Ex Parte Momita

Patent Trials and Appeals Board

Apr 1, 2019

13207203 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/207,203 08/10/2011 Paul M. Momita
27189 7590 04/03/2019
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
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.
l 1778 l -002UT1 5471
EXAMINER
LULTSCHIK, WILLIAM G
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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@procopio.com
PTONotifications@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL M. MOMITA1
Appeal2018-000503
Application 13/207 ,203
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JESSICA C. KAISER, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 7, 9--18, 22, 24--27, and29--31. Claims
1---6, 8, 19--21, 23, and 28 have been canceled. Non-Final Act. 1-2. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Medlmpact Healthcare Systems, Inc. ("Appellant") is the Applicant as
provided in 37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal Br. 2.
2 We refer to Appellant's Specification ("Spec.") filed Aug. 10, 2011;
Appeal Brief ("Appeal Br.") filed July 5, 2017; and Reply Brief ("Reply
Br.") filed Oct. 17, 2017. We also refer to the Examiner's Non-Final Office
Action ("Non-Final Act.") mailed Jan. 4, 2017; and Answer ("Ans.") mailed
Aug. 18, 2017.
Appeal2018-000503
Application 13/207,203
Appellant's Invention
The invention "relates generally to prescription drug benefits
programs and more specifically relates to an improved claims adjudication
system for adjudicating consumer purchases that are covered by such
programs" (Spec. ,r 2). See Spec. ,r,r 20-22; Abstract.
Representative Claim
Independent claim 7, reproduced below, further illustrates the
invention:
7. A method for improved processing of claims by a
pharmacy benefits management system, the method comprising
executing machine-readable instructions, on at least one
hardware processor, to:
receive a claim adjudication request from an originating
system over at least one network, wherein the claim adjudication
request comprises a current claim identifying a healthcare plan
and a member of said healthcare plan;
determine whether adjudicating the current claim would
result in a denial of the current claim or an allowance of the
current claim at an initial tier;
if it is determined that adjudicating the current claim
would result in a prospective denial of the current claim, retrieve
historical claim data from a non-transitory computer-readable
medium, search the historical claim data to determine whether a
prior claim, matching the current claim, was allowed, when it is
determined that a prior claim, matching the current claim, was
allowed, override the prospective denial of the current claim,
and, when it is not determined that a prior claim, matching the
current claim, was allowed, do not override the prospective
denial of the current claim;
if it is determined that adjudicating the current claim
would result in an allowance of the current claim at an initial tier
within a current formulary,
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search the historical claim data to determine
whether a prior claim, matching the current claim, was allowed
at a prior tier within a prior formulary that is different than the
current formulary, and,
when it is determined that a prior claim, matching
the current claim, was allowed at a prior tier,
access a tier mapping to determine whether
or not the prior tier within the prior formulary is an improvement
over the initial tier within the current formulary, wherein the tier
mapping maps a plurality of tiers in the prior formulary to a
plurality of tiers in the current formulary,
when it is determined that the prior tier is an
improvement over the initial tier, adjudicate the allowance of the
current claim based on the prior tier, and,
when it is determined that the prior tier is not
an improvement over the initial tier, adjudicate the allowance of
the current claim at the initial tier; and
transmit a result of the adjudication to the originating
system over the at least one network.
Rejection on Appeal
The Examiner rejects claims 7, 9--18, 22, 24--27, and 29--31 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
ISSUE
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding Appellant's claims were directed to
patent-ineligible subject matter, without significantly more, under 35 U.S.C.
§ 101?
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ANALYSIS
The Examiner rejects claims 7, 9--18, 22, 24--27, and 29--31 as a group
based on claim 7 (see Non-Final Act. 2---6) and concludes claim 7 is directed
to patent-ineligible subject because claim 7 is "directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more." Non-Final Act 2 (emphasis omitted); see Non-
Final Act. 3-6; Ans. 2-10. Specifically, the Examiner reiterates the
language of claim 7 and concludes the reiterated limitations of claim 7
"correspond to concepts identified as abstract ideas by the courts." Non-
Final Act. 4. The Examiner explains that the claim is directed to "an idea of
itself," specifically "comparing new and stored information and using rules
to identify options" similar to the claims in SmartGene (SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014)). Non-
Final Act. 4. The Examiner further explains that in claim 7 "new
information in the form of a claim adjudication request is compared to stored
historical claim data and rules are used to determine whether to override a
prospective denial or whether to adjudicate an allowance based on a prior
formulary tier or at an initial current formulary tier." Non-Final Act. 4.
