Ex Parte Nunziata

Patent Trials and Appeals Board

May 23, 2019

14254641 - (D) (P.T.A.B. May. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/254,641
21874 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
04/16/2014
05/28/2019
FIRST NAMED INVENTOR
Wayne Nunziata
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.
1425797.103US1 1093
EXAMINER
FELTEN, DANIELS
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
05/28/2019 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE NUNZIATA
Appeal2018-004652
Application 14/254,641
Technology Center 3600
Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and IFTIKHAR
AHMED, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4--9, 12-16, 19, and 20. App. Br. 2. Appellant has cancelled
claims 2, 3, 10, 11, 17, and 18. App. Br. 17-20. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellant indicates the real party in interest is Colonial Surety Company.
App. Br. 2.
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Application 14/254,641
Illustrative Claims
Illustrative claim 1 under appeal read as follows ( emphasis,
formatting, and bracketed material added):
1. A computer-implemented method for aggregating attributes
of a surety bond in a remote computer bond processing system, the
method comprising the steps of:
[A.] authenticating a user by the remote computer bond
processing system;
[B.] identifying, by the remote computer bond processing
system, a surety bond associated with the user;
[C.] providing, by the remote computer bond processing system,
a graphical user interface (GUI) comprising one or more
menu items corresponding to one or more surety bond
attributes associated with the identified surety bond,
[(i)] wherein said surety bond attributes comprise at least
one of the following attributes:
[(a)] principal entity's profile,
[ (b)] one or more credit scores,
[(c)] financial report representative of principal
entity's financial stability,
[(d)] bank average balance chart,
[ ( e)] bank line of credit report,
[(f)] union information related to the principal
entity,
[(g)] bid spread analysis report and
[(ii)] wherein each of the one or more menu items
corresponds to one of the one or more surety bond
attributes utilized by the remote computer bond
processing system for evaluation of the identified
surety bond;
[D.] receiving, by the remote computer bond processing system,
a user request to obtain information related to at least one
of the one or more surety bond attributes via at least one
of the one or more menu items provided by the GUI;
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[E.] generating, by the remote computer bond processing system,
said requested information related to the one or more
surety bond attributes; and
[F.] displaying, by the GUI, said generated information in
response to the received user request.
Rejection2
The Examiner rejected claims 1, 4--9, 12-16, 19, and 20 under
35 U.S.C. § 101 "because the claimed invention is directed to a judicial
exception (i.e. law of nature, a natural phenomenon or an abstract idea)
without 'significantly more'" (Final Act. 6.), i.e., because the claimed
invention is directed to patent-ineligible subject matter.
We select independent claim 1 as representative. Separate
patentability is not argued for claims 4--9, 12-16, 19, and 20. Except for our
ultimate decision, we do not discuss the§ 101 rejection of claims 4--9, 12-
16, 19, and 20 further herein.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being directed to patent-
ineligible subject matter?
ANALYSIS 3
We have reviewed the Examiner's rejection in light of Appellant's
Appeal Brief and Reply Brief arguments that the Examiner has erred.
2 All citations to the "Final Action" are to the Final Action mailed on March
15, 2017.
3 Any MANUAL OF p ATENT EXAMINING PROCEDURE (MPEP) citations herein
are to MPEP 9th Edition, Rev. 08.2017 (Jan. 2018).
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Application 14/254,641
A. Section 101
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).
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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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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
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. ( citation omitted) ( 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 (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,
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.
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B. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. USPTO's January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 ("2019 Memorandum"). Under that guidance,
we first look to whether the claim recites:
( 1) (see 2019 Memorandum 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) (see 2019 Memorandum Step 2A - Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a}-(c), (e}-(h)). 4
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 2019 Memorandum Step 2B.
4 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A of Office guidance). See 2019
Guidance.
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C. Examiner's§ 1 OJ Rejection - Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis (labeled as Step 2A in the
Final Action (Final Act. 6-7)), the Examiner determines:
[T]he claims are directed to an abstract idea. [T]he abstract idea
is a method and system for aggregating attributes of a surety
bond. The abstract idea is performed by
authenticating a user[,]
identifying a surety bond associated with the user,
providing one or more menu items corresponding to one
or more surety bond attributes associated with the
identified surety bond, ... , and wherein each of the
one or more menu items corresponds to one of the
one or more surety bond attributes/or evaluation of
the identified surety bond,
receiving a user request to obtain information related to at
least one of the one or more surety bond attributes
via at least one of the one or more menu items;
generating said requested information related to the one or
more surety bond attributes; and
displaying, said generated information in response to the
received user request.
[T]he claims recite [] "an idea of itself." An idea of itself
describes a concept, plan or scheme, as well as mental processes
that can be performed in the human mind or by a human using
pen and paper. It is maintained that aggregated information is
related to concepts of collecting and comparing known
information found to be abstract in Classen Immunotherapies
Inc., v. Biogen IDEC[,] 659 F.3d 1057[] (Fed. Cir. 2011).
Final Act. 6-7 ( emphasis and formatting added).
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C.2. 2019 Memorandum Step 2A - Prong Two
Further applying step 1 of the Alice/Mayo analysis, the Examiner
concludes claim 1 is directed to an abstract idea.
The Applicant's limitations [are] similar to [ those in the]
Classen[] court[' s] conclusion in that "methods that simply
collect and compare data, without applying data in step of overall
method, may fail to traverse Section 101 eligibility 'filter,' and
since claim at issue, which simply invites reader to determine
content of existing knowledge without [a] step of putting that
knowledge to practical use, is directed solely to [an] abstract
principle."
Moreover, the Applicant's claims including the steps for
aggregating attributes of [a] surety bond, are similar to concepts
described as abstract in Electric Power Group, LLC v. Alstom[,
830 F.3d 1350 (Fed Cir. 2016)]. Here, as in the Electric Power
Court['s decision], the claims are clearly focused on the
combination of abstract-idea processes, which in this case apply
certain aspects related to the aggregation of abstract
characteristics of surety bonds using generic computer functions.
Thus "the advance they purport to make is a process of gathering
and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive
technology for performing those functions." Thus, as
previously indicated, they are therefore directed to an abstract
idea.
Final Act. 7 ( emphasis added, parallel citation omitted).
C.3. 2019 Memorandum Step 2B
Further applying step 2 of the Alice/Mayo analysis (labeled as Step 2B
in the Final Action (Final Act. 7-8)), the Examiner concludes:
The computer element being described is (a) a remote
computer bond processing system having (b) a graphical user
interface ("GUI"). The Examiner maintains that the
[ A ]pplicant' s claim does not describe claim element( s) that
provide an improvement to another technology either
individually or as an ordered combination as a whole. It is noted
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that an improvement in computer-related technology is not
limited to the operation of the computer itself or a computer
related network, per se, but may be claimed a specific set of rules
(e.g., mathematical relationships). For example, a claim that
purports to be an improvement to computer-related technology
may include a specific teaching in the specification about how
the claimed invention improves a computer or other technology,
as opposed to providing details which fail to describe the manner
in which the invention accomplishes the alleged improvement
(see Affinity Labs of Texas v. DirectTV, LLC[, 838 F.3d 1253]
(Fed. Cir. 2016)). Here, the claimed attributes are merely stored
and accessed and do not effectively trans/ orm anything. Under
the broadest reasonable interpretation, they set forth terms and
conditions of a surety bond contract or agreement which are
provided within a technological environment without
significantly more.
Final Act. 7-8 ( emphasis added, Examiner's brackets modified, parallel
citation omitted).
Additionally, the Examiner determines:
[The] invention typified by the Appellant's representative claim
is properly viewed as at least a method of aggregating attributes
of a surety bond it their display upon request by an old and well
known graphical user interface, which can be achieved in any
type of computer system or programming or processing
environment, requiring no specific[] computer equipment, tools
or processing capabilities, and since invention thus does not
solve [a] "technical problem," but applies an abstract idea to a
technical environment.
Ans. 7 ( emphasis added).
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D. Appellant's§ 1 OJ Arguments & Panel's Analysis
D.1. Step 2A, Prong 1
D.1.a.
Appellant contends claim 1 satisfies Step One of Mayo. App. Br. 8.
Appellant particularly contends:
[T]he pending claims are not directed to an abstract idea at least
because the claimed subject matter should not be considered as
falling within any category of an abstract idea set forth in Alice
Corp. ( e.g., fundamental economic practice, "certain methods of
organizing human activities," "an idea of itself," or mathematical
relationships/formulas). The Examiner asserts that independent
claims 1, 9 and 16 are directed to an abstract idea, and that the
claims do not include additional elements to apply to the
computing system beyond the abstract idea. However, Applicant
respectfully points out that in making such a conclusion, the
Examiner over-generalizes and mischaracterizes the subject
matter as presently claimed.
To this point, the Examiner characterizes the subject
matter of the claims as an "abstract idea of collecting and
comparing known information". However, the Examiner's
characterization over-simplifies the contents of the present
application and ignores explicit claim limitations and thus is
improper. For instance, independent claims 1, 9 and 16 recite a
step of ''providing . . . a graphical user inter/ ace (GUI)
comprising . . . menu items corresponding to . . . surety bond
attributes ... , wherein said surety bond attributes comprise at
least one of the following attributes: principal entity's profile,
one or more credit scores, financial report representative of
principal entity's financial stability, bank average balance chart,
bank line of credit report, union information related to the
principal entity, bid spread analysis report ... "and "generating
... requested information related to the one or more surety bond
attributes".
App. Br. 9 (emphasis added).
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D.1.b.
Claim 1 recites the following limitations:
[A.] authenticating a user ... ;
[B.] identifying ... a surety bond associated with the user;
[C.] providing ... one or more ... items corresponding to one or
more surety bond attributes associated with the identified
surety bond,
[(i)] wherein said surety bond attributes comprise at least
one of the following attributes:
[(a)] principal entity's profile,
[ (b)] one or more credit scores,
[(c)] financial report representative of principal
entity's financial stability,
[(d)] bank average balance chart,
[ ( e)] bank line of credit report,
[(f)] union information related to the principal
entity,
[(g)] bid spread analysis report and
[(ii)] wherein each of the one or more . . . items
corresponds to one of the one or more surety bond
attributes utilized ... for evaluation of the identified
surety bond;
[D.] receiving ... a user request to obtain information related to
at least one of the one or more surety bond attributes via
at least one of the one or more menu items provided by the
GUI·
'
[E.] generating ... said requested information related to the one
or more surety bond attributes; and
[F.] displaying ... said generated information in response to the
received user request.
In short, claim 1 recites a method of processing data related to collecting
surety bond information associated with a user and evaluating an identified
surety bond based on the collected surety bond information. That is, we
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conclude that Appellant's claimed process is mitigating the risk of negative
events in commercial transactions.
Appellant acknowledges that as to surety bonds:
By the term surety bond is generally meant a bond issued
by an insurance or other company as surety on behalf of a
principal whereby the surety legally binds itself to an oblige for
an amount of money guaranteed to the obligee for the faithful
performance of a contract or other act of the principal. The bonds
can include bid bonds, contract, court and subdivision bonds,
performance bonds, customs bonds, notary bonds, liquor license
bonds, license and permit bonds, small business administration
bonds, bail bonds, supersedeas bonds or other bonds required in
litigation, etc.
