Sankara Narayanan

Patent Trials and Appeals Board

Aug 8, 2019

13798988 - (D) (P.T.A.B. Aug. 8, 2019)

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.
13/798,988 03/13/2013 Sankara Narayanan EMC-12-1019 8846
80167 7590 08/08/2019
Ryan, Mason & Lewis, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/08/2019 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):
jbr@rml-law.com
nyoffice@rml-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANKARA NARAYANAN
____________

Appeal 2018-005254
Application 13/798,988
Technology Center 3600
____________

Before JOSEPH P. LENTIVECH, NABEEL U. KHAN, and
SCOTT RAEVSKY, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 7, 10–13, 15, 17, and 21–29.
Claims 4, 6, 8, 9, 14, 16, and 18–20 have been canceled. See App. Br. 21–
27 (Claims Appendix). We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.

1 Appellant states “[t]he assignee of record, EMC IP Holding Company
LLC, and the applicant, EMC Corporation, are direct or indirect subsidiaries
of Dell Technologies” and “[e]ach of the foregoing may be deemed a real
party in interest for the purposes of 37 C.F.R. 41.37(c)(l)(i).” App. Br. 2.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention generally relates to “information processing
techniques for leveraging competitive knowledge compiled by an entity.”
Spec. 1:4–5. Claim 1, which is illustrative of the claimed invention, reads as
follows:
1. A method comprising the steps of:
obtaining a dataset representing competitive knowledge
information associated with at least one business entity, wherein
the competitive knowledge information comprises historical
sales data of the business entity, product or service data of the
business entity, and data associated with one or more competitors
of the business entity;
providing an interface module resident on a mobile device
associated with one or more agents of the business entity,
wherein the mobile device is connected to at least one server of
the business entity over a network communication channel;
receiving a query from the one or more agents of the
business entity via the interface module resident on the mobile
device, wherein the query specifies one or more fields including
at least one of a product or service of the business entity, a
segment associated with the product or service of the business
entity, a price associated with the product or service of the
business entity, a name of the one or more competitors of the
business entity, and a product or service of the one or more
competitors of the business entity;
analyzing, in response to the query, at least a portion of the
obtained dataset in real-time via a data analytics engine, wherein
the data analytics engine comprises a dataset based analytics
engine and wherein the analyzing comprises using the dataset
based analytics engine to mine the competitive knowledge
information based on the specified one or more fields in the
query;
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generating, in response to the query, a predictive data
model in real-time based on the analysis of the portion of the
obtained dataset, wherein the predictive data model is usable to
guide subsequent business actions of the business entity;
generating, in response to the query, at least one of a
probability model and a heat map based on the predictive data
model;
generating, in response to the query, a business threat
probability graph based on at least one of the probability model
and the heat map, wherein generating the business threat
probability graph comprises identifying the one or more
competitors of the business entity, and displaying a percentage
chance that the business entity will lose business to the one or
more competitors in connection with the product or service of the
business entity;
transmitting, in real-time, in response to the query, results
yielded from the predictive data model over the network
communication channel to the mobile device associated with the
one or more agents of the business entity;
converting the transmitted results into a mobile form; and
displaying the transmitted results in the mobile form on
the mobile device;
wherein the transmitted results include the business threat
probability graph and at least one of the probability model and
the heat map;
wherein the interface module resident on the mobile
device enables the display of the transmitted results in the mobile
form in real-time;
wherein real-time comprises a time contemporaneous with
one or more activities being performed by the one or more agents
of the business entity; and
wherein the steps of the method are executed via at least
one processor device.
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Rejection
Claims 1–3, 5, 7, 10–13, 15, 17, and 21–29 stand rejected under 35
U.S.C. § 101 because the claimed subject matter is judicially-excepted from
patent eligibility under § 101. Final Act. 2–6.

Issue on Appeal
Did the Examiner err in finding that claims 1–3, 5, 7, 10–13, 15, 17,
and 21–29 are directed to subject matter that is judicially-excepted from
patent eligibility under § 101?

ANALYSIS
Appellant argues claims 1–3, 5, 7, 10–13, 15, 17, 21–23, 26, and 27
together as a group. See App. Br. 12–17. In accordance with 37 C.F.R.
§ 41.37(c)(1)(iv), we select independent claim 1 as the representative claim
for this group. Remaining claims 2, 3, 5, 7, 10–13, 15, 17, 21–23, 26, and
27 stand or fall together with claim 1. Appellant presents separate
arguments for the patentability of claims 24 and 28 (App. Br. 17–18) and
claims 25 and 29 (App. Br. 19), which we address below under separate sub-
headings.