Additionally, the Examiner explains that claim 7 does "not include
additional elements that are sufficient to amount to more than the abstract
idea because the additional elements ... amount to no more than" "well-
understood, routine and conventional activities" and require "no more than a
generic computer performing generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry" Non-Final Act. 5.
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Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 5-8; Reply
Br. 2-5. Specifically, Appellant contends claim 7 (and the other pending
claims) is not similar to the claims in SmartGene, and SmartGene is
inapposite to the instant claims. See Appeal Br. 5-6; Reply Br. 2-3.
Appellant contends the instant claims, instead, are similar to the claims in
McRO (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016)) and are, therefore, patent-eligible. See Appeal Br. 6-8; Reply
Br. 3-5. Appellant also contends the claims are not similar to the claims in
Electric Power Group (Electric Power Group, LLC v. Alstom S.A., 830 F .3d
1350 (Fed. Cir. 2016)), and Electric Power Group is inapposite to the instant
claims. See Reply Br. 3.
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, 573 U.S. 208,216 (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, 77-80 (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, 573 U.S. at
217. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
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first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. 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, but are not limited to, 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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). The
Supreme Court continued by qualifying its findings, indicating that a claim
"seeking patent protection for that formula in the abstract ... is not accorded
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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) (citation
omitted); 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 claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where 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, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
This second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ineligible concept] itself."' Id. at 217-18 ( alteration in original)
(quoting Mayo, 566 U.S. at 72-73). "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]."' Alice, 573 U.S.
at 221 ( 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 Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
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abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance").
Under that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes) (hereinafter "Step 2A, prong 1 "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h))
(hereinafter "Step 2A, prong 2").
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
§ 106.0S(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception. 3
See 2019 Revised Guidance.
Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
3 Items (3) and (4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
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as a tool." Enfzsh, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, 837 F.3d at 1312 (quoting
O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)).
The Examiner determines independent claim 7 recites an abstract idea
(see Ans. 3-5), which is "an idea of itself' (Non-Final Act. 4) similar to
Alice. See Non-Final Act. 2---6; Ans. 2-10. Here, in rejecting the claims (in
particular claim 7) under 35 U.S.C. § 101, the Examiner analyzed the claims
using the Mayol Alice two-step framework, consistent with the guidance set
forth in the USPTO's "2014 Interim Guidance on Patent Subject Matter
Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), in effect at the time the
rejection was made, i.e., on January 4, 2017. In view of the 2019 Revised
Guidance, we clarify and expand the Examiner's reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant's claim 7. Claim 7 recites a method for processing insurance
(pharmacy) claims by executing instructions utilizing a processor to perform
the delineated claim processing steps (see Spec. ,r,r 2, 25). These claim
processing steps include: (1) receiving a request ("a claim adjudication
request") including current claim information ("a current claim"), which
identifies a healthcare plan (e.g., a plan identification number) and member
information (e.g., a member's name) from an originating system over a
network (see Spec. ,r,r 27, 28, 31 ); (2) determining whether the current claim
would be denied or an allowed within an initial (formulary) tier (see Spec.
,r,r 4, 9, 29); (3) if the current claim would result in a prospective denial (be
denied), retrieve historical claim data (from a computer-readable media),
search the historical claim data, determine whether a (prior) claim that
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matches the current claim was previously allowed and, if so, override the
prospective denial ( of the current claim), otherwise do not override the
prospective denial of the current claim (see Spec. ,r,r 7, 29, 32, 42, 45); (4) if
the current claim would result in an allowance (be allowed) at an initial tier
within a current formulary (see step 2 (supra)) search the historical claim
data (see step 3 (supra)) and determine whether a previous claim, matching
the current claim, was allowed at a tier within a previous formulary different
than the current formulary (see Spec. ,r,r 8, 21, 36, 42); (5) when a matching
and allowed prior claim is identified (in Step 4 ), accessing a tier map and
determining whether the tier within the previous formulary is an
improvement over the initial tier within the current formulary, when an
improvement is determined/identified over the initial tier processing the
current claim ("adjudicat[ing] the allowance" (i.e., allowing) of the current
claim) at the tier within the previous formulary, otherwise,
allowing/processing the current claim at the initial tier (see Spec. ,r,r 9, 21,
3 6, 3 7, 41, 46); and ( 6) transmitting the processed current claim ("a result of
the adjudication") to the originating system over the network (see Spec.