When a contractor, builder or supplier etc. wishes to bid
on a construction project or submit a bid in connection with a
governmental purchase of equipment or supplies the entity
seeking bid typically requires that for a bidder to be considered
for the job a bid bond must be submitted with the bid. Many
municipalities have their own bid form and others use a format
approved of by the American Institute of Architects. In the
typical bid bond the principal is the entity who is submitting the
bid. The surety is typically insurance or bonding company who
pursuant to the bond is "held and firmly bound" to the entity
seeking the bid for a predetermined sum, usually some
percentage of the bid amount. In the event the bid is accepted
the bond becomes effective and protects the entity awarding the
contract by assuring the entity of faithful performance of the
contract as well as prompt payment of labor and materials
furnished in performing the contract. In addition, the bond
protects the bid seeking entity from the failure of the winning
bidder from ultimately entering into the contract that is being
awarded by paying the difference between the winning bid and
the amount that the entity would have to pay to another party to
complete the project because of the default.
Spec. 1-2. By Appellant's acknowledgement, we conclude using a surety
bonds was a known fundamental economic practice to manage risk in
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commercial transactions. Thus, like the concept of mitigating settlement
risk in Alice, and the concept of hedging against risk in Bilski, the concept of
using a surety bond in a commercial transaction recited in Appellant's
claims "is a fundamental economic practice long prevalent in our system of
commerce." Alice, 573 U.S. at 219 (citations and internal quotation marks
omitted).
Accordingly, we conclude that claim 1 recites a fundamental
economic practice, which is one of certain methods of organizing human
activity identified in the 2019 Memorandum, and thus an abstract idea.
D.1.c.
Contrary to Appellant's assertions supra that "the Examiner over-
generalizes and mischaracterizes the subject matter as presently claimed"
and "the Examiner's characterization over-simplifies the contents of the
present application" (App. Br. 9), we determine that the Examiner's analysis
at page 6-7 of the Final Action explicitly recites at length the actual
language of Appellant's independent claim 1 nearly identically to our
recitation in section D.1.b supra. Further, we determine that the Examiner
correctly points out that Appellant's claimed steps for aggregating attributes
of a surety bond, are similar to concepts described as abstract in Electric
Power Group. Final Act. 7.
Additionally, Appellant asserts that "the Examiner's characterization
... ignores explicit claim limitations," "[f]or instance, independent claim[] 1
[recites] a step of 'providing ... a graphical user inter/ ace ( GUI) .... '"
App. Br. 9 (emphasis added). However, Appellant's argument overlooks
that the argued "graphical user interface" specifics of claim 1 are not part of
the Mayo Step One judicial exception analysis, or the Step 2A, Prong 1
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judicial exception analysis under the 2019 Memorandum. Rather, these
specifics are part of determining whether, in addition to the judicial
exception, the claim includes an inventive concept or a practical application.
Alice, 573 U.S. at 217 ("First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we then ask,
' [ w ]hat else is there in the claims before us?'" ( citations omitted)). We
address this argument infra.
Lastly, as to Appellant's assertion that "the Examiner's
characterization ... ignores explicit claim limitations," "[f]or instance,
independent claim[] 1 [ reciting] a step of 'providing ... items
corresponding to . .. surety bond attributes . .. , wherein said surety bond
attributes comprise at least one of the following attributes: principal
entity's profile, one or more credit scores, financial report representative of
principal entity's financial stability, bank average balance chart, bank line of
credit report, union information related to the principal entity, bid spread
analysis report .... "' App. Br. 9 ( emphasis added). Appellant's argument
overlooks that the Examiner explicitly recited "one or more ... items
corresponding to one or more surety bond attributes associated with the
identified surety bond" in addressing claim 1. Final Act. 6. Essentially,
Appellant's argument is one contending that after the Examiner determined
the "items corresponding to one or more surety bond attributes associated
with the identified surety bond" were abstract, the Examiner erred by not
also listing each claimed item by name. We are unpersuaded by this
argument. Rather, we determine that an objective observer would
understand that the Examiner's determination as to the "items corresponding
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to one or more surety bond attributes" is inclusive of the individually named
items.
D.2. Step 2A, Prong 2
D.2.a.
Appellant contends "[the claims] clearly relate to improvements to the
technology field of analytical bond processing systems" (App. Br. 11
( emphasis added)) and "advantageously improve[] and simplif[y] the bond
obtainment process by enabling the principal entities to make informed
business decisions that could improve their company's financial profile"
(App. Br. 12 (emphasis added)). Appellant particularly contends:
It will be appreciated by one having skill in the art that the
disclosed bond processing system as a whole is directed to
solving a problem of aggregating relevant information related
to user's surety bond bid, in the context of underwriting
decisions. Based on these aspects, the claims require actions in
the real world that are more than an abstract idea, yet the
Examiner improperly fails to address those limitations.
App. Br. 9 (emphasis added).
Applicant respectfully submits that at least, "providing . . . a
graphical user interface (GUI) comprising . . . menu items
corresponding to . . . surety bond attributes . . . , wherein said
surety bond attributes comprise at least one of the following
attributes: principal entity's profile, one or more credit scores,
financial report representative of principal entity's financial
stability, bank average balance chart, bank line of credit report,
union information related to the principal entity, bid spread
analysis report ... " and "generating ... requested information
related to the one or more surety bond attributes" encompass a
technological process that is not a "fundamental economic
practice" that has been around/or decades.
App. Br. 10 (emphasis added).
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This consideration has also been referred to as the search for a
technological solution to a technological problem. See Amdocs (Isr.), Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) ("[T]his claim
entails an unconventional technological solution ... to a technological
problem .... "). As discussed supra, we conclude that "Appellant's claimed
process is solving the problem of mitigating the risk of negative events in
commercial transactions" which is a business problem and not a
technological problem. We do not agree with Appellant that "analytical
bond processing," "improv[ing a] company's financial profile," or
"aggregating relevant information related to user's surety bond bid" are
either a "technological field" or a "technological problem" or a
"technological solution." Rather, we determine that these are directed to the
field of business/commerce and its problems and solutions. Appellant's
argument is not persuasive.
D.2.b.
Appellant also contends:
[The claimed] process cannot be performed "mentally with paper
and pen" ( due at least to the necessity to collect information in
real-time from various data sources associated with a third party
service (e.g., a credit rating institution), which can only be
accomplished using a computer) and thus is not merely directed
to a mental process.
App. Br. 9 ( emphasis added).
Appellant's argument is not persuasive. It is well established that
merely using a computer to accomplish real-time processing is not sufficient
to provide an inventive concept in the realm of application of the
information-based abstract ideas. Elec. Power Grp., 830 F.3d at 1356 ("The
claims in this case specify what information in the power-grid field it is
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desirable to gather, analyze, and display, including in 'real time'; but they do
not include any requirement for performing the claimed functions of
gathering, analyzing, and displaying in real time by use of anything but
entirely conventional, generic technology.").
D.2.c.
We agree with the Examiner that as to the steps of claim 1 "the
advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions."
Final Act. 7. In view of Appellant's Specification, and consistent with the
Examiner's determinations, we conclude that claim 1 does not integrate the
judicial exception into a practical application. We determine claim 1 does
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
environment.
See MPEP §§ 2106.0S(a}-(c), (e}-(h). We agree with the Examiner that
claim 1 is directed to a judicial exception.
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D.3. Step 2B
As noted above, the Examiner cites to Affinity and determines:
The computer element being described is (a) a remote computer
bond processing system having (b) a graphical user interface
("GUI''). The Examiner maintains that the [A]pplicant's claim
does not describe claim element( s) that provide an improvement
to another technology either individually or as an ordered
combination as a whole.
Final Act. 7-8 ( emphasis added). The Examiner also determines that a
graphical user interface is "old and well know." Ans. 7.
Appellant asserts "the emphasized features of providing GUI menu
items corresponding to surety bond attributes and generating requested
information related to one or more surety attributes do more than merely
recite an abstract idea." App. Br. 10 (emphasis added).
We disagree with Appellant's assertion. The Examiner cites to
Affinity to support the Step 2B "GUI" portion of the rejection. Final Act. 8.
Our review of Affinity finds the decision specifically states:
While the inventions in [ TL! and Ultramercial] involved tangible
components, the components were conventional and were used
in conventional ways. The same is true in this case, as the
claimed cellular telephone is used to receive wireless signals, the
claimed graphical user interface is used to display a menu of
options to the user, and the claimed broadcasting system is used
as the source of streaming content.
Affinity, 838 F.3d at 1261. Although claim 1 recites "more" under step two
of the Alice/Mayo analysis, we conclude the "more" is not patentably
significant. Rather, the case law shows this "more" to be the epitome of a
well-understood, routine, conventional element/combination previously
known in the industry.
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Because claim 1, in addition to the abstract idea, recites only a well-
understood, routine, conventional element/combination previously known in
the industry, we conclude the case law shows there is no genuine issue of
material fact regarding step two of the Examiner's Alice/Mayo analysis.
Therefore, we are unpersuaded by Appellant's argument that further
evidence is required. In view of Appellant's Specification, and consistent
with the Examiner's determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity m the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
D.4. Appellant's Prima Facie Case Arguments & Panel's Analysis
D.4.a.
Appellant contends the Examiner fails to make out a prima facie case
that the claims are unpatentable under 35 U.S.C. § 101. App. Br. 12.
The examiner bears the burden of presenting a prima facie case
that Applicant's claims are unpatentable under 35 U.S.C. § 101.
In re Oetiker, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); MPEP
§2106(III). This burden is relatively high. A prima facie case
of patent-ineligibility must establish that it is more likely than
not that the claims fail to define patentable subject matter under
§ 101. MPEP § 2106(III). This burden, therefore, requires
more than establishing a reasonable likelihood that the claims
fail to meet the§ 101 standard.
App. Br. 12 (emphasis added).
The examiner has not analyzed and explained why the claims do
not meet Part II of Mayo and hence has not established more
likely than not that the claims fail the § 101 test. Indeed, the
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examiner's analysis is inadequate to support the legal conclusion
that Applicant's claims add nothing of substance to what the
examiner has determined to be the abstract idea. The problem
with the examiner's § 101 rejection is that it is not rooted in
claim construction and does not account for all of the
limitations in the claims.
App. Br. 12-13 (emphasis added).
D.4.b.
Appellant's argument is not persuasive. First we find no basis for
Appellant's asserted "high" prima facie burden. Second, beyond general
assertions by Appellant of Examiner error, we do not find in this argument
asserted particular claim limitations that Appellant believes were
overlooked. As discussed supra, we determine that the Examiner's § 101
rejection analysis recites at length the actual language of Appellant's
independent claim 1. Contrary to Appellant's assertions, we determine that
the Examiner's rejection is well rooted in the claim construction and
accounts for the claim limitations.
As this court has repeatedly noted, "the prima facie case is
merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984). The Patent and Trademark Office ("PTO") satisfies
its initial burden of production by "adequately explain[ing] the
shortcomings it perceives so that the applicant is properly
notified and able to respond." Hyatt, 492 F.3d at 1370. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." 35
U.S.C. § 132. That section "is violated when a rejection is so
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Application 14/254,641
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection." Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (emphasis added).
"Section 132 merely ensures that an applicant at least be
informed of the broad statutory basis for the rejection of his
claims, so that he may determine what the issues are on which he
can or should produce evidence." Chester, 906 F.2d at 1578
(internal citation omitted). As discussed above, all that is
required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of § 132. As the statute itself instructs, the
examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132.
In re Jung, 637 F.3d at 1363 (emphasis added).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 4--9, 12-16, 19,
and 20 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter.
(2) Claims 1, 4--9, 12-16, 19, and 20 are not patentable.
DECISION
The Examiner's rejection of claims 1, 4--9, 12-16, 19, and 20 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter, is
affirmed.
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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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