Claims 1–3, 5, 7, 10–13, 15, 17, 21–23, 26, and 27
A. Section 101
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
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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.”). According to the Court, concepts determined to be abstract
ideas and, thus, patent ineligible, include (1) certain methods of organizing
human activity, such as fundamental economic practices (Alice, 573 U.S. at
219–20; Bilski, 561 U.S. at 611); (2) mathematical formulas (Parker v.
Flook, 437 U.S. 584, 594–95 (1978)); and (3) mental processes (Gottschalk
v. Benson, 409 U.S. 63, 67 (1972)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Having said that, the Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook). Nevertheless, the
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Court noted that “[i]t is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.” Id. at 187; see also BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)
(Even if the individual components were known, “an inventive concept can
be found in the ordered combination of claim limitations that transform the
abstract idea of filtering content into a particular, practical application of
that abstract idea” (emphasis added).).
If the claim is “directed to” an abstract idea, we next “must examine
the elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (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.
B. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two-part test, the Office published revised guidance on
the application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).2 In Step One of our analysis, we

2 This guidance supersedes previous guidance memoranda. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 (“All
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look to see whether the claims, as written, fall within one of the four
statutory categories identified in § 101. Id. at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in MPEP
2106, i.e., whether the claim is to a statutory category (Step 1) and the
Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”).
Under the guidance, we then look to whether the claim recites:
(1) Step 2A – Prong One: any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity, such as a
fundamental economic practice, or mental processes); and
(2) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP3
§§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
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.

USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.”).
3 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
C. Step One – Claims Are Directed to Statutory Categories
Appellant’s independent claim is directed to a method (i.e.,
“processes”). App. Br. 21–22 (Claims Appendix); see MPEP § 2106.03.
Thus, claim 1 is directed to a recognized statutory category. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 53–54.
D. Two-Part Alice/Mayo Test
1. Step 2A, Prong One – Claims Are “Directed To” Abstract Idea
Applying the first part of the Alice/Mayo analysis (Step 2A), the
Examiner finds claim 1 recites:
an abstract idea which can be described as “certain methods of
organizing human activity[,]” which includes concepts relating
to interpersonal and intrapersonal activities, such as managing
relationships or transactions between people, social activities,
and human behavior; satisfying or avoiding a legal obligation;
advertising, marketing, and sales activities or behaviors; and
managing human mental activity.
Final Act. 3. The Examiner also finds the claims recite the abstract ideas of
mental processes and mathematical concepts. Id. We agree.
Claim 1 recites:
obtaining a dataset representing competitive knowledge
information associated with at least one business entity, wherein
the competitive knowledge information comprises historical
sales data of the business entity, product or service data of the
business entity, and data associated with one or more competitors
of the business entity;
. . . .
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receiving a query from the one or more agents of the
business entity via the interface module resident on the mobile
device, wherein the query specifies one or more fields including
at least one of a product or service of the business entity, a
segment associated with the product or service of the business
entity, a price associated with the product or service of the
business entity, a name of the one or more competitors of the
business entity, and a product or service of the one or more
competitors of the business entity;
analyzing, in response to the query, at least a portion of the
obtained dataset in real-time via a data analytics engine, wherein
the data analytics engine comprises a dataset based analytics
engine and wherein the analyzing comprises using the dataset
based analytics engine to mine the competitive knowledge
information based on the specified one or more fields in the
query; [and]
. . . .
transmitting, in real-time, in response to the query, results
yielded from the predictive data model over the network
communication channel to the mobile device associated with the
one or more agents of the business entity.
App. Br. 21–22 (Claims Appendix). These limitations, as drafted, are
processes that, under their broadest reasonable interpretation, are marketing
or sales activities. See e.g., Spec. 1:8–19. Thus, we agree with the
Examiner (Final Act. 3) that claim 1 recites certain methods of organizing
human activity determined to be an abstract idea. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52.
Claim 1 also recites:
generating, in response to the query, a predictive data
model in real-time based on the analysis of the portion of the
obtained dataset, wherein the predictive data model is usable to
guide subsequent business actions of the business entity;
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generating, in response to the query, at least one of a
probability model and a heat map based on the predictive data
model; [and]
generating, in response to the query, a business threat
probability graph based on at least one of the probability model
and the heat map, wherein generating the business threat
probability graph comprises identifying the one or more
competitors of the business entity, and displaying a percentage
chance that the business entity will lose business to the one or
more competitors in connection with the product or service of the
business entity.
App. Br. 21 (Claims Appendix). We agree with the Examiner (Final Act. 3),
that these limitations, as drafted, are processes that, under their broadest
reasonable interpretation, recite mathematical concepts because the
Specification describes these steps as a process of organizing information
through mathematical correlations. Spec. 6:13–8:7, 12:14–23, Figs. 2–7;
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) (holding that claims reciting a “process of organizing
information through mathematical correlations” are directed to an abstract
idea); 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. at 52.
Accordingly, we find claim 1 recites one or more abstract ideas.

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2. Step 2A, Prong Two – Abstract Idea Is Not Integrated Into
Practical Application4
Under “Step 2A, Prong Two,” we determine whether the claim as a
whole integrates the recited judicial exception into a practical application of
the exception. Memorandum, 84 Fed. Reg. at 54. Claim 1 recites the
following additional elements:
providing an interface module resident on a mobile device
associated with one or more agents of the business entity,
wherein the mobile device is connected to at least one server of
the business entity over a network communication channel;
. . . .
converting the transmitted results into a mobile form; and
displaying the transmitted results in the mobile form on the
mobile device;
wherein the transmitted results include the business threat
probability graph and at least one of the probability model and
the heat map;
wherein the interface module resident on the mobile device
enables the display of the transmitted results in the mobile form
in real-time;
wherein real-time comprises a time contemporaneous with one
or more activities being performed by the one or more agents of
the business entity; and

4 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate those considerations under first part of the Alice/Mayo
analysis (Step 2A of the Office guidance). See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. at 55 nn.25, 27–32.
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wherein the steps of the method are executed via at least one
processor device.
App. Br. 21–22 (Claims Appendix).
We find these additional limitations fail to integrate the judicial
exception into a practical application. For example, the claims do not (1)
improve the functioning of a computer or other technology, (2) are not
applied with any particular machine (except for a generic computer), (3) do
not effect a transformation of a particular article to a different state, and (4)
are not applied in any meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See Memorandum, 84 Fed. Reg. at 54–55; MPEP
§§ 2106.05(a)–(c), (e)–(h). Rather, the additional elements simply refine the
recited abstract idea, add insignificant extra-solution activity, or constitute
generic computer components that are merely used as tools to automate the
claimed process. See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1348 (Fed. Cir. 2016); see also Spec. 8:19–21 (“Examples of
such mobile devices include, but are not limited to, a cellular phone or
smartphone, a tablet, a laptop computer or other personal computer, and a
personal digital assistant.”), 9:25–10:22 (describing server 202), 10:24–27
(“Such components can communicate with other elements of the system 200
over any type of network, such as a wide area network (WAN), a local area
network (LAN), a satellite network, a telephone or cable network, or various
portions or combinations of these and other types of networks.”).
Appellant contends claim 1 “is directed to improvements in the
functioning of a computer.” App. Br. 12. In this regard, Appellant argues
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the claims are similar to the claims in Enfish, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016). App. Br. 12–13. Appellant argues the claims
“provide improvements in the functioning of mobile devices not configured
to handle ‘big data’ by offloading processing to a server that is configured to
mine competitive knowledge information in response to queries from
interface modules resident on mobile devices.” App. Br. 13.
Appellant further argues the claims are similar to the claims in McRO,
Inc. v. Bandai Namco Games America, Inc. et al., 837 F.3d 1299 (Fed. Cir.
2016) because “similar to the claims at issue in McRO, [claim 1] recites
features that represent ‘rules’ for a specific process of providing data to a
mobile device for display” and “recites a particular solution to a problem.”
App. Br. 14–15. Appellant argues claim 1, therefore, “is directed to
improvements in computer-related technology, and thus is not directed to an
abstract idea under the first step of the Alice analysis.” Id.
Additionally, Appellant argues the claims are similar to the claims in
BASCOM and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014). App. Br. 15–16. Appellant argues like the claims in BASCOM,
“claim 1 recites an inventive concept including but not limited to
transforming the allegedly abstract idea ‘into a particular, practical
application of that abstract idea’” and “claim 1 provides specific
improvements in the functioning of mobile devices, specifically in providing
real-time processing of ‘big data’ competitive knowledge information.”
App. Br. 15. Appellant argues claim 1 is similar to the claims in DDR
because claim 1 solves a problem (the “difficulties of handling ‘big data’ or
competitive knowledge information in devices with limited computing
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resources, such as mobile devices”) that is necessarily rooted in computer
technology. App. Br. 15–16.
We do not find Appellant’s arguments persuasive. Appellant neither
claims nor describes any technological improvement that carries out the
functionality of offloading processing to a server that is configured to mine
competitive knowledge information in response to queries from interface
modules resident on mobile devices may provide an improvement in the
functioning of mobile devices not configured to handle “big data.” Rather,
Appellant merely claims a desired result without specifying how that result
is to be achieved. For example, claim 1 does not require the analyzing and
generating steps to be performed by a server that is configured to mine