In summary, claim 7 recites a computer implemented insurance
(pharmacy) claim processing method for determining whether to allow or
deny a claim, overriding claim denials, and overriding higher cost claim
approvals using certain criteria/rules, including the steps of: ( 1) receiving
information or data (the "claim adjudication request"); (2) determining to
allow or deny a claim (making an initial determination (to allow or deny a
claim)) (based on unspecified rules and criteria); (3) in the event of a denial,
retrieving (historical claim) data (from computer-readable media), analyzing
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(searching) the data, determining a match (between historical claim data and
a current claim) and that the claim was previously allowed, overriding the
denial (that is changing the result (denial), i.e., allowing the claim), or (if no
matching, allowed claim is found) not overriding the denial; ( 4) in the event
of an allowance of the claim (at an initial tier within a current formulary),
analyzing (searching) the data, determining a match (between a previous
claim and the current claim) and that the claim was allowed at a different tier
(prior tier within a prior formulary different than the current formulary); (5)
when a matching and allowed claim is identified, accessing stored data ( a
data structure) (specifically, a tier map), determining a tier improvement
(cost improvement) (based on unspecified rules and criteria), and processing
the claim at the improved tier, or (if no improvement is found) processing
the claim at the initial tier; and ( 6) transmitting information ( the processed
claim). Hereinafter, we refer to this method as the "claim processing
method."
Claim 7 also includes additional elements-a hardware processor, an
originating system (pharmacy), a network, and a computer-readable
medium. These additional elements consist of structural elements that,
while necessary to perform the functionality of the claim processing method,
do not limit how the functionality is actually performed. For example, the
claim processing method recites a "hardware processor" "executing
machine-readable instructions," to perform the delineated claim processing
( claim 7). The claim does not recite how the processor performs any of the
claim processing functionality. Further, Appellant's Specification explains
that the claims processing system (pharmacy benefits management system)
"can be a conventional personal computer, computer server, personal digital
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assistant, smart phone, tablet computer, or any other processor enabled
device that is capable of wired or wireless data communication." Spec. ,r 65.
We find that claim 7 recites a method (process) which is a statutory
category of invention (subject matter) (USPTO's Step 1). Utilizing our
interpretation of claim 7 (supra), we analyze whether the claim is directed to
an abstract idea (USPTO's Step 2A). Here, Appellant's claims generally,
and independent claim 7 in particular ( as summarized, supra), recite a
process for automating insurance (pharmacy) claim processing. This is
consistent with how Appellant describes the claimed invention. See Appeal
Br. 6 ("the present claims automate a claim adjudication process"); see also
Appeal Br. 2 ("[ c ]laim 7 is directed to a method for improved processing of
claims by a pharmacy benefits management system"). Hereinafter, we refer
to this method as the "claim processing method."
The summarized limitations (supra) of the claim processing method
recite a process for automating insurance (pharmacy) claim processing in
that the enumerated limitations recite operations that ordinarily take place
during pharmacy claim processing. For example, receiving information (a
"claim adjudication request") and making an initial determination to allow
or deny a claim, as recited in limitations (1) and (2), are activities inherent in
processing insurance claims. See Spec. ,r,r 4--5. Also, reviewing an initial
claim determination and overriding a claim denial, as recited in limitation
(3), or reviewing an initial claim determination and making a determination
to process the claim at a lower cost (a different, improved tier), as recited in
limitations (4) and (5), are ordinary pharmacy claim processing operations.
As explained in Appellant's Specification, revisions to pharmacy
formularies and utilization rules are common. See Spec. ,r 5. Avoiding
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claim denials and processing similar claims at the same (lower) cost prevents
consumer frustration. See id. Appellant's claim 7 recites a judicial
exception (US PTO' s Step 2A, Prong 1; see 2019 Revised Guidance).
Specifically, claim 7 recites a claim processing method, discussed supra,
that is a method of organizing human activity, in particular, a fundamental
economic practice.
Insurance claim processing involves determining whether a claim
would be allowed or denied and if allowed, under what conditions ( e.g.,
what tier), which is an economic act conditioning payment on certain
conditions being met. Thus, like the rules-based task generation in
Accenture and calculating a bill based on insurance information in Salwan,
the concept of processing insurance claims in Appellant's claim 7 is a
fundamental economic practice.. See Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1342--45 (Fed. Cir. 2013) (claims
directed to "generating tasks to be performed in an insurance organization"
(id. at 1342 (quotations omitted)) were found to embody an abstract idea of
"generating tasks [based on] rules ... to be completed upon the occurrence
of an event" (id. at 1344 ( quotations omitted))); see also In re Salwan, 681
Fed. Appx. 938, 941 (Fed. Cir. 2017) (Claims directed to "billing insurance
companies and organizing patient health information" including recited
limitations of "storing, communicating, transferring, and reporting patient
health information in a network" and "using billing software to calculate a
patient's bill based on ... insurance information" were found to be directed
to an abstract idea; specifically, "the automation of a method of organizing
human activity with respect to medical information" ( quotations omitted)
and such concepts are "fundamental economic and conventional business
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practices."). See also, Smariflash LLC v. Apple Inc., 680 Fed. Appx. 977,
982 (Fed. Cir. 2017) (Claims directed to "conditioning and controlling
access to data based on payment," i.e., approving or denying a request and
retrieving information based on particular criteria (see id. at 980) is a
"fundamental economic practice."). Further, in Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1313-14 (Fed. Cir. 2016) the Federal
Circuit found claims related to filtering email content-which recited
receiving content information (identifiers), matching the content information
to other content information, and outputting a result-were directed to an
abstract concept because "[the] relevant characteristics [ of the mail] could be
kept in a person's head" (id. at 1314) and characterizing e-mail based on
known information is a fundamental economic practice similar to the
abstract concept in Alice. Accordingly, we conclude Appellant's claim 7
recites a fundamental economic practice, which is one of the certain methods
of organizing human activity in the 2019 Revised Guidance, and thus an
abstract idea.
Eligibility Analysis-Revised Guidance Step 2A, Prong 2
Appellant's claim 7 also recites additional elements beyond the
abstract claim processing method (the judicial exception) (supra). These
elements include, as previously discussed (supra): the hardware processor,
originating system (pharmacy), network, and computer-readable medium.
We evaluate these additional elements to determine whether the additional
elements integrate the abstract claim processing method (the judicial
exception) into a practical application of the exception (USPTO's Step 2A,
Prong 2; see 2019 Revised Guidance). Appellant contends (supra) that "the
present claims automate a claim adjudication process, specifically,
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determining when to override denials and improve the tier at which a claim
is adjudicated" (Appeal Br. 6) and "focus on a specific means or method that
improves the relevant art (i.e., claim adjudication)" (Appeal Br. 7) similar to
the claims in McRO. See Appeal Br. 6-8; Reply Br. 3-5. In other words,
Appellant contends the claims recite meaningful limitations that sufficiently
limit the practical application of the alleged abstract idea. We disagree.
Appellant's additional elements (or the combination of the additional
elements) do not apply or use the claim processing method (the judicial
exception) in a manner that imposes a meaningful limit on the judicial
exception, such that it is more than a drafting effort designed to monopolize
the exception. See Alice, 573 U.S. at 221-24 (citing Mayo, 566 U.S. at 78-
85). Rather, Appellant's claims recite computers (the hardware processor,
network, and computer readable media ( computer memory) and various
other computers-the originating system) and data structures (tier maps or
mappings stored in computer readable media) that are utilized as tools to
perform the claim processing method (the abstract idea). Utilizing a
computer as a tool to perform the abstract idea does not impose a meaningful
limit on the abstract idea. See MPEP § 2106.05([); see also Alice, 573 U.S.
at 223 ("if [the] recitation of a computer amounts to a mere instruction to
implement an abstract idea on a computer that addition cannot impart patent
eligibility" ( quotations and internal citations omitted)).
Appellant's claims can be distinguished from patent-eligible claims
such as those in McRO, Enfish, Bascom (Bascom Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)) and DDR Holdings
(DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014))
that are directed to "a specific means or method that improves the relevant
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technology" (McRO, 837 F.3d at 1314), or "a specific improvement to the
way computers operate" (Enfzsh, 822 F.3d at 1336), solving a technology-
based problem (BASCOM, 827 F.3d at 1349--52), or a method "rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]" (DDR Holdings, 773 F.3d at 1257).
Contrary to Appellant's arguments, claim 7 is not a technological
improvement or an improvement in a technology. Appellant's claim 7 does
not "improve the functioning of the computer itself' or "any other
technology or technical field." Alice, 573 U.S. at 225. Nor, does it provide
a technological solution to a technological problem. See DDR Holdings, 773
F.3d at 1257. See MPEP § 2106.05(a). Rather, Appellant's claims and, in
particular, the above-identified additional elements are similar to the claims
in Alice (see Alice, 573 U.S. at 225-26) and Versata Dev. Group, Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1333-34 (Fed. Cir. 2015) in that the instant claims
implement a fundamental economic practice utilizing a general purpose
computer.
In summary, "the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
13 54 (Fed. Cir. 2016). Thus, we agree with the Examiner that the claims are
directed to an abstract idea.
Step 2B Analysis-"Inventive Concept"
Having concluded Appellant's claims are directed to an abstract idea
under the 2019 Revised Guidance Step 2A analysis, we next address
whether the claims add significantly more to the alleged abstract idea. As
directed by our reviewing court, we search for an "'inventive concept'
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sufficient to 'transform the nature of the claim into a patent-eligible
application."' McRO, 837 F.3d at 1312 ( quoting Alice, 573 U.S. at 217).
The implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed Cir.
2014) (alteration in original) (quoting Alice, 573 U.S. at 225). The
"inventive concept" "must be significantly more than the abstract idea itself,
and cannot simply be an instruction to implement or apply the abstract idea
on a computer." Bascom, 827 F.3d at 1349 (citation omitted).
Here, the Examiner determined that Appellant's claims do not add
significantly more. The Examiner reiterated the limitations of claim 7 and
explained that Appellant's recited processor and network perform "well-
understood, routine and conventional functions" of "transmitting data,
storing data, and executing program instructions." Non-Final Act. 5.
Additionally, the Examiner explained how Appellant's Specification
described the processor, network, and memory as generic computer
components performing generic computer functions. See Non-Final Act. 5-
6 (citing Spec. ,r,r 26, 65, 66, 68-71, 75, 77). Appellant does not address
whether the claims add significantly more to the alleged abstract idea. See
Appeal Br. 4--8; Reply Br. 2-5.
Appellant fails to persuade us of error in the Examiner's rejection
with respect to the second Alice step. We agree with the Examiner that
Appellant's claim 7 ( and the other pending claims) does not evince an
"inventive concept" that is significantly more than the abstract idea itself. In
particular, Appellant fails to explain how the additional elements (above)
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Application 13/207,203
add specific limitations beyond the judicial exception discussed above that
are not well-understood, routine, conventional in the field.
As previously discussed, claim 7 ( and the other pending claims)
merely recites additional non-abstract elements ( above }-specifically the
hardware processor, originating system, network, and computer-readable
media, and utilizing conventional computers and conventional computer
processes (including the tier maps ( data structures stored in the computer-
readable media)) to receive, search, and analyze information, and to transmit
results. As explained by the Examiner, Appellant's Specification describes
the computer systems as conventional (generic) computers. See, e.g., Spec.
,r,r 26, 65 (the "system 550 can be a conventional personal computer ... or
any other processor enabled device (emphasis added)), 66, 68-71, 75, 77.
Accordingly, Appellant's Specification itself describes the additional
elements as being well-understood, routine, and conventional. Such
conventional computer processes operating on conventional computer
hardware "do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 7 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under§ 101 of independent claim 7, independent claim
13, and dependent claims 9--12, 14--18, 22, 24--27, and 29-31, which were
not separately argued with specificity.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims 7,
9--18, 22, 24--27, and 29--31 under 35 U.S.C. § 101.
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Appeal2018-000503
Application 13/207,203
DECISION
We affirm the Examiner's rejection of claims 7, 9-18, 22, 24--27, and
29-31.
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
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