Ex Parte Kadaba

Patent Trial and Appeal Board

Nov 27, 2018

14035723 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/035,723 09/24/2013 Nagesh Kadaba
143177 7590 11/29/2018
Shook, Hardy & Bacon L.L.P.
(United Parcel Service, Inc.)
2555 Grand Blvd.
Kansas City, MO 64108-2613
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.
IPP2013 28800/289041 3096
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/29/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAGESH KADABA
Appeal2017-009161
Application 14/035,723
Technology Center 3600
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a second Non-Final
Rejection of claims 1-22. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Introduction
Embodiments of Appellant's invention are generally related to
"systems, methods, and computer program products for applying a shipping
incentive for a customer receiving inbound shipments from a plurality of
1 According to Appellant, the real party in interest is United Parcel Service
of America, Inc., which is the assignee of the present application. App.
Br. 3.
Appeal2017-009161
Application 14/035,723
parties." Spec. ,r 3.
Exemplary Claim
1. A computer-implemented method for applying a shipping
incentive to at least one customer, the method comprising of
[sic] the steps of:
receiving and storing in one or more memory storage
areas information on one or more shipments scheduled to be
made to a plurality of locales for a particular time period and
shipped using a common carrier;
for each locale, determining, via execution of one or
more computer processors, whether the one or more shipments
being made to the particular locale meet a maximum capacity
the common carrier can ship to the particular locale for the
particular time period, said maximum capacity representing a
maximum volume of shipments that one or more vehicles
operated by the common carrier can transport for the particular
time period; and
for at least one locale in which the maximum capacity is
not being met by the one or more shipments being made to the
at least one locale for the particular time period:
identifying, via execution of the one or more computer
processors, one or more customers making the one or more
shipments to the at least one locale for the particular
time period;
determining, via execution of the one or more computer
processors, an incentive potentially available for the one or
more identified customers, the determined incentive
being based upon: (a) one or more new shipments being made
by the one or more identified customers to the at least one
locale for the particular time period in addition to
the one or more shipments already being made by the one or
more identified customers to the at least one locale for the
particular time period, and (b) a comparison of an actual
2
Appeal2017-009161
Application 14/035,723
volume of total shipments being made against a historical
average volume of total shipments made by the one or more
identified customers;
generating, via execution of the one or more computer
processors, an indication of the determined potentially available
incentive and transmitting said indication over a
distributed network and to an interface, said interface being
remotely accessible by the one or more identified customers;
subsequent to generating said indication and within the
particular time period of interest, periodically querying, via
execution of the one or more computer processors, a
separate tracking system of the common carrier to determine
whether one or more new shipments have been made by the one
or more identified customers to the at least one
locale for the particular time period; and
upon identifying the presence of one or more new
shipments made by the one or more identified customers:
automatically applying, via execution of the one or more
computer processors, the determined incentive against one or
more benefits available for the one or more identified
customers, the one or more benefits comprising at least one
alteration in a handling of said one or more new shipments via
said one or more vehicles operated by the common carrier; and
automatically generating, via execution of the one or
more computer processors and based upon said one or more
benefits against which the determined incentive is applied,
computer-readable program instructions configured to
automatically implement said at least one alteration of said
handling of said one or more new shipments via said one or
more vehicles operated by the common carrier.
App. Br. 47--48 (Claims App.).
3
Appeal2017-009161
Application 14/035,723
Rejection
Claims 1-22 are rejected under 35 U.S.C. § 101, as being directed to a
judicial exception, without significantly more. Non-Final Act. 5.
Issue on Appeal
Did the Examiner err in rejecting claims 1-22 under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Mayo/Alice Analysis
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has"' ... long held
that this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable."' Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
4
Appeal2017-009161
Application 14/035,723
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "'Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work."' In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk, 409
U.S. at 67). Moreover, if a method can be performed by human thought
alone, or by a human using pen and paper, it is merely an abstract idea and is
not patent eligible under§ 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). For example, we consider the
question of whether the claims are directed to a specific improvement in the
capabilities of the computing devices, or, instead, "a process that qualifies as
5
Appeal2017-009161
Application 14/035,723
an 'abstract idea' for which computers are invoked merely as a tool."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two, whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See id.
The Examiner's Rejection
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes that claims 1-22 are directed to a judicial exception, i.e., an
abstract idea:
the claims are a type of organizing human activities because the
shipments are human activities and that type of data is being
organized to provide incentives to humans or customers.
Managing the way shipments are organized is similar to
managing a game of bingo, which was an abstract idea in
Planet BingoPJ In addition, the claims are abstract for being an
idea itself because the claims merely use determinations to
present indications of data, which is similar to the abstract idea
in Fair Warning where applying rules to detect events and
provide notifications of that was an abstract idea. [3J
2 The Examiner is referring to the post-Alice non-precedential Federal
Circuit opinion: Planet Bingo, LLC v. VKGS LLC, 576 F.App'x 1005 (Fed.
Cir. 2014) (managing a game of bingo).
3 The Examiner is referring to the post-Alice precedential Federal Circuit
opinion: FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed.
Cir. 2016) ("[T]he use of generic computer elements like a microprocessor
or user interface do not alone transform an otherwise abstract idea into
patent-eligible subject matter.").
6
Appeal2017-009161
Application 14/035,723
Non-Final Act. 6-7. 4
finds:
Regarding the second step of the Mayo/Alice analysis, the Examiner
[ t ]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the elements individually or in combination
[with] ... memory storage areas, [and] computer processors,
... require nothing more than a generic computer to perform
routine and conventional computer functions and other
potential use of hardware or computers is for mere data
gathering or data transforming or extra solution activity.
Non-Final Act. 7. 5
For the aforementioned reasons, the Examiner concludes that all
claims 1-22 on appeal are not patent eligible under 35 U.S.C. § 101.
Mayol Alice Analysis - Step 1
Regarding Alice step 1, Appellant contends the Examiner has not
considered the claims as a whole "wherein an abstract idea may admittedly
form part of the recitation, but not the entirety thereof, as required to
conclude that the claims are 'directed to' merely an abstract idea." App. Br.
31 ( emphasis added). Appellant avers that claims 1-22 satisfy Alice step 1,
4 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
5 The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
7
Appeal2017-009161
Application 14/035,723
because the Examiner "does not provide a sufficiently detailed review of the
claims under either part of the two-part analysis." App. Br. 33.
In support, Appellant recites the claim language and urges that the
claimed configuration is "described in at least paragraph [0050] of
Appellant's original disclosure, emphasizing the manner in which the
incentive - once physically applied - accrues into a tangible of concrete
benefit to the customer, such as a drop-off or a pick-up at a preferred
location, or at a preferred time, or the like." App. Br. 34.
We note paragraph 47 of Appellant's Specification describes: "in
various embodiments, the discount application 300 may also include a
volume discount (VD) module configured to calculate and apply a discount
to one or more entities' shipping costs as a result of shipping a particular
volume to an identified location." Emphasis omitted. Paragraph 50 of the
Specification describes targeting customers "who have shipped and/or
received shipments in the particular location ... to obtain additional volume
of shipments to be shipped to the particular location for the specified time
period."
Appellant argues that the potentially available incentive may also be
based upon "a comparison of an actual volume of total shipments being
made against a historical average volume of total shipments made by the one
or more identified customers." App. Br. 35 (emphasis omitted).
Appellant summarizes the Alice step 1 arguments:
It is with this multi-level nuanced analysis that the
claimed configuration is able to--in a near real-time
manner----determine and generate instructions to automatically
implement an adjustment to the physical handling of the
package being shipped upon querying of a separate tracking
system that notifies-again in a near real-time manner-the
8
Appeal2017-009161
Application 14/035,723
claimed configuration of one or more new shipments having
been made, so as to earn the discount.
App. Br. 35-36.
Appellant further urges the claims on appeal advantageously arrange
"certain known and conventional features alongside novel features in a
nonconventional manner," analogizing the claims to BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), "stating that uniqueness (and therefore eligibility) can be ... found in
the non-conventional and non-generic arrangement of known, conventional
pieces." App. Br. 36. 6
In response, the Examiner disagrees, and further explains the basis for
the rejection:
[The E]xaminer has provided two explanations for why the
claims are abstract. The claims are a type of organizing of
human activities because the claims show organizing shipments
(which are human activities) and organizing those
shipments to provide incentives to humans (customers). [The]
Examiner then properly compared this type of organizing of
human activities with Planet Bingo,[7J which is a court
decision that showed organizing human activities are abstract
ideas. Similarly, [the E]xaminer properly showed that the
claims are abstract for being an idea itself because the claims
merely are making determinations on data to present
determined indications of that data which is similar to the
abstract idea in Fair Warning where applying rules to detect
events and provide notifications of that was an abstract idea. [SJ
Ans. 3--4.
6 We address BASCOM infra, under Alice, step 2.
7 See supra, n.2.
8 See supra, n.3.
9
Appeal2017-009161
Application 14/035,723
We note the FairWarning court agreed with the District Court below
that Fair Warning's subject claims were directed to the abstract idea of
"analyzing records of human activity to detect suspicious behavior."
FairWarning, 839 F.3d at 1093 (internal quotation marks and citation
omitted). In support, the FairWarning court determined that the subject
claims collected information, analyzed information, and provided
notification in the event a specified condition was met (e.g., improper access
to a patient's personal health information). Id.
The Examiner explains that the claims before us on appeal have been
considered as a whole:
[The] Examiner has considered the claims as a whole as well as
the combination of features. Nothing in the combination of
features establishes the claims as not being an abstract idea nor
has appellant provided any sort of explanation or argument of
how the combination or sequence of features makes the claims
not directed to an abstract idea.
Ans. 5 ( emphasis added).
Our reviewing court has held that claims directed to data collection,
analysis, and display are directed to an abstract idea. Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" are "a familiar class of claims 'directed to' a patent
ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016); FairWarning, 839 F.3d at 1093-94.
The Federal Circuit further guides that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
10
Appeal2017-009161
Application 14/035,723
also Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1372
(Fed. Cir. 2017) (concluding "claims directed to the collection, storage, and
recognition of data are directed to an abstract idea"). The court also guides
that data gathering is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane),
aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
Here, we do not find persuasive Appellant's attempts to analogize the
claims to the subject claims considered by the court in McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), and Enfish.
App. Br. 27.
We note the subject claim considered by the McRO court concerned a
method for automatically animating lip synchronization and facial
expressions. McRO, 837 F.3d at 1303. The McRO court concluded the
subject claims did not recite an abstract idea because the computer animation
improved the prior art through the use of rules, rather than artists, to set
morph weights and transitions between phonemes. Id. at 1308. Thus, the
claimed invention in McRO allowed for computer performance of animation
steps that previously had to be performed by human animators. Id. at 1309.
The subject claims in McRO used "limited rules in a process specifically
designed to achieve an improved technological result" over "existing,
manual 3-D animation techniques." Id. at 1316 (emphasis added).
Here, Appellant's claimed invention does not apply positively recited
rules, per se. The invention under appeal merely adapts to a technological
setting ( e.g., generic memory storage areas and one or more generic
computer processors) the broad concepts of "automatically applying, via
execution of the one or more computer processors, the determined incentive
11
Appeal2017-009161
Application 14/035,723
against one or more benefits available for the one or more identified
customers" ( emphasis added), and:
automatically generating, via execution of the one or
more computer processors and based upon said one or more
benefits against which the determined incentive is applied,
computer-readable program instructions configured to
automatically implement said at least one alteration of said
handling of said one or more new shipments via said one or
more vehicles operated by the common earner.
Claim 1.
Thus, the invention under appeal is directed to the result of the
determined incentives and the alteration of the handling of new shipments
via common carrier vehicles. Claim 1. We emphasize that McRO (837 F.3d
at 1312) guides that "[t]he abstract idea exception prevents patenting a result
where 'it matters not by what process or machinery the result is
accomplished."' (Quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854).)
(Emphasis added.)
Here, it is our view that Appellant's claims merely implement generic
computer components to perform the recited functions (see, e.g., system
claim 11) and steps (see, e.g., computer-implemented method claim 1).
Regarding Appellant's arguments analogizing Enfzsh to the claims
before us on appeal (App. Br. 26-27), we note the Enfzsh court (822 F .3d at
1336) concluded that there was no abstract idea under Alice step 1
("Accordingly, we find that the claims at issue in this appeal are not directed
to an abstract idea within the meaning of Alice. Rather, they are directed to
a specific improvement to the way computers operate, embodied in the self-
referential table.").
12
Appeal2017-009161
Application 14/035,723
Thus, the court concluded the claimed self-referential database table
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. Because the
analysis stops if there is no abstract idea under Alice step 1, the Enfish court
concluded the subject claims were patent eligible.
Here, Appellant has not persuasively shown that any features of the
claimed invention improve the way the recited generic "one or more memory
storage areas" (independent claims 1, 7, 11, and 17) and/or one or more
processors (independent claims 1, 7, 11, 17, 21, and 22) store and retrieve
data in a manner analogous to that found by the court in Enfzsh.
Therefore, we are not persuaded that Appellant's claimed invention
improves the functionality or efficiency of the recited memory storage areas
or processors, or otherwise changes the way the claimed generic computer
components function, at least in the sense contemplated by the Federal
Circuit in Enfzsh.
Regarding Appellant's additional contention asserting the absence of
preemption (App. Br. 33), 9 our reviewing court provides applicable
guidance: "While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); Ultramercial, Inc. v. Hulu LLC, 722 F.3d 1335, 1346 (Fed. Cir.
2013). Therefore, we are not persuaded by Appellant's arguments regarding
the absence of complete preemption.
9 Appellant repeats essentially the same preemption argument on page 3 8 of
the Appeal Brief.
13
Appeal2017-009161
Application 14/035,723
Moreover, but for the recitations of a memory storage area, and one
or more processors ( claim 1 ), we are of the view that the recited functions or
steps could be performed as mental steps, or with the aid of pen and paper.
See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed.
Cir. 2016) ("While the Supreme Court has altered the § 101 analysis since
CyberSource in cases like Mayo and Alice, we continue to 'treat[] analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category."' (Brackets in original) (quoting Elec. Power Grp.,
830 F.3d at 1354)); see also CyberSource, 654 F.3d at 1375 ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
"Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work." Gottschalk, 409 U.S. at 67. (Emphasis
added.) Moreover, "merely selecting information, by content or source, for
collection [and] analysis ... does nothing significant to differentiate a
process from ordinary mental processes .... " Elec. Power Grp., 830 F.3d at
1355. Data gathering, such as receiving and analyzing (or identifying data),
by itself, does not transform an otherwise-abstract process or system of
information collection and analysis. See id.
It is also our view that Appellant's claims on appeal are similar to the
claims held to be directed to an abstract idea by the court in Smart Sys.
Innovations, 873 F.3d 1364. In Smart Sys. Innovations, the court concluded
that the subject claims "really only cover an abstract concept: paying for a
subway or bus ride with a credit card." Id. at 1371 (internal quotation marks
14
Appeal2017-009161
Application 14/035,723
and citation omitted). Similar to Appellant's claims, the Smart Sys.
Innovations court held that claims which merely invoke computers in the
collection and arrangement of data are directed to an abstract idea:
the claims recite the collection of financial data from third
parties, the storing of that financial data, linking proffered
credit cards to the financial data, and allowing access to a
transit system based on the financial data. The claims are not
directed to a combined order of specific rules that improve any
technological process, but rather invoke computers in the
collection and arrangement of data. Claims with such
character do not escape the abstract idea exception under Alice
step one.
Id. at 1372-73 (emphasis added).
For at least these reasons, we are not persuaded the Examiner erred in
concluding that each of claims 1-22 on appeal is directed at least to the
abstract idea of a method of organizing human (i.e., shipment) activities,
similar to the abstract ideas identified by our reviewing courts ( as discussed
above) that could additionally be performed as mental steps, albeit with the
aid of pen and paper.
Appellant provides no further substantive arguments regarding Alice
step 1. Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Therefore, we proceed to Alice step 2.
Mayo/Alice Analysis -Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Non-Final Act. 3;
Ans. 4---6), we tum to the second part of the Alice/Mayo analysis. We
analyze the claims to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claims amount to
15
Appeal2017-009161
Application 14/035,723
"significantly more" than the abstract idea. Alice, 134 S. Ct. at 2357
(internal quotations and citation omitted).
Regarding Alice step 2, Appellant addresses the purported inventive
concept of the claims. Appellant urges:
assuming arguendo that the pending claims were directed to be
an abstract idea, Appellant respectfully submits that each claim
as a whole amounts to significantly more than the exception
itself. Specifically, Appellant respectfully submits that the
claims ( 1) apply the judicial exception with, or by use of, a
particular machine; (2) add specific limitations other than what
is well-understood, routine and conventional in the field; and/or
(3) provide meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological
environment.
App. Br. 37 (emphasis added).
The "Machine-or-Transformation" (MoT) test
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014), the "machine-or-
transformation" ("MoT") test, as outlined in Bilski (545 F.3d at 954), can
provide a "useful clue" in the second step of the Alice framework. Under
Bilski 's MoT test, a claimed process is patent-eligible under§ 101 if:
( 1) it is tied to a particular machine or apparatus; or
(2) the process transforms a particular article into a different state or
thing. Bilski, 545 F.3d at 954 (citing Gottschalk, 409 U.S. at 70).
Here, however under Bilski 's MoT test, we conclude that none of
Appellant's claims 1-22 is tied to a particular machine or apparatus; nor are
any of Appellant's claims involved in any type of transformation of any
16
Appeal2017-009161
Application 14/035,723
particular article. 10
Contrary to Appellant's contentions (id.), we find the claims on appeal
are silent regarding specific limitations directed to an improved computer
system, processor, memory, network, database, or Internet. Therefore, we
find Appellant's claimed invention does not provide a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," as considered by the court in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) (emphasis added).
Further regarding the use of the recited generic memory storage areas
and/or processors ( claim 1 ), the Supreme Court held "the mere recitation of
a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Alice, 134 S. Ct. at 2358.
Appellant's analogy to BASCOM 11 is similarly unavailing. See App.
Br. 32. The Federal Circuit concluded in BASCOM that the subject claims (a
method and system for filtering Internet content) were directed to an abstract
idea; however, the court found that the claimed Internet content filtering,
featuring an implementation "versatile enough that it could be adapted to
10 See Accenture Glob. Servs., 728 F.3d at 1344--45 (claims reciting
"generalized software components arranged to implement an abstract
concept [of generating insurance-policy-related tasks based on rules to be
completed upon the occurrence of an event] ... on a computer" not patent
eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir.
2012) ("[s]imply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible" (internal citation omitted)).
11 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
17
Appeal2017-009161
Application 14/035,723
many different users' preferences while also installed remotely in a single
location," expressed an inventive concept in "the non-conventional and non-
generic arrangement of known, conventional pieces." BASCOM, 827 F.3d at
1346, 1350.
The BASCOM court concluded the claims did not preempt the use of
the abstract idea of filtering content on the Internet or on generic computer
components performing conventional activities. The court concluded that
the claims carved out a specific location for the filtering system, namely, a
remote Internet service provider (ISP) server, and required the filtering
system to give users the ability to customize filtering for their individual
network accounts. Id. at 1352.
Here, we are not persuaded that Appellant claims a particular non-
conventional and non-generic arrangement of structural elements in the
claims, so as to provide a technical improvement over prior methods for
providing shipping incentives. Appellant fails to identify the particular
structural arrangement of conventional elements in the claims that provides
the purported technical improvement. See BASCOM, 827 F.3d at 1348 ("An
abstract idea on 'an Internet computer network' or on a generic computer is
still an abstract idea"). Therefore, on this record, we are of the view that
Appellant's claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality.
Our reviewing court provides additional guidance: OIP Techs., Inc., v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims reciting,
inter alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome,
18
Appeal2017-009161
Application 14/035,723
and presenting offers to potential customers found to merely recite
"'well-understood, routine conventional activities'" by either requiring
conventional computer activities or routine data-gathering steps) (internal
citation omitted); see also Elec. Power Grp., 830 F.3d at 1355 ("We have
repeatedly held that such invocations of computers and networks that are not
even arguably inventive are 'insufficient to pass the test of an inventive
concept in the application' of an abstract idea" ( quoting buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1353, 1355 (Fed. Cir. 2014))); Intellectual
Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332, 1341 (Fed.
Cir. 2017) ("Rather, the claims recite both a generic computer element-a
processor-and a series of generic computer 'components' that merely
restate their individual functions . . . . That is to say, they merely describe
the functions of the abstract idea itself, without particularity. This is simply
not enough under step two").
The Supreme Court additionally guides that the "prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or [by] adding
'insignificant post[-]solution activity."' Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
Appellant further contends:
like the claims in DDR Holdings (addressed further below),
eligible subject matter was identified wherein the claims
were directed toward the Internet-centric challenge of alerting
subscribers (i.e., users) to time-sensitive information. In an
analogous fashion, the claims herein are configured for [sic] in
a near real-time fashion determine an incentive potentially
available for the one or more identified customers, the
determined incentive being based upon: (a) one or more new
19
Appeal2017-009161
Application 14/035,723
shipments being made by the one or more identified customers
to the at least one locale for the particular time period in
addition to the one or more shipments already being made by
the one or more identified customers to the at least one locale
for the particular time period, and (b) a comparison of an actual
volume of total shipments being made against a historical
average volume of total shipments made by the one or more
identified customers.
App. Br. 42.
In response to Appellant's arguments (id.), we do not find Appellant's
claims are similar to the claimed solution the court held to be patent eligible
in DDR. In particular, we note the court in DDR emphasized that the '399
patent claims did not "recite a fundamental economic or longstanding
commercial practice." DDR, 773 F.3d at 1257. As distinguished from the
claims considered by the court in DDR, we are of the view that Appellant's
claims 1-22, which provide shipping incentives, are directed to longstanding
commercial practices, i.e., at least the commercial practices of shipping
goods and providing incentives.
In DDR, the Federal Circuit applied the Supreme Court's Alice
two-step framework, and upheld the validity of DDR's '399 patent on its
web-page display technology. DDR, 773 F.3d at 1255. However, we find
the problem addressed by Appellant's claims (providing shipping incentives)
is also not similar or, otherwise, analogous to the specific technical problem
addressed by the subject claims in DDR, which were directed to retaining a
website visitor when the visitor clicked on a third-party merchant's
advertisement on the host website. Instead of taking the visitor to the
third-party merchant's website (and, thus, losing the visitor to the third-party
merchant), DDR's claimed system generated a hybrid web page that:
20
Appeal2017-009161
Application 14/035,723
(1) displayed product information from the third-party merchant, but also
(2) retained the host website's "look and feel."
As distinguished from the claims considered by the court under § 101
in DDR, Appellant's claims 1-22 are not directed to generating a hybrid web
page that retains the host website's "look and feel" while displaying product
information from a third-party merchant. See DDR, 773 F.3d at 1257. Nor
has Appellant analogized the claimed "interface ... remotely accessible by
the one or more identified customers" ( claim 1) to the hybrid web page of
the type considered by the court in DDR.
Appellant also urges that the "claimed configuration [] queries a
separate tracking system periodically, so as to in a near real-time manner
identify a new shipment qualifying the customer for the incentive." App. Br.
41 ( emphasis added).
However, performing (by Appellant's recited processor or processors)
the claimed steps or functions in real time does not render the claims non-
abstract See Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874
F.3d 1329, 1340 (Fed. Cir. 2017) (holding claims directed to monitoring
delivery of real-time information to users or measuring such delivery as
directed to an abstract idea); see also id. (citing Elec. Power Grp., 830 F.3d
at 1351-53 (noting that collecting information, analyzing it, and displaying
results is an abstract idea, even when undertaken in real time)).
Although the steps or functions recited in Appellant's claims may be
performed faster or more efficiently with the recited computer processor ( or
processors), we find the resultant speed increase comes from a "general-
purpose computer, rather than from the patented method itself," and does
21
Appeal2017-009161
Application 14/035,723
"not materially alter the patent eligibility of the claimed [invention]."
FairWarning, 839 F.3d at 1095 (citation omitted).
Although Appellant's invention is directed to the result of
"automatically applying, via execution of the one or more computer
processors, the determined incentive against one or more benefits available
for the one or more identified customers" ( claim 1 ), we find no language in
the claims on appeal that focuses on a specific means or method that
improves the recited generic memory storage areas and/or processors which
are used to perform all the recited steps or functions of claims 1-22.
Because we find Appellant has not established that claims 1-22 are
directed to an improvement in the recited generic memory storage areas
and/ or processors ( claim 1 ), we conclude that none of the claim limitations,
viewed both individually and as an ordered combination, amount to
significantly more than the judicial exception in order to sufficiently
transform the nature of the claims into patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellant's claims 1-22, considered as a whole, is directed to a
patent-ineligible abstract idea (under step one), and under step two, does not
recite something significantly more to transform the nature of the claim into
a patent-eligible application.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1-22, as being
directed to a judicial exception, without significantly more. 12
12 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
22
Appeal2017-009161
Application 14/035,723
Reply Brief
To the extent Appellant may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
CONCLUSIONS
The Examiner did not err in rejecting claims 1-22 under 35 U.S.C.
§ 101, as being directed to a judicial exception, without significantly more.
DECISION
We affirm the Examiner's decision rejecting claims 1-22 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
23