Rajamani, Nithya et al.

Patent Trials and Appeals Board

May 29, 2020

12824701 - (R) (P.T.A.B. May. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/824,701 06/28/2010 Nithya Rajamani IN920100053US1(790.068) 1359
89885 7590 05/29/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
05/29/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NITHYA RAJAMANI and
ANUPAM SARONWALA

Appeal 2018–007685
Application 12/824,701
Technology Center 3600

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE1
The Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52
of the Decision on Appeal.
In the Decision on Appeal, the Board affirmed the rejection of
claims 1–25 under 35 U.S.C. § 101 for claiming patent-ineligible subject
matter.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). This Decision references the Appellant’s Request for
Rehearing (“Req.”), filed Feb. 17, 2020, and the Board Decision (“Dec.”),
mailed December 17, 2019.
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The Request raises two points believed to have been misapprehended
or overlooked.
First, the Appellant disagrees with the Board’s determination
(Dec. 11) that certain claimed subject matter falls in the “Mental processes”
grouping set forth in the 2019 Revised 101 Guidance.2 Dec. 11, referring to
Prong One (“Evaluate Whether the Claim Recites a Judicial Exception”) of
Step 2A of the 2019 Revised 101 Guidance 84 Fed. Reg. at 543 and 52.4
Req. 1–7.
Second, the Appellant disagrees with the Board’s determination that
“within the meaning of the 2019 Revised 101 Guidance, we find there is no
integration into a practical application.” Dec. 21, referring to Prong Two (“If
the Claim Recites a Judicial Exception, Evaluate Whether the Judicial
Exception Is Integrated Into a Practical Application”) of Step 2A of the 2019
Revised 101 Guidance 84 Fed. Reg. at 54. Req. 7–9.

Mental processes
Appellant begins by stating that “in order to fall within the grouping
of mental processes [per the 2019 Revised Guidance], the claims would need
to recite ‘an observation, evaluation, judgment, [or] opinion.’ Revised

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019), hereinafter "2019 Revised 101 Guidance."
3 "To determine whether a claim recites an abstract idea in Prong One,
examiners are now to: ... (b) determine whether the identified limitation(s)
falls within the subject matter groupings of abstract ideas enumerated in
Section 1 of the [2019 Revised 101 Guidance]”
4 “(c) Mental processes - concepts performed in the human mind (including
an observation, evaluation, judgment, opinion).”
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Guidance, pp. 52 - 53. Applicant respectfully submits that the claims do not
recite an observation, evaluation, judgment, or opinion.” Req. 3–4.
The Appellant inaccurately represents what the 2019 Revised
Guidance actually says, which is “(c) Mental processes - concepts performed
in the human mind (including an observation, evaluation, judgment,
opinion).” 2019 Revised Guidance, 84 Fed. Reg. at 52 (emphasis added).
Accordingly, the “mental processes” grouping for Guidance purposes is not
limited to an observation, evaluation, judgment, opinion. It covers other
concepts as long as they can be performed in the human mind. That would
include, for example, a “mere idea.” See 2019 Revised Guidance, 84 Fed.
Reg. at 53 n.15 (quoting In re Brown, 645 F. App’x 1014, 1017 (Fed. Cir.
2016) (non–precedential)).
The Appellant then identifies various claim limitations that allegedly
“cannot be performed in the mind.” Req. 4.
The Appellant argues that “[a] machine-generated network
representation cannot be performed in the human mind.” Req. 4. However,
the claim (claim 1) does not call for generating a network representation by a
machine. It calls for “representing supplier nodes in a supplier side of a
machine-generated network representation.” Humans have long been able
to make representations using the mind alone. Representing an element “of a
machine-generated network representation,” such as supplier nodes in a
supplier side, is something a human mind can perform.
The Appellant argues that “[n]odes of a machine generated network
representation cannot be performed in the human mind, rather, these are
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specific to a graph . . . .” Req. 4. But the claim does not call for performing
nodes. It calls for “representing” nodes.
According to the Appellant,
the claims require that “a supplier-client relationship in the
network representation” is established and that this relationship
identify “at least one interaction between the at least one
customer of at least one supplier node and at least one client node
and wherein each of the at least one interactions affects the global
orientation and the current orientation and wherein an orientation
outcome is identified from the at least one interaction, wherein
the orientation outcome identifies a level of positive or negative
outcome resulting from the at least one interaction.” Claim 1.
Req. 4. The Appellant argues that “these are not things that would be
performed in the mind” and they “would be very difficult” for a human mind
to perform. However, that does not mean these steps cannot be performed in
the human mind.
On page 5 of the Request, the Appellant identifies other claim
limitations that a human mind “would” not perform or it “would be
extremely difficult.” Again, that does not mean these steps cannot be
performed in the human mind.
Finally, the Appellant repeats “that even if possible to perform in the
human mind, these limitations are not observations, evaluations, judgments,
or opinions, those categories being which Revised Guidance has identified
as Mental Processes.” Req. 6. That point is addressed above.

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Integration into a practical application
The Appellant argues that
The claims are drafted in a manner where any judicial
exception is very narrowly tailored to a specific application,
specifically, an application of representing supplier and client
relationships within a network representation and iteratively
updating scores associated with nodes within the representation
based upon interactions and outcomes of the interactions
between suppliers and clients. In the event that the claims do
include a judicial exception, this judicial exception is directed
toward a very particular application within the claims and does
not monopolize the judicial exception. In other words, as argued
in the Appeal Brief and Reply Brief, the claims do not “tie up” a
particular technological field, but are rather directed toward a
very particular application of any judicial exception. Thus,
Applicant respectfully submits that, in the event that the PTAB
moves to Step 2A: Prong Two, that the claims integrate any
judicial exception into a practical application and are, thus,
patent eligible per Revised Guidance.
Req. 8.
The Appellant does not explain, and we are unable to discern, what
we have misapprehended or overlooked in applying Step 2A, Prong Two, of
the 2019 Revised Guidance in reaching our determinations.
The Appellant appears to be arguing that the claim does not preempt
an abstract idea. See Req. 8 (“does not monopolize the judicial exception”).
It is true that the Supreme Court has characterized pre-emption as a
driving concern for patent eligibility. See Alice Corp. v. CLS Bank Int’l,
134 S. Ct. 2347, 2354 (2014). But characterizing pre-emption as a driving
concern for patent eligibility is not the same as characterizing pre-emption as
the sole test for patent eligibility. “The Supreme Court has made clear that
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the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct.
at 2354). However, “[w]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, 788 F.3d at 1379. Cf. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir.) (“[T]hat the claims do
not preempt all price optimization or may be limited to price optimization in
the e-commerce setting do not make them any less abstract.”) Because we
find the claimed subject matter covers patent-ineligible subject matter,
the pre-emption concern is necessarily addressed. “Where a patent’s
claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, . . . preemption concerns are fully
addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379.

CONCLUSION
We have carefully considered the Request and, for the foregoing
reasons, we do not find it persuasive as to error in the Board’s Decision of
December 17, 2019, to affirm the rejection of claims 1–25 under 35 U.S.C.
§ 101 for claiming patent-ineligible subject matter.
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Basis Granted Denied
1–25 101 Eligibility 1–25
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Final Outcome of Appeal After Rehearing:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–25 101 Eligibility 1–25

DENIED