Ex Parte Zhu

Patent Trials and Appeals Board

Jun 20, 2019

13465555 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/465,555 05/07/2012 Joe Yunzhou Zhu
143177 7590 06/24/2019
Shook, Hardy & Bacon L.L.P.
(United Parcel Service, Inc.)
2555 Grand Blvd.
Kansas City, MO 64108-2613
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.
056182/416620 9808
EXAMINER
SHUI,MING
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE YUNZHOU ZHU
Appeal2018-003196
Application 13/465,555
Technology Center 3600
Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-18, which constitute all the claims pending in
this application. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is the United Parcel
Service of America, Inc. App. Br. 2.
Appeal2018-003196
Application 13/465,555
STATEMENT OF THE CASE2
Disclosed embodiments of Appellant's invention "provide methods,
apparatus, systems, computing devices, computing entities, and/ or the like
for providing items to consumers." Spec. ,r 2.
Exemplary Claim
1. A method for providing items to consumers,
the method comprising:
providing, by one or more processors, first data for
display to a first interface, wherein (a) the first data is
associated with an item for sale and (b) the first interface
causes display of the first data associated with the item for
sale;
after providing the first data for display to the first
interface, completing, by the one or more processors, a
first sales transaction selling the item to a first consumer,
the item to be transported by a carrier to a delivery location
of the first consumer using a first delivery service level;
detecting a first geographic region associated with
the delivery location of the first consumer;
determining, by the one or more processors, a
plurality of geographic regions through which the item is
to be transported in route to the delivery location and one
or more time periods in which the item is transferable in
the geographic regions;
responsive to completing the first sales transaction
selling the item to the first consumer, initiating, by the one
2 We herein refer to the Final Office Action, mailed March 15, 2017 ("Final
Act."); Appeal Brief, filed October 5, 2017 ("App. Br."); Examiner's
Answer, mailed December 5, 2017 ("Ans."); and the Reply Brief, filed Jan.
31, 2018 ("Reply Br.").
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or more processors, shipment of the item to be transported
by the carrier to the first consumer using the first delivery
service level;
indicating, by the one or more processors, the item
sold to the first consumer as being transferable to at least
one second consumer based in part on the processors
analyzing generated parameter indicator data indicating
the item as being transferable to the second consumer, and
the parameter indicator data comprising indicia (a)
indicating a delivery area associated with the delivery
location, of the first consumer, the delivery area denoting
the first geographic region, among the plurality of
geographic regions, in which the item is transferrable from
the first consumer to the second consumer in the detected
first geographic area comprising one or more detected
locations proximate to one or more first corresponding
hubs through which the item is transportable by a
delivery vehicle in route to the delivery location of the first
consumer and (b) indicating a first time period for which
the item is transferable to the second consumer;
detecting, by the one or more processors, that the
item is transferrable from the first consumer to one or
more other consumers in a detected second geographic
area, among the plurality of geographic regions,
comprising one or more detected locations proximate to
one or more second corresponding hubs through which the
item is currently being transported by the delivery vehicle
in route to the delivery location of the first consumer
during a second non-overlapping time period, relative to
the first time period, for which the item is transferable to
the other customers, wherein the first geographic area and
the second geographic area are non-overlapping;
providing, by the one or more processors, second
data for display to a second interface, wherein (a) the
second data is associated with the item and indicates (i)
that the item is transferrable, (ii) the delivery area
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associated with the delivery location of the first consumer,
and (iii) the time period for which the item is transferable,
and (b) the second interface causes display of the second
data indicating (i) that the item is transferrable, (ii) the
delivery area associated with the delivery location of the
first consumer, and (iii) the time period for which the item
is transferable;
after providing second data for display to the second
interface, completing, by the one or more processors, a
second sales transaction selling and transferring the item
to at least one of the other consumers after delivery of the
item, by the vehicle, has begun to the delivery location of
the first consumer and during the different time period for
which the item is transferable;
responsive to completing the second sales
transaction, automatically initiating a rerouting of the
item, transported via the delivery vehicle, from the first
consumer, within the different time period for which the
item is transferable, to the other consumer after delivery
of the item has begun to the delivery location of the first
consumer; and
responsive to completing the second sales
transaction, automatically initiating, by the one or more
processors, shipment of a replacement item to the first
consumer, the replacement item to be transported by the
carrier to the first consumer, using a second delivery
service level, for delivery by a designated latest delivery
date determined during the first sales transaction of the
item to the first consumer.
App. Br. 37--40 (Claims Appendix).
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Rejection
Claims 1-18 are rejected under 35 U.S.C. § 101, as being directed to a
judicial exception, without significantly more. Final Act. 4.
Issues on Appeal
Did the Examiner err in rejecting claims 1-18 under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejections, and the Examiner's responses to Appellant's
arguments. In our analysis below, we highlight and address specific findings
and arguments for emphasis.
Principles of Law-35 U.S.C. § 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[L Jaws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
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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. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). 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." (emphasis omitted)); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diehr, 450 U.S. at 193); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 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 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
Subject Matter Eligibility- 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). This
new guidance is applied in this opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a fundamental
economic practice or managing personal behavior or relationships or
interactions between people); 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)). 3
See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217-18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56 (emphasis added).
3 All references to the MPEP are to the Ninth Edition, Revision 08-201 7
(rev. Jan. 2018).
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Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes-concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity-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 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, "[ c ]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
( abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53.
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For example, limitations that are indicative of "integration into a
practical application" include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b );
3. Effecting a transformation or reduction of a particular
article to a different state or thing - see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception -
see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses
a computer as a tool to perform an abstract idea - see
MPEP § 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
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2019 Revised Guidance, Step 2A, Prong One 4
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and ( c) certain methods of organizing human activities.
Turning to independent claim 1, we observe the preamble recites: "A
method for providing items to consumers .... " (Emphasis added). Claim 1
further recites:
a first sales transaction selling the item to a first consumer
responsive to completing the first sales transaction selling the
item to the first consumer, initiating, by the one or more
processors, shipment of the item to be transported by the carrier
to the first consumer using the first delivery service level .. .
indicating ... the item sold . . . indicating a delivery area .. .
detecting ... that the item is transferrable from the first
consumer to one or more other consumers . . . completing ... a
second sales transaction selling and transferring the item to at
least one of the other consumers after delivery of the item, by
the vehicle, has begun to the delivery location of the first
consumer and during the different time period for which the
item is transferable ... and responsive to completing the second
sales transaction, automatically initiating ... shipment of a
replacement item to the first consumer.
Claim 1.
Appellant's claimed and described invention enables the "first
customer" who opts for a transferrable shipment to save money on the
shipping. See Claim 1; see also Spec. ,r 42: "In one embodiment, as an
4 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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incentive for using a transferable shipping option, the transferable shipping
level/option may be provided at a reduced shipping rate, such as receiving
50% off the normal shipping rate if his or her item is transferred." We
conclude saving money on shipping in a purchase transaction is a
fundamental economic practice. See e.g., Spec. ,r 38. 5
Thus, we conclude claim 1 recites an abstract idea, i.e., certain
methods of organizing human activities - a fundamental economic practice:
a location-based transferrable shipping system that falls into the abstract idea
subcategories of sales activities and commercial interactions. See 2019
Revised Guidance, 84 Fed. Reg. at 52.
Moreover, we conclude the various "providing" "detecting"
"determining" "initiating" and "indicating" steps of claim 1 recite shipping-
related transactional features to facilitate the delivery (including a
transferrable delivery) of an item sold to a consumer.
We conclude the additional non-abstract limitations recited in claim 1
are the first and second consumers (persons), the generic "one or more
processors," "a carrier," "a delivery vehicle," and the first and second
interfaces for displaying the sales transaction data. Claim 1. See 2019
Revised Guidance, 84 Fed. Reg. at 52.
We note remaining independent claims 6 and 11 recite similar
language of commensurate scope that we conclude also falls into the abstract
idea category of a fundamental economic practice, including the abstract
5 See Spec. ,r 38: "In one embodiment, via the transferable shipping
levels/options, purchased items being transported by a carrier can be re-
routed after shipment to a different consumer than the consumer who
originally purchased the item. In such a case, the retailer can then send the
original consumer a replacement item." (emphasis added).
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idea subcategories of sales activities and commercial interactions. Id.
Similar to independent claim 1, independent claim 6 recites the additional
non-abstract limitations of a generic "apparatus comprising at least one
processor and at least one memory." Similar to independent claims 1 and 6,
independent claim 11 recites the additional non-abstract limitations of a
generic "computer program product for providing items to consumers, the
computer program product comprising at least one non-transitory computer-
readable storage medium."
Because we conclude all claims on appeal recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two.
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Further pursuant to the 2019 Revised Guidance, we consider whether
the additional elements recited in the claims integrate the judicial exception
into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at
54--55. We have identified supra the additional non-abstract elements
recited in independent claims 1, 6, and 11.
Under MPEP § 2106.05(a) ("Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field"), Appellant
contends:
claims 1-18 are not directed to a fundamental economic practice
long prevalent in our system of commerce-" building block[s]
of the modem economy." Id. Rather, claims 1-18 are directed to
technical solutions in the fields of geolocation detection, travel
route generation and user interface technology.
Appeal Br. 24.
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In support, Appellant recites the claim language and cites to McRO
and Enfish in support. See App. Br. 24--26.
We find Appellant's reliance on McRO is misplaced. 6 For example,
McRO 's '576 patent (U.S. Patent No. 6,307,576) describes computer
software for matching audio to a 3D animated mouth movement to provide
lip-synced animation. McRO 's claims contain (i) specific limitations
regarding a set of rules that "define[] a morph weight set stream as a
function of phoneme sequence and times associated with said phoneme
sequence" to enable computers to produce "'accurate and realistic lip
synchronization and facial expressions in animated characters'" (McRO, 837
F.3d at 1313) and, when viewed as a whole, are directed to (ii) a
"technological improvement over the existing, manual 3-D animation
techniques" that uses "limited rules in a process specifically designed to
achieve an improved technological result in conventional industry practice."
McRO, 837 F.3d at 1316.
In contrast to McRO, "indicating, by the one or more processors, the
item sold to the first consumer as being transferable to at least one second
consumer" ( claim 1) (Spec. ,r 38) does not improve the processor or
computer functionality. Nor do we find any technological solution to the
method for providing items to consumers, because if the first shipment is
transferred during delivery from the first customer to a second customer, the
method still requires a "replacement item to be transported by the carrier to
the first consumer, using a second delivery service level, for delivery by a
6 See McRo, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016).
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designated latest delivery date determined during the first sales transaction
of the item to the first consumer." Claim 1.
At best, the first customer who opts for a transferrable shipment (at a
reduced shipping rate) saves money on the cost of shipping - which is a
fundamental economic practice that falls into the subcategories of sales
activities and commercial interactions. See 2019 Revised Guidance, 84 Fed.
Reg. at 52. We note "a claim for a new abstract idea is still an abstract
idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) ( emphasis added).
Regarding Enfish, the court held at Alice step one the subject claims
were "not directed to an abstract idea within the meaning of Alice." Enfish,
LLC v. Microsoft Corp., 822 F3d 1327, 1336 (Fed. Cir. 2016). The court
concluded the subject claims were directed to "a specific improvement to the
way computers operate, embodied in the self-referential table." (emphasis
added). Id.
We emphasize that the self-referential database table considered by
the Enfish court was found to be a type of data structure that was specifically
designed to improve the way a computer stores and retrieves data in
memory. Id. at 1339. Because the Enfish court found the claimed self-
referential database table improved the way the computer stored and
retrieved data, the court concluded the Enfish claims were not directed to an
abstract idea, and thus ended the analysis at Alice step one. Id. at 1336.
Here, Appellant has not shown that any of the features of the claims
before us on appeal improve the way the recited generic computer
components (including memory - Spec. ,r,r 20-21) store and retrieve data,
in a manner analogous to that found by the Enfish court. See Appellant's
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independent claims 1, 6, and 11. Moreover, Appellant's claims 1-18 are
silent regarding any mention of a database, must less any mention of a
database storage device that includes a self-referential database table of the
type found by the Enfzsh court to improve the way a computer stores and
retrieves data in memory.
Regarding the recited additional generic limitations recited in
independent claims 1, 6, and 11, we tum to the Specification for support and
find exemplary, non-limiting descriptions of generic computer memory (i1i1
13-14), and computing devices:
As should be appreciated, various embodiments of the present
invention may also be implemented as methods, apparatus,
systems, computing devices, computing entities, and/or the
like. As such, embodiments of the present invention may take
the form of an apparatus, system, computing device, computing
entity, and/or the like executing instructions stored on a
computer-readable storage medium to perform certain steps or
operations. However, embodiments of the present invention
may also take the form of an entirely hardware embodiment
performing certain steps or operations.
Spec. ,r 15.
Given the extensive description of the use of generic computer
components in the Specification (id.), we agree with the Examiner:
the claims, when considered both individually and as a whole
do not recite "significantly more" than the abstract idea because
the claims merely utilize generic computing functions related to
receiving, processing and sending data without more.
Final Act. 2.
We note McRO also guides: "[t]he abstract idea exception prevents
patenting a result where 'it matters not by what process or machinery the
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result is accomplished."' 837 F.3d at 1312 (quoting O'Reilly v. Morse, 56
U.S. 62, 113 (1854)) ( emphasis added).
MPEP § 2106.05(b) Particular Machine
MPEP § 2106.05(c) Particular Transformation
Appellant advances no arguments applying the Bilski machine-or-
transformation test to any claims on appeal. Nor on this record has
Appellant established that the recited generic computer components are
"particular" machines under MPEP § 2106.05(b). Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
MPEP § 2106.05(e) "Other Meaningful Limitations."
Appellant contends the claims provide "meaningful limitations
beyond generally linking the use of an abstract idea to a particular
technological environment." App. Br. 29. In support, Appellant recites the
claim limitations and assert:
Providing an efficient and reliable mechanism for a specifically
configured apparatus to perform detection of geographic areas
comprising detected locations proximate to corresponding hubs
through which items are transported by a delivery vehicle for
automatic rerouting of the items through other detected
geographic areas, when the item is transferable between
consumers, after initial delivery of the item has begun, as per
claims 1-18 adds a specific limitation ... [that] provides
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment, and/or
provides improvements to a technical field.
App. Br. 31 ( emphasis added).
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However, as emphasized above, we conclude Appellant's recited
computer, processor, and memory components are merely generic computer
components. See e.g., Spec. ,r,r 13-15, 19, 20-21.
As discussed above, the first customer who opts for a transferrable
shipment ( at a reduced rate) saves money on the shipping. See Claim 1;
Spec. ,r 42. We conclude saving money on shipping in a purchase
transaction is a fundamental economic practice. We note an improved
abstract idea is still an abstract idea. See Synopsys, 839 F .3d at 1151.
Nor do the claims present any other issues as set forth in the 2019
Revised Guidance regarding a determination of whether the additional
generic elements integrate the judicial exception into a practical application.
See Revised Guidance, 84 Fed. Reg. at 55. Rather, we conclude the claims
on appeal merely use instructions to implement an abstract idea on a
computer, or merely use a computer as a tool to perform an abstract idea. Id.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a}-(c) and (e}-
(h)), we conclude claims 1-18 do not integrate the judicial exception into
a practical application. Therefore, we proceed to Step 2B, The Inventive
Concept.
The Inventive Concept - Step 2B
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)); or, simply appends
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well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
BASCOM
Under Step 2B, we find Appellant's analogy to BASCOM 7 is
unavailing. App. Br. 16-17. The Federal Circuit held in BASCOM that the
claimed Internet content filtering, which featured an implementation
"versatile enough that it could be adapted to many different users'
preferences while also installed remotely in a single location," expressed an
inventive concept in "the non-conventional and non-generic arrangement of
known, conventional pieces." BASCOM, 827 F.3d at 1350 (emphasis
added).
Here, Appellant has not shown a non-conventional arrangement
regarding the generic (known, conventional) recited computer, processor,
and memory components. See independent claims 1, 6, and 11. Therefore,
it is our view that Appellant's claims do not involve any improvements to
another technology, technical field, or improvements to the functioning of
the computer or network, as was seen by the court in Bascom.
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
The Examiner's Answer was mailed on December 5, 2017, and
Appellant filed a Reply Brief on January 31, 2018. We note Berkheimer was
decided by the Federal Circuit on February 8, 2018. On April 19, 2018, the
7 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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Application 13/465,555
PTO issued the Memorandum titled: "Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memorandum"). 8
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements ( or a
combination of elements) are well-understood, routine, or conventional. In
reviewing the prosecution history, we recognize that the Appellant has not
yet had an opportunity to advance arguments based upon the change in the
law effected by Berkheimer. Thus, Berkheimer (881 F.3d at 1369) and the
USPTO Berkheimer Memorandum are intervening authorities.
However, regarding the use of the generic (known, conventional)
recited computer, processor, and memory components (independent claims
1, 6, and 11) the Supreme Court has held "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 573 U.S. 208, 223. Our reviewing court provides
additional guidance, including in FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) ("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"), and OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims
reciting, inter alia, sending messages over a network, gathering statistics,
using a computerized system to automatically determine an estimated
outcome, and presenting offers to potential customers found to merely recite
8 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
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Application 13/465,555
"'well-understood, routine conventional activit[ies]'" by either requiring
conventional computer activities or routine data-gathering steps (alteration
in original, internal citation omitted)).
This guidance is applicable here. Therefore, we agree with the
Examiner:
the claims, when considered both individually and as a whole
do not recite "significantly more" than the abstract idea because
the claims merely utilize generic computing functions related to
receiving, processing and sending data without more.
Final Act. 2.
Accordingly, on the record before us, we are not persuaded that
claims 1-18 add any specific limitation, beyond the judicial exception, that
is more than what was "well-understood, routine, and conventional" in the
field (see MPEP § 2106.05(d)).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellant's claims 1-18, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the Examiner's
Rejection A under 35 U.S.C. § 101 of claims 1-18. 9
CONCLUSION
The Examiner did not err in rejecting claims 1-18 under 35 U.S.C.
§ 101, as being directed to a judicial exception, without significantly more.
9 To the extent that Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
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DECISION
We affirm the Examiner's decision rejecting claims 1-18 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)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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