Nakada, Mark W. et al.

Patent Trials and Appeals Board

Mar 31, 2020

11455458 - (D) (P.T.A.B. Mar. 31, 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.
11/455,458 06/19/2006 Mark W. Nakada RTM-1004 1518
95084 7590 03/31/2020
Loza & Loza, LLP
Tyler Barrett, Esq.
305 N. Second Avenue #127
Upland, CA 91786
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
docketing@lozaip.com
tyler@lozaip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK W. NAKADA, JON F. BUTLER, COLLIN ZITO,
JONATHAN MECHAM, and JESS HOHN
____________

Appeal 2019-004560
Application 11/455,458
Technology Center 3600
____________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and IRVIN E. BRANCH,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge SMITH.

Opinion Dissenting-in-part filed by Administrative Patent Judge HOMERE.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–4, 8–10, 13–17, 39, and 40, which constitute all of the
claims pending in this appeal. Appeal Br. 2. Claims 5–7, 11, 12, and 18–33
have been canceled. Claims App. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
Representative Claim
1. A method for distributing digital content, comprising:
storing digital content in a first digital storage device, the
digital content including a content portion and a description
portion;
obtaining rights information for the digital content using
a computing device, where the rights information includes at
least one restriction to management and use of the digital
content on any electronic device on which the digital content
resides without referring to or requiring use of a characteristic
of any electronic device on which the digital content resides,
the rights information further including an activated license;
storing the rights information as part of the description
portion of the digital content to obtain protected digital content;
transferring the protected digital content from the first
digital storage device directly to a second digital storage device
using one or more distribution devices; and
enabling user access to the digital content on the second
digital storage device according to the at least one restriction
and the activated license included with the rights information
without accessing a license server.

Prior Art
Ginter US 5,892,900 Apr. 6, 1999
Eckleder US 2007/0260551 A1 Nov. 8, 2007
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Examiner’s Rejections
Claims 1–4, 8–10, 13–17, 39, and 40 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter.
Claims 1–4, 8–10, and 39 stand rejected under 35 U.S.C. § 112, first
paragraph.
Claims 1–4, 8–10, 13–17, 39, and 40 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Ginter and Eckleder.

ANALYSIS
§ 101 Rejection of claims 1–4, 8–10, 13–17, 39, and 40
The Examiner determines claims 1–4, 8–10, 13–17, 39, and 40 are
rejected under 35 U.S.C. § 101 because the claimed subject matter is
directed to a judicial exception (i.e., an abstract idea) without significantly
more. Final Act. 4–6; Ans. 3–5; see Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014) (describing the two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”).
The USPTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (“Guidance”). Under the Guidance, the Office first looks
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., (a) mathematical concepts, (b) certain
methods of organizing human activity such as a fundamental
economic principles and practice, commercial or legal
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interactions, managing personal behavior, relationships,
interpersonal interactions, (c) 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. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Claim 1 recites a “method for distributing digital content, comprising:
storing digital content . . .; obtaining rights information for the digital
content . . .; storing the rights information . . . ; transferring the protected
digital content . . . ; and enabling user access to the digital content.”
The Examiner finds that claim 1 is directed to a method of distributing
digital content, which falls under the abstract idea of certain methods of
organizing human activity. Ans. 3. According to the Examiner, distributing
digital content is a way to manage sales or other transactions. Id. Appellant
contends that claim 1 is not directed to a method of organizing human
activity. Appeal Br. 6–7. In particular, Appellant contends that “the
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independent claims are not directed to any method of organizing human
activity, but are instead directed to the substance and format of digital
content that is distributed.” Reply Br. 4.
We agree with Appellant, that the claimed invention does not fall
within the subject matter groupings of abstract ideas enumerated in the
Guidance. In particular, the Examiner has not provided persuasive
reasoning showing that distributing digital content is a way to manage sales
or other transactions. We find that a “method for distributing digital
content” as claimed is not directed to certain methods of organizing human
activity, such as fundamental economic principles or practices, commercial
or legal interactions, or managing personal behavior or relationships. See
Guidance at 52.
We also determine that the claimed invention does not recite a mental
process, because the claimed invention cannot practically be performed
entirely in the human mind. See 84 Fed. Reg. at 52 n.14. In particular, the
claimed steps of “storing the rights information as part of the description
portion of the digital content to obtain protected digital content” and
“enabling user access to the digital content on the second digital storage
device according to the at least one restriction and the activated license
included with the rights information” require the manipulation of a computer
data structure (rights information, including an activated license and a
restriction to management and use of the digital content on an electronic
device on which the digital content resides, where the rights information is
stored as part of a description portion of the digital content), to enable a user
to access the digital content stored on the electronic device. The human
mind is not equipped to perform these claim limitations. See October 2019
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Update1 at 7; see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375, 1376 (Fed. Cir. 2011) (explaining that the claims in Research
Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and
SiRF Tech., Inc. v. Int'l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), are
directed to inventions that “could not, as a practical matter, be performed
entirely in a human’s mind”).
We are not persuaded that the claims are directed to a judicial
exception to patent-eligible subject matter. Such claims do not need to
undergo the full eligibility analysis. See Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); MPEP § 2106.06(a)-(b).
We do not sustain the rejection of claims 1–4, 8–10, 13–17, 39, and 40 under
35 U.S.C. § 101.

