Exhaustless, Inc.

Patent Trials and Appeals Board

Feb 8, 2022

2021002784 (P.T.A.B. Feb. 8, 2022)

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. 15/789,585 10/20/2017 Steven P. Endres 087851-8004.US02 2574 22918 7590 02/08/2022 PERKINS COIE LLP - PAO General P.O. BOX 1247 SEATTLE, WA 98111-1247 EXAMINER TUNGATE, SCOTT MICHAEL ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 02/08/2022 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): patentprocurement@perkinscoie.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN P. ENDRES ____________ Appeal 2021-002784 Application 15/789,585 Technology Center 3600 ____________ Before JAMES P. CALVE, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 4-7, 10-21, and 23-25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed November 30, 2020) and Reply Brief (“Reply Br.,” mailed March 22, 2021), and the Examiner’s Answer (“Ans.,” January 21, 2021) and Non- Final Office Action (“Non-Final Act.,” mailed September 1, 2020). Appellant identifies Exhaustless, Inc. as the real party in interest (Appeal Br. 3). Appeal 2021-002784 Application 15/789,585 2 CLAIMED INVENTION The Specification states, “[t]he present application is related to data management systems, and more specifically to methods and systems of integrated management of disparate data from isolated data sources” (Spec. ¶ 2). Claims 1, 15, and 20 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A method for managing air traffic in a coordinated airspace near a set of airports comprising: [(a)] retrieving a dataset, indicative of past aircraft takeoff/landing events of an airport, and the dataset further indicative of tickets available for one or more aircraft flights, wherein the past aircraft takeoff/landing events include instructions indicative of an aircraft coordination order associated with a specific runway or taxiway of the airport, a specific set of past passengers, and an associated aircraft; [(b)] isolating portions of the dataset indicative of a first time period within a threshold range of the past aircraft takeoff/landing events, the isolated portions of the dataset further indicative of aircraft taxi time data within the dataset associated with a volume cause label, thereby generating a modified dataset; [(c)] predicting a congestion delay, based on the modified dataset, for each of a set of takeoff/landing events of a first set of aircraft within a future time period that corresponds in repeating time structures to the first time period, wherein the predicted congestion delay is separate from an unimpeded taxi time; Appeal 2021-002784 Application 15/789,585 3 [(d)] selecting a congestion delay target for the set of aircraft takeoff/landing events, the congestion delay target is less than the predicted congestion delay, wherein the congestion delay target is within a pre-determined range, wherein the predetermined range is based on resulting yield loss from reducing scheduled aircraft flights for the first aircraft takeoff/landing event and an estimated passenger time utility for a plurality of passengers; [(e)] identifying a first scheduled aircraft takeoff/landing event of a first aircraft of the set of aircraft takeoff/landing events having the greatest deviation from the congestion delay target; and [(f)] based on the congestion delay target, shifting the first scheduled aircraft takeoff/landing event of the first aircraft to a new time outside of the future time period, wherein an airport congestion delay is reduced. REJECTIONS Claims 15-19 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1, 2, 4-7, 10-21, and 23-25 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.2 ANALYSIS Non-Statutory Subject Matter We are not persuaded by Appellant’s argument that the Examiner erred in rejecting claims 15-19 as directed to non-statutory subject matter (Appeal Br. 5-6). The preamble of independent claim 15 reads, in part, “[a] computer- readable storage medium storing instructions that, when executed by a 2 For purposes of this rejection, claims 15-19 are treated as a “manufacture” (Non-Final Act. 9). Appeal 2021-002784 Application 15/789,585 4 computing system, cause the computing system to perform a process for managing air traffic” (Appeal Br. 17 (Claims App.)). The Examiner determined, and we agree, that, under a broadest reasonable interpretation, claim 15, thus, encompasses a signal per se, which is non-statutory subject matter (Non-Final Act. 9; see also Ans. 3-4). The Specification admittedly states, in paragraph 191, that “[a] storage medium typically may be non-transitory or comprise a non-transitory device.” However, the Specification merely describes there what a storage medium may permissively entail; it does not set forth a special definition or otherwise clearly limit what is included or excluded by the phrase, “computer-readable storage medium.” As such, the claimed computer- readable storage medium encompasses transitory media, which are not patent eligible. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). We, therefore, sustain the Examiner’s rejection of independent claim 15, and claims 16-19, which depend therefrom, under 35 U.S.C. § 101 as directed to non-statutory subject matter. Patent-Ineligible Subject Matter Appellant argues the pending claims as a group (Appeal Br. 6-12). We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Under 35 U.S.C. § 101, “[w]hoever 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.