Ex Parte Schulz et al

Patent Trial and Appeal Board

Mar 28, 2019

13715167 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/715, 167 12/14/2012
106592 7590 04/01/2019
Klarquist Sparkman, LLP (SAP)
121 SW Salmon Street, Suite 1600
Portland, OR 97204
FIRST NAMED INVENTOR
Thomas Schulz
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.
8880-100974-01 9457
EXAMINER
ERB,NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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@klarquist.com
AS CChair@klarquis t. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS SCHULZ, KATHRIN DYCKERHOFF,
THOMAS ENGELMANN, and CHRISTOPH ECKERT
Appeal2018-001787
Application 13/715, 167
Technology Center 3600
Before JOHN A. JEFFERY, JOHN P. PINKERTON, and BETH Z. SHAW,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention optimizes routing freight or other objects by
altering or editing a selected shipping path based on certain criteria. See
generally Abstract;~~ 1, 50--54. Claim 1 is illustrative:
1 Appellants identify the real party in interest as SAP SE. App. Br. 2.
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1. A method comprising:
receiving, by a processor, a request to transport a current
freight unit from a current source location to a current
destination location;
selecting, by a processor, a prior shipment path based
upon a similarity, as defined by a set of predefined criteria,
between the current freight unit and a prior freight unit, the prior
shipment path being selected from a stored previous
optimization associated with a shipment path used to transport
the prior freight unit, the prior shipment path including at least
one intermediate location between the current source location
and the current destination location and two or more sub-paths
connecting the intermediate location, the two or more sub-paths
having an associated transportation type by which the current
freight unit is to be transported;
initializing, by a processor, a shipment path improver with
the prior shipment path, the shipment path improver being
communicatively coupled to a route information storage
including a plurality of route data; and
generating, by a processor, via the shipment path
improver, a current shipment path for the current freight unit
from the current source location to the current destination
location, wherein
the shipment path improver is configured to iteratively
change one of the two or more sub-paths by altering one of the
at least one intermediate location, the two or more sub-paths or
the associated transportation type during each iteration to
generate the current shipment path based upon the prior
shipment path and the plurality of route data including a carrier
capacity and a carrier fee, and
the current shipment path becomes the prior shipment
path for a next iteration of the shipment path improver.
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THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 3--4. 2
CONTENTIONS
The Examiner determines that the claims are directed to an abstract
idea, namely generating a shipment path, which is said to optimize planning
a human activity. Final Act. 3. The Examiner adds that the claims do not
include elements that add significantly more than the abstract idea, but
merely recite conventional generic computer functions. Id. 3--4. Based on
these determinations, the Examiner concludes that the claims are ineligible
under § 101. Id.
Appellants argue that the claimed invention is not directed to an
abstract idea. App. Br. 5-10; Reply Br. 2-5. According to Appellants, the
Examiner's rejection is not only based on unsupported opinion and
conclusory statements, it also oversimplifies and ignores various recited
limitations that are said to improve computer-related technology. App. Br.
5-10; Reply Br. 3--4. Appellants add that not only does the claimed
invention not preempt all shipment path generation applications, it also adds
an inventive concept because the claims were not rejected over prior art. See
App. Br. 10-11; Reply Br. 4--5.
2 Throughout this opinion, we refer to (1) the Final Rejection mailed January
13, 2017 ("Final Act."); (2) the Appeal Brief filed June 6, 2017 ("App.
Br."); (3) the Examiner's Answer mailed October 19, 2017 ("Ans."); and (4)
the Reply Brief filed December 7, 2017 ("Reply Br.").
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ISSUE
Under § 101, has the Examiner erred in rejecting claims 1-2 0 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether recited elements-
considered individually and as an ordered combination-transform the
nature of the claims into a patent-eligible application of that abstract idea.
PRINCIPLES OF LAW
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. See, e.g., Alice Corp. Pty. Ltd. 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
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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 water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 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 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."). That
said, 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
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concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks and citation
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. ( 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.
