computer-
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( claims 221, 229) versus storing that structure ( claims 231, 239), and (b)
granting derivative rights ( claims 229, 239) versus entitlement options
(claims 221,231), do not change the fact that claims 229,231, and 239 are
directed to an abstract idea when considered as a whole.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 229, 231, and 239.
Dependent Claims
We are, however, persuaded of error in the Examiner's ineligibility
rejection of dependent claims 222-225, 228, 230, 232-235, 238, 240-242,
246-249, 253-255, 259, 260, and 264--270. In the rejection, the Examiner's
sole articulated basis for rejecting the dependent claims on pages 14 and 15
of the Final Office Action is reproduced below:
Each of the dependent claims are directed towards subject
matter that the court has determined to be an abstract idea such
as comparing new and stored information and using rules to
identify options ( e.g. SmartGene ), using categories to organize,
store and transmit information ( e.g. Cyberfone ), comparing data
that can be performed mentally (e.g. Ambry, Myraid CAFC),
obtaining and comparing intangible data ( e.g. Cybersource ),
organizing information through mathematical correlations ( e.g.
Digitech), using a mathematical formula, algorithm, calculation
to obtain a result ( e.g. Benson, Flook, Bancorp) or collecting
information, analyzing it and displaying certain results of the
collection and analysis ( e.g. Electric Power Group). Aside
from these abstract ideas the dependent claims recited the
readable medium claims was a method for detecting credit card fraud-not a
manufacture for storing computer-readable information); see also id. (noting
that the court in In re Abele, 684 F.2d 902 (CCPA 1982), treated apparatus
claim 7 as a method claim for purposes of determining eligibility).
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performance of computer functions that are well-understood,
routine, and conventional such as receiving, processing, and
storing data; electronically scanning or extracting data;
electronic record keeping, automating metal [sic] tasks and
receiving or transmitting data over a network. As per the July
2015 Update: Subject Matter Eligibility, [t]he courts have
recognized the following computer functions to be well-
understood, routine, and conventional: performing repetitive
calculations; receiving, processing, and storing data;
electronically scanning or extracting data from a physical
document; electronic record keeping; automating metal [sic]
tasks; and receiving or transmitting data over a network.
Not only is this articulated rationale general and conclusory, it fails to
identify any limitations in the dependent claims, let alone explain why the
claims are directed to an abstract idea in light of their additional limitations
to establish a prima facie case of eligibility under § 101 as Appellant
indicates. See Reply Br. 26-27 (noting this deficiency).
Notably, Appellant contests separately the Examiner's rejection
regarding a number of dependent claims with respect to the following
groups: (1) claims 222-225, 228,230, 232-235, 238, 240-242, 246-249,
253-255, 259, 260 and 264--270 (App. Br. 203); (2) claims 230, 240, 255,
and 260 (App. Br. 204); (3) claims 255 and 260 (App. Br. 204--05); (4)
claim 269 (App. Br. 205---06); (5) claims 265 and 270 (App. Br. 206---07); (6)
claim 266 (App. Br. 207---08); (7) claim 268 (App. Br. 208---09); (8) claims
259 and 264 (App. Br. 209-10); (9) claim 267 (App. Br. 210-11); (10)
claims 222,232,241, and 248 (App. Br. 211-12); (11) claims 242 and 249
(App. Br. 212-13); (12) claims 224,234,247, and 254 (App. Br. 213); (13)
claims 225 and 235 (App. Br. 215); (14) claims 228 and 238 (App. Br. 215-
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16); (15) claims 223 and 233 (App. Br. 216-17); and (16) claims 246 and
253 (App. Br. 217-18).
In responding to Appellant's separate arguments regarding these
particular dependent claims, however, the Examiner simply repeats the
above conclusory statements with no further explanation or analysis. See
Ans. 22-23.
The prima facie case is a procedural tool of patent examination,
allocating the respective burdens between the Examiner and an applicant. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). First, the Examiner bears
the initial burden of presenting a prima facie case ofunpatentability. Id.
(citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)). If the
Examiner meets that burden, the burden then shifts to the applicant to rebut
the prima facie case with evidence or argument. Oetiker, 977 F.2d at 1445.
Then, patentability is determined on the totality of the record by a
preponderance of evidence with due consideration of persuasiveness of
argument. Id.
As noted in MPEP § 2106. 07, the initial burden of establishing a
prima facie case of ineligibility is on the Examiner to explain clearly and
specifically why claims are ineligible, so that the applicant has sufficient
notice and can respond effectively. That did not happen here with respect to
the dependent claims.
To the extent that the Examiner finds that the additional limitations do
not add significantly more to the abstract idea to provide an inventive
concept under Alice step two, we cannot say on this record, nor will we
speculate in that regard here in the first instance on appeal. What we can
say, however, is that the Examiner's gloss on the dependent claims'
36
Appeal2018-005329
Application 12/523,427
additional limitations falls short of establishing a prima facie case of
ineligibility on this record.
Accordingly, because the Examiner failed to establish a prima facie
case of ineligibility for dependent claims 222-225, 228, 230, 232-235, 238,
240-242, 246-249, 253-255, 259,260, and 264--270, we are constrained by
this record to reverse the Examiner's rejection of those claims.
CONCLUSION
Under§ 101, the Examiner did not err in rejecting claims 221,229,
231, and 239, but erred in rejecting claims 222-225, 228, 230, 232-235,
238,240-242,246-249,253-255,259,260,and264-270.
DECISION
We affirm-in-part the Examiner's decision to reject claims 221-225,
228-235,238-242,246-249,253-255,259,260,and264-270.
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-IN-PART
37