Nakada, Mark W. et al.Download PDFPatent Trials and Appeals BoardMar 31, 202011455458 - (D) (P.T.A.B. Mar. 31, 2020) Copy Citation 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 Appeal 2019-004560 Application 11/455,458 2 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 Appeal 2019-004560 Application 11/455,458 3 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 Appeal 2019-004560 Application 11/455,458 4 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 Appeal 2019-004560 Application 11/455,458 5 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 Appeal 2019-004560 Application 11/455,458 6 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 Appeal 2019-004560 Application 11/455,458 7 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 Appeal 2019-004560 Application 11/455,458 8 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 Appeal 2019-004560 Application 11/455,458 9 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, Appeal 2019-004560 Application 11/455,458 10 416 (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.” Appeal 2019-004560 Application 11/455,458 11 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 Appeal 2019-004560 Application 11/455,458 12 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 Appeal 2019-004560 Application 11/455,458 13 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. Appeal 2019-004560 Application 11/455,458 14 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. Appeal 2019-004560 Application 11/455,458 15 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). Appeal 2019-004560 Application 11/455,458 16 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). Appeal 2019-004560 Application 11/455,458 17 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 Appeal 2019-004560 Application 11/455,458 18 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 Appeal 2019-004560 Application 11/455,458 19 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. Copy with citationCopy as parenthetical citation