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract Appeal 2021-002784 Application 15/789,585 5 ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original). The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”).3 That guidance revised the USPTO’s 3 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-002784 Application 15/789,585 6 examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use 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. Id. at 54-55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. If the claim is determined to be directed to a judicial exception under revised Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements Appeal 2021-002784 Application 15/789,585 7 amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56. Here, the Examiner determined that independent claims 1, 15, and 20 recite “managing delay at an airport using time slots, which is a mathematical concept and a method of organizing human activity,” and, therefore, an abstract idea (Non-Final Act. 10-11). The Examiner explained: [t]he claims recite a mathematical concept because the identified idea is a mathematical calculation that receives and isolates data to predict a congestion delay, selects a congestion delay target, and shifts a schedule based on the largest deviation from the selected target. The claims recite a method of organizing human activity because the identified idea is a commercial interaction by reciting a business relation shifting the schedule of an aircraft at an airport wherein the business relation is the relationship between the aircraft and the airport. (id. at 10). The Examiner also determined that the recited abstract idea is not integrated into a practical application; that the independent claims do not include additional elements sufficient to amount to significantly more than the abstract idea itself; and that the dependent claims are patent ineligible for substantially the same reasons (id. at 11-14). Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A) We are not persuaded by Appellant’s argument that the Examiner erred in determining that claim 1 is directed to an abstract idea (Appeal Br. 6-8). The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d Appeal 2021-002784 Application 15/789,585 8 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335-36. Here, it is clear from the Specification (including the claim language) that claim 1 focuses on an abstract idea, and not on an improvement to technology and/or a technical field. The Specification is titled “INTEGRATED MANAGEMENT OF DISPARATE DATA FROM ISOLATED DATA SOURCES,” and describes that “[c]ertain aspects of the invention involve integrating disparate data sources retrieved from an air traffic server and a ticket vendor server to derive air traffic insights” (Spec. ¶ 5). The Specification, thus, describes that in one embodiment, an airport congestion management method and system are used to reduce congestion delays (id. ¶ 30). In accordance with the disclosed method, an air traffic database is queried for air traffic data of an airport, including schedules of a number of flights utilizing a slot, i.e., a period of time for an aircraft to take-off or land, of the airport (id.); and a congestion delay resulting from the number of flights utilizing the slot of the airport is determined based on the air traffic data (id.). The number of flights within any time slot must be less than the maximum capacity of the airport; as such, slot management includes controlling the number of flights per slot to thereby reduce the congestion delay (id. ¶ 33). Consistent with this disclosure, claim 1 recites a method for managing air traffic in a coordinated airspace near a set of airports comprising: (1) querying an air traffic database for historical air traffic data of an airport, Appeal 2021-002784 Application 15/789,585 9 including schedules of a number of flights utilizing a specific time slot of the airport, which is a period of time for an aircraft to takeoff or land, i.e., retrieving a dataset, indicative of past aircraft takeoff/landing events of an airport, and the dataset further indicative of tickets available for one or more aircraft flights, wherein the past aircraft takeoff/landing events include instructions indicative of an aircraft coordination order associated with a specific runway or taxiway of the airport, a specific set of past passengers, and an associated aircraft; [and] isolating portions of the dataset indicative of a first time period within a threshold range of the past aircraft takeoff/landing events, the isolated portions of the dataset further indicative of aircraft taxi time data within the dataset associated with a volume cause label, thereby generating a modified dataset (steps (a) and (b)); (2) predicting, based on the air traffic data, a future congestion delay resulting from the number of flights utilizing the time slot of the airport, i.e., predicting a congestion delay, based on the modified dataset, for each of a set of takeoff/landing events of a first set of aircraft within a future time period that corresponds in repeating time structures to the first time period, wherein the predicted congestion delay is separate from an unimpeded taxi time (step (c)); (3) selecting a congestion delay target within a predetermined range based on the estimated revenue loss resulting from reducing