§ 112 Rejection of claims 1–4, 8–10, and 39
The Examiner finds that “enabling user access to the digital content
on the second digital storage device according to the at least one restriction
and the activated license included with the rights information without
accessing a license server” as recited in claim 1 fails to comply with the
written description requirement of 35 U.S.C. § 112. Final Action 7.
According to the Examiner, the specification does not provide the steps or
algorithm that comprise the act of “enabling user access.” Id.
Appellant contends that support for this limitation is found in the
Specification as originally filed in paragraphs 52–56, 61, 69, 71, and Figure
4. Appeal Br. 11. We agree with Appellant. For example, paragraph 52 of

1https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.
pdf
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the Specification discloses that “the DRM (digital rights management)
information is associated with digital content, and not the portable device 14,
the second device can access and/or use the digital content.”
The Examiner does not explain why paragraph 52, or any of the other
portions of the Specification identified by Appellant, fail to reasonably
convey to a person of ordinary skill that the inventors had possession of this
limitation at the time of invention. See Ans. 5–6; Reply Br. 6–7. We do not
sustain the rejection of claims 1–4, 8–10, and 39 under 35 U.S.C. § 112.

§ 103 Rejection of claims 1–4, 8–10, 13–17, 39, and 40
We adopt the findings of fact made by the Examiner in the Final
Action and Examiner’s Answer as our own. We agree with the Examiner
for the reasons given by the Examiner in the Final Action and Examiner’s
Answer. We address the following arguments to complete the record.
Appellant contends that
obtaining rights information for the digital content using a
computing device, where the rights information includes at least
one restriction to management and use of the digital content on
any electronic device on which the digital content resides
without referring to or requiring use of a characteristic of any
electronic device on which the digital content resides
as recited in claim 1 is entitled to patentable weight, and is not taught by
Ginter. Reply Br. 7–8. According to Patent Owner, Ginter does not teach
that the permission record includes a restriction to management and use of
the digital content “without referring to or requiring use of a characteristic of
any electronic device on which the digital content resides.” Id. at 8; Appeal
Br. 13–14.
We agree with Appellant’s contention that this limitation is entitled to
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patentable weight. However, we disagree with Appellant’s contention that
this limitation is not taught by Ginter. We find that Ginter’s disclosure of a
traveling object that includes key blocks 810 of permission record 808, and
can travel from one electronic appliance 600 to another teaches “rights
information [that] includes at least one restriction to management and use of
the digital content . . . without referring to or requiring use of a characteristic
of any electronic device on which the digital content resides” as claimed.
See Ginter, Figs. 17 and 19, 137:50–138:55, 140:25–30, 140:50–54, 155:54–
156:10,; Ans. 7.
Appellant contends that Ginter does not teach “storing the rights
information as part of the description portion of the digital content.” Appeal
Br. 14. Appellant’s contention is inconsistent with Ginter’s disclosure of
permission record 808 stored with content 812, where the permission record
specifies rights associated with the content. Ginter, Figs. 17 and 19, 59:28–
54, 134:31–37, 135:51–58, 137:51–64.
Appellant contends that Ginter does not teach “enabling user access to
the digital content on the second digital storage device according to the at
least one restriction and the activated license included with the rights
information without accessing a license server” as recited in claim 1. Reply
Br. 8; Appeal Br. 14–15. According to Appellant, Ginter does not disclose
“the activated license included with the rights information” as recited in
claim 1. See id.
Appellant’s contention is inconsistent with Ginter’s disclosure of a
traveling object that includes content and a right to use the content. Ginter,
137:65–138:6. Ginter discloses that the right to use content is a license, and
is included in the permission record. Ginter, 269:19–21 (“[E]lectronic
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agreements may surround the use of digitally provided content; for example,
a license to view a digitally distributed movie.”); 270:53–65 (“A common
example . . . is the purchase of software under the terms of a ‘shrink-wrap
license’ . . . to use the service or software. VDE supports this [with] PERCs
(permission records) . . . that describe rights and control information.”); see
id. at 271:14–16, 271:42–60 (“[T]he PERC contains information regarding a
SINGLE use right.”), Figs. 75A and 75B.
Appellant provides additional arguments regarding the combination of
Ginter and Eckleder. Reply Br. 8–10; Appeal Br. 14–17. According to
Appellant, Eckleder teaches that a license is obtained to burn the disc, but
does not teach that the license is stored in a description portion of the digital
content burned on the disc. Reply Br. 9. Ginter teaches storing rights
information in a description portion of the digital content as discussed above
and as shown for example in Figures 17 and 19 (permission record 808
stored with content 812). Ginter also teaches that the rights information
includes a license, such as a right to use the content, as discussed above. We
find that Ginter alone teaches the limitations of claim 1. A disclosure that
anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under
35 U.S.C. § 103, for anticipation is the epitome of obviousness. See In re
Pearson, 494 F.2d 1399, 1402 (CCPA 1974); In re Fracalossi, 681 F.2d
792, 794 (CCPA 1982).
Cumulative to the teachings of Ginter, Eckleder also teaches that
rights information includes a license. Eckleder, Abstract. Including the
license information of Eckleder in the rights information of Ginter yields the
predictable result of an “activated license included with the rights
information” as claimed. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
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416 (2007).
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Claims 2–
4, 8–10, 13–17, 39, and 40, which were not separately argued, fall with
claim 1.2

DECISION
The rejection of claims 1–4, 8–10, 13–17, 39, and 40 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is reversed.
The rejection of claims 1–4, 8–10, and 39 under 35 U.S.C. § 112, first
paragraph is reversed.
The rejection of claims 1–4, 8–10, 13–17, 39, and 40 under
35 U.S.C. § 103 as unpatentable over Ginter and Eckleder is affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).

2 Appellant’s quotation of claim 13 on page 17 of the Appeal Brief and again
on page 10 of the Reply Brief is not an argument for separate patentability.
See 37 C.F.R. § 41.37(c)(iv) “A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claims.”
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Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–4, 8–10, 13–
17, 39, 40
101 patent-
ineligible

1–4, 8–10,
13–17, 39,
40
1–4, 8–10, 39 112 First
paragraph

1–4, 8–10,
39

1–4, 8–10, 13–
17, 39, 40
103 Ginter,
Eckleder

1–4, 8–10,
13–17, 39, 40

Overall
Outcome
1–4, 8–10,
13–17, 39, 40

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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HOMERE, Administrative Patent Judge, dissenting-in part.
I respectfully dissent from the majority’s decision reversing the
Examiner’s rejections of claims 1–4, 8–10, 13–17, 39, and 40. In particular,
the majority decision states that “[w]e agree with Appellant, that the claimed
invention does not fall within the subject matter groupings of abstract ideas
enumerated in the Guidance.” Dec. 5. From that conclusion, I respectfully
dissent.
In prong 1 of revised step 2A of the October 2019 Patent Eligibility
Guidance Update (“Updated Guidance”), we are to determine whether any
judicial exception to patent eligibility is recited in the claims. The Updated
Guidance identifies three judicially-excepted groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, such as fundamental economic practices; and (3) mental processes.
Independent claim 1 recites a “method for distributing digital content”
comprising the steps of:
1. storing digital content (e.g., computer code, 0’s and
1’s) in a first digital storage device;
2. obtaining rights information (e.g. activated license,
passcode) for the digital content;
3. storing rights information ..to obtain protected digital
content;
4. transferring the protected digital content from the first
to a second digital storage device; and
5. enabling user access to the digital content on the
second digital storage device.
In sum, the recited steps are tantamount to a method of distributing
data to authorized users by providing them with copies of the data stored on
a medium. Outside of the computer realm, the recited steps are analogous to
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distributing to selected users copies of the data duplicated on a sheet of
paper. As drafted, these limitations, under their broadest reasonable
interpretation, recite a mental process that can be performed in the human
mind or using a pen and paper. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a
claim whose “steps can be performed in the human mind, or by a human
using a pen and paper” is directed to an unpatentable mental process).
Consequently, I agree with the Examiner that independent claim 1 recites the
mental process of distributing to selected users copies of computer code on a
sheet of paper. Final Act. 5.
Because the method of independent claim 13 recites commensurately
the steps enumerated above, I agree with the Examiner that it is similarly
directed to the mental process of distributing to selected users copies of
computer code on a sheet of paper. Id.
Having determined that the claims recite a judicial exception, my
analysis under the Updated Guidance turns now to determining whether
there are “additional elements that integrate the judicial exception into a
practical application.” See MPEP § 2106.05(a)–(c), (e)–(h).3 “Integration

3 Specifically, I determine whether the claims recite:
(i) an improvement to the functioning of a computer [(or a mobile
device)];
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a different
state or thing; or
(v) other meaningful limitations beyond generally linking the use
of the abstract idea to a particular technological environment.
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into a practical application” requires an additional element or a combination
of additional elements in the claim to 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 exception. 84 Fed. Reg. at 53.
Appellant’s claims 1 and 13 recite computer-related limitations (e.g.,
computing device). I do not find the recited computer-related limitations are
sufficient to integrate the judicial exception into a practical application.
Although the claim nominally requires these steps to be performed by the
computing, this computer implementation of a mental process is insufficient
to take the invention out of the realm of abstract ideas. Versata Dev. Grp. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); Alice, 573 U.S. at 223 (“Stating an abstract idea
while adding the words ‘apply it with a computer’” is insufficient to confer
eligibility.). Further, the Specification does not provide additional details
about the computing device that would distinguish them from any generic
processing devices. Although I do not dispute that the processing includes
specific instructions for performing the recited functions, Appellant has not
explained persuasively how the distributed content is transformed into a new
state or thing. See MPEP § 2106.05(a). Rather, the claims merely adapts in
a computerized environment the mental process of distributing data to
selected users. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that mere

Id.
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automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology.”); see also Bancorp
Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266,
1278 (Fed. Cir. 2012) (A computer “employed only for its most basic
function . . . does not impose meaningful limits on the scope of those
claims.”).
Further, Appellant’s identified improvements are to the abstract idea
itself, not improvements to a technology or computer functionality. That is,
the cited claim limitations do not improve the functionality of the processing
devices by performing operations to distribute the data top selected users,
nor do they achieve an improved technological result in conventional
industry practice. See McRO, Inc. v. Bandai Namco Games Am., Inc., 837
F.3d 1299, 1316 (Fed. Cir. 2016). Thus, I do not agree with Appellant that
the claims recite an additional element reflecting an improvement in the
functioning of a computer, or an improvement to other technology or
technical field. See DDR Holdings773 F.3d at 1258–59.
Nor do the claims recite an additional element that implements the
abstract idea with a particular machine or manufacture that is integral to the
claim. Instead, the claim limitations only recite additional elements that add
insignificant extra-solution activity to the judicial exception. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011). Prior to the Internet, such activities were widely practiced, and
became computerized to facilitate the distribution of data to authorized
users. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1364 (Fed. Cir. 2015).
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Because the claimed subject matter outlined above does not (1)
provide any technical solution to a technical problem as required by DDR
Holdings;4 (2) provide any particular practical application as required by
BASCOM; or (3) entail an unconventional technological solution to a
technological problem as required by Amdocs,5 I agree with the Examiner’s
determination that Appellant’s claims 1 and 13 are directed to an abstract
idea that is not integrated into a practical application. Final Act. 5.
Alice/Mayo—Step 2B (Inventive Concept)
Turning to step 2B of the Updated Guidelines, I look to whether the
claim: (a) recites a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field; or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 84 Fed. Reg. 56; see Alice, 573 U.S. at 217 (“[W]e consider the
elements of each claim both individually and ‘as an ordered combination’”
to determine whether the claim includes “significantly more” than the
ineligible concept); see also BASCOM, 827 F.3d at 1350 (“[A]n inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.”).

4 The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR’s claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257.
5 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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I discern no additional element or combination of elements recited in
Appellant’s independent claims 1 and 13 that contain any “inventive
concept” or add anything “significantly more” to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221. I am not
persuaded by Appellant’s remarks, noted above, alleging the claims are
directed to a non-routine and unconventional system because it entails
instructing a remote computing device to process an attachment. Appellant
has failed to establish on this record how the processing of an attachment by
a remote computing device according to received instructions is
distinguished from the conventional processing of data routed to an
identified party as per the instructions provided by a requesting party. I
agree with the Examiner that using generic processing devices to collect,
copy and distribute data in the manner suggested is a routine and
conventional approach to data management. Final Act. 5.
As noted above, Appellant does not direct our attention to any portion
of the Specification indicating that the claimed processing and
communication devices perform anything other than well-understood,
routine, and conventional functions, such as collecting, copying and
distributing data. See Elec. Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of
the [S]pecification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information.”); see also Alice, 573 U.S. at 224–26
(receiving, storing, sending information over networks insufficient to add an
inventive concept); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (“That a computer receives and sends the information over
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a network—with no further specification—is not even arguably inventive.”).
Instead, Appellant’s claimed subject matter simply uses generic computer
components (computer system) to perform the abstract idea of distributing
copies of collected data to selected users. As noted above, the use of a
generic computer does not alone transform an otherwise abstract idea into
patent-eligible subject matter. As our reviewing court has observed, “after
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.” DDR, 773
F.3d at 1256 (citing Alice, 573 U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, individually
and in combination, the claim is devoid of an inventive concept. See Alice,
573 U.S. at 217. “[T]he ‘inventive concept’ [under the second part of the
Mayo/Alice test] cannot be the abstract idea itself” and “Berkheimer . . .
leave[s] untouched the numerous cases from [the Federal Circuit] which
have held claims ineligible because the only alleged ‘inventive concept’ is
the abstract idea.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir.
2018) (Moore, J., concurring). “It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). I, therefore, agree with the Examiner that the
computer functions recited in the claims were, in fact, generic, and are met
by numerous precedent establishing that using a generic computer to
expedite and automate processes traditionally performed manually, or that
are otherwise abstract, is a well-understood, routine, and conventional use of
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such computers. Final Act. 4–5; see also, e.g., Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d at 1321 (utilizing an intermediary computer to
forward information); Bancorp Services, L.L.C., 687 F.3d at 1278 (“The
computer required by some of Bancorp’s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.”).
Therefore, I conclude that the elements of claims 1 and 13, both
individually and as an ordered combination, do not provide an inventive
concept. See 84 Fed. Reg. 56; see also Berkheimer, 881 F.3d at 1370 (“The
limitations amount to no more than performing the abstract idea of parsing
and comparing data with conventional computer components.”); Bancorp,
687 F.3d at 1278 (“[T]he use of a computer in an otherwise patent-ineligible
process for no more than its most basic function—making calculations or
computations—fails to circumvent the prohibition against patenting abstract
ideas and mental processes.”).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
the cited references, Appellant misapprehends the controlling precedent.
Although the second part in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but, rather, a 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,
573 U.S. at 217–218 (quoting Mayo, 566 U.S. 72–73). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
Appeal 2019-004560
Application 11/455,458

20
In many cases, “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
OIP Techs., 788 F.3d at 1363 (citing Alice, 573 U.S. at 224) (“[U]se of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions” is not an inventive concept.); see also, e.g.,
Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d at 1370
(“[M]erely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea.”). Therefore, the functions recited in independent claims 1 and 13 do
not add meaningful limitations beyond generally linking the abstract idea to
the particular technological environment. See Final Act. 5.
Because Appellant’s claims 1 and 13 are directed to a patent-ineligible
abstract concept and do not recite something “significantly more” under the
second prong of the Alice analysis, I would sustain the Examiner’s rejection
of independent claims 1 and 13 under 35 U.S.C. § 101.
Appellant does not present additional arguments for dependent claims
2–4, 8–10, 13–17, 39, and 40. Accordingly, for the same reasons as set forth
for independent claims 1 and 13, I would sustain the Examiner’s 35 U.S.C.
§ 101 rejection of dependent claims 2–4, 8–10, 13–17, 39, and 40.
For the foregoing reasons, I would affirm the Examiner’s patent
inegibility rejection of claims 1–4, 8–10, 13–17, 39, and 40.