Ex Parte Shah et al

Patent Trials and Appeals Board

Jun 19, 2019

13027651 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/027,651 02/15/2011
160816 7590 06/21/2019
Terrile, Cannatti & Chambers, LLP - Dell
P.O. Box 203518
Austin, TX 78720
FIRST NAMED INVENTOR
Shesha Shah
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.
DC-18691 7218
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/21/2019 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):
tmunoz@tcciplaw.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHESHA SHAH and RAJIV NARANG
Appeal2018-003195
Application 13/027,651
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 4--7, 10-13, and 16-20, i.e., all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates "generally to
information handling systems" and more specifically to "monitoring user
1 Appellants identify the real party in interest as Dell Products L.P. Br. 1.
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Application 13/027,651
interactions and generating proactive responses thereto within a social media
environment." Spec. ,r,r 4, 22. 2 The Specification explains that "[s]ocial
media interactions are monitored, collected, and processed to generate social
network advocacy analyses" that "are in tum processed to generate
predictive models." Id. at 23 (Abstract). The Specification also explains
that "the predictive models are referenced to perform targeting market
segmentation operations and to generate proactive marketing response
recommendations." Id.; see id. ,r 11. The Specification discusses using
"segmentation data" to "map users of a social media environment to a
vendor's customers" and to "further segment mapped users of a social media
environment to various segments of a vendor's installed base or product
lines." Id. ,r 41.
Exemplary Claims
Independent claims 1 and 7 exemplify the claims at issue and read as
follows (with formatting added for clarity):
1. A computer-implementable method for monitoring user
interactions and generating proactive responses thereto within a
social media environment, comprising:
performing conversation monitoring operations via an
information handling system executing within a social media
environment to detect a conversation comprising a target
subject, wherein conversation data elements associated with the
conversation are collected;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed February 15, 2011; "Final Act." for the Final Office
Action, mailed March 7, 201 7; "Br." for the Appeal Brief, filed
September 7, 2017; and "Ans." for the Examiner's Answer, mailed
November 2, 2017.
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processing the conversation data elements via the
information handling system to generate social network
advocacy analyses, the network advocacy analyses being used
to generate a social net advocacy metric,
the social net advocacy metric providing a measure
of an affect of health of a business as a result of user
interactions within a social media environment,
the social net advocacy metric being generated on
a near-real time basis,
the social net advocacy metric showing a
quantifiable affect of the conversation;
processing the social network advocacy analyses via the
information handling system to generate predictive models;
referencing the predictive models via the information
handling system to perform business analysis operations and
to generate proactive recommendations;
using the proactive response recommendations to
perform proactive operations;
and wherein
the conversation data elements are stored as social
network advocacy data in a repository of social network
advocacy data;
data associated with a user's interaction with a vendor's
web site is stored as social network advocacy data in the
repository of social network advocacy data;
the business analysis operations are performed via a
social customer relationship management ( CRM) system, the
social CRM system referencing the predictive models to
perform marked [sic] segmentation operations and to generate
proactive marketing response recommendations; and,
the proactive marketing response recommendations being
used by a social net advocacy system administrator to generate
proactive marketing responses based upon the proactive
response recommendations,
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Application 13/027,651
the proactive marketing responses being generated within
the social media environment and the vendor's web site.
7. An information handling system comprising:
a processor;
a data bus coupled to the processor; and
a computer-usable medium embodying computer
program code, the computer-usable medium being coupled to
the data bus, the computer program code interacting with a
plurality of computer operations and comprising instructions
executable by the processor and configured for:
performing conversation monitoring operations via
the processor of the information handling system, the
information handling system executing within a social
media environment to detect a conversation comprising a
target subject, wherein conversation data elements
associated with the conversation are collected;
processing the conversation data elements via the
processor of the information handling system to generate
social network advocacy analyses, the network advocacy
analyses being used to generate a social net advocacy
metric,
the social net advocacy metric providing a
measure of an affect of health of a business as a
result of user interactions within a social media
environment,
the social net advocacy metric being
generated on a near-real time basis,
the social net advocacy metric showing a
quantifiable affect of the conversation;
processing the social network advocacy analyses
via the processor of the information handling system to
generate predictive models;
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referencing the predictive models via the processor
of the information handling system to perform business
analysis operations and to generate proactive response
recommendations; and
using the proactive recommendations to perform
proactive marketing response operations;
and wherein
the conversation data elements are stored as social
network advocacy data in a repository of social network
advocacy data;
data associated with a user's interaction with a
vendor's web site is stored as social network advocacy
data in the repository of social network advocacy data;
the business analysis operations are performed via
a social customer relationship management ( CRM)
system, the social CRM system referencing the predictive
models to perform marked [sic] segmentation operations
and to generate proactive marketing response
recommendations; and,
the proactive marketing response
recommendations being used by a social net advocacy
system administrator to generate proactive marketing
responses based upon the proactive response
recommendations,
the proactive marketing responses being generated
within the social media environment and the vendor's
web site.