scheduled aircraft flights and an estimated value of air passenger time for the plurality of expected passengers of the number of flights, i.e., selecting a congestion delay target for the set of aircraft takeoff/landing events, the congestion delay target is less than the predicted congestion delay, wherein the congestion delay target is within a pre-determined range, wherein the predetermined range is based on resulting yield loss from reducing scheduled aircraft flights for the first aircraft takeoff/landing event and an estimated passenger time utility for a plurality of passengers Appeal 2021-002784 Application 15/789,585 10 (step (d)); and (4) identifying a scheduled aircraft takeoff/landing event of an aircraft having the greatest deviation from the congestion delay target and shifting the scheduled aircraft takeoff/landing event to a new time period, i.e., identifying a first scheduled aircraft takeoff/landing event of a first aircraft of the set of aircraft takeoff/landing events having the greatest deviation from the congestion delay target; and based on the congestion delay target, shifting the first scheduled aircraft takeoff/landing event of the first aircraft to a new time outside of the future time period, wherein an airport congestion delay is reduced (steps (e) and (f)). We agree with the Examiner that these claim limitations, when given their broadest reasonable interpretation, recite managing the congestion delay at an airport by shifting the scheduled takeoff/landing event of an aircraft, i.e., managing relationships or interactions between people (including following rules or instructions), which is a method of organizing human activity and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Appellant argues that “[s]cheduling of machines (aircraft) into time and space is not one of the certain methods of human organization that has been found by courts to be abstract” (Appeal Br. 7), and asserts that “[f]or a claim to be abstract as organizing human activity, it must correspond to a limited list of activity the courts have already found as abstract” (id. at 8). Yet, we are aware of no controlling precedent, nor, for that matter, does Appellant identify any precedent, that imposes such a requirement. The 2019 Revised Guidance (applicable here), moreover, supersedes earlier subject matter eligibility-related guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to Appeal 2021-002784 Application 15/789,585 11 the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”). The 2019 Revised Guidance “extracts and synthesizes key concepts identified by the courts as abstract ideas” in three groupings of abstract ideas, including “[c]ertain methods of organizing human activity,” (84 Fed. Reg. at 52), and does not require examiners to demonstrate that an identified abstract idea is similar to a concept that the courts previously have held abstract. Here, as the Examiner observes, “the schedule at an airport represents an interaction between people and the claims are rules or instructions of shifting the schedule, which is a series of rules or instructions for managing an interaction between people” - “a sub-grouping of certain methods of organizing human activity” (Ans. 7-8 (citing MPEP 2106.04(a)(2)(II)(C)), and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. We also are not persuaded that claim 1 includes additional elements that integrate the recited abstract idea into a practical application (Appeal Br. 8-9). The 2019 Revised Guidance references MPEP, Ninth Edition (rev. Jan 2018) (available at https://www.uspto.gov/web/offices/pac/ mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)-(c) and (e) in non-exhaustively listing considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if the additional element (1) reflects an improvement in the functioning of a computer or an Appeal 2021-002784 Application 15/789,585 12 improvement to other technology or technical field; (2) applies or uses the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; (3) implements the judicial exception with, or uses the judicial exception with, a particular machine or manufacture integral to the claim; (4) effects a transformation or reduction of an article to a different state or thing; or (5) applies or uses 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. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id. Appellant argues here that “the claims are directed to reorganizing a coordinated airspace in such a way that decreases congestion”; that this “improves the safety of the airspace as well as reduces the discomfort for those delayed therein”; and that “[t]he claims perform the practical application of improving the use of aircraft” (Appeal Br. 8). Yet, we find nothing in the Specification that attributes an improvement in airspace safety or aircraft use to the claimed invention. Instead, Appellant’s assertions appear to be no more than unsupported attorney argument. Cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney argument cannot take the place of evidence in the record). Appeal 2021-002784 Application 15/789,585 13 We also note for the record that the relevant question under Step 2A, Prong 2 is not whether the claimed invention itself, i.e., reducing airport congestion, is a practical application; instead, the question is whether the claim includes additional elements beyond the judicial exception that integrate the