Hummel, Paul C.

Patent Trials and Appeals Board

May 28, 2020

2019000757 (P.T.A.B. May. 28, 2020)

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.
12/051,196 03/19/2008 Paul C. Hummel 038190/338681 1087
67141 7590 05/28/2020
Boeing and Alston & Bird, LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/28/2020 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):
patentadmin@boeing.com
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL C. HUMMEL
___________

Appeal 2019-000757
Application 12/051,196
Technology Center 3600
____________

Before DEBRA K. STEPHENS, ERIC B. CHEN, and ADAM J. PYONIN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5, 7–9, 12, 14–16, 19, and 21–24.
Claims 3, 4, 6, 10, 11, 13, 17, 18, and 20 been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to valuing technological innovation.
(Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with bracketing added, disputed limitations in italics, and minor
formatting:
1. A method for valuing a technological innovation
comprising:
[i] determining at least one measure of market success of
an objective that may benefit from a technological innovation
based upon desirability, availability and affordability of the
objective;
[ii] determining a fair value of the objective implemented
utilizing existing technology without incorporation of the
technological innovation and the fair value of the objective
implemented utilizing the technological innovation based upon
the at least one measure of market success of the objective,
[ii-a] wherein determining the fair value comprises
using a parameterized cost estimation tool to determine
the fair value of the objective implemented utilizing

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as The
Boeing Company. (Appeal Br. 2.)
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existing technology and the fair value of the objective
implemented utilizing the technological innovation by
parameterized cost estimation,
[ii-b] wherein using the parameterized cost
estimation tool comprises receiving information
regarding salability, marketability and quantity of the
objective and utilizing predefined cost estimating
relationships that uses quantifiable characteristics to
estimate variables including cost and production
schedules in order to predict the fair value of the
objective implemented utilizing existing technology and
the fair value of the objective implemented utilizing the
technological innovation;
[iii] using a real options pricing model implemented by a
processor to determine a value of the technological innovation
based upon the fair value of the objective implemented utilizing
existing technology without incorporation of the technological
innovation and the fair value of the objective implemented
utilizing the technological innovation,
[iii-a] wherein using the real options pricing model
comprises determining the value of the technological
innovation further based upon volatility in the value of
the technological innovation,
[iii-b] wherein using the real options pricing model
comprises determining the value of the technological
innovation further based upon an expiry date which is the
date at which the technology innovation reaches a
respective predefined technology readiness level from
among a plurality of predefined technology readiness
levels, and
[iii-c] wherein using the real options pricing model
comprises determining the value of the technological
innovation based upon a measure of lost value in the
technological innovation prior to the date at which the
technology innovation reaches the respective predefined
technology readiness level with the lost value being
attributable to discovery of new technology or disclosure
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or discovery of information regarding the technological
innovation to a competitor or publicly; and
[iv] selling, purchasing or investing in the technological
innovation based on the value of the technological innovation.

REFERENCES
Name Reference Date
Malackowski et al. US 9,058,628 B2 June 16, 2015
Elliott US 2007/0299683 A1 Dec. 27, 2007
Millien et al. US 2006/0100948 A1 May 11, 2006

REJECTIONS
Claims 1, 2, 5, 7–9, 12, 14–16, 19, and 21–24 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.
Claims 1, 2, 5, 7–9, 12, 14–16, 19, and 21–24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Elliott, Millien, and
Malackowski.