Br. 9--11 (Claims App.).
The Rejection on Appeal
Claims 1, 4--7, 10-13, and 16-20 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 2-5; Ans. 3.
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ANALYSIS
We have reviewed the rejection in light of Appellants' arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner's conclusion concerning ineligibility under § 101. We provide the
following to address and emphasize specific findings and arguments.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 "contains an important implicit
exception" for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77-80; Alice, 573 U.S. at 217-18.
Under Mayo/Alice step one, we "determine whether the claims at
issue are directed to" a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the "focus" of the claims at issue and their "character as a whole."
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019
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Guidance"). The 2019 Guidance applies to the Board. Id. at 50-51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility "for
providing policy direction" for the PTO). Neither the Examiner nor
Appellants had the benefit of the 2019 Guidance when advocating their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54--55. The first prong
requires evaluating "whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon." Id. at 54. "If the
claim does not recite a judicial exception, it is not directed to a judicial
exception," and it satisfies § 101. Id. "If the claim does recite a judicial
exception, then it requires further analysis" under prong two. Id. Prong two
requires evaluating "whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception." Id. "When
the exception is so integrated, then the claim is not directed to a judicial
exception," and it satisfies§ 101. Id. "If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception," and it "requires further analysis" under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we "consider the elements of each claim
both individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than the judicial exception. Alice, 573 U.S. at 217-18,
221-22 (quoting Mayo, 566 U.S. at 78-79). Step two involves the search for
an "inventive concept." Alice, 573 U.S. at217-18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
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Cir. 2019). "[A]n inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One: PTO Step 2A Prong One
For Mayo/Alice step one, the Federal Circuit has noted that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner determines that the claims are directed to the abstract idea of
"Target[ ed] marketing based on monitored/analyzed data" by "Saving rule
data (If/Then data), Gathering/Receiving/ and Storing Data (User posted
data), Correlating/Processing the Data with Saved Data to determine a social
net advocacy metric and generate predictive models ... and
recommendations." Final Act. 2-3; see id. at 5-7.
Appellants dispute that the claims are directed to an abstract idea. See
Br. 4--5. In particular, Appellants contend that the "claims are directed
toward something much narrower than an abstract concept .... " Id. at 5.
We disagree. A "claim is not patent eligible merely because it applies
an abstract idea in a narrow way." BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1287 (Fed. Cir. 2018). The "absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In addition, we determine that the claims recite abstract ideas falling
within the three groupings of abstract ideas specified in the 2019 Guidance:
mathematical concepts, certain methods of organizing human activity, and
mental processes. See 84 Fed. Reg. at 51-52. As relevant here, the
Guidance identifies the following as mental processes: "concepts performed
in the human mind," such as "an observation, evaluation, judgment, [or]
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opinion." Id. at 52 (footnote omitted). As explained in the following
paragraphs, each independent claim recites mental processes in various
limitations.
Specifically, claims 1, 7, and 13 recite the following limitations:
• "performing conversation monitoring operations ...
to detect a conversation comprising a target subject,
wherein conversation data elements associated with
the conversation are collected";
• "processing the conversation data elements ... to
generate social network advocacy analyses, the network
advocacy analyses being used to generate a social net
advocacy metric";
• "the social net advocacy metric providing a measure
of an affect of health of a business";
• "the social net advocacy metric showing a quantifiable
affect of the conversation"; and
• "generat[ing] proactive recommendations" ( claim 1 ); or
• "generat[ing] proactive response recommendations"
( claim 7); or
• "generat[ing] proactive marketing response
recommendations" ( claim 13).
Br. 9-13 (Claims App.). As discussed in more detail below, the above-
quoted limitations, broadly but reasonably interpreted, encompass an
evaluation performed alternatively by a human mentally or with pen and
paper.
The Specification explains that a "conversation" refers to a social-
media interaction and includes a "posting by an author of a blog,"
a "comment within a user forum," and a "question" that "may or may not"
elicit a response. Spec. ,r 31; see id. ,r,r 33-34, Fig. 4. Hence, a
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"conversation" includes a single communication. The Specification also
explains that a "target subject" includes a "vendor's product." Id. ,r,r 9, 27.
Thus, the above-quoted limitations encompass reading
communications about a product, evaluating the communications as negative
or positive using a numerical scale, e.g., a scale from one to five, and
recommending responses based on the evaluations. For instance, with a
scale from one to five, one may denote very negative, two may denote
negative, three may denote neutral, four may denote positive, and five may
denote very positive. Using that scale, an evaluator may score a
communication about a product from one to five, thus generating a
quantified "metric" that provides "a measure of an affect of health of a
business" selling the product. Moreover, the evaluator may average the
scores for several communications to generate another quantified "metric"
that provides "a measure of an affect of health of a business" selling the
product.
Further, based on a very negative evaluation (score = one), the
evaluator may recommend contacting the communication's author, e.g., to
determine what caused a problem or discuss corrective action to resolve a
problem. See Spec. ,r,r 27, 34. Based on a neutral evaluation (score= three),
the evaluator may recommend no further action. And based on a very
positive evaluation (score= five), the evaluator may recommend using the
communication to market the product. See id. ,r 30.
For these reasons, the above-quoted limitations encompass an
evaluation performed alternatively by a human mentally or with pen and
paper. The 2019 Guidance identifies an evaluation performed by a human
mentally or with pen and paper as a mental process, and thus an abstract
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idea. 84 Fed. Reg. at 52 & nn.14--15; see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.") ("Symantec").
Claims 1, 7, and 13 also recite the following limitations:
• "using the proactive response recommendations to
perform proactive operations" and "the proactive
marketing response recommendations being used by a
social net advocacy system administrator to generate
proactive marketing responses" ( claim 1 );
• "using the proactive recommendations to perform
proactive marketing response operations" and "the
proactive marketing response recommendations being
used by a social net advocacy system administrator to
generate proactive marketing responses" ( claim 7); and
• "using the proactive recommendations to perform
proactive operations" and "the proactive marketing
response recommendations being used by a social net
advocacy system administrator to generate proactive
marketing responses" ( claim 13).
Br. 9-13 (Claims App.). 3
The "using" limitations combined with the other above-quoted
limitations encompass managing "relationships or interactions between
people." For instance, a customer's complaint or negative review may
generate a "proactive" recommendation that an employee in a vendor's
3 Claims 7 and 13 recite both an apparatus and a method of using the
apparatus. Hence, in the event of continued prosecution, the Examiner
should consider the propriety of a rejection under 35 U.S.C. § 112 ,r 2. See
IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383-84
(Fed. Cir. 2005).
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customer-service department contact the customer to discuss the issue. See
Spec. ,r,r 27, 34. When the employee does so, the employee uses the
"proactive" recommendation to perform a "proactive" operation that helps
manage the customer relationship. The 2019 Guidance identifies managing
"relationships or interactions between people" as among "[ c ]ertain methods
of organizing human activity," and thus an abstract idea. 84 Fed. Reg. at 52;
see Bilski v. Kappas, 561 U.S. 593, 611 (2010) (deciding that a claim was
directed to two types of abstract ideas: a "fundamental economic practice"
and a "mathematical formula").
Mayo/Alice Step One: PTO Step 2A Prong Two
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54--55. "Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim 'directed to' a judicial exception
.... " Id. at 51.
Based on BASCOM, Appellants argue that "the claims may be read to
'improve[] an existing technological process."' Br. 7 (alteration in original)
(quoting BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1351 (Fed. Cir. 2016)). Appellants identify the
"technological improvement" as "monitor[ing] user interactions and
generat[ing] proactive responses thereto within a social media environment."
Id. at 6. Then, Appellants describe all limitations in claim 1 as "significant"
and "more than a drafting effort designed to monopolize the [abstract idea]."
Id. at 6-7 (quoting Alice, 573 U.S. at 221) (alteration in original).
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Appellants misplace their reliance on BASCOM. There, the claims
recited a "specific method of filtering Internet content" requiring "the
installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user."
BASCOM, 827 F.3d at 1345--46, 1350. The Federal Circuit reasoned that the
claims covered "a technology-based solution ... to filter content on the
Internet that overcomes existing problems with other Internet filtering
systems" and "improve[ s] an existing technological process." Id. at 1351
(citing Alice, 573 U.S. at 223); see Alice, 573 U.S. at 223 (explaining that
"the claims in Diehr were patent eligible because they improved an existing
technological process").
In contrast to the claims in BASCOM, the claims here do not cover a
technology-based solution that improves an existing technological process.
See Final Act. 3-5, 8; Ans. 4. As the Examiner determines, "the claims do
not recite an improvement to another technology or technical field" or "an
improvement to the functioning of the computer itself." Final Act. 3; see
Ans. 4. As the Examiner also determines, the claims "are not directed to a
specific improvement to computer functionality/technology" but instead
"directed to the use of conventional or generic technology in a well-known
environment." Final Act. 8. Hence, the claims here do not resemble the
claims in BASCOM.
In addition, the Specification does not describe an alleged deficiency
in an existing technological process. See, e.g., Spec. ,r,r 4--8. Instead, the
Specification identifies an alleged deficiency in information available for
marketing purposes. Id. ,r,r 7-8. According to the Specification,
"[ t ]raditional methods of measuring the effectiveness of a social media
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channel" for marketing purposes fail to "provide social media channel
feedback in real-time." Id. ,r,r 7-8. Thus, the invention endeavors to
"generate near-real-time feedback," e.g., to answer "marketing-related
questions." Id. ,r 25.
Appellants contend that "the claims are narrowly drawn to not
preempt any and all generic enhancement of data in a similar system." Br. 8.
That contention does not persuade us of Examiner error. While preemption
may denote patent ineligibility, its absence does not demonstrate patent
eligibility. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016). For claims covering a patent-ineligible concept,
preemption concerns "are fully addressed and made moot" by an analysis
under the Mayo/Alice framework. Ariosa, 788 F.3d at 1379.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims "may have integrated the Uudicial]
exception into a practical application." 84 Fed. Reg. at 55 & nn.25-29
(citing Manual of Patent Examining Procedure§§ 2106.05(a}-(c),
2106.05(e) (9th ed. rev. 08.2017 Jan. 2018)). As the above analysis
indicates, we have evaluated Appellants' arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract ideas into a practical application. Thus, each claim is
directed to a judicial exception and does not satisfy§ 101 under Mayo/Alice
step one.
Mayo/Alice Step Two: PTO Step 2B
Because we determine that each independent claim is directed to a
judicial exception, we "consider the elements of each claim both
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individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than the judicial exception. See Alice, 573 U.S.
at 217-18, 221-22 (quoting Mayo, 566 U.S. at 78-79). Under Mayo/Alice
step two, we "look with more specificity at what the claim elements add, in
order to determine 'whether they identify an "inventive concept" in the
application of the ineligible subject matter' to which the claim is directed."
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An "inventive concept" requires more than
"well-understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80).
Here, the Examiner finds that the additional elements in the claims
constitute "generic computer structure" performing "generic computer
functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry." Final Act. 3--4, 7; see Ans. 4.
The Examiner determines that the additional elements "do not add a
meaningful limitation to the abstract idea because they would be routine in
any computer implementation." Final Act. 3; see Ans. 4, 6. Thus, the
Examiner concludes that each independent claim "does not amount to
significantly more than the abstract idea itself." Final Act. 5; Ans. 6.
We agree with the Examiner. As explained in the following
paragraphs, we conclude that each independent claim lacks an "inventive
concept" that transforms the recited abstract ideas into a patent-eligible
invention.
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As additional elements, the claims require an "information handling
system," a "customer relationship management (CRM) system," a "vendor's
web site" a "repository" for data a "processor" a "data bus" and a
' ' ' '
"computer-usable medium embodying computer program code." Br. 9-13
(Claims App.). The Specification describes those elements generically and
evidences their conventional nature. See, e.g., Spec. ,r,r 5, 11, 22-23, 26, 45,
47; see also Final Act. 3-5, 8; Ans. 4.
For example, the Specification explains that an "information handling
system" may "include any instrumentality or aggregate of instrumentalities
operable to compute, classify, process, transmit, receive, retrieve, originate,
switch, store, display, manifest, detect, record, reproduce, handle, or utilize
any form of information, intelligence, or data for business, scientific,
control, or other purposes." Spec. ,r 22; see id. ,r 5. As examples, the
Specification identifies "a personal computer, a network storage device,"
"a laptop computer," "a tablet computer," "a personal digital assistant
(PDA), a mobile telephone, or any other suitable device operable to display
a social media and vendor site user interface." Id. ,r,r 22, 26.
In addition, the Specification describes a "customer relationship
management (CRM) system" as "familiar to those of the skill in the art," i.e.,
conventional. Id. ,r,r 11, 45; see Final Act. 8 (citing Spec. ,r 11).
Also, the Specification indicates that a "repository" for data and a
"computer-usable medium embodying computer program code" may include
almost any "storage medium" or "storage device." Spec. ,r 4 7; see id. ,r 23.
As examples, the Specification identifies "a disk drive," "a semiconductor-
based memory ... permanently, removably or remotely coupled to a
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microprocessor/memory system," and "magnetic floppy disks, hard disks, or
optical discs such as CD-ROMs or CD-Rs." Id. ,r 47.
Moreover, the claimed generic computer-system components operate
to collect, manipulate, and display data. See Br. 9-13 (Claims App.); see
also Final Act. 3, 7; Ans. 4; Spec. ,r,r 5, 9, 22, 27, 33, 41--42, 45, Fig. 9.
Court decisions have recognized that generic computer-system components
operating to collect, manipulate, and display data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S.
at 226; SAP Am., 898 F.3d at 1164---65 & n.1, 1170; Symantec, 838 F.3d
at 1316-20; Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334
(Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16
(Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014).
For example, the system claims in Alice recited a "data processing
system" with a "communications controller" and a "data storage unit," i.e.,
a "repository" for data. Alice, 573 U.S. at 226. The Supreme Court decided
that the system claims failed to satisfy § 101 because "[ n ]early every
computer" includes those generic components for performing "basic
calculation, storage, and transmission functions" and the system claims
simply implemented the same abstract idea as the method claims. Id.
at 226-27. The Court reasoned that (1) "the system claims are no different
from the method claims in substance"; (2) "[t ]he method claims recite the
abstract idea implemented on a generic computer"; and (3) "the system
claims recite a handful of generic computer components configured to
implement the same idea." Id. at 226.
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Here, the claimed generic computer-system components perform
"basic" functions that nearly every computer performs. See Br. 9-13
(Claims App.); see also Final Act. 3-5, 8; Ans. 4; Spec. ,r,r 5, 11, 22-23, 26,
45, 47. For instance, nearly every computer includes a processor for
manipulating data, a data bus for transferring data, and a memory for storing
data. Hence, the claimed generic computer-system components do not
satisfy the "inventive concept" requirement. See, e.g., Mortg. Grader, Inc.
v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)
(holding that "generic computer components such as an 'interface,'
'network,' and 'database"' did not satisfy the "inventive concept"
requirement); FairWarning, 839 F.3d at 1095-96 (describing the claimed
"microprocessor" and "user interface" as "generic computer elements");
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App'x 1014, 1016-17
(Fed. Cir. 2017) (describing the claimed "authentication server," "access
server," "Internet Protocol network," "client computer device," and
"database" as "indisputably generic computer components").
Appellants analogize the claims here to the claims in Amdocs. Br. 7-8
(citing Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016) ). Specifically, Appellants assert that "as with Amdocs, the claims of
the present application utilize a 'distributed architecture' to create a
meaningful result." Id. at 8. Appellants also assert that "the distributed
architecture of the present application includes the information handling
system executing within the social media environment, the repository of
social network advocacy data, the CRM system and the vendor's web site."
Id.
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Appellants misplace their reliance on Amdocs. There, the patents
concerned network components "arrayed in a distributed architecture" that
"collect[ed] and process[ed] data close to its source," and thus enabled "load
distribution" and reduced network congestion. Amdocs, 841 F.3d at
1291-92, 1300, 1303, 1306. The Federal Circuit decided that the claims
satisfied Mayo/Alice step two because they either (1) "entail[ ed] an
unconventional technological solution ... to a technological problem" that
required generic computer components to "operate in an unconventional
manner to achieve an improvement in computer functionality" or
(2) "recite[d] a technological solution to a technological problem specific to
computer networks-an unconventional solution that was an improvement
over the prior art." Id. at 1299-1306.
In contrast to the claims in Amdocs, the claims here do not achieve an
improvement in computer functionality or recite a technological solution to a
technological problem. See Final Act. 3-5, 8; Ans. 4, 6. Instead, as the
Examiner determines, the claims "specify what information it is desirable to
gather, analyze, and display but they do not include any requirement for
performing the claimed functions by use of anything but entirely
conventional, generic technology." Ans. 4. Consistent with that
determination, the Specification describes a "content collector" and "data
processing operations" as "familiar to those of skill in the art." Spec.
,r,r 3 3, 41. As the Examiner also determines, "the computer components
at each step of the process perform purely generic computer functions," and
"the claims do not introduce a technical advance or improvement." Final
Act. 4--5; Ans. 6.
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Appellants argue that the "claims are directed to novel and
non-obvious technology" and include an "inventive concept" that "has been
found to be both novel and non-obvious aside from the implementation on a
computer." Br. 5---6. That argument does not persuade us of Examiner error.
"The search for a § 101 inventive concept" differs "from demonstrating
§ 102 novelty." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016); see Diehr, 450 U.S. at 188-89; Symantec, 838 F.3d
at 1315 (same for obviousness). "[U]nder the Mayo/Alice framework, a
claim directed to a newly discovered" abstract idea "cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility." Genetic Techs. Ltd. v. Merial L.L. C., 818 F.3d 1369, 1376
(Fed. Cir. 2016). "[A] claim for a new abstract idea is still an abstract idea."
Synopsys, 839 F.3d at 1151 (emphasis in original). Further, the Federal
Circuit has expressly rejected the notion that abstract ideas satisfy § 101 "as
long as they are new ideas, not previously well known, and not routine
activity." Ultramercial, 772 F.3d at 714--16.
"Whether a combination of claim limitations supplies an inventive
concept that renders a claim 'significantly more' than an abstract idea to
which it is directed is a question of law." BSG Tech, 899 F.3d at 1290.
Given the claimed generic computer-system components that perform
generic computer functions, we conclude that the combination of limitations
in each independent claim does not supply an "inventive concept" that
renders the claim "significantly more" than an abstract idea. Thus, each
claim does not satisfy§ 101 under Mayo/Alice step two.
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Summary for Patent Eligibility
For the reasons discussed above, each independent claim fails to
satisfy§ 101 under Mayo/Alice step one and step two. Thus, we sustain the
§ 101 rejection of the independent claims. We also sustain the § 101
rejection of the dependent claims because Appellants do not argue eligibility
separately for them. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision to reject claims 1, 4--7, 10-13, and
16-20. 4
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
4 In the event of continued prosecution, the Examiner should consider (1) the
applicability of 35 U.S.C. § 112 ,r 6 to the limitations in the apparatus claims
and (2) whether under 35 U.S.C. § 112 ,r 2 the Specification discloses
adequate corresponding structure, e.g., a suitable algorithm, for
accomplishing each function recited in a limitation. See, e.g., Advanced
Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1349-50 (Fed. Cir.
2016); Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348-54 (Fed. Cir.
2015); EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616,
624 (Fed. Cir. 2015). Where a means-plus-function limitation recites two or
more functions, the specification "must disclose adequate corresponding
structure to perform all of the claimed functions." Media Rights Techs., Inc.
v. Capital One Fin. Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015) (emphasis
in original); see Williamson, 792 F.3d at 1351-52; see also Noah Sys., Inc. v.
Intuit Inc., 675 F.3d 1302, 1318-19 (Fed. Cir. 2012) (means-plus-function
limitation specifying two functions).
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