competitive knowledge information in response to queries from interface
modules resident on mobile devices. In fact, claim 1 does not require these
steps to be performed by any particular device. Neither does claim 1 require
offloading the processing of big data to a server. Instead, claim 1 merely
recites “obtaining [e.g., by a server configured to mine competitive
knowledge information in response to queries from interface modules
resident on mobile devices] a dataset representing competitive knowledge
information associated with at least one business entity.”
By contrast, in DDR, the Federal Circuit determined “the claimed
solution amount[ed] to an inventive concept for resolving [a] particular
Internet-centric problem,” i.e., a challenge unique to the Internet. DDR, 773
F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR Holdings, we held that
claims ‘directed to systems and methods of generating a composite web page
that combines certain visual elements of a “host” website with content of a
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third-party merchant’ contained the requisite inventive concept”). The
Federal Circuit explained that the patent-eligible claims specified “how
interactions with the Internet are manipulated to yield a desired result . . .
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” DDR, 773 F.3d at 1258. The court
reasoned that those claims recited a technological solution “necessarily
rooted in computer technology” that addressed a “problem specifically
arising in the realm of computer networks.” DDR, 773 F.3d at 1257.
We are also not persuaded that the claims are similar to the claims in
BASCOM. In BASCOM, the court found “the patent describes how its
particular arrangement of elements is a technical improvement,” and, when
construed in favor of BASCOM, the claims may be read to improve an
existing technological process. BASCOM, 827 F.3d at 1350. Here, claim 1
does not improve an existing technological process, but rather uses existing
technology to perform the abstract idea or merely claims a desired functional
goal. Additionally, unlike the arrangement of elements (i.e., installation of a
filtering tool at a specific location) in BASCOM, claim 1 does not recite a
non-conventional and non-routine arrangement of known elements. See id.
at 1349–50.
We also disagree that claim 1 is similar to the claims found eligible in
McRO and Enfish. The claims in McRO—unlike the claims here—recited a
“specific . . . improvement in computer animation” using “unconventional
rules” that related “sub-sequences of phonemes, timings, and morph weight
sets” to automatically animate lip synchronization and facial expressions for
three-dimensional characters that only human animators could previously
produce. McRO, 837 F.3d at 1302–03, 1307–08, 1313–15. In McRO, “the
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incorporation of the claimed rules” improved an existing technological
process. Id. at 1314.
In contrast, claim 1 does not improve an existing technological
process. See Enfish, 822 F.3d at 1335–36 (distinguishing between claims
wherein the focus of the claims is on an improvement in computer
capabilities and those that invoke a computer as a tool). As drafted, claim 1,
under its broadest reasonable construction, does not require that the claimed
steps be performed by any particular device but, instead, merely claim using
any known technology to perform its known function of executing software
applications as a tool to process data and output a result. See Alice, 573 U.S.
at 222 (using a computer to perform known processes is not enough to
supply an inventive concept).
For the foregoing reasons, we conclude claim 1 does not integrate the
recited judicial exceptions into a practical application. As such, claim 1 is
directed to the recited judicial exceptions.
3. Step 2B – Not Significantly More Than the Abstract Idea
Because we find that claim 1 is directed to a judicial exception, we
next consider whether the claim includes additional limitations, such that the
claim amounts to significantly more than the abstract idea. Applying the
second part of the Alice/Mayo test, the Examiner concludes the claim does
not include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements of the claim
are: “(i) mere instructions to implement the idea on a computer, and/or (ii)
recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
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activities previously known to the pertinent industry, such as data entry,
collection, display, or reporting.” Final Act. 5. We agree.
Claim 1 fails to recite specific limitations (or a combination of
limitations) that are not well-understood, routine, and conventional. Rather,
the additional elements are generic computer components recited at a high
level of generality or basic computer functions, none of which recite
limitations beyond what was well-understood, routine, and conventional in
the art. See Berkheimer Memo5 § III.A.I; Spec. 6:12–20, 12:14–23; see also
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (generic computer components such as an
“interface,” “network,” and “database” fail to satisfy the inventive concept
requirement).
Appellants argue, because there are no prior art rejections of claim 1,
the elements of claim 1 amount to significantly more than the identified
abstract idea. App. Br. 16–17. This argument improperly conflates the test
for § 101 with the separate tests for §§ 102 and 103. See, e.g., Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“[U]nder
the Mayo/Alice framework, a claim directed to a newly discovered law of
nature (or natural phenomenon or abstract idea) cannot rely on the novelty of