In January 2019, the USPTO published revised guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("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 activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)).
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, and conventional in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
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See Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Claims 1-20: Alice/Mayo Step One
Independent claim 1 recites a method where a processor performs four
main steps. In the first two steps, the processor (1) receives a request to
transport a current ''freight unit"3 from a source location to a destination
location; and (2) selects a prior shipment path based on a similarity between
the current freight unit and prior freight unit, where the path is selected
from a stored previous optimization associated with a shipment path used to
transport the prior freight unit, where this path includes (a) at least one
intermediate location between the current source and destination locations,
and (b) two or more sub-paths connecting the intermediate location and
having an associated transportation type. 4
In the last two steps, the processor (3) initializes a "shipment path
improver" with the prior shipment path, where the "improver" is
communicatively coupled to a route information storage including route
data, and (4) generates, via the improver, a current shipment path for the
current freight unit from to the current source location to the current
destination location. Regarding step (4), the claims add that the improver is
configured to change one sub-path iteratively by altering one of (a) an
3 According to the Specification's paragraph 15, a "freight unit" includes
any object or thing that is to be shipped, transported, or moved from a source
or initial location to a destination location.
4 Unless otherwise indicated, we italicize text associated with various recited
limitations for emphasis and clarity.
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intermediate location, (b) the sub-paths, or ( c) the associated transportation
type during each iteration to generate the current shipment path based on (i)
the prior shipment path and (ii) route data including a carrier capacity and
fee. The claim adds that the current shipment path becomes the prior
shipment path for the improver's next iteration.
As the Specification explains, the invention optimizes routing freight
or other objects by, among other things, using a "shipment path improver" to
generate an improved shipping path by altering or editing an initial shipping
path based on certain criteria-alterations that can occur iteratively. See
Spec. ,r,r 1, 50-54. For example, the improver can replace certain segments
of the initial shipment path dictating truck transport from ( 1) point "C" to
point "D," and (2) point "D" to point "E," with a new segment dictating
plane transport from point "C" to "E." Spec. ,r 53.
An example of this rerouting is shown in Appellants' Figure 2, where
a freight unit is transported from Lisbon 202 to Madrid 203 by train, and
then from Madrid to Barcelona by 204 by truck, and then from Barcelona to
Instanbul 208 by boat. See Spec. ,r,r 58---60. In Figure 3, the freight unit is
transported to Barcelona the same way as in Figure 2, but is instead flown
from Barcelona to Instabul via Munich 207. See id. ,r,r 61---63. Figure 4
shows an optimization of this shipment path, where the freight unit is again
transported by train to Madrid, but then flown to Instanbul via Munich. See
id. ,r,r 64---66.
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of§ 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
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at 21 7. To this end, we must determine whether ( 1) the claim recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52-55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 1 is directed to an
abstract idea, namely generating a shipment path, which is said to optimize
planning a human activity. Final Act. 3. To determine whether a claim
recites an abstract idea, we ( 1) identify the claim's specific limitations that
recite an abstract idea, and (2) determine whether the identified limitations
fall within certain subject matter groupings, namely (a) mathematical
concepts5; (b) certain methods of organizing human activity6; or ( c) mental
processes. 7
Here, apart from the recited (1) "processor"; (2) "stored previous
optimization"; (3) "communicatively coupl[ing] the improver to route
information storage including a plurality of route data"; and (4) "shipment
5 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
6 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
7 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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path improver," every limitation of claim 1 recites an abstract idea, namely
organizing human activity, by changing a planned shipment path-including
its sub-paths, intermediate locations, and transportation types-based on
certain criteria. Because this criteria-based shipment path change involves
commercial interactions, following rules or instructions, and fundamental
economic practices, the recited limitations fit squarely within the human
activity organization category of the agency's guidelines. See Guidance, 84
Fed. Reg. at 52 (listing exemplary methods of organizing human activity,
including fundamental economic practices, commercial interactions, and
following rules or instructions). That is, apart from using a processor and
storage, the recited steps could be performed solely by a human that
determines the best way to transport freight to a destination according to
certain criteria. Indeed, such iterative shipment path improvements have
long been a part of commerce, including rerouting ships sailing between
American ports on the Atlantic and Pacific oceans through the Panama
Canal instead of around South America-a rerouting that considerably
reduced the time and distance required to transport goods between those
ports. See generally Anderson v. Pacific Coast S.S. Co., 225 U.S. 187, 192
( 1912) ( discussing steam vessel traffic using these alternate routes between
American ports).
