Ex Parte Trabelsi et al

Patent Trial and Appeal Board

May 22, 2017

13471078 (P.T.A.B. May. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/471,078 05/14/2012 SlimTrabelsi 0010-137001/2011P00548US 4550
56056 7590 05/24/2017
BRAKE HUGHES BELLERMANN LLP
C/O CPA Global
900 Second Avenue South
Suite 600
MINNEAPOLIS, MN 55402
EXAMINER
PATEL, RONAK
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
05/24/2017 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):
uspto@brakehughes.com
docketing@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SLIM TRABELSI, MICHELE BEZZI, and
GILLES MONTAGNON
Appeal 2017-000059
Application 13/471,07s1
Technology Center 2400
Before THU A. DANG, JAMES W. DEJMEK, and
SCOTT E. BAIN, Administrative Patent Judges.
Opinion for the Board filed by DEJMEK, Administrative Patent Judge.
Opinion dissenting filed by BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—6, 8—12, 14, 15, and 17—21.2 Claims 7, 13, and 16 have been
1 Appellants identify SAP SE as the real party in interest. App. Br. 1.
2 In the Claims Appendix, Appellants include claims 22 and 23, indicating
such claims are “New.” App. Br. 26—27. Additionally, in the Appeal Brief,
Appellants include claims 22 and 23 in the Summary of Claimed Subject
Matter and also include claim 22 in the arguments presented. See, e.g., App.
Br. 5, 11, 15, and 18. We are not apprised that an Amendment after Final
Rejection was allowed and entered by the Examiner. Further, we note the
Final Rejection from which this appeal is taken only relates to claims 1—6,
Appeal 2017-000059
Application 13/471,078
canceled. App. Br. 23—25. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants’ claimed invention is directed to reputation management.
Spec. 11. According to the Specification, an issue with conventional
reputation systems is that “consumers are more likely to provide positive
feedback than negative feedback,” resulting in reputation scores that are
skewed overly-high. Spec. 14. Thus, Appellants’ claimed invention
monitors interactions between at least one service provider and at least one
service consumer to extract negative feedback from the at least one service
consumer’s interactions. Spec. 17. In response to receiving negative
feedback, Appellants’ claimed invention (i.e., a reputation engine) will
decrease the reputation score of the at least one service provider. Spec. 17.
Additionally, the reputation score may increase over time in accordance with
a determined growth rate. Spec. 1 7.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. A system including instructions recorded on a non-
transitory computer readable storage medium and executable by
at least one processor, the system comprising:
an evidence monitor configured to cause the at least one
processor to monitor network interactions between at least one
service provider and at least one service consumer during a time
8—12, 14, 15, and 17—21. Accordingly, we do not treat newly added claims
22 and 23 as being properly before the Board.
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Application 13/471,078
period and related to a service provided by the service provider
over at least one computer network, to thereby extract interaction
characteristics characterizing the network interactions from one
or more databases, and further configured to cause the at least
one processor to receive negative feedback from the at least one
service consumer regarding a corresponding interaction of the
network interactions; and
a reputation engine configured to cause the at least one
processor to increase a reputation score of the at least one service
provider during the time period in accordance with a growth rate,
and calculated based on the interaction characteristics, as the
network interactions occur during the time period, and further
configured to cause the at least one processor to decrease the
reputation score of the at least one service provider in response
to the negative feedback and in accordance with a negative
feedback response characteristic,
wherein the reputation score reflects a cumulative
reputation of the service provider with respect to a
trustworthiness of the service provider in providing the service
to the at least one service consumer, and wherein the reputation
engine is configured to calculate the reputation score within a
range of minimum and maximum values, including
automatically increasing the reputation score over time in the
absence of negative feedback.
The Examiner’s Rejection
Claims 1—6, 8—12, 14, 15, and 17—21 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 2-4.
Issue on Appeal
Did the Examiner err in finding Appellants’ claimed invention is
directed to an abstract idea and the recited claim limitations do not provide
meaningful limitations to transform the abstract idea into patent-eligible
subject matter?
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ANALYSIS3
Appellants dispute the Examiner’s finding that the pending claims are
directed to patent-ineligible subject matter under 35 U.S.C. § 101. App.
Br. 9—11; Reply Br. 3^4. In particular, Appellants assert the Examiner failed
to make an evidentiary showing to establish a prima facie case of
ineligibility. App. Br. 9—11. Further, Appellants argue the Examiner’s
finding that the Appellants’ invention amounts to no more than an abstract
idea is not reasonably tied to the facts of the case and/or improperly expands
the concepts as to what the courts have identified as being abstract ideas.
