John Bonner et al.

Patent Trials and Appeals Board

Jul 27, 2021

2021000773 (P.T.A.B. Jul. 27, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/327,972 12/16/2011 John F. Bonner REFD.P0095US/1001054048 6095
29053 7590 07/27/2021
NORTON ROSE FULBRIGHT US LLP
2200 ROSS AVENUE
SUITE 3600
DALLAS, TX 75201-7932
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/27/2021 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):
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN F. BONNER, EVAN T. RILES, GEORGE P. BONNE,
IAN ERICKSON, and ANDREW NEBLETT
Appeal 2021-000773
Application 13/327,972
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRIAG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 25–41. See Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Refinitiv U.S. Organization LLC as
the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to predicting
initial public offering opportunities. Abstract. Claim 25, reproduced below,
is illustrative of the claimed subject matter:
25. A method for rapid identification of attributes
associated with at least one entity in a graphical user
interface (GUI) of a computing device, the method
comprising:
calculating, by one or more processors of the
computing device, at least one attribute for each entity of
a plurality of entities, the at least one attribute calculated
for each entity including a prediction score; and
initiating, by the one or more processors,
presentation of the GUI at a display device
communicatively coupled to the computing device,
wherein the GUI is configured to present a graphical
representation of each entity of the plurality of entities
based on the calculated at least one attribute, wherein the
graphical representation of each entity of the plurality of
entities includes a shape having a size, wherein the
presentation of the graphical representation of each entity
based on the calculated at least one attribute includes:
determining, based on a control element of
the GUI, an attribute from the calculated at least
one attribute to be used in the graphical
representation of each entity of the plurality of
entities in at least a portion of the GUI;
determining, by the one or more processors, a
value of the selected attribute for each entity of the
plurality of entities based on the calculating;
configuring, by the one or more processors,
the size of the shape of the graphical representation
of each entity of the plurality of entities based on
the value of the selected attribute determined for
each entity; and
displaying, within at least a portion of the
GUI displayed at the display device, the graphical
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representation of each entity, each graphical
representation having the respective size of the
shape configured for each entity,
wherein the calculating the at least one
attribute including the prediction score for each
entity of the plurality of entities includes:
computing, by the one or more processors, an
activity value, using one or more data items
maintained in at least one of an investor data store,
a deals data store, a market data store, and a
company data store, in order to identify a number of
entities having initiated an initial public offering over
a first time interval in a same industry as an entity of
the plurality of entities as compared to a total number
of entities within the plurality of entities, wherein the
investor data store, the deals data store, the market
data store and the company data store are each a
composite from one or more disparate data sources;
and
calculating the prediction score for each entity
based on at least one of a funding value, a profitability
value, a growth value, a market level value, and the
activity value associated with each entity, the growth
value being based on a sales growth ratio associated
with each entity.
Appeal Br. 21–22 (Claims App.).
REJECTION
Claims 25–41 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act. 2.

ANALYSIS
Appellant argues the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter is in error. To the extent
Appellant has not advanced separate, substantive arguments for particular
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claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant argues claims 25, 26, and 28–40 as a group. See
Appeal Br. 6, 8. Appellant argues dependent claims 27 and 41 separately.
See id. at 18–19. Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we
decide the § 101 rejection of claims 25, 26, and 28–40 based on
representative claim 25.
Principles of Law
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 U.S. 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 Court’s two-part 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.”).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
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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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.2, 3
Under MPEP § 2106, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).4

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also Oct. 2019 Update at 1.
3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106 (9th ed. Rev.
10.2019, rev. June 2020). All references to the MPEP are to the Ninth
Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise
indicated.
4 “Examiners evaluate integration into a practical application by: (1)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
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MPEP § 2106.04(a) and (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,5 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional activity” in the field; or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.6
MPEP § 2106.05(d).
Claims 25, 26, and 28–40
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 25 recites a mathematical
concept and a mental process, which are abstract ideas. Ans. 5; Final
Act. 4–5. In particular, the Examiner determined that the following
limitations recite mathematical relationships, mathematical formulas or
equations, or mathematical calculations and, thus, are abstract ideas:

elements individually and in combination to determine whether” the claim as
a whole “integrates the exception into a practical application.” MPEP
§ 2106.04(d)(II).
5 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under part one of the Alice framework, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
6 This corresponds to Alice part two where it is determined whether the
claim contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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calculating . . . at least one attribute for each entity of a
plurality of entities, the at least one attribute calculated for each
entity including a prediction score;
determining . . . a value of the selected attribute for each
entity of the plurality of entities based on the calculating;
. . .
wherein the calculating the at least one attribute
including the prediction score for each entity of the plurality of
entities includes:
computing . . . an activity value, using one or more data
items maintained in at least one of an investor data store, a
deals data store, a market data store, and a company data store,
in order to identify a number of entities having initiated an
initial public offering over a first time interval in a same
industry as an entity of the plurality of entities as compared to a
total number of entities within the plurality of entities, wherein
the investor data store, the deals data store, the market data
store and the company data store are each a composite from one
or more disparate data sources; and
calculating the prediction score for each entity based on
at least one of a funding value, a profitability value, a growth
value, a market level value, and the activity value associated
with each entity, the growth value being based on a sales
growth ratio associated with each entity.
Final Act 3–4. The Examiner determined that the above limitations, under
their broadest reasonable interpretation, describe “the abstract idea of
calculating/computing attribute/activity value/prediction score” and recite
mathematical concepts (mathematical relationships, mathematical formulas
or equations and mathematical calculations), which are abstract ideas. Id.
at 3; see also MPEP § 2106.04(a)(2)(I). The Examiner also determined that
the “initiating” and “displaying” steps recite abstract mental processes. Id.
at 4.
Appellant argues the Examiner “failed to consider the claims as a
whole” (Appeal Br. 6, 17), but rather “reviewed each claim element in
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isolation rather than in context and as a whole.” (id. at 6). In Appellant’s
view, “Claims 25–41 do not fall within any of the three categories of
judicially identified abstract ideas and thus are patent eligible.” Id. at 8.
We are not persuaded that the Examiner erred. As the 2019 Guidance
explains, the approach used to identify abstract ideas “represents a shift from
the former case-comparison approach that required examiners to rely on
individual judicial cases when determining whether a claim recites an
abstract idea.” MPEP § 2106.04(a). Under the 2019 Guidance, Examiners
determine whether a claim recites an abstract idea by (1) identifying the
specific limitation(s) in the claim under examination that the Examiner
believes recites an abstract idea, and (2) determining whether the identified
limitations(s) fall within at least one of the groupings of abstract ideas listed
above. Id. (emphasis added). We agree with the Examiner that “each and
every element of the claim was considered when identifying the abstract
idea.” Ans. 3. Moreover, the Examiner clearly identified limitations of the
claim that recite abstract ideas and determined whether the recited abstract
ideas fall within one of the enumerated categories of abstract ideas. See id.;
Ans. 5; Final Act. 3–5.
Appellant’s further argument that the Examiner “violated the Supreme
Court’s strictures for subject matter eligibility analysis as articulated in
Diamond v. Diehr and subsequently codified in the M.P.E.P.” is similarly
unavailing. See Appeal Br. 7. As explained above, the MPEP incorporates
the 2019 Guidance and subsequent updates. See MPEP § 2106 (9th ed. Rev.
10.2019, rev. June 2020). The Examiner’s analysis is consistent with current
MPEP guidance. Id.
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With regard to the Examiner’s determination that claim 25 recites a
mathematical concept (Final Act. 3–5; Ans. 3–5), Appellant argues that
‘[w]hile claim 25 employs mathematics to initiate presentation of a graphical
user interface (GUI) at a display device, claim 25 does not recite a
mathematical concept.” Appeal Br. 8.
We are not persuaded that the Examiner erred. “A mathematical
calculation is a mathematical operation (such as multiplication) or an act of
calculating using mathematical methods to determine a variable or number.”
MPEP § 2106.04(a)(2)(I)(C). While the claims do not disclose a mathematic
formula that is used to calculate the predictive score and thus the size of the
shape of the graphical representation of each entity of the plurality of
entities, the claims do disclose computer elements that perform a calculation,
which is mathematical concept. See MPEP § 2106.04(a)(2)(I)(C).
For example, the “calculating” step of claim 25 recites “calculating,
by one or more processors of the computing device, at least one attribute for
each entity of a plurality of entities, the at least one attribute calculated for
each entity including a prediction score.” Claim 25 recites that the recited
“calculating” includes one or more processors performing two mathematical
calculations:
1. “computing, by the one or more processors, an activity value,
using one or more data items . . . in order to identify a number of
entities having initiated an initial public offering over a first time
interval in a same industry as an entity of the plurality of entities as
compared to a total number of entities within the plurality of
entities”; and
2. “calculating the prediction score for each entity based on at least
one of a funding value, a profitability value, a growth value, a
market level value, and the activity value associated with each
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entity, the growth value being based on a sales growth ratio
associated with each entity.”
To support Appellant’s argument that claim 25 does not recite
mathematical computations, Appellant focuses solely on the steps of
claim 25 that do not recite calculating or computing. See Appeal Br. 8–9.
Nowhere does Appellant explain why the steps identified by the Examiner as
reciting mathematical computations do not in fact do so. By Appellant’s
own admission, elements of claim 25 “process data and make calculations to
alter and enhance displayable attributes to promote data understandability.”
Id. at 12 (emphasis added). Appellant also acknowledges that “claim 25
employs mathematics.” Id. at 8.
The steps identified by the Examiner as reciting mathematical
concepts may alternatively be characterized as mental processes, another of
the three categories of abstract ideas recognized by the 2019 Guidance.
Mental processes include acts that people can perform in their minds or
using pen and paper, even if the claim recites that a generic computer
component performs the acts. See MPEP § 2106.04(a)(2)(III)(A); see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”). Here, we see
nothing that forecloses the “calculating,” “determining,” and “computing”
steps identified by the Examiner from being performed in the human mind
or using pen and paper.
Appellant next argues that the Examiner erred in determining that the
step(s) of initiating presentation of a graphical representation of each entity
of the plurality of entities based on the calculated at least one attribute,
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wherein the graphical representation of each entity of the plurality of entities
includes a shape having a size, and wherein the presentation of the graphical
representation of each entity is based on the calculated at least one attribute,
as recited in claim 25, recites abstract mental processes. See Appeal
Br. 10–12. Specifically, Appellant argues claim 25 does not recite a mental
process because “claim 25 includes features that the human mind cannot
perform.” Id. at 10. Appellant again sidesteps the actual claim limitations
identified by the Examiner, and offers insufficient persuasive argument or
objective evidence that they cannot be performed in the human mind but for
generic computer components, such as processors, a display device, and a
GUI.
While Appellant argues that “claim 25 includes features directed to an
unconventional display,” Appellant presents no objective evidence and
insufficient persuasive argument that a GUI or display configured to present
a graphical representation of each entity of a plurality of entities based on a
calculated attribute is not a generic computer component. See Appeal
Br. 11–12. Without more, processing data and making calculations to alter
and enhance displayable attributes to promote data understandability does
not render a processor, GUI, or display non-generic. See id.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
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Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We next determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether
there are any additional elements recited in the claim beyond the judicial
exceptions; and (b) evaluating those additional elements individually and in
combination to determine whether they integrate the exception into a
practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. In
claim 25, the additional elements include the limitations “graphical user
interface (GUI),” “a computing device,” “one or more processors,” “a
control element of the GUI,” “data store,” “data sources,” and “a display
device communicatively coupled to the computing device.” We also include
the step of “displaying, within at least a portion of the GUI displayed at the
display device, the graphical representation of each entity, each graphical
representation having the respective size of the shape configured for each
entity” as an additional element.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)).
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The Examiner determined that none of the additional limitations is
sufficient to integrate the judicial exception into a practical application
because the additional computer elements “do not meaningfully apply the
abstract idea and hence do not integrate the abstract idea into a practical
application.” Final Act. 5. We note that the step of “displaying, within at
least a portion of the GUI displayed at the display device, the graphical
representation of each entity, each graphical representation having the
respective size of the shape configured for each entity” amounts to
insignificant extra-solution activity that is not sufficient to integrate the
abstract idea into a practical application. See MPEP § 2106.05(g).
Appellant argues that claim 25 recites specific features that integrate
the alleged mathematical concepts or mental processes into the practical
application of enhancing computer functionality via graphical user interfaces
that improve data understandability. Appeal Br. 13. Appellant argues that the
improved GUI of claim 25 enhances the understandability of complex
numerical data thereby improving the utility of a computer as an analytical
tool, as in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d
1356, 1362 (Fed. Cir. 2018). Appeal Br. 14–15.
We are not persuaded. In Core Wireless, the court stated that “[t]he
disclosed invention improves the efficiency of using the electronic devices.”
Core Wireless, 880 F.3d at 1363. However, the court also explained that
“[w]e also ask whether the claims are directed to a specific improvement in
the capabilities of computing devices” (id. at 1361), and then determine that
“the claims are directed to an improvement in the functioning of computers”
(id. at 1363). Thus, in Core Wireless, the improved efficiency of using the
electronic devices was related to an identified improvement in the
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functioning of computers. The Federal Circuit’s own summary of the user
interface that was considered an improvement in small screen computing
devices in Core Wireless does not support Appellant’s position:
And in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.,
we held patent eligible claims directed to an improved user
interface that enabled users to more quickly access stored data
and programs in small-screen electronics. 880 F.3d 1356, 1359–
63 (Fed. Cir. 2018). We determined that the claimed invention in
Core Wireless “improve[d] the efficiency of using the electronic
device by bringing together a limited list of common functions
and commonly accessed stored data, which can be accessed
directly from the main menu.” Id. at 1363. We therefore held that
“the claims [we]re directed to an improvement in the functioning
of computers, particularly those with small screens.” Id.
Uniloc USA, Inc. v. LG Electronics USA, Inc., 957 F.3d 1303, 1307 (Fed. Cir.
2020) (emphasis added).
Appellant also relies on Trading Technologies International v. CQG,
Inc., 675 Fed.Appx. 1001 (Fed. Cir. 2017) (non-precedential), in arguing
that “a claim directed to solving a non-technical problem (i.e., a business
problem) by improving a process is patent eligible.” Appeal Br. 15.
Claim 25, however, does not present a “non-conventional
improvement to trading technology that increase the efficiency and usability
of trading systems” similar to the claims in Trading Technologies. In
Trading Technologies, the Federal Circuit affirmed the district court’s denial
of CQG’s motion for judgment as a matter of law and determined that “the
claimed subject matter is ‘directed to a specific improvement to the way
computers operate,’ . . . for the claimed graphical user interface method
imparts a specific functionality to a trading system ‘directed to a specific
implementation of a solution to a problem in the software arts.”’ 675 F.
App’x at 1006 (citations omitted). Specifically, the Federal Circuit held that
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the district court’s conclusion that “the specific structure and concordant
functionality of the graphical user interface are removed from abstract ideas,
as compared to conventional computer implementations of known
procedures” was in “accord with precedent.” Id. at 1005.
In contrast, here Appellant does not identify how claim 25 solves a
problem in the software arts. Appellant does not direct our attention to, and
we do not see anything in, the record that provides an indication how the
claimed invention increases the “efficiency and usability of trading
systems.” As discussed above, a generic processor is used to implement the
steps, and there is no indication that claim 25 improves the functioning of
the processor, makes it operate more efficiently, or solves a technological
problem with a solution rooted in computer technology. Claim 25 simply
adapts an interface; there is no improvement to the existing display device.
Ans. 5. In other words, any improvement lies in the abstract idea itself. See
id.
To summarize, claim 25 does not recite an improvement for electronic
devices. Enhancing the understandability of complex numerical data by
presenting information on a GUI that enhances the understandability of data,
as in claim 25, does not improve the functioning of the computer, make it
operate more efficiently, or solve any technological problem. Rather, the
claim simply includes instructions to implement an abstract idea on a
computer and does no more than generally link the use of a judicial
exception to a particular technological environment or field of use.