In addition to falling in the certain methods of organizing human
activity category under the agency's guidelines, apart from using a processor
and storage, the recited steps also fall in the mental processes category as
well. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes
including observations, evaluations, and judgments). That is, apart from
using a processor and storage, the recited steps could also be performed
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entirely mentally by merely remembering a prior shipment path, and
improving that path by changing its aspects based on certain criteria, and
repeating that mental process. Therefore, in addition to organizing human
activity, the recited steps, apart from their performance via a processor and
storage, also fall within the mental processes category of the agency's
guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental
processes including observations, evaluations, and judgments); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011 ). That the recited optimization does not yield an ideal or perfect result
as acknowledged in the Specification's paragraph 20 only underscores that
such improvements over former results can be obtained by a human planner,
albeit perhaps imperfectly.
Although the claim recites an abstract idea based on these methods of
organizing human activity and mental processes, we nevertheless must still
determine whether the abstract idea is integrated into a practical application,
namely whether the claim applies, relies on, or uses the abstract idea in a
manner that imposes a meaningful limit on the abstract idea, such that the
claim is more than a drafting effort designed to monopolize the abstract idea.
See Guidance, 84 Fed. Reg. at 54--55. To this end, we (1) identify whether
there are any additional recited elements beyond the abstract idea, and (2)
evaluate those elements individually and collectively to determine whether
they integrate the exception into a practical application. See id.
Here, the recited (1) "processor"; (2) "stored previous optimization";
(3) "communicatively coupl[ing] the improver to route information storage
including a plurality of route data"; and (4) "shipment path improver" are
the only recited elements beyond the abstract idea, but those additional
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elements do not integrate the abstract idea into a practical application when
reading claim 1 as a whole. First, we are not persuaded that the claimed
invention improves the computer or its components' functionality or
efficiency, or otherwise changes the way those devices function, at least in
the sense contemplated by the Federal Circuit in Enfzsh LLC v. Microsoft
Corporation, 822 F.3d 1327 (Fed. Cir. 2016), despite Appellants' arguments
to the contrary (App. Br. 7-10). The claimed self-referential table in Enfzsh
was a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfzsh, 822 F.3d at 1339. To the extent
Appellants contend that the claimed invention uses such a data structure to
improve a computer's functionality or efficiency, or otherwise change the
way that device functions (see App. Br. 7-10), there is no persuasive
evidence on this record to substantiate such a contention.
To the extent that Appellants contend the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
App. Br. 9-10), we disagree. Even assuming, without deciding, that claimed
invention can change a planned shipment path, including its sub-paths,
intermediate locations, and transportation types, based on certain criteria
faster than doing so manually, any speed increase comes from the
capabilities of the generic computer components-not the recited process
itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095
(Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co.,
687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.")); see
also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App'x 1012,
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1017 (Fed. Cir. 2017) (unpublished) ("Though the claims purport to
accelerate the process of finding errant files and to reduce error, we have
held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer 'do[] not materially alter the
patent eligibility of the claimed subject matter.'"). Like the claims in
Fair Warning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
( citations and quotation marks omitted).