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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that discovery for the inventive concept necessary for patent eligibility.”);
see also Diamond 450 U.S. at 188–89 (“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.”). As the Federal Circuit
has explained, it is not “enough for subject-matter eligibility that claimed
techniques be novel and nonobvious in light of prior art, passing muster
under 35 U.S.C. §§ 102 and 103.” SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018); Synopsys, 839 F.3d at 1151 (“[A] claim
for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.”);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016). Thus, we agree with the Examiner that the additional limitations
in claim 1, individually or as an ordered combination, do not amount to
significantly more than an abstract idea.
For the above reasons, Appellant has not persuaded us of Examiner
error, and we sustain the Examiner’s rejection of claims 1–3, 5, 7, 10–13, 15,
17, 21–23, 26, and 27 under 35 U.S.C. § 101.

Claims 24 and 28
Claim 24 depends from claim 1 and recites, “wherein the dataset
based analytics engine performs parallel processing of large amounts of data
in real-time.” Claim 28 depends from claim 11 and recites corresponding
limitations. Regarding these claims, Appellant argues “the ‘parallel
processing of large amounts of data in real-time’ . . . provides improvement
in the functioning of a computer as in Enfish and improvements in
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computer-related technology as in McRO.” App. Br. 18. Appellant’s
conclusory statement amounts to little more than a paraphrasing of the claim
language and a general statement that the claims are similar to the claims in
Enfish and McRO, and thus is unpersuasive to rebut the Examiner’s prima
facie case of patent ineligibility. Cf. 37 C.F.R. § 41.37(c)(iv); see also In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 24 and 28.

Claims 25 and 29
Claim 25 depends from claim 1 and recites, “wherein the dataset
comprises data whose size is beyond an ability of a standard data software
tool to process the data within real-time.” Claim 29 depends from claim 11
and recites corresponding limitations. Regarding these claims, Appellant
argues, “the ability to analyze the dataset having a size beyond the ability of
standard data software tools to process within real-time provides a solution
to a problem that is necessarily rooted in computer technology.” App.
Br. 19. Appellant further argues:
[T]he “problem” is in handling “big data” (e.g., the recited
dataset whose size is beyond an ability of a standard data
software tool to process within real-time) in devices with limited
computing resources (e.g., the recited mobile device). The
solution in illustrative embodiments is to offload mining of
competitive knowledge information from the mobile device to
servers (e.g., the recited at least one processor device) of an entity
with the servers returning results of mining the competitive
knowledge information in mobile form in real-time in response
to queries. Thus, claim 25 is similar to the claims at issue in DDR
Holdings, which the Federal Circuit held were directed to
statutory subject matter under § 101.
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Application 13/798,988

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Id. Additionally, Appellant argues the claims provide “improvement in the
functioning of a computer as in Enfish and improvements in computer-
related technology as in McRO” for the reasons discussed above with respect
to claim 1. Id.
We do not find Appellant’s arguments persuasive. As discussed
above with respect to claim 1, the claimed “analyzing,” is part of the abstract
idea to which the claim is directed. Thus, the limitations recited in claims 25
and 29 merely serve to further narrow the abstract idea. The abstract idea
itself cannot supply the inventive concept, “no matter how groundbreaking
the advance.” SAP Am., Inc., 898 F.3d at 1171. We are not persuaded that
the claims are similar to the claims in DDR, Enfish, and McRO for the
reasons discussed above with respect to claim 1.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 25 and 29.

DECISION
We affirm the Examiner’s rejection of claims 1–3, 5, 7, 10–13, 15, 17,
and 21–29 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED