Ex Parte Milioris

Patent Trials and Appeals Board

Apr 11, 2019

14540770 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/540,770 11/13/2014 Dimitrios Milioris
114592 7590 04/15/2019
Nokia Technologies Oy
C/0 Davidson Sheehan LLP
6836 Austin Center Blvd.
Suite 320
Austin, TX 78731
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.
4100-817074-US 2455
EXAMINER
PHAM, THIERRY L
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
04/15/2019 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):
docketing@ds-patent.com
nokia@ds-patent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIMITRIOS MILIORIS
Appeal2018-002192
Application 14/540,770
Technology Center 2600
Before JEAN R. HOMERE, CAROLYN D. THOMAS,
and KARA L. SZPONDOWSKI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all claims pending in this application. 1
Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest Alcatel Lucent, now a
subsidiary of Nokia Inc. App. Br. 1.
Appeal2018-002192
Application 14/540,770
Introduction
According to Appellant, the claimed subject matter relates to a
communication system (100) for classifying text blocks ( e.g. Twitter
characters) across a social network (105) (e.g., Twitter). Spec. ,r,r 1, 19, Fig.
1. In particular, upon receiving a block of characters (tweet) from a user
(125) at a user equipment (110), a server (115) stores the tweet and forwards
copies of the tweet to one or more users' equipment (111-113) registered as
the user's (125) followers. Id. ,r,r 19, 20. Further, the server (115) identifies
a set of classes based on tweets previously transmitted on the network to
classify the received tweet into a class in the set. Id. ,r 21. More
particularly, the server (115) computes a sparsifying matrix from a set of
reference blocks selected from a training set obtained from another server
(120) based on text blocks having the highest overall joint complexities with
each pair of the text blocks in the training set. Id. ,r 23. Upon receiving
from the user equipment (111-113) a measurement vector formed by
compressing text blocks using a measurement matrix, the server (115) uses
the sparsifying matrix, and the measurement vector, including the
measurement matrix corresponding to the subsequent text block, to classify
the received text block into the class associated with the identified one of the
set of reference blocks, and subsequently transmits the classified text block
to the user equipment. Id.
Representative Claim
Claims 1, 9, and 1 7 are independent. Independent claim 1 is
representative, and reads as follows:
1. A method comprising:
computing, at a first server, a sparsifying matrix from a
set of reference blocks that is selected from first blocks of text
2
Appeal2018-002192
Application 14/540,770
based on joint complexities of each pair of the first blocks of
text;
determining, at the first server, one of the set of reference
blocks that is most similar to a second block of text based on
the sparsifying matrix, a measurement matrix, and a
measurement vector formed by compressing the second block
of text using the measurement matrix; and
transmitting, from the first server, a signal representative
of the one of the set of reference blocks to indicate a
classification of the second block of text.
Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. §101 as being directed to
patent ineligible material. Final Act. 2.
ANALYSIS 2
Standard for Patent Eligibility
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. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
2 In response to Appellant's arguments in the Appeal Brief that the
Examiner's patent ineligibility analysis of claims 1-20 in the Final Action
improperly used Bilski 's machine or transformation test, the Examiner recast
in the Answer the patent-ineligibility analysis based on Alice/Mayo test so as
to supersede the previous analysis in the Final Action. App. Br. 3--4; Ans. 4.
We, therefore, refer to Appellant's arguments and the Examiner's findings
and conclusions set forth in the Appeal Brief (filed July 6, 2017) ("App.
Br."), the Answer (mailed October 26, 2017) ("Ans."), and the Reply Brief
(filed December 22, 2017) ("Reply Br.") for the respective details.
3
Appeal2018-002192
Application 14/540,770
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
4
Appeal2018-002192
Application 14/540,770
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an "'inventive
concept'" sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221. "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, 566 U.S. at 77). "[M]erely
requir[ ing] generic computer implementation[] fail[ s] to transform that
abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50-57 (Jan. 7, 2019) ("2019 PEG"). Under the 2019 PEG, 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
5
Appeal2018-002192
Application 14/540,770
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). 3
See 2019 PEG at 52, 55-56. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, does the
office 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 2019 PEG at 56.