App. Br. 9-11; Reply Br. 3^4.
Contrary to Appellants’ assertions, neither Alice Corp. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014), nor the Board’s holdings in PNC Bankv.
Secure Axcess, LLC, Case No. CBM2014-00100 (PTAB Sept. 9, 2014) or Ax
Parte Renald Possion, Appeal No. 2010-011084 (PTAB Feb. 27, 2015),
stands for the proposition that Examiners must provide evidentiary support
in every case before a conclusion can be made that a claim is directed to an
abstract idea. There is no such requirement. See, e.g., para. IV “July 2015
Update: Subject Matter Eligibility” to 2014 Interim Guidance on Subject
Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) (“The
courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
3 Throughout this Decision, we have considered the Appeal Brief, filed
January 15, 2016 (“App. Br.”); the Reply Brief, filed September 23, 2016
(“Reply Br.”); the Examiner’s Answer, mailed July 25, 2016 (“Ans.”); and
the Final Office Action, mailed February 20, 2015 (“Final Act.”), from
which this Appeal is taken.
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claimed) to be a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings.”) (Emphasis added). Further, the Office did not change the
standard in the May 4, 2016 Memorandum, Formulating a Subject Matter
Eligibility Rejection and Evaluating the Applicant’s Response to a Subject
Matter Eligibility Rejection. Evidence may be helpful in certain situations
where, for instance, facts are in dispute. However, it is not always
necessary. It is not necessary in this case.
Additionally, the Federal Circuit has repeatedly noted that “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)). The
court has, thus, held that the USPTO carries its procedural burden when its
rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, “together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011). Thus, all that is required of the Office is that it set forth the
statutory basis of the rejection, and the reference or references relied on, in a
sufficiently articulate and informative manner as to meet the notice
requirement of § 132. Jung, 637 F.3d at 1362; see also Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.”).
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The Supreme Court reiterated the framework set out in Mayo
Collaborative Services, v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012),
for “distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. If
a claim falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially-recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
If so, the second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception.
Here, the Examiner has analyzed sufficiently the pending claims using
the Mayo two-step framework, in accordance with the Office’s guidance for
determining subject matter eligibility.
On their face, independent claims 1,11, and 14 fall within one of the
statutory categories of patent eligibility. Claim 1 is directed to a system;
claim 11 is directed to a method (i.e., process); and claim 14 is directed to a
product. Additionally, we note the claim language further modifies the
computer-readable medium as being “non-transitory.”
Although broadly falling within the statutory categories of patent
eligibility, the Examiner finds the claims are directed to one of the
judicially-recognized exceptions. See Final Act. 2-4; Ans. 3—10. In
particular, the Examiner finds Appellants’ claimed invention is directed to
the abstract idea of “a reputation algorithm for a business/service.” Final
Act. 3. Additionally, the Examiner finds this determination applies to all of
the pending claims and that the additional elements recited “amount(s) to no
more than: monitoring user activity which helps to build a more healthy
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Application 13/471,078
reputation algorithm using the additional data which signifies [the] idea
of reputation calculation.” Final Act. 3.
In particular, the Examiner explains the claimed reputation engine is
merely configured to increase and/or decrease a reputation score with a
growth rate based upon interactions occurring over a time period. Final
Act. 3; Ans. 3^4. The Examiner further finds the calculation and updating
of a reputation score using a computer processor to perform its basic
functions do not render the concept any less abstract. Final Act. 3; Ans. 7.
Appellants dispute the claims are “directed to” calculating or
increasing a reputation score. Reply Br. 5. Rather, Appellants assert the
claims provide an “automated technique for collecting network data and
executing a physical transformation thereof to obtain a desired result.”
Reply Br. 5.
Appellants’ claimed invention is directed to “reputation
management.” Spec. 11. According to the Specification, an issue with
conventional reputation systems is that “consumers are more likely to
provide positive feedback than negative feedback,” resulting in reputation
scores that are skewed overly-high. Spec. 14. Thus, Appellants’ claimed
invention monitors interactions between at least one service provider and at
least one service consumer to extract negative feedback from the at least one
service consumer’s interactions. Spec. 17. In response to receiving
negative feedback, Appellants’ claimed invention (i.e., a reputation engine)
will decrease the reputation score of the at least one service provider. Spec.
17. Additionally, the reputation score may increase over time in accordance
with a determined growth rate. Spec. 17.