Considering claim 25 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in Core Wireless
and Trading Technologies. Claim 25 as a whole merely uses instructions to
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implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea. Here, the additional
limitations do not integrate the judicial exception into a practical application.
More particularly, the claims do not recite (i) an improvement to the
functionality of a computer or other technology or technical field; (ii) a
“particular machine” to apply or use the judicial exception; (iii) a particular
transformation of an article to a different thing or state; or (iv) any other
meaningful limitation. See 84 Fed. Reg. at 55. Rather, claim 25 recites an
abstract ideas as identified in Step 2A(i), supra, and none of the limitations
integrates the judicial exception into a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
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The Examiner determined that claim 25 does not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements are recited at a high level of
generality in that it results in no more than simply applying the abstract idea
using generic computer elements. Final Act. 5–6; Ans. 5–6.
Appellant argues that the additional elements in claim 25 amount to
an unconventional, structured GUI that enhances data understandability.
Appeal Br. 18. Appellant contends the Examiner agrees, as “all art based”
rejections have since been overcome. Id.
Appellant’s argument is not persuasive for the reasons set forth above
in our Step 2A, Prong 2, analysis. In addition, 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. Diamond v. Diehr, 450 U.S.
175, 188–89 (1981). Our reviewing court guides that “[e]ligibility and
novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
(holding that “[e]ven assuming” that a particular claimed feature was novel
does not “avoid the problem of abstractness”).
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving data,
processing data, and presenting data. See buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
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arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); Alice, 573 U.S. at 225-26 (receiving, storing,
sending information over networks insufficient to add an inventive concept).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
components and techniques. See MPEP § 2106.07(a)(III)(D) (explaining that
a specification that describes additional elements in a manner that indicates
that the additional elements are so well-known that they do not need to be
described in detail to satisfy 35 U.S.C. § 112(a) can show that the elements
are well understood, routine, and conventional); Spec. 4–5. We conclude
claim 25 does not have an inventive concept because the claim, in essence,
merely recites various computer-based elements along with no more than
mere instructions to implement the identified abstract idea using the
computer-based elements.
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner's § 101 rejection of independent
claim 25 and grouped claims 26 and 28–40, not argued separately with
particularity.
Claims 27 and 41
Appellant argues the Examiner erred because the Examiner “never
establishes that claims 27 and 41 recite an abstract idea, as Step 2A, Prong
One of the Revised Guidelines requires.” Appeal Br. 18. Appellant further
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argues, in a conclusory manner, “claims 27 and 41 do not recite an abstract
idea.” Id.
There is no dispute that the Guidance directs examiners to examine
each claim individually. But consideration of each claim individually does
not require a separate written analysis for each individual claim. We decline
to find error here in the Examiner’s decision to not address the patent-
eligibility of each of claims 27 and 41, individually, where, as the Examiner
observes (see Final Act. 6–7; Ans. 6), the claims are all directed to the same
abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that
when all claims are directed to the same abstract idea, “addressing each
claim of the asserted patents [is] unnecessary”).
We are not persuaded the Examiner erred in determining that
dependent claims 27 and 41 recite an abstract idea. See Final Act. 6–7. Each
dependent claim includes all the limitations of the independent claim from
which it depends. See 35 U.S.C. § 112, fourth paragraph (“A claim in
dependent form shall be construed to incorporate by reference all the
limitations of the claim to which it refers.”). We addressed independent
claims 25 and 39 above and determined they recite an abstract idea. Thus,
dependent claims 27 and 41, which depend from claims 25 and 39,
respectively, also recite an abstract idea.
For these reasons, and the reasons set forth with regard to
representative claim 25, we sustain the Examiner’s § 101 rejection of
dependent claims 27 and 41.
DECISION
We affirm the Examiner’s decision rejecting claims 25–41.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
25–41 101 Eligibility 25–41

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). See 37
C.F.R. § 41.50(f).
AFFIRMED