Ex Parte Lebrun

Patent Trials and Appeals Board

May 31, 2019

14686771 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/686,771 04/14/2015
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
06/04/2019
FIRST NAMED INVENTOR
Alexandre Lebrun
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.
26295-29145/US 5058
EXAMINER
LELAND III, EDWIN S
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
06/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDRE LEBRUN
Appeal 2018-005801 1
Application 14/686,771 2
Technology Center 2600
Before JASON V. MORGAN, JAMES B. ARPIN, and NABEEL U. KHAN,
Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-15. Final Act. 3-7; App. Br. 6. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 In this Decision, we refer to Appellant's Appeal Brief ("App. Br.," filed
January 29, 2018) and Reply Brief ("Reply Br.," filed May 18, 2018); the
Final Office Action ("Final Act.," mailed July 12, 2017); the Examiner's
Answer ("Ans.," mailed March 19, 2018; and the originally-filed
Specification ("Spec.," filed April 14, 2014). Rather than repeat the
Examiner's findings and determinations and Appellant's contentions in their
entirety, we refer to these documents.
2 Appellant asserts Facebook, Inc., is the real party-in-interest. App. Br. 2.
Appeal 2018-005801
Application 14/686,771
STATEMENT OF THE CASE
Appellant's claimed methods and computer-readable media "relate[]
in general to the field of natural language processing, and in particular to an
email-like user interface and a crowd-source based network for configuring
and training a natural language system interfaced with a runtime system or
application .. " Spec. ,r 2.
As noted above, claims 1-15 are pending. Claims 1 and 9 are
independent. App. Br. 12-13 (claim 1), 14--15 (claim 9) (Claims App.).
Claims 2-8 depend directly or indirectly from claim 1, and claims 10-15
depend directly or indirectly from claim 9. Id. at 12-16.
Claim 1, reproduced below, is representative.
1. A computer-implemented method comprising:
maintaining, by a configuration system, a plurality of natural
language (NL) instances, each NL instance developed by one or
more developers and comprising 1) a set of training data and 2)
a prediction model that predicts a user-desired application
function based on a NL query, the set of training data being used
to train the prediction model of each NL instance by mapping
application functions to NL queries;
receiving, by the configuration system, one or more linking
requests from the one or more developers to link NL instances to
other NL instances of the plurality of NL instances, each of the
one or more developers in communication with the configuration
system via a network and at least one of the one or more
developers being separate from the configuration and other
developers of the one or more developers;
linking, by the configuration system, one or more NL
instances of the plurality of NL instances to one or more other
NL instances of the plurality of NL instances responsive to the
received linking requests; and
training, by the configuration system, each of the NL
instances of the plurality of NL instances using:
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( 1) the set of training data for the NL instance, and
(2) each set of training data for other NL instances to which
the NL instance is linked;
for each of one or more of the plurality of NL instances:
receiving, from a client device of a user, an NL query
corresponding to an application request for the NL instance to
provide a user-desired application function based on the NL
query,
using the prediction model for the NL instance to determine
an application function according to the prediction model, and
responding to the NL query of the user by providing the
determined application function to the client device.
Id. at 12-13. The Specification does not define an "instance," however, we
understand an instance to be "[a]n object, in object-oriented programming,
in relation to the class to which it belongs. For example, an object myList
that belongs to a class List is an instance of the class List." MICROSOFT
COMPUTER DICTIONARY, 276 (5th ed. 2002). "In object-oriented
programming, [an object is] a variable comprising both routines and data
that is treated as a discrete entity." Id. at 372; see Spec. ,r 6 ("Each NL
instance includes a set of training data and a prediction model as part of an
NL configuration system that predicts a user-desired application function
based on an NL query.").
REJECTION
The Examiner rejects claims 1-15 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter. Final Act. 3-7. We review the appealed
rejection for error based upon the issues identified by Appellant, and in light
of the arguments and evidence produced thereon. Ex parte Frye, 94
USPQ2d 1072, 107 5 (BP AI 2010) (precedential). Arguments not made are
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waived. See 37 C.F.R. § 4I.37(c)(l)(iv). Unless otherwise indicated, we
adopt the Examiner's findings in the Final Action and the Answer as our
own and add any additional findings of fact for emphasis. For the reasons
given below, we sustain the Examiner's rejection.
A. Section 101
ANALYSIS
Patent Ineligible Claims
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court's two-part framework, described in Mayo and Alice.
Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first
determine what concept the claim is "directed to." See Alice, 573 U.S. at
219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk."). According to the Court, 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,
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437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalk v. Benson,
409 U.S. 63, 67 (1972)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diamondv. Diehr, 450 U.S. 175,187 (1981).
Having said that, the 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. at 191 (citing Benson and Flook). Nevertheless, the
Court noted that "[i]t is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection." Id. at 187; see also BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed.
Cir. 2016) (Even if the individual components were known, "an inventive
concept can be found in the ordered combination of claim limitations that
transform the abstract idea of filtering content into a particular, practical
application of that abstract idea" (emphasis added).).
If the claim is "directed to" an abstract idea, we next "must examine
the elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (alterations in original) (quoting Mayo,
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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.
B. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court's two part test, the Office published revised guidance on
the application of§ 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). 3 In Step One of our analysis, we
look to see whether the claims, as written, fall within one of the four
statutory categories identified in§ 101. Id. at 53 ("Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in MPEP
2106, i.e., whether the claim is to a statutory category (Step 1) and the
Alice/Mayo test for judicial exceptions (Steps 2A and 2B)").
Under the guidance, we then look to whether the claim recites:
(1) Step 2A - Prong One: 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) Step 2A - Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP4
§ 2106.05(a}-(c), (e}-(h)).
3 This guidance supersedes previous guidance memoranda. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 ("All
US PTO personnel are, as a matter of internal agency management, expected
to follow the guidance.").
4 All Manual of Patent Examining Procedure ("MPEP") citations herein are
to MPEP, Rev. 08.2017, January 2018.
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See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54--55 ("Revised Step 2A").
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56 ("Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.").
C. Step One - Claims Directed to Statutory Categories
Appellant's independent claims 1 and 9, and their associated
dependent claims, are directed to methods (i.e., "processes") and computer-
readable media (i.e., "articles of manufacture") respectively. App. Br. 12-
16 (Claims App.). Thus, the pending claims are directed to recognized
statutory categories. Final Act. 3.
Despite being directed to a different statutory category, the limitations
of claim 9 closely track those of claim 1. See Final Act. 3--4 (noting the
similarities between the independent claims). Therefore, we focus our
analysis on the limitations of claim 1. See also Accenture Global Servs.
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013)
("Although CLS Bank issued as a plurality opinion, in that case a majority
of the court held that system claims that closely track method claims and are
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grounded by the same meaningful limitations will generally rise and fall
together.") ( citation omitted).
D. Two-Part Alice/Mayo Test
1. Step 2A, Prong One - Claims "Directed To" Abstract Idea
Applying the first part of the Alice/Mayo analysis (Step 2A), the
Examiner concludes claim 1 recites the abstract idea of "performing data
manipulation." Final Act. 6. In particular, the Examiner finds the steps of
the computer implemented method of claim 1 map to this abstract idea. Ans.
4---6; see Final Act. 3.
The Examiner finds that the abstract idea recited in claim 1 is similar
to abstract ideas identified by the courts. In particular, the Examiner finds
that the abstract idea is "similar to 'organizing information through
mathematical correlations' ([Digitech Image Tech., LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014)]), 'Collecting,
displaying, and manipulating data' ([Intellectual Ventures I LLC v. Capital
One Financial Corp., 850 F.3d 1332, 1340 (Fed Cir. 2017)]) and 'Collecting
information, analyzing it, and displaying certain results of the collection and
analysis' ([West View Research LLC v. Audi AG, 685 Fed. App'x 923, 926
(Fed Cir. 2017) (quoting Electric Power Grp., LLC v. Alstrom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016))]), each of which the courts have found to be
abstract." Final Act. 3--4; see Ans. 6 (citing Electric Power Grp.).
Appellant disagrees and contends:
As recited in the claims, a natural language (NL) instance
includes "a set of training data and a prediction model that
predicts a user-desired application function based on a NL query,
[where] the set of training data [is] used to train the prediction
model of each NL instance." [Spec. ,r 6.] Training a machine
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learned model using trammg data (i.e., a plurality of NL
instances) and then using the trained model to output a command
to a software application is solely in the field of computer
science, and there is no non-technical analog to this. Such
actions do not describe an abstract concept, or a concept similar
to those found by the courts to be abstract, such as those
identified by the examiner.
App. Br. 7-8. We disagree
Claim 1 broadly recites the limitations of ( 1) storing data
("maintaining ... a plurality of natural language (NL) instances, each NL
instance developed by one or more developers and comprising 1) a set of
training data and 2) a prediction model that predicts a user-desired
application function based on a NL query, the set of training data being used
to train the prediction model of each NL instance by mapping application
functions to NL queries"); (2) receiving additional data ("receiving ... one
or more linking requests from the one or more developers to link NL
instances to other NL instances of the plurality of NL instances, each of the
one or more developers in communication with ... at least one of the one or
more developers being separate from the configuration and other developers
of the one or more developers"); (3) modifying data by linking it to related
data ("linking ... one or more NL instances of the plurality of NL instances
to one or more other NL instances of the plurality of NL instances
responsive to the received linking requests"); (4) modifying the data further
by "training" 5 the instances ("training ... each of the NL instances of the
5 Claim 1 does not specify how "training" is accomplished, but instead
focuses on what is used to perform the "training" step. The Specification
does not explain what is done to perform the step of "training," but, instead,
also focuses on what is used to train and the environment in which training
occurs. See Spec. ,r 26.
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plurality of NL instances using: ( 1) the set of training data for the NL
instance, and (2) each set of the training data for any other NL instances to
which the NL instance is linked"); ( 5) receiving additional data ("receiving
... an NL query corresponding to an application request for the NL instance
to provide a user-desired application function based on the NL query"); ( 6)
analyzing the received data ("using the prediction model for the NL instance
to determine an application function according to the prediction model");
and displaying results of the analysis ("responding to the NL query of the
user by providing application request with the determined application
function ... "). See Ans. 4---6; App. Br. 12-13 (Claims App.). Claim 1 does
not restrict the nature of the natural language instance prediction models,
and, therefore, claim 1 does not preclude the steps directed to training the
natural language instances and using them to determine an application
function from encompassing "steps people go through in their minds, or by
mathematical algorithms, without more." Electric Power Grp., 830 F.3d at
1354. Thus, we agree with the Examiner that the focus of this claim is on
collecting information, modifying it, analyzing it, and displaying certain
results of the collection, modification, and analysis. Ans. 6; see Electric
Power Grp., 830 F.3d. at 1353.
Claim 1 's limitations, under their broadest reasonable interpretation,
recite the abstract idea of "managing personal behavior or relationships or
interactions between people (including social activities, teaching, and
following rules or instructions)," which falls within the broader category of
"[c]ertain methods of organizing human activity." 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52; see Spec. ,r 5 ("The
developer platform's inbox allows for minimizing the number of human
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interactions required to improve the quality and accuracy of an NL
configuration system in processing natural language expressions."
( emphasis added)); see also Reply Br. 3 ("[T]the claimed method allows a
Natural Language (NL) configuration system to provide a collaboration
plaiform where developers configure and optimize their natural language
systems by leveraging the work and prediction model training data of other
developers when generating and configuring their own prediction models."
(emphases added)). 6 Thus, we determine that the rejected claims recite an
abstract idea, namely "[ c ]ertain methods of organizing human activity." See
Final Act. 3, 6; Ans. 4---6; 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 52.
2. Step 2A, Prong Two - Abstract Idea Not Integrated Into Practical
Application
The method recites that its various steps are performed "by a
configuration system," that communications with the configuration system
or the one or more developers are sent "via a network," and that NL requests
are sent from and responses are received at a "client device." App. Br. 12-
13 (Claims App.). Applying the second part of the Alice/Mayo analysis,7 the
Examiner finds
6 Although the method of claim 1 may broadly encompass a "collaboration
platform," we note the recited steps do not require "collaboration." By the
claim's language, the recited method requires only "one" developer. See,
e.g., App. Br. 12 (Claims App.) (claim 1 reciting "one or more developers").
7 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate those considerations under first part of the Alice/Mayo
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the additional elements in the independent claims are the non-
transitory computer readable storage medium and that the
method is computer implemented, which appear to be "adding
the words [']apply it['] ( or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on
a computer;" and "simply appending well-understood, routine
and conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception"[.]
Final Act. 4 ( citation omitted); see Ans. 6-7 ("The computer is being used as
a tool, rather than being improved by the invention."). Further, the
Specification discloses that the additional, recited elements are generic. See
Spec. ,r,r 3 ("Enabling voice control requires a natural language system in
addition to a speech recognition system, which translate speech into textual
input. The natural language system is capable of processing a user's natural
expression into program code that the device's runtime system or an
application running on the device understands."), 18 (a user's device "e.g., a
smart phone, tablet computer, laptop computer, personal computer,
navigation system, security system, etc."), 24 ("In some embodiments,
machine-learning techniques include supervised, semi-supervised,
or unsupervised semi-supervised machine-learning algorithms that are well
known in the art" (emphasis added).), 72 ("Embodiments of the invention
may also relate to an apparatus for performing the operations herein. This
apparatus may be specially constructed for the required purposes, and/or it
may comprise a general-purpose computing device selectively activated or
reconfigured by a computer program stored in the computer. Such a
computer program may be stored in a tangible computer readable storage
analysis (Step 2A of the Office guidance). See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. at 55 n.25, 27-32.
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medium or any type of media suitable for storing electronic instructions, and
coupled to a computer system bus" ( emphases added).). Thus, the method of
claim 1 merely recites generic hardware and machine-learning techniques
and algorithms, and the recited method is not linked to any particular
machine (MPEP § 2106.05(b)) and merely applies generic computer
hardware and software to perform the abstract idea (MPEP § 2106.05([)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 55 n.27, 30.
Appellant contends that the recited method is "necessarily rooted in
computer technology" and that there is no non-technological analog to the
recited method. App. Br. 7-8, 9; Reply Br. 3--4. In particular, Appellant
contends that
the claims recite a process that allows the NL configuration
system to provide a collaboration platform where developers
configure and optimize their natural language systems by
leveraging the work and prediction model training data of other
developers when generating and configuring their own
prediction models. This minimizes the time and data required to
improve the quality and accuracy of one single system and
provides a network effect to quickly reach a critical mass of data
sufficient for launching a system.
App. Br. 8. Nevertheless, as noted above, the recited method only requires
"one" developer. See supra note 6. Thus, the work of "other" developers
need not be present in the recited method, and the alleged leveraging
benefits may not be attained. See Reply Br. 5 ( discussing the benefits of
crowdsourcing).
Appellant further contends the method recites "linking ... one or
more NL instances of the plurality of NL instances to one or more other NL
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instances of the plurality of NL instances responsive to the received linking
requests." App. Br. 12. Appellant asserts that
linking their applications to one or more other applications
allows the developer to further train and refine their individual
prediction model using the NL inputs and corresponding
application outputs of other applications.
This is not an abstract concept, and the claims are not
limited to training the data itself. For example, the claims
additionally recite the training and subsequent use of the model
to invoke software functionality.
App. Br. 8-9. The invocation of software functionality here does not,
however, apply or use the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 55 n.29; see also Ans. 6 ("There is
nothing inherently computer related or technical in the concept of selectively
sharing data for use in training a mathematical model and it is something
that can be executed by a person with pen and paper.").
Further, the step of "responding to the NL query of the user by
providing the determined application function to the client device" is merely
insignificant, extra-solution activity associated with the implementation of
the abstract idea. Ans. 5-6; see MPEP § 2106.05(g), 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 n.31. Appellant
does not contend that the recited method transforms or reduces a particular
article to a different state or thing. See MPEP § 2106.05(c); 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 n.28.
Finally, Appellant contends that claim 1 is similar to a hypothetical
claim 1 identified as eligible in the Office's Patent Eligibility Example 1
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(Isolating and Removing Malicious Code from Electronic Messages). 8 That
hypothetical claim, however, recited a method comprising steps for
physically isolating a received communication on a memory sector and
extracting malicious code from that communication to create a clean
communication in a new data file. Thus, unlike the present claim, which is
directed toward establishing links between data and performing unspecified
"teaching," the hypothetical method is directed towards isolating a
communication, parsing it (e.g., transforming it) into a clean communication
and an infected portion, and, thereby, eradicating computer viruses, worms,
and other malicious code; an application inextricably tied to computer
technology and distinct from concepts found abstract by the courts. The
Examiner finds that the method of rejected claim 1 "is far more similar to
the concept in Electric Power Group and West View Research (i.e.
'Collecting information, analyzing it, and displaying certain results of the
collection and analysis') than it is to the example cited by the Appellant."
Ans. 6. We agree with the Examiner.
In view of Appellant's Specification and the identified prior art and
consistent with the Examiner's determinations, we are persuaded the
rejected claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
8 https://www.uspto.gov/sites/default/files/docurnents/abstract_idea_examples.pdf.
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environment.
See MPEP § 2106.0S(a}-(c), (e}-(h). Thus, we conclude that the rejected
claims do not integrate the judicial exception into a practical application and
that the claims are directed to an abstract idea.
3. Step 2B-Not Significantly More Than the Abstract Idea
Because we find that the claims are directed to an abstract idea and do
not integrate that abstract idea into a practical application, we now consider
whether the claims include additional limitations, such that the claims
amount to significantly more than the abstract idea. As noted above,
applying second part of the Alice/Mayo test, the Examiner concludes, "[ a ]11
of the identified additional elements taken into consideration individually
and in combination fail to amount to significantly more than the abstract
idea above." Final Act. 4; Ans. 7-8. We agree.
The Specification does not assert that any of the recited components,
alone or in combination, are novel. On the contrary, the Specification makes
clear that the components and techniques recited in the rejected claims are
well-understood, routine, and conventional. See Spec. ,r,r 3, 18, 24, 72.
As discussed above, Appellant contends
the claimed solution is a crowdsourcing based community
platform where application developers can leverage the training
data of other developers to refine the prediction models of their
applications. Claim 1 additionally specifies that "each of the one
or more developers [are] in communication with the
configuration system via a network and at least one of the one or
more developers [is] separate from the configuration and other
developers of the one or more developers." The examiner has
continuously ignored the fact that the definition of an NL
instance as recited in the claims alone firmly places the claims in
a computing environment. Accordingly, the Answer has failed to
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recognize the inherent nature of the internet in the claims under
appeal.
Reply Br. 5 ( emphases added). As noted above, however, the language of
claim 1 does not require a plurality of developers; only "one" developer is
needed to satisfy the claim language. In re Morris, 127 F.3d 1048, 1056
(Fed. Cir. 1997) ("It is the applicants' burden to precisely define the
invention, not the USPTO's."). Therefore, we find Appellant's contentions
unpersuasive. We agree with the Examiner that the additional limitations in
claim 1, individually or as an ordered combination, do not amount to
significantly more than an abstract idea.
On this record, we agree with the Examiner that the independent
claim 1, as well as independent claim 9, is directed to an abstract idea and
fails to recite "significantly more" than the identified abstract idea. Thus,
we are not persuaded that the Examiner erred in determining that these
claims are patent ineligible, and we sustain those rejections. Appellant do
not argue the eligibility of the dependent claims separately, and we find that
the dependent claims fall with their base claims. See Final Act. 4
( addressing the patent eligibility of the dependent claims). Therefore, we
also sustain the patent ineligibility rejections to the dependent claims.
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CONCLUSIONS
1. The Examiner did not err in rejecting claims 1-15 under 35 U.S.C.
§ 101, as directed to patent-ineligible subject matter.
2. Claims 1-15 are not patentable.
DECISION
We affirm the Examiner's rejections of claims 1-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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