Examiner's Findings and Conclusions
In the first step of the Alice inquiry, the Examiner determines
independent claims 1, 9, and 17 are directed to the abstract idea of
"computing sparsifying matrix based on joint complexities; determining text
blocks using measurement matrix; and transmitting determined block via a
network" similar to "'using categories to organize, store, and transmit
information' ... and 'organizing information through mathematical
correlations."' Ans. 2-3. That is, according to the Examiner, the claims are
directed to "perform[ing] computations on reference blocks, determin[ing] a
similarity between reference blocks based on rules, and transmit[ ting] a
signal representing reference blocks to indicate a classification of text." Id.
at 5. Therefore, the Examiner concludes that because the claims recite at
best "a series of rules applied to blocks of texts in order to transmit a signal
indicating classification information," they are directed to "an [abstract] idea
of itself and/or organizing human activity." Id. Further, the Examiner finds
3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
6
Appeal2018-002192
Application 14/540,770
Appellant's patent eligibility argument that the claims are directed to
improving a conventional computer-based automated classification
technique has no basis in the claims because, as in Planet Bingo4, the claims
"do not require classifying high volumes of natural language text and
classifying text in real time." Id. at 4--5 (emphasis omitted). The Examiner
additionally finds that, unlike McR05, the claims do not recite a specific
improvement to a particular technology. Id. at 5.
At Alice step 2, the Examiner determines the claims do not recite
additional elements sufficient to amount to significantly more than the
abstract idea. Id. at 3. Instead, the Examiner avers the claims merely
implement the abstract idea on a generic computer, and simply append well-
understood, routine, and conventional activities to the judicial exception. Id.
The Examiner further notes "there is no improvement in the functionality of
the claimed server, apparatus, processor, or transceiver, as they would
function just like any other server, and processor and transceiver in an
apparatus." Id. at 7. Additionally, the Examiner states the following:
[T]hese claimed hardware components only perform their basic
computer functions.
4 (Planet Bingo, LLC v. VKGS LLC, 576 F.App'x 1005 (Fed. Cir. 2014)).
5 (McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir.
2016)).
7
Appeal2018-002192
Application 14/540,770
Id.
Generic computer-implementation of a method is not a
meaningful limitation that alone can amount to significantly
more than an abstract idea. Moreover, when viewed as a whole
with such additional element considered as an ordered
combination, claims modified by adding a generic hardware
components are nothing more than a purely conventional
computerized implementation of an idea in the general field of
computer processing and do not provide significantly more than
an abstract idea.
Appellant's Contentions
Appellant argues that the Examiner's application of the Alice two-step
framework is flawed because it overlooks the following additional claim
limitations:
[The] sparsifying matrix is computed from a set of reference
blocks that is selected from first blocks of text based on joint
complexities of each pair of the first blocks of text; that the
claimed one of the set of reference blocks is determined to be
most similar to a second block of text based on three quantities:
(1) the sparsifying matrix, (2) a measurement matrix, and (3) a
measurement vector formed by compressing the second block
of text using the measurement matrix; or that the signal
transmitted from the first server is representative of the one of
the set of reference blocks to indicate a classification of the
second block of text.
Reply Br. 4 (underlining omitted).
Appellant argues that the claimed features of
computing a sparsifying matrix based on joint complexities of
text blocks and determining a reference block that is most
similar to a block of text based on the sparsifying matrix, a
measurement matrix, and a measurement vector formed by
compressing the second block of text using the measurement
matrix
8
Appeal2018-002192
Application 14/540,770
allow the underlying processing system to classify the block of text in real
time. App. Br. 4--5 (citing Spec. ,r,r 2, 3, 18). Therefore, Appellant argues
that because the claimed invention improves the computer functionality to
classify text data in real time based on a sparsifying matrix, a measurement
matrix, and measurement vector, it is not directed to an abstract idea. Id. at
5; Reply Br. 5 (citing McRO). Further, Appellant argues that because
improvements identified in the Specification of the McRO patent are not set
forth in the claims, the claims in the present appeal need not particularly
recite related improvement described in the Specification. Id. According to
Appellant, so long as the claims recite limitations pertaining to an
improvement of the computer functionality, which can be ascertained from
the Specification, the claim is not directed to an abstract idea. Id. With
respect to the second step of Alice, Appellant argues that because the claims
recite the limitations above, which the Examiner overlooked, they recite
significantly more than the abstract idea identified by the Examiner. App.
Br. 5.
Our Review
Alice/Mayo--Step 1 (Abstract Idea)
Applying the guidance set forth in the 2019 PEG, we conclude the
Examiner has not erred in rejecting the claims as being directed to patent
ineligible subject matter. The 2019 PEG instructs us first to determine
whether any judicial exception to patent eligibility is recited in the claim.
The guidance identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. We
focus our attention on the third grouping, mental processes. Claim 1 recites
9
Appeal2018-002192
Application 14/540,770
the following limitations: (1) "computing, at a first server, a sparsifying
matrix from a set of reference blocks that is selected from first blocks of text
based on joint complexities of each pair of the first blocks of text"; (2)
"determining, at the first server, one of the set of reference blocks that is
most similar to a second block of text based on the sparsifying matrix, a
measurement matrix, and a measurement vector formed by compressing the
second block of text using the measurement matrix"; and
(3) "transmitting, from the first server, a signal representative of the one of
the set of reference blocks to indicate a classification of the second block of
text".
These limitations, under their broadest reasonable interpretation,
recite classifying a first block of text by applying thereon a sparsifying
matrix computed from a set of reference blocks to compare the first block of
text with a second block of text computed from the sparsifying matrix, a
measurement matrix, and a measurement vector, and subsequently
transmitting the classified block of text to another location. In other words,
the claim as a whole merely involves the application of a mathematical
algorithm to received text data to determine its sparsity, as well as to identify
comparable text data for subsequent classification and transmission to
another party. Such classification and transmission of the block of text are
nothing more than "mental processes" that could be performed by a human
using a pen and paper ( via classifying received text data based on similarity
to reference text data, regardless whether these text data are in paper form or
in electronic form}-a subject matter that falls within the abstract ideas
identified by the 2019 PEG. For example, the step of computing a
sparsifying matrix associated with the block of text, as recited in limitation
10
Appeal2018-002192
Application 14/540,770
( 1 ), relates to the mental process of assessing and identifying the sparse
nature of the information in the block of text. See, e.g., Spec. ,r 22, See
Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)
(collecting information and "ana1yzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category."), Similarly,
the step of determining a reference block that is most similar to the block of
text, as recited in limitation (2), relates to the mental process of sorting text
data by comparing it with reference text data to select the most similar
reference text data as a guide for subsequently classifying the text data.
Although the claimed similarity is determined based on the "sparsifying
matrix, a measurement matrix, and a measurement vector formed by
compressing the second block of text using the measurement matrix," such
compression can be reasonably interpreted as a space reduction of text data
on the page. Likewise, the transmission of the classified text data, as recited
in limitation (3), relates to the process through which a party communicates
the classification of the text data to another party. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (finding dairn
directed to ''a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 10 r' ); see also In
re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes-or
processes of human thinking-standing alone are not patentable even if they
have practical application."); Gottschalk v. Benson, 409 U.S. at 67
("Phenomena of nature, ... mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work." (emphasis added)). Additionally, mental processes
11
Appeal2018-002192
Application 14/540,770
may remain unpatentable even when automated to reduce the burden on the
user of what once could have been done with pen and paper. Cy her Source,
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."), see, e.g., OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, we conclude
independent claims 1, 9, and 17 recite a judicial exception of mental
processes.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
"additional elements that integrate the judicial exception into a practical
application." See MPEP § 2106.05(a}-(c), (e}-(h). Appellant's claims 1, 9,
and 17 recite a computer-related limitation, ( e.g., a first server ( claim 1 ), a
transceiver (claim 9), a processor and a transceiver (claim 17)). Besides
indicating that the server may be implemented as part of a network
infrastructure supporting social network applications ( e.g., Face book,
Linkedln, Google+, Twitter) to identify tweets transmitted over the network
and to classify them into classes in the set, Appellant's Specification
provides no meaningful detail about the structure of the server or its
configuration. Spec. ,r,r 19-20. As such, we do not find the computer-
related limitation is sufficient to integrate the judicial exception into a
practical application. The Specification also discusses problems arising in
the context of classifying in real-time high volume text data produced by
social network applications such as Twitter. Id. ,r,r 2, 3. Additionally, the
Specification indicates that the server may be used to perform steps 1-3 of
claim 1 recited above. Id. ,r 23. However, the cited portions of the
12
Appeal2018-002192
Application 14/540,770
Specification do not indicate that in performing the recited steps, the
functionality of the server is improved, thereby curing the problem of real-
time classification of high volume text data. Likewise, the claims recite no
limitations pertaining to real-time processing. Thus, while we agree with
Appellant that the improvements identified in the Specification need not be
recited in the claims to be directed to patent eligible subject matter, the
Specification should nonetheless establish a nexus between the claimed
invention and the purported improvement. Therefore, on the record before
us, we are not persuaded by Appellant's argument that the cited claim
limitations improve the functionality of the server by classifying text data
based on a sparsifying matrix, a measurement matrix, and a measurement
vector. App. Br. 5.
Furthermore, Appellant's reliance on McRO is misplaced. For
example, McRO's '576 patent (U.S. Patent No. 6,307,576) describes
computer software for matching audio to a 3D animated mouth movement to
provide lip-synced animation. McRO 's claims contain (i) specific
limitations regarding a set of rules that "define[] a morph weight set stream
as a function of phoneme sequence and times associated with said phoneme
sequence" to enable computers to produce "'accurate and realistic lip
synchronization and facial expressions in animated characters"' (McRO, 837
F.3d at 1313 (first quote alteration in original)) and, when viewed as a
whole, are directed to (ii) a "technological improvement over the existing,
manual 3-D animation techniques" that uses "limited rules in a process
specifically designed to achieve an improved technological result in
conventional industry practice." McRO, 837 F.3d at 1316. In contrast to
McRO, we do not have, on this record, any evidence to support that (1)
13
Appeal2018-002192
Application 14/540,770
"sparsifying matrix from a set of reference blocks that is selected from first
blocks of text based on joint complexities of each pair of the first blocks of
text"; (2) "determining, at the first server, one of the set of reference blocks
that is most similar to a second block of text based on the sparsifying matrix,
a measurement matrix, and a measurement vector formed by compressing
the second block of text using the measurement matrix"; and (3)
"transmitting, from the first server, a signal representative of the one of the
set of reference blocks to indicate a classification of the second block of
text" improve the server functionality or provide any technological solution
to the technological problem of classifying text data in real-time, as
Appellant argues. App. Br. 5. Because claim steps 1-3, outlined above, are
capable of being performed with pen and paper, the claim is not rooted in
computer technology. Nor does it (1) provide any technical solution to a
technical problem as required by DDR Holdings; 6 (2) provide any particular
practical application as required by BASCOM; 7 or (3) entail an
unconventional technological solution to a technological problem as
required by Amdocs. 8
For these reasons, we agree with the Examiner's determination that
Appellant's claims 1-20 are directed to an abstract idea that is not integrated
into a practical application.
Alice/Mayo--Step 2 (Inventive Concept)
Tun1ing to step 2 of the Alice/A1ayo framework, we look to whether
the claim: (a) recites a specific limitation or combination of limitations that
6 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
7 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
8 Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
14
Appeal2018-002192
Application 14/540,770
are not well-understood, routine, conventional activity in the field, or (b)
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. 2019 PEG at 56. Appellant argues that because the claims recite
the limitations in addition to the abstract idea identified by the Examiner, the
claims, therefore, recite significantly more than the alleged abstract idea.
App. Br. 5. This argument is not persuasive. As noted in our analysis
above, all the claim limitations are directed to mental processes capable of
being performed with pen and paper. We discern no additional element or
combination of elements recited in Appellant's independent claims 1, 9, and
17 that contains any "inventive concept" or adds anything "significantly
more" to transform the abstract concept into a patent-eligible application.
Alice, 573 U.S. at 221. Appellant does not direct our attention to any portion
of the Specification indicating that the claimed processor performs anything
other than well-understood, routine, and conventional functions, such as
receiving and processing. See Elec. Power Group, 830 F.3d at 1355
("Nothing in the claims, understood in light of the specification, requires
anything other than off-the-shelf, conventional computer, network, and
display technology for gathering, sending, and presenting the desired
information"); buyS:4Fr.,~, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2015) ("That a computer receives and sends information over a
network-with no further specification-is not even arguably inventive");
Alice, 573 U.S. at 224-26 (receiving, storing, sending infonnation over
networks insufficient to add an inventive concept). Instead, Appellant's
invention simply uses generic computer components ( e.g., a server,
processor, transceiver) to perform the mental process of classifying text data
15
Appeal2018-002192
Application 14/540,770
and transmitting the classified text data to another location. As noted above,
the use of a generic computer ( e.g., server, processor, transceiver) does not
alone transform an otherwise abstract idea into patent-eligible subject
matter. As our reviewing court has observed, "after Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible." DDR, 773 F.3d at 1256 (citing
Alice, 573 U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, the claim is
devoid of an inventive concept. See Alice, 573 U.S. at 217. Appellant is
reminded that "the 'inventive concept' [under step two of the Mayo/Alice
test] cannot be the abstract idea itself' and "Berkheimer . .. leave[s]
untouched the numerous cases from this court which have held claims
ineligible because the only alleged 'inventive concept' is the abstract idea."
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring). "It has been clear since Alice that a claimed invention's use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept." BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018). We, therefore, agree with the Examiner that the computer
functions recited in the claims were, in fact, generic, and are met by
numerous case law establishing that using a generic computer to expedite
and automate processes traditionally performed manually, or that are
otherwise abstract, is a well-understood, routine, and conventional use of
such computers. Ans. 7; see, e.g., Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an intermediary
16
Appeal2018-002192
Application 14/540,770
computer to forward information); Bancorp Servs., L.L. C. v. Sun Life
Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("The computer
required by some of Bancorp's claims is employed only for its most basic
function, the performance of repetitive calculations, and as such does not
impose meaningful limits on the scope of those claims."). Appellant is
further reminded that in most cases, "relying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 ( citing Alice, 573 U.S. at 224 ("use of a computer to create electronic
records, track multiple transactions, and issue simultaneous instructions" is
not an inventive concept)), See, e.g., Intellectual Ventures I LLC v. Capital
One Bank, 792 F.3d 1363, 1370 ("[M]erely adding computer functionality to
increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea."). Therefore, the functions recited
in independent claims 1, 9, and 1 7 do not add any meaningful limitations
beyond generally linking the abstract idea to the particular technological
environment. Id.
Because Appellant's claims 1, 9, and 17 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of claims 1, 9, and 17 under 35 U.S.C. § 101.
Appellant does not present additional arguments for dependent claims
2-8, 10-16, and 18-20. Accordingly, for the sarne reasons as set forth for
independent claims 1, 9, and 17, we sustain the Examiner's 35 U.S.C. § 101
rejection of dependent claims 2----8, 10----16, and 18----20.
17
Appeal2018-002192
Application 14/540,770
DECISION
For the above reasons, we affirm the Examiner's patent ineligibility
rejection of claims 1-20.
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
18