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Application 13/471,078
As claimed, an “evidence monitor” monitors network interactions
(i.e., the exchange of messages/data) between at least one service provider
and at least one service consumer to identify and extract interactions
indicative of negative feedback from the at least one service consumer. The
claims further recite a “reputation engine” that will decrease a reputation
score in accordance with the receipt of negative feedback or increase the
reputation score at a specified growth rate. Additionally, the reputation
score is bounded by minimum and maximum values.
Our reviewing court has said that abstract ideas include “collecting
information, including when limited to particular content.” Elec. Power
Grp., LLC v. Alstrom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Further,
“merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Elec. Power, 830 F.3d at 1354. Here, the claims are merely directed to steps
of collecting information, analyzing the information, and using the results to
compute a “reputation score,” which represents the cumulative result of the
analyzed information, countered by a time-based growth rate and, thus,
recites an abstract idea.
With respect to the second step of the Alice analysis, the Examiner
does not find claims 1,11, and 14 recite an inventive concept which
transforms the abstract algorithm into a patent eligible invention. Final
Act. 3-A; Ans. 4, 7—10; see also Alice, 134 S. Ct. at 2357 (“[W]e 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. A claim that recites an abstract idea must
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Application 13/471,078
include ‘additional features' to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].”’ (Internal
citations omitted)). Additionally, “the use of generic computer elements like
a microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter.” FairWarning IP, LLC, v.
Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR
Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)).
In particular, the Examiner finds that “[analyzing the claim as whole
for an inventive concept,” the claims are simply a generic recitation of a
computer processor and a reputation engine performing their basic functions.
Final Act. 3. The Examiner further notes the determined result (i.e., the
reputation) is not applied in any way or, more importantly, “is not being
applied to improve a technology field, improve the performance of a
computer, or any other particular machine or practical application.” Final
Act. 3. Additionally, the Examiner explains the recited computer functions
are well-understood, routine and conventional activities previously known to
the industry. Ans. 7. Also, the Examiner finds the additional elements or
combination of elements, as recited in the dependent claims “do not provide
meaningful limitation(s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts to
significantly more than the abstract idea itself.” Ans. 8—10.
Each of claims 1,11, and 14, recites a non-transitory computer-
readable medium containing instructions to execute monitoring
communications (i.e., interactions) between a service provider and a service
consumer and identifying negative feedback from the consumer to the
provider and updating a reputation score accordingly. Thus, the claims
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generically recite computing equipment that performs the recited algorithm
and which is insufficient to transform the nature of the claim into a patent-
eligible application. See Final Act. 3.
Similarly, we agree with the Examiner that the dependent claims do
not transform the nature of the claims into patent-eligible subject matter.
See Final Act. 3^4; Ans. 7—10. For instance, dependent claims 2, 3, 6, 8, 9,
and 21 merely relate to a mathematical formula to be applied to the
calculation of a reputation score (e.g., a redemption rate (claims 2 and 3), the
applicable time period for using the extracted negative feedback (claim 6),
the weighting of the various parameters (claims 9 and 10), and the
parameters used in determining a reputation score (claim 21)). Claim 10
outputs the reputation score upon request by the user and claims 4 and 5
merely recite the interactions examined (claim 4) and which process (i.e., the
evidence monitor) calculates the negative feedback and provides the result to
another process (i.e., reputation engine). These limitations are similarly
recited in dependent claims 12, 15, and 17—20. Contrary to Appellants’
assertions (see App. Br. 14—15), we agree with the Examiner and do not find
the recited steps recite a physical transformation of data or recite meaningful
limitations beyond generally linking the use of an abstract idea to the field of
reputation management sufficient to transform the nature of the claims into
patent-eligible subject matter.
Additionally, Appellants assert if the pending claims were granted,
“their scope would not broadly pre-empt, and there would be substantial
non-infringing uses of, the field of ‘a reputation algorithm for a business
service.’” App. Br. 14. Although Appellants concede the Examiner’s
analysis is consistent with USPTO Guidelines (referencing the May 2016
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Application 13/471,078
Memorandum), Appellants argue the Guidelines are inconsistent with the
overall eligibility inquiry and superseded by intervening case law. Reply
Br. 10. We disagree.
“[Wjhile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
FairWarning IP, 829 F.3d at 1098 (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert,
denied, 136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”). Further, “[wjhere a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379. Further,
Appellants’ reliance on McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016) (see Reply Br. 8—13) does not compel a different
result.
In McRO, the court held the claims were not directed to an abstract
idea, but rather to a specific asserted improvement in computer animation.
McRO, 837 F.3d at 1314. There, the court distinguished the traditional
process of subjective determinations of human animators from the newly
claimed method of applying specific, limited mathematical rules to achieve a
similar result (i.e., realistic animations of facial expressions for lip-
synchronization). McRO, 837 F.3d at 1313—16.
However, in FairWarning IP (decided after McRO), the court found
“FairWarning’s claims merely implement an old practice in a new
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environment.” FairWarning IP, 829 F.3d at 1094. In particular, the court
found FairWarning’s use of a computer, rather than the claimed rules,
improved the existing process by allowing the automation of tasks.
FairWarning IP, 829 F.3d at 1094—95. Additionally, the court found the
“lack of preemption does not save these claims.” FairWarning IP, 829 F.3d
at 1098 (citing Ariosa, 788 F.3d at 1379).
Accordingly, contrary to Appellants’ assertions, we find the
Examiner’s analysis is consistent with both USPTO Guidelines and current
case law.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 101 as not being directed to patent-eligible
subject matter. For similar reasons, we also sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claims 11 and 14, which recite similar
limitations. Additionally, for the reasons discussed supra with regard to
dependent claims 2—6, 8—10, 12, 15, and 17—21, we sustain the Examiner’s
rejection under 35 U.S.C. § 101 of these claims.
DECISION
We affirm the Examiner’s decision rejecting claims 1—6, 8—12, 14, 15,
and 17—21 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SLIM TRABELSI, MICHELE BEZZI, and
GILLES MONTAGNON
Appeal 2017-000059
Application 13/471,078
Technology Center 2400
Before THU A. DANG, JAMES W. DEJMEK, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge, dissenting.
DISSENTING OPINION
I respectfully dissent from the Majority’s decision affirming the
Examiner’s rejection of claims 1—6, 8—12, 14, 15, and 17—21 under
35 U.S.C. § 101.
The Examiner finds “the recited steps of [claim 1] describe ‘calculate
the reputation score’ and [therefore] this is an abstract idea that is not
meaningfully different than the abstract ideas drawn to economic concepts
identified in Alice, Bilski, and Fort Properties.'” Ans. 3^4 (emphasis added);
see also Final Act. 3 (the claims “are directed to the abstract idea of a
reputation algorithm for a business/service”). These cursory findings appear
to be the extent of the Examiner’s analysis under the first step in the two-
step framework reiterated in Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134 S.
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Application 13/471,078
Ct. 2347 (2014) for determining whether a claim is directed to ineligible
subject matter.
Under Alice, the first step in the analysis is to “determine whether the
claims at issue are directed to” one of the “patent-ineligible concepts,”
namely, “laws of nature, natural phenomena, and abstract ideas.” Id. at
2355. Importantly, regarding the first step, we do not “simply ask whether
the claims involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim . . . involves a law of nature and/or natural
phenomenon” or abstract idea at some level, but rather we ask whether each
“claim[], considered in light of the specification ... as a whole is directed to
excluded subject matter.” Enfish, LLC v. Microsoft Corporation, 822 F.3d
1327, 1335 (Fed. Cir. 2016) (emphasis added). If the Examiner has not
established a prima facie case as to the first step (i.e., that the claims are
directed to an abstract idea) then we do not reach the second step of the Alice
framework.4
I am persuaded by Appellants’ argument that the Examiner’s “generic,
conclusory statement of [claim 1] not being meaningfully different” from the
(uncited) claims in Alice, Bilski and Fort Properties, Ans. 4, “could be made
in any [§] 101 rejection” and is not sufficiently “tied to the facts [and claims
of this] case.” Reply Br. 4. Claim 1, for example, does not simply recite the
general concept of “calculating] a reputation score” as the Examiner
4 The second step in the Alice analysis is to consider the elements of the
claims “individually and ‘as an ordered combination’ to determine whether
the additional elements transform the nature of the claim into a patent-
eligible application.” Enfish, LLC, 822 F.3d at 1334. The Examiner’s
findings on the record before us, as well as the Majority Opinion, tend to
focus on this second step.
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concludes, Ans. 4, unless one reduces the lengthy claim to such a high level
of abstraction that the first part of the Alice test essentially is rendered moot.
SeeEnfish, LLC, 822 F.3d at 1334—1335 (Although “[t]he Supreme Court
has not established a definitive rule to determine what constitutes an
‘abstract idea’ sufficient to satisfy the first step of the Mayo/Alice inquiry . . .
the first step in the inquiry is a meaningful one”); Alice Corp. Pty. Ltd., 134
S.Ct. at 2354 (“[W]e tread carefully in construing this [abstract idea]
exclusionary principle lest it swallow all of patent law.”). Moreover, “an
invention is not,” the Supreme Court has cautioned, “rendered ineligible for
patent simply because it involves an abstract concept.” Id. (emphasis
added).
Claim 1, rather, recites a system that invokes a concrete application of
elements, including interactions of particular network components in
particular, concrete ways utilizing particular timing, with concrete results.
See supra Maj. Op. at 2—3 (claim 1). Appellants’ Specification further
explains that the claims are directed to improving “accuracy],”
“efficiency],” and “scalabfility/” of prior (computer-based) systems used by
service providers to obtain feedback from their customers, not merely the
abstract concept of calculating a score. Spec. 1—2 (emphasis added); see
Enfish, LLC, 822 F.3d at 1335 (claims are to be “considered in light of the
specification” to determine whether they are “directed to excluded subject
matter”) (citing Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015). Appellants’ claimed invention further is
directed to addressing the inaccuracies and errors in the aforementioned
computer systems caused by the use of “automated software agents” or
“bots.” Spec. 1—2; Enfish, LLC, 822 F.3d at 1335 (“whether the claims are
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directed to an improvement to computer functionality versus being directed
to an abstract idea” is relevant “even at the first step of the Alice analysis”).5
The fact that Appellants’ invention results in (among other things) the
manipulation of data, including a reputation score, does not render it
ineligible subject matter. See McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299, 1307-08, 1314—15 (Fed. Cir. 2016) (claim directed to
method for manipulating digital animation data is not an “abstract idea”).
Like claim 1 in McRO, Appellants’ claim 1 does not broadly recite the
“result” of adjusted data, but a system and rules for accomplishing it, and the
dependent claims add further such elements. See McRO, Inc., 837 F.3d at
1314—16; see also Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348-49 (Fed. Cir. 2016) (contrasting mere “methods
of organizing human activity” with implementations of such methods that
include “improvement in computer capabilities,” and “defer[ring]” the
“close call” of whether the claimed “filtering scheme” implemented on a
network satisfied Alice step one).
In my view, the record before us lacks sufficient explanation and
support for the Examiner’s conclusion that claim 1, let alone any of the other
claims on appeal not discussed by the Examiner, is abstract. See “July 2015
Update: Subject Matter Eligibility” to 2014 Interim Guidance on Subject
5 The mere “abstract idea of calculating a score” is, by contrast, illustrated
by considering dependent claim 9 hypothetically without the limitations of
its base claim 1. Claim 9 recites “increas[ing] the reputation score based on
the equation
in which r represents the reputation score . . . .” App. Br. 23 (Claims App.);
cf. Diamond v. Diehr, 450 U.S. 175, 188—189 (1981).
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Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) at 6
(Examiner must provide “reasoned rationale” that “clearly articulates] the
reason(s)” the claims are abstract); see also “Memorandum: Formulating a
Subject Matter Eligibility Rejection and Evaluating the Applicant’s
Response to a Subject Matter Eligibility Rejection” (May 4, 2016) at 1 (“the
rejection should identify the abstract idea as it is recited. . . and explain why
it corresponds to a concept that the courts have identified as an abstract
idea”) (emphasis added). Independent claims 11 (method) and 14 (computer
program product) differ from claim 1 yet, on the record before us, the
Examiner does not address these claims separately, nor does the Examiner
address any of the additional limitations recited in any of the dependent
claims. See id. at 2 (“the eligibility of each claim should be evaluated as a
whole using the [Alice] two-step analysis detailed in the Interim Eligibility
Guidance”) (emphasis added). Rather, as Appellants argue, the record
before us simply includes “a blanket rejection under 35 U.S.C. § 101 for all
pending claims.” App. Br. 4; Final Act. 2.
Although the Majority Opinion goes well beyond the Examiner’s
findings and analysis on the record before us, in my view even the additional
analysis by the Majority does not satisfy step one of Alice, for the reasons set
forth above. I would return the focus in this case to whether these claims are
novel and nonobvious (and satisfy the other statutory requirements), for the
Examiner to determine in the event of further prosecution.6
6 The Examiner previously withdrew anticipation and obviousness rejections
in favor of the present (perhaps more expedient) § 101 rejection shortly after
the Alice decision was rendered. See Non-final Office Act. (July 28, 2014).
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Accordingly, I would reverse the Examiner’s rejection under
35U.S.C. § 101.
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