OPINION
§ 101 Rejection
We are unpersuaded by Appellant’s arguments (Appeal Br. 9–11; see
also Reply Br. 2–4) that independent claims 1, 8, and 15 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
With respect to independent claims 1, 8, and 15, the Examiner
determined that “the claimed invention is directed to a valuation algorithm—
mental processes to determine the value of an innovation” and “[t]hese
concepts involve mathematical relationships as well as mental processes that
can be performed using pen and paper which both have been established as
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abstract by courts” with citations to CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366 (Fed. Cir. 2011) and Parker v. Flook, 437 U.S. 584
(1978). (Final Act. 5.) The Examiner further determined that “[t]he use of
the real options pricing model implemented by a processor or computer
program product . . . is not enough to qualify as ‘significantly more’ than
being recited in the claim along with the abstract idea because the processor
is merely applying an abstract idea on a computer.” (Id.) We agree with the
Examiner’s determinations and ultimate conclusion that the claims are
directed to patent-ineligible subject matter.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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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 (Flook, 437 U.S. at 594–95); and mental processes
(Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be
patent eligible include physical and chemical processes, such as “molding
rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
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
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 also, 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.”).
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If the claim is “directed to” an abstract idea, we turn 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 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019
Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019).
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2019)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. 56.

Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claim 1 is a method claim, which falls within the “process” category
of 35 U.S.C. § 101. Similarly, claim 8 is an apparatus claim, which falls
within the “machine” category of 35 U.S.C. § 101, and claim 15 is a
computer program product claim, which falls within the “manufacture”
category of 35 U.S.C. § 101. Therefore, claims 1, 8, and 15 fall within one
of the four statutory categories of patentable subject matter identified by 35
U.S.C. § 101.
Although claims 1, 8, and 15 fall within the statutory categories, we
must still determine whether the claims are directed to a judicial exception,
namely an abstract idea. See Alice, 573 U.S. at 216. Thus, we must
determine whether the claims recite a judicial exception and whether the
exception is integrated into a practical application. See 84 Fed. Reg. at 52–
55. If a claim recites a judicial exception without integrating the judicial
exception into a practical application, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.

Step 2A, Prong One
Independent claim 1, a method claim, recites the following
limitations: “[i] determining at least one measure of market success of an
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objective that may benefit from a technological innovation . . . ,” “[ii]
determining a fair value of the objective implemented utilizing existing
technology without incorporation of the technological innovation and the
fair value of the objective implemented utilizing the technological
innovation based upon the at least one measure of market success of the
objective . . . ” (including limitations [ii-a] and [ii-b]) and “[iii] using a real
options pricing model . . . to determine a value of the technological
innovation based upon the fair value of the objective implemented utilizing
existing technology without incorporation of the technological innovation
and the fair value of the objective implemented utilizing the technological
innovation” (including limitations [iii-a], [iii-b], and [iii-c]). Such
limitations of claim 1 recite a patent-ineligible abstract idea of mathematical
concepts, such as mathematical calculations. See Digitech Image Techs.,
LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
(“Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.”); see also Flook, 437 U.S. at 594 (“[T]he
discovery of [a mathematical formula] cannot support a patent unless there is
some other inventive concept in its application.”) In particular, in the
“Background of the Invention” section, Appellant’s Specification states the
following:
One technique for estimating the fair value of an intangible
asset, such as that associated with the development of
technology, is a present value technique. In such a present
value technique, the useful lives and amortization periods of
intangible assets should reflect the periods over which those
assets would contribute to cash flows as opposed to the period
of time that would be required to internally develop those
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assets. However, the estimates of future cash flows may be
difficult to make with any precision and may introduce
significant subjectivity, thereby calling into question the
credibility of such valuations. Historically, a company would
solicit the opinions of subject matter experts and then arrive at a
value for the technology. However, such estimates are quite
subjective and may lack the repeatability and consistency that is
desired for meaningful valuation of an asset.
(Spec. 3:25 to 4:4.)
Alternatively, the limitations of claim 1 recite a patent-ineligible
abstract idea of mental processes because these limitations are steps of
observation, evaluation, judgment, and opinion that can be performed either
by human thought alone or by a human using pen and paper. CyberSource,
654 F.3d at 1372–73 (explaining that “unpatentable mental processes”
include “steps [that] can be performed in the human mind, or by a human
using a pen and paper”).
Accordingly, claim 1 recites a judicial exception. Claims 8 and 15
recite limitations similar to those discussed with respect to claim 1. Thus,
claims 8 and 15 also recite a judicial exception.

Step 2A, Prong Two
Because claims 1, 8, and 15, recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
Claim 1 recites “[iii] using a real options pricing model implemented
by a processor” (emphasis added). Similarly, claim 8 recites
a processor configured to determine at least one measure of
market success . . . wherein the processor is also configured to
determine a fair value of the objective implemented . . . wherein
the processor uses a parameterized cost estimation tool . . .
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wherein the processor is further configured to use a real options
pricing model . . . wherein the processor is further configured
to at least partially rely upon an expiry date . . . wherein the
processor is further configured to at least partially rely upon a
measure of lost value in the technological innovation”
(emphases added).
The preamble of claim 15 recites “computer readable storage medium
having computer readable program code” for executing limitations similar to
claims 1 and 8 (emphasis added).
The additional elements recited in claims 1, 8, and 15, including
“processor” and “computer readable storage medium” are merely tools for
performing the abstract idea. See Affinity Labs of Tex., LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“[T]he claims are directed not
to an improvement in cellular telephones but simply to the use of cellular
telephones as tools in the aid of a process focused on an abstract idea.”).
Moreover, claim 1 further recites “[iv] selling, purchasing or investing
in the technological innovation based on the value of the technological
innovation.” Claims 8 and 15 recite similar limitations. Such limitations
merely add insignificant extra-solution activity to the judicial exception. See
Flook, 437 U.S. at 590 (“The notion that post-solution activity, no matter
how conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance”).
Accordingly, claims 1, 8, and 15 do not recite additional elements that
integrate the judicial exception into a practical application.

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Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 1, 8, and 15 are directed to a judicial exception, we
next determine, according to Alice, whether these claims recite an element,
or combination of elements, that is enough to ensure that the claim is
directed to significantly more than a judicial exception.
Claims 1 and 8 includes the additional elements of a “processor,” and
claim 15 recites a “computer readable storage medium.” With respect to the
claimed additional elements, Appellant’s Specification discloses the
following:
As shown in Figure 2, the apparatus 20 of embodiments
of the present invention is typically embodied by a processing
element 22 and an associated memory device 24, both of which
are commonly comprised by a computer or the like. In this
regard, the method of embodiments of the present invention as
set forth generally in Figure 1 can be performed by the
processing element executing a computer program instructions
stored by the memory device.
(Spec. 18:28 to 19:3 (emphasis added).)
The apparatus 20 may operate under control of a
computer program product according to another aspect of the
present invention. The computer program product for
performing the methods of embodiments of the present
invention includes a computer-readable storage medium, such
as the non-volatile storage medium, e.g., memory device 24,
and computer-readable program code portions, such as a series
of computer instructions, embodied in the computer-readable
storage medium.
(Spec. 19:7–12 (emphasis added).)
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The generalized functional terms by which the additional elements are
described reasonably indicate that Appellant’s Specification discloses: (i)
conventional processing element 22; and (ii) conventional memory device
24 (e.g., non-volatile storage medium).
Moreover, Figure 2 of Appellant’s Specification illustrates a block
diagram for one embodiment of the present invention, including processing
element 22 and associated memory device 24. In other words, Appellant’s
Figure 2 illustrates that processing element 22 and memory device 24
function cooperatively as an ordered combination.
In view of Appellant’s Specification, the claimed additional elements,
considered as an ordered combination that includes a “processor” and a
“computer readable storage medium” are merely generic, purely
conventional elements.
Thus, claims 1, 8, and 15 recite generic, purely conventional computer
elements intended to perform generic computer functions, rather than to
improve computer capabilities.
First, Appellant argues that
Like the claims at issue in McRO[, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)], the claims of
the present application do not merely collect and analyze
information, but apply a set of “rules” using, among other
things, a parameterized cost estimation and a real options
pricing model to value a technological innovation that is then
sold, purchased or a subject of investment based upon the value
of the technological innovation
and “like the claims at issue in McRO, the claims of the present application
improve computer-related technology by utilizing a novel set of ‘rules’ and
are, therefore, statutory.” (Appeal Br. 9; see also Reply Br. 2–3.) However,
Appellant has not adequately explained why the claim “purport[s] to
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improve the functioning of the computer itself” or “any other technology or
technical field.” Alice, 573 U.S. at 225. In particular, Appellant has not
explained why a “valuation” of a technological innovation improves
computer-related technology, rather than a business practice.
Second, Appellant argues “both Parker [v. Flook] and CyberSource
predate the Alice and Mayo decisions and thus fail to utilize the now-familiar
two-part framework for analyzing eligibility” and “[t]heir precedential value
is now limited to scenarios where claims can be performed entirely in the
human mind.” (Appeal Br. 9 (emphasis omitted).) However, the Examiner
cited to Flook and CyberSource in order to compare the claimed concepts to
the appropriate judicial exceptions of “mathematical concepts” or “mental
processes,” respectively. Moreover, “the inability for the human mind to
perform each claim step does not alone confer patentability.” FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016).
Third, Appellant argues “even though novel and nonobviousness are
not themselves requirements for eligibility, novelty and nonobviousness
nevertheless are at least circumstantial evidence that the claims amount to an
unconventional and non-generic arrangements of features” and “when
novelty and nonobviousness is weighed against a lack of evidence of any
supposed conventionality of a combination . . . the only logical conclusion to
draw is that the combination of claim elements is unconventional.” (Appeal
Br. 10 (emphases omitted); see also Reply Br. 3.) However, Appellant
improperly conflates the requirements for eligible subject matter with the
independent requirements of novelty and non-obviousness. “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
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the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S.
at 188–89.
Fourth, Appellant argues that “[a]s described in paragraph [0036] of
the published application, the parameterized cost estimation tool may, in one
embodiment, be a software tool that is implemented by a computer, thereby
transforming the computer into a particular machine that is configured to
provide the parameterized cost estimation.” (Appeal Br. 11; see also Reply
Br. 4.) However, although “the machine-or-transformation test is a useful
and important clue, an investigative tool” such test “is not the sole test for
deciding whether an invention is a patent-eligible ‘process.’” Bilski, 561
U.S. at 604.
Last, Appellant argues that “the Office has failed to address the
additional claim features recited in the claims that go beyond the alleged
abstract idea, and has therefore failed to explain why the concepts, as a
whole, are thought to be routine and conventional” and “the Office has not
followed recommendations set forth in Berkheimer.” (Appeal Br. 11.)
Regardless of the sufficiency of the Examiner’s analysis, Appellant’s
Specification, as explained above, provides sufficient basis to support the
conclusion that claim 1 does not recite significantly more than the abstract
idea.
Thus, we agree with the Examiner that claims 1, 8, and 15 are directed
towards patent-ineligible subject matter.
Accordingly, we sustain the rejection of independent claims 1, 8, and
15 under 35 U.S.C. § 101. Claims 2, 5, 7, 9, 12, 14, 16, 19, and 21–24
depend from independent claims 1, 8, and 15, and Appellant has not
presented any additional substantive arguments with respect to these claims.
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We sustain the rejection of claims 2, 5, 7, 9, 12, 14, 16, 19, and 21–24 under
35 U.S.C. § 101 for the same reasons discussed with respect to independent
claims 1, 8, and 15.