judicial exception into a practical application. Here, the only additional element recited in claim 1 beyond the abstract idea, and then only by implication, is a processor, i.e., a generic computer component, for performing the method steps (see, e.g., Spec. ¶¶ 39-40). “And after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Appellant’s further argument that claim 1 “implements the judicial exception with, or uses the judicial exception with, a particular machine or manufacture integral to the claim” is similarly unavailing (Appeal Br. 9). Appellant asserts that “[t]he present claims integrally relate to the scheduling of aircraft”; that “[e]ach of the independent claims refer[s] to ‘a first aircraft’”; and that “[a]ircraft are particular machines” (id.). Yet, as described above, in accordance with the 2019 Revised Guidance, an additional element may have integrated the judicial exception into a practical application if the additional element implements the judicial exception with, or uses the judicial exception with, a particular machine or manufacture integral to the claim. See 2019 Revised Guidance, 84 Fed. Reg. at 55. Claim 1 admittedly relates to the scheduling of aircraft and refers, in that context, to “a first aircraft.” But the aircraft itself is not an element, let alone “an additional element,” of the claim. And, even if the aircraft itself Appeal 2021-002784 Application 15/789,585 14 were claimed, it would not amount to a particular machine at least because, as the Examiner observes, it is not described with any particularity (Ans. 11-12). We conclude, for the reasons outlined above, that claim 1 recites a method of organizing human activity, i.e., an abstract idea, and that the additional element recited in the claim beyond the abstract idea, i.e., a processor, is no more than a generic computer component used as a tool to perform the recited abstract idea. As such, it does not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B) Having determined under step one of the Mayo/Alice framework that claim 1 is directed to an abstract idea, we next consider under Step 2B of the 2019 Revised Guidance, the second step of the Mayo/Alice framework, whether claim 1 includes additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. Appeal 2021-002784 Application 15/789,585 15 Appellant argues that the rejection of claim 1 cannot be sustained because the Examiner has not established that the claim, as a whole, including the functions recited in steps (a) through (f), is well-understood, routine, and conventional (Appeal Br. 10-12). But, that argument is not persuasive at least because “the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the question under step two of the Mayo/Alice framework (i.e., step 2B) is whether the claim includes additional elements, i.e., elements other than the abstract idea itself, that “‘transform the nature of the claim’ into a patent- eligible application.” Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). See also Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (emphasis added)). The Examiner determined here, and we agree, that the only claim element recited in claim 1 beyond the abstract idea (at least by implication) is a processor, i.e., a generic computer component (Non-Final Act. 12) - a determination amply supported by and fully consistent with the Specification (see, e.g., Spec. ¶¶ 39-40). Appellant cannot reasonably maintain that there is insufficient factual support for the Examiner’s determination that the operation of the processor is well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 1 require any specialized hardware or inventive computer components or that the Appeal 2021-002784 Application 15/789,585 16 claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving and processing information. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well- understood, routine and conventional database structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). Appellant also misapprehends the controlling precedent to the extent Appellant maintains that claim 1 is patent eligible, i.e., that the claim includes an inventive concept, because it allegedly is novel and/or non- obvious in view of the cited prior art (Appeal Br. 12 (“Appellant respectfully submits that the . . . recited elements of independent claims 1, 15, and 20 are not widely prevalent or in common use in the relevant field. For example, the above recited elements of independent claims 1, 15, and 20 are not taught or suggested by the relevant prior art.”)). Neither a finding of novelty nor a non-obviousness determination automatically leads to the conclusion that the claimed subject matter is patent eligible. Although the second step in the Mayo/Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a Appeal 2021-002784 Application 15/789,585 17 search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217-18 (citation omitted). “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non- obvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 1 and claims 2, 4-7, 10-21, and 23-25, which fall with claim 1. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15-19 101 Eligibility 15-19 1, 2, 4-7, 10-21, 23- 25 101 Eligibility 1, 2, 4-7, 10-21, 23- 25 Overall Outcome 1, 2, 4-7, 10-21, 23- 25 Appeal 2021-002784 Application 15/789,585 18 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. § 1.136(a)(1)(iv). AFFIRMED