The court's decision in Return Mail, Inc. v. United States Postal
Service, 868 F.3d 1350 (Fed. Cir. 2017) is also relevant here. There, the
court held ineligible a claim reciting a method for processing undeliverable
mail items including, among other things, (1) receiving items from a sender,
where each item included a written addressee and encoded data indicating
whether the sender wanted a corrected address to be provided for the
addressee; (2) identifying items returned after mailing as undeliverable; (3)
decoding the encoded data incorporated in at least one of the undeliverable
mail items; ( 4) creating output data that included a customer number of the
sender and at least a portion of the decoded data; and ( 5) determining the
sender wanted a corrected address provided for intended recipients based on
the decoded data. Return Mail, 868 F.3d at 1367. The claim also recited
that if the sender wanted to provide a corrected address, information was
electronically transferred to the sender for the identified intended recipients
to enable the sender to update the sender's mailing address files. Id. But if
the sender did not want to provide a corrected address, the claim added that
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return mail data records were posted on a network to enable the sender to
access the records. Id.
In reaching its ineligibility conclusion, the court in Return Mail held
that (1) receiving mail items from a sender; (2) identifying undeliverable
items; (3) decoding the undeliverable items' encoded data; and (4) creating
output data that included, among other things, at least part of the encoded
data were directed to an abstract idea. Id. at 1368. Notably, the court
emphasized that encoding and deciding mail recipient information-
including whether the sender wants a corrected address-are processes that
can, and have been, performed in the human mind. Id. Ultimately, the court
held that the claims simply recite that existing business practice with the
benefit of generic computing technology. Id. The facts in Return Mail are
analogous here, at least to the extent that the invention in that case involved
improving a shipment path of undeliverable items by enabling the sender to
correct the mailing address for the intended recipients. See id.
Appellants' reliance on DDR Holdings, LLC v. Hotels.Com, L.P., 773
F.3d 1245 (Fed. Cir. 2014) (App. Br. 10) is unavailing. There, instead of a
computer network operating in its normal, expected manner by sending a
website visitor to a third-party website apparently connected with a clicked
advertisement, the claimed invention in DDR generated and directed the
visitor to a hybrid page that presented ( 1) product information from the third
party, and (2) visual "look and feel" elements from the host website. DDR,
773 F.3d at 1258-59. Given this particular Internet-based solution, the court
held that the claimed invention did not merely use the Internet to perform a
business practice known from the pre-Internet world, but rather was
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necessarily rooted in computer technology to overcome a problem
specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellants' claimed
invention, in essence, organizes human activity by changing a planned
shipment path-including its sub-paths, intermediate locations, and
transportation types-based on certain criteria. Despite Appellants'
arguments to the contrary (see App. Br. 7-10), the claimed invention here is
not necessarily rooted in computer technology in the sense contemplated by
DDR where the claimed invention solved a challenge particular to the
Internet. Although the Appellants' invention uses various computer-based
components, including the recited (1) processor; (2) stored previous
optimization; (3) communicatively coupling the improver to route
information storage including route data; and ( 4) shipment path improver,
the claimed invention does not solve a challenge particular to the computer
or the network used to implement this functionality.
Appellants' reliance on McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 10) is likewise
unavailing. There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But, unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
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invention here merely uses generic computing components to change a
planned shipment path, including its sub-paths, intermediate locations, and
transportation types, based on certain criteria. This generic computer
implementation is not only directed to fundamental human activity
organization and mental processes, but also does not improve a display
mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
Although the claimed invention requires computer components, it is
the incorporation of those components-not a claimed rule-that
purportedly improves the existing process. Cf Fair Warning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016). In short, the
claimed invention does not focus on improving computers as tools, but
rather certain independently abstract ideas that use computers as tools. See
Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314,
1324--25 (Fed. Cir. 2016) (noting that components such an "interface,"
"network," and "database" are generic computer components that do not
satisfy the inventive concept requirement); see also Guidance, 84 Fed. Reg.
at 55 ( citing MPEP § 2106.05([)).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional elements merely (1) apply the abstract
idea on a computer; (2) include instructions to implement the abstract idea
on a computer; or (3) use the computer as a tool to perform the abstract idea.
See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)). Therefore,
the recited additional elements, namely the (1) processor; (2) stored previous
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optimization; (3) communicatively coupling the improver to route
information storage including route data; and (3) shipment path improver do
not integrate the abstract idea into a practical application when reading claim
1 as a whole.
In addition, not only is the recited receiving step implemented via
generic computing components to achieve those ends, but it is also a data
gathering function that constitutes insignificant extra-solution activity
insufficient to integrate the abstract idea into a practical application. See In
re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd on other
grounds, 561 U.S. 593 (2010) (characterizing data gathering steps as
insignificant extra-solution activity); see also Guidance, 84 Fed. Reg. at 55
(citing MPEP § 2106.05(g)).
Lastly, we find unavailing Appellants' contention that the claimed
invention does not preempt using the alleged abstract idea in all fields. See
App. Br. 10; Reply Br. 4--5. Where, as here, the claims cover a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Alice framework. See Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In conclusion, although the claimed invention may be beneficial by
changing a planned shipment path according to certain criteria, a claim for a
useful or beneficial abstract idea is still an abstract idea. See Ariosa,
788 F.3d at 1379-80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
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Claims 1-20: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1 's additional recited elements,
namely the recited (1) "processor"; (2) "stored previous optimization"; (3)
"communicatively coupl[ing] the improver to route information storage
including a plurality of route data"; and (4) "shipment path improver"-
considered individually and as an ordered combination----do not provide an
inventive concept such that these additional elements amount to significantly
more than the abstract idea. See Alice, 573 U.S. at 221; see also Guidance,
84 Fed. Reg. at 56. As noted above, the claimed invention merely uses
generic computing components to implement the recited abstract idea.
To the extent that Appellants contend that the recited limitations,
including the additional elements' particular recited functionality, add
significantly more than the abstract idea to provide an inventive concept
under Alice/Mayo step two (see App. Br. 5-11; Reply Br. 2-5), these
limitations are not additional elements beyond the abstract idea, but rather
are directed to the abstract idea as noted previously. See Guidance, 84 Fed.
Reg. at 56 (instructing that additional recited elements should be evaluated
in Alice/Mayo step two to determine whether they (1) add specific
limitations that are not well-understood, routine, and conventional in the
field, or (2) simply append well-understood, routine, and conventional
activities previously known to the industry (citing MPEP § 2106.05(d)).
Rather, the (1) "processor"; (2) "stored previous optimization"; (3)
"communicatively coupl[ing] the improver to route information storage
including a plurality of route data"; and ( 4) "shipment path improver" are
the additional recited elements whose generic computing functionality is
well-understood, routine, and conventional. Accord Final Act. 3--4; Ans.
18
Appeal2018-001787
Application 13/715, 167
17-19 (finding that the claims' additional computer elements provide
conventional computer functionality that do not add significantly more than
the abstract idea). Appellants' arguments in this regard (see App. Br. 5-11;
Reply Br. 2-5) are, therefore, unpersuasive.
Despite Appellants' arguments to the contrary (App. Br. 11 ), the fact
that the Examiner did not reject the claims as anticipated or obvious over
prior art is not dispositive to patent eligibility-a separate statutory inquiry.
See Return Mail, 868 F.3d at 1370. Although the second step in the Alice
test is a search for an "inventive concept," the analysis is not directed to
novelty or nonobviousness, but rather searches for elements sufficient to
ensure that the claimed invention is directed to more than a patent ineligible
concept, such as an abstract idea. See Alice, 134 S. Ct. at 2355.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diamond v. Diehr, 450
U.S. 175, 188-89 (1981) ("The 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter."); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an
eligibility finding does not tum on the novelty of using a user-downloadable
application for the particular purpose recited in the claims).
In conclusion, we do not find that the additional recited elements-
considered individually and as an ordered combination-add significantly
more than the abstract idea to provide an inventive concept under
19
Appeal2018-001787
Application 13/715, 167
Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed.
Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-20 not argued separately with particularity.
CONCLUSION
The Examiner did not err in rejecting claims 1-20 under§ 101.
DECISION
We affirm the Examiner's decision to reject 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
20