§ 103 Rejection—Elliott, Millien, and Malackowski
We are persuaded by Appellant’s arguments (Appeal Br. 14; see also
Reply Br. 4–5) that the Examiner has not shown the combination of Elliott,
Millien, and Malackowski would have rendered obvious independent
claim 1, which includes the limitation “determining the value of the
technological innovation based upon a measure of lost value in the
technological innovation prior to the date at which the technology
innovation reaches the respective predefined technology readiness level.”
The Examiner found that the Patent Decay Rate of Malackowski and
the financial contract of Malackowski, whose price depends on the state of a
particular technology area at a specified date, collectively correspond to the
limitation “determining the value of the technological innovation based upon
a measure of lost value in the technological innovation prior to the date at
which the technology innovation reaches the respective predefined
technology readiness level.” (Final Act. 8–9; see also Ans. 5–6.) Appellant
has persuaded us the Examiner has not shown sufficiently that Malackowski
teaches the recited limitation.
Malackowski relates to financial contracts, in particular, “trading
intangible assets and/or derivative financial contracts based on such
intangible assets.” (Col. 1, ll. 17–21.) Figure 1 of Malackowski illustrates
intellectual property exchange 100 (col. 5, ll. 11–12), in which “[l]isting
requirements 21 include criteria based on IP metrics 23” (col. 5, ll. 23–24).
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Malackowski explains that one exemplary IP metric 23 (col. 5, ll. 65–67)
includes “Patent Decay Rate: An estimated obsolescence rate approximating
a rate at which the identified patents will lose value over time” (col. 6, ll. 5–
7). Malackowski also explains that “[o]ne exemplary embodiment of a
financial contract that may be traded in a marketplace . . . is a technology-
based derivative financial contract whose price depends on the state of a
particular technology area at a specified date.” (Col. 14, ll. 4–8.)
Although Malackowski explains that “Patent Decay Rate” is in IP
metric 23 to be considered for intellectual property exchange 100 and that
one type of financial contract is a technology-based derivative financial
contract “whose price depends on the state of a particular technology area at
a specified date,” the Examiner had provided insufficient evidence or
explanation to support a finding that Malackowski teaches the limitation
“determining the value of the technological innovation based upon a
measure of lost value in the technological innovation prior to the date at
which the technology innovation reaches the respective predefined
technology readiness level.” In particular, while Malackowski provides
general descriptions of the “Patent Decay Rate” and the technology-based
derivative financial contract, the Examiner has not explained how one of
ordinary skill in the art would apply the “specified date” from the derivative
contract to the “Patent Decay Rate” to arrive at the limitation “determining
the value of the technological innovation based upon a measure of lost value
in the technological innovation prior to the date at which the technology
innovation reaches the respective predefined technology readiness level.”
Accordingly, we are persuaded by Appellant’s arguments, as follows:
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Malackowski fails to teach or suggest that the lost value in the
technological innovation is that lost value that occurs prior to
the date at which the technology innovation reaches the
respective predefined technology readiness level as recited by
the amended independent claims. Indeed, Malackowski does
not discuss predefined technology readiness levels and, in any
event, does not discuss a predefined technology readiness level
defining the time before which the lost value is determined as
recited by the independent claims.
(Appeal Br. 14; see also Reply Br. 4–5.)
Thus, we are constrained to find the combination of Elliott, Millien,
and Malackowski would not have rendered obvious independent claim 1,
which includes the limitation “determining the value of the technological
innovation based upon a measure of lost value in the technological
innovation prior to the date at which the technology innovation reaches the
respective predefined technology readiness level.”
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 2, 5, and 7 depend from claim 1. We do
not sustain the rejection of claims 2, 5, and 7 under 35 U.S.C. § 103(a) for
the same reasons discussed with respect to claim 1.
Independent claims 8 and 15 recite limitations similar to those
discussed with respect to claim 1. We do not sustain the rejection of claims
8 and 15, as well as dependent claims 9, 12, 14, 16, 19, and 21–24, for the
same reasons discussed with respect to claim 1.

CONCLUSION
The Examiner’s decision rejecting claims 1, 2, 5, 7–9, 12, 14–16, 19,
and 21–24 under 35 U.S.C. § 101 is affirmed.
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The Examiner’s decision rejecting claims 1, 2, 5, 7–9, 12, 14–16, 19,
and 21–24 under 35 U.S.C. § 103(a) is reversed.

DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 7–9,
12, 14–16,
19, 21–24
101 Eligibility 1, 2, 5, 7–9,
12, 14–16,
19, 21–24

1, 2, 5, 7–9,
12, 14–16,
19, 21–24
103 Elliott, Millien,
Malackowski
1, 2, 5, 7–9,
12, 14–16,
19, 21–24
Overall
Outcome
1, 2, 5, 7–9,
12, 14–16,
19, 21–24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED