Scott Adler et al.

Patent Trials and Appeals Board

Aug 7, 2019

12547936 - (D) (P.T.A.B. Aug. 7, 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.
12/547,936 08/26/2009 Scott Adler 27753-50050US 6176
132324 7590 08/07/2019
Fernando & Partners LLP
2712 Augustine Drive
Suite 240
Santa Clara, CA 95054
EXAMINER
CHOY, PAN G
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/07/2019 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):
mail@fernando-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT ADLER, LALA DUTTA,
ANGELA ELODIA ANGELONE, and PATRICK COFFMAN1
Appeal 2018-003636
Application 12/547,936
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 6–10, 20–22, 24–26, and 28–41, which are all the
claims pending in the application. Appellants have canceled claims 2–5, 11–
19, 23, and 27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as Apple, Inc. Appeal Br. 1.
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BACKGROUND2
The claims are directed to a scheduling recurring calendar events.
Spec. ¶ 8. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method, comprising:
[(1)] at an invitee computing device comprising a display
and one or more input devices:
[(2)] receiving, at the invitee computing device and from
an organizer computing device that is communicatively coupled
to the invitee computing device, an invitation for a recurring
event created by a user of the organizer computing device;
[(3)] displaying, on the display, a first calendar interface
comprising the invitation for the recurring event and
comprising a displayed option to accept the recurring event, the
recurring event comprising a plurality of occurrences;
[(4)] while displaying, on the display, the invitation,
receiving, via the one or more input devices, an input that
corresponds to selection of the displayed option to accept the
recurring event,
[(5)] in response to receiving the input that corresponds
to selection of the displayed option to accept the recurring
event:
[(5a)] in accordance with a determination that the
recurring event does not include any conflicting
occurrences, accepting the recurring event without
displaying a conflict-resolution interface, and
[(5b)] in accordance with a determination that the
recurring event does includes one or more conflicting
occurrences that conflict with one or more existing

2 Throughout the Decision we have considered the Specification filed
August 26, 2009 (“Spec.”), the Final Rejection mailed August 24, 2016
(“Final Act.”), the Appeal Brief filed March 14, 2017 (“Appeal Br.”), and
the Examiner’s Answer mailed July 26, 2017 (“Ans”).
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events in the calendar, displaying a conflict-resolution
interface that includes displaying information about
conflicting occurrences of the recurring event and
prompting the user of the invitee computing device to
select between a first option to accept all occurrences and
a second option to accept non-conflicting occurrences of
the recurring event without accepting conflicting
occurrences of the recurring event, the non-conflicting
occurrences being the occurrences that cause no
scheduling conflicts in the calendar and the conflicting
occurrences being occurrences that cause scheduling
conflicts with existing events in the calendar;
[(6)] while displaying the conflict-resolution interface on
the display, receiving, via the one or more input devices, a first
user input selecting the second option to accept non-conflicting
occurrences of the recurring event without accepting conflicting
occurrences of the recurring event; and
[(7)] in response to receiving, via the one or more input
devices, the first user input selecting the second option to
accept the non-conflicting occurrences of the recurring event
without accepting the conflicting occurrences of the recurring
event accepting the nonconflicting occurrences of the event,
and displaying, on the display, in the first calendar interface, a
plurality of distinct notifications for a plurality of conflicting
occurrences of the recurring event that include a first
conflicting occurrence and a second conflicting occurrence that
is different from the first conflicting occurrence, wherein the
plurality of distinct notifications include:
[(7a)] a first notification for the first conflicting
occurrence includes a first option for accepting the first
conflicting occurrence without accepting the second
conflicting occurrence; and
[(7b)] a second notification for the second
conflicting occurrence includes a second option for
accepting the second conflicting occurrence without
accepting the first conflicting occurrence.
Appeal Br. 25 (Claims App’x) (limitation numbering added).
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REJECTION
Claims 1–6, 20–22, 24–26, and 28–41 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 10–14.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We have considered all of Appellants’ arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
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combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “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 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
For purposes of the § 101 rejection, Appellants argue claims 1, 6–10,
20–22, 24–26, and 28–41 together as a group. See Appeal Br. 4–24.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv), we
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limit our discussion to independent claim 1. Independent claims 20 and 21
and dependent claims 6–10, 22, 24–26, and 28–41 stand or fall with
independent claim 1.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
The Judicial Exception—Abstract Idea
The Examiner determined the claims are directed to “an abstract
idea,” specifically “a process of scheduling calendar events for . . .
scheduling recurring calendar events.” Final Act. 12. For the reasons
explained below, Appellants have not persuaded us that the Examiner erred.
Claim 1 recites limitations [1]–[7] reproduced in full above. Aside
from the use of generic computing components, each of at least limitations
[2] and [4]–[7] recite acts that people can perform in their minds or using
pen and paper.
Starting with limitations [2], [4], and [6], limitation [2] recites
“receiving . . . an invitation for a recurring event created by a user of the
organizer computing device,” limitation [4] recites “. . . receiving . . . an
input that corresponds to selection of the displayed option to accept the
recurrent event,” and limitation [6] recites “. . . receiving . . . a first user
input selecting the second option to accept non-conflicting occurrences of
the recurring event without accepting conflicting occurrences of the
recurring event.” Appeal Br. 25 (Claims App’x). People can receive the
recited invitation and input by simply reading them from a computer screen.
Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed.
Cir. 2011) (explaining that a claim step that “requires ‘obtaining information
about other transactions that have utilized an Internet address that is
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identified with the [ ] credit card transaction’—can be performed by a
human who simply reads records of Internet credit card transactions from a
preexisting database”). Even if these limitations required physical steps
such as typing on a keyboard, these limitations would not make claim 1
patent eligible as they merely gather data. See id. (“Moreover, as discussed
above, even if some physical steps are required to obtain information from
the database (e.g., entering a query via a keyboard, clicking a mouse), such
data-gathering steps cannot alone confer patentability.”).
Turning to limitations [5] and [7], limitation [5a] recites “in
accordance with a determination that the recurring event does not include
any conflicting occurrences, accepting the recurring event without
displaying a conflict-resolution interface.” Appeal Br. 25 (Claims App’x).
Limitation [5b] recites a similar step except that if the determination
includes a conflicting occurrence, it displays information about those
conflicts and prompts the user to choose whether or not to accept the non-
conflicting occurrences without accepting the conflicts. Id. As for
limitation [7], if the user chooses, under limitation [5b], to accept the non-
conflicting occurrences without accepting the conflicts, displaying a
plurality of distinct notifications for the conflict, each of which includes an
option to select that conflicting occurrence without accepting the other
conflicting occurrences. Id. People can mentally or with a pen and paper
perform these determinations of conflicts and notifications of choices of
whether to accept each of the conflicting occurrences. Spec. ¶ 4 (“An
invitee can look in his/her own calendar(s) to see if another event has
already been scheduled for that time window before accepting the
invitation.); cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
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1148 (Fed. Cir. 2016) (“[T]he limited, straightforward nature of the steps
involved in the claimed method make evident that a skilled artisan could
perform the steps mentally.”).
In sum, limitations [2] and [4]–[7] recite a process that people can
perform in their heads or using pen and paper. The recited process is not
meaningfully different from other processes that courts have determined are
mental processes. See, e.g., CyberSource, 654 F.3d at 1373 (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). This is true even though the steps include the use of generic
computing devices. Appeal Br. 25 (Claims App’x).
“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.” Versata Dev. Grp., Inc.
v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see also Revised
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”).
We therefore conclude that claim 1 recites mental processes, one of the
abstract idea groupings in the Revised Guidance. See Revised Guidance, 84
Fed. Reg. at 52. Claim 1 thus recites an abstract idea.
We also determine that claim 1, as a whole, recites managing
interactions between people. This type of activity, receiving invitations for
meetings, determining conflicts between the invitation and existing
meetings, and choosing whether to accept the invitation on a meeting-by-
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meeting basis, as recited by claim 1, includes longstanding conduct that
existed well before the advent of computers and the Internet. See
CyberSource, 654 F.3d at 1375.3
We, therefore, conclude claim 1, as a whole, under our Revised
Guidance, recites a judicial exception of certain methods of organizing
human activity, i.e., managing interactions between people, and thus is an
abstract idea.
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.

3 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “An abstract
idea can generally be described at different levels of abstraction . . . . The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.” Id. Moreover, merely combining several abstract
ideas does not render the combination any less abstract. RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) to another abstract idea . . . does not render the claim
non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).
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Here, claim 1 recites the additional elements of “the invitee
computing device comprising a display and one or more input devices”
(limitation [1]), “an organizer computing device that is communicatively
coupled to the invitee computing device,” “a first calendar interface
comprising the invitation for the recurring event and comprising a displayed
option to accept the recurring event” (limitation [3]), and a “conflict-
resolution interface.” Appeal Br. 20–21 (Claims App’x). Considering claim
1 as a whole, the additional elements do not apply or use the abstract idea in
a meaningful way such that the claim as a whole is more than a drafting
effort designed to monopolize the exception. The Supreme Court guides
that the “prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant postsolution
activity.’” Bilski, 561 U.S. at 610–11 (quoting Diamond v. Diehr, 450 U.S.
175, 191–92 (1981)).
Appellants contend the Examiner failed to establish a prima facie case
of patent ineligibility. Appeal Br. 5, 13–14. We disagree. The Federal
Circuit has repeatedly noted that, “the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The Examiner
satisfies the burden of establishing a prima facie case under 35 U.S.C. § 132
by setting forth a rejection in a sufficiently articulate and informative
manner. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). If the
Examiner “adequately explain[s] the shortcomings . . . the burden shifts to
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the applicant to rebut the prima facie case with evidence and/or argument.”
Hyatt, 492 F.3d at 1370.
The Final Office Action adequately explains the § 101 rejection. See
Final Act. 11–14. The Examiner’s statements satisfy § 132(a) because they
apply the Alice analytical framework and apprise Appellants of the reasons
for the § 101 rejection under that framework. Appellants have not
responded by alleging a failure to understand the rejection. To the contrary,
Appellants clearly identify the abstract idea identified by the Examiner. See
Appeal Br. 6. We are also not persuaded that the Examiner was required to
explicitly construe the claims as asserted by Appellants. Appeal Br. 5–6.
As for “the invitee computing device comprising a display and one or
more input devices” (limitation [1]) and “an organizer computing device that
is communicatively coupled to the invitee computing device,” the
Specification makes clear that these may be generic computing devices:
Computing device 1000 is intended to represent various
forms of digital computers, such as laptops, desktops,
workstations, personal digital assistants, servers, blade servers,
mainframes, and other appropriate computers. Computing
device 1050 is intended to represent various forms of mobile
devices, such as personal digital assistants, cellular telephones,
smartphones, and other similar computing devices. The
components shown here, their connections and relationships,
and their functions, are meant to be exemplary only, and are not
meant to limit implementations of the inventions described and/
or claimed in this document.
Computing device 1000 includes a processor 1002,
memory 1004, a storage device 1006, a high-speed interface
1008 connecting to memory 1004 and high-speed expansion
ports 1010, and a low speed interface 1012 connecting to low
speed bus 1014 and storage device 1006. Each of the
components 1002, 1004, 1006, 1008, 1010, and 1012, are
interconnected using various busses, and may be mounted on a
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common motherboard or in other manners as appropriate. The
processor 1002 can process instructions for execution within
the computing device 1000, including instructions stored in the
memory 1004 or on the storage device 1006 to display
graphical information for a GUI on an external input/ output
device, such as display 1016 coupled to high speed interface
1008. In other implementations, multiple processors and/ or
multiple buses may be used, as appropriate, along with multiple
memories and types of memory. Also, multiple computing
devices 1000 may be connected, with each device providing
portions of the necessary operations (e.g., as a server bank, a
group of blade servers, or a multi-processor system).
Spec. ¶¶ 123–124.
As for the recited interfaces—“a first calendar interface comprising
the invitation for the recurring event and comprising a diplayed option to
accept the recurring event” (limitation [3]) and a “conflict-resolution
interface”—the Specification also makes clear that these are created using
generic computing tools and are not limited in scope to any particular
implementation. See, e.g., Spec. ¶¶ 33–42 (describing the “calendar
interface”). In fact, the Specification does not use the term “first calendar
interface” or “conflict-resolution interface.”
Appellants’ arguments have not persuaded us claim 1 is “directed to”
a patent-eligible concept. For example, Appellants argue “to the extent the
instant claims require a set of specific rules to achieve the desired results, the
claims are patent eligible for the same reasons as the claims in McRO.”
Appeal Br. 10 (quoting McRO, Inc. v. Bandai Namco Games Am., Inc., 837
F.3d 1299 (Fed. Cir. 2016)). According to Appellants, claim 1 achieves “the
result of efficiently changing, based on detected user input, a user interface
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that presents information regarding scheduling of events between multiple
participants.” Id.
We do not agree with Appellants’ analogy to McRO. Here,
Appellants do not point us to any rules analogous to those used by the McRO
claims. Moreover, we do not see any such rules recited in the claims or
described by the Specification. Thus, unlike McRO where the claimed
process uses particular information and techniques to improve manual three-
dimensional animation techniques, we see nothing in the Specification that
describes the details of any particular rules or how they are applied to
relevant data. McRO, 837 F.3d at 1316. Moreover, the technological
improvements referred to by Appellants (efficiently changing a user
interface) are attributed to automation of the process of determining calendar
conflicts and presenting them to a user. This improvement is a typical
improvement expected by automating a manual process using a computer.
There is no indication that any resulting increase in efficiency or accuracy
comes from the recited process itself. See FairWarning, 839 F.3d at 1095
(citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266,
1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a general-
purpose computer ‘do[] not materially alter the patent eligibility of the
claimed subject matter.’” (alteration in original) (citation omitted)).
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Appellants also contend the claimed method is not “the only means of
achieving the claimed result” and “do[es] not seek to preempt every
application of generating tasks.” Appeal Br. 10, 21. This argument does not
alter our § 101 analysis. Rather than preemption, the Federal Circuit
instructs that the Alice two-step analysis is the test for whether claims are
statutory. “While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
Finally, Appellants argue “[a]s no prior art rejections remain in this
application, the claims are both novel and non-obvious over every reference
cited in the prosecution of the application.” Appeal Br. 16. However, “[t]he
‘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.”
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016) (emphasis omitted) (quoting Diehr, 450 U.S. at 188–89).
Accordingly, even in combination with all the other recited elements,
the addition of the above recited claim limitations does not integrate the
abstract idea into a practical application because it does not impose any
meaningful limits on practicing the abstract idea. For these reasons, we
determine that claim 1 does not integrate the recited abstract idea into a
practical application.
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Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner’s findings that an additional element (or
combination of elements) is WURC activity must be supported with a
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum4).
Whether the additional elements are WURC activity is a question of
fact. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)
(“Whether something is well-understood, routine, and conventional to a
skilled artisan . . . is a factual determination.”).
On the record before us, Appellants have not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)). In fact, Appellants’ Specification demonstrates the WURC
nature of “the invitee computing device comprising a display and one or
more input devices” (limitation [1]), “an organizer computing device that is
communicatively coupled to the invitee computing device,” “a first calendar
interface comprising the invitation for the recurring event and comprising a

4 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
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diplayed option to accept the recurring event ” (limitation [3]), and a
“conflict-resolution interface” because it indicates they may be implemented
with generic devices and programs. Spec. ¶¶ 33–42, 123–142.
Appellants argue that like the claims in BASCOM, “the present claims
are directed to improvements to another technology or technical field.”
Appeal Br. 15 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016). The claimed invention in BASCOM
“represent[ed] a software-based invention[ ] that improve[d] the
performance of the computer system itself.” BASCOM, 827 F.3d at 1351
(second alteration in original) (quotation marks omitted). Appellants have
not shown that claim 1 recites a similar “non-conventional and non-generic
arrangement of known, conventional pieces” or that the claimed invention
improves the performance of a computer system.
Appellants next contend that the lack of any rejection under § 102 or
§ 103 shows that “the claims cannot include only what is ‘well-understood,
routine[,] or conventional’ in the field.” Appeal Br. 16. But the relevant
question is not whether the claimed invention as a whole is novel or
nonobvious; the relevant question is whether “the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). See also BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“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.”). And
Appellants do not provide persuasive reasoning to support this argument;
Appellants generally repeat the limitations recited in claim 1, with certain
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words emphasized. See Appeal Br. 16–18. In any case, these arguments
rely on aspects of the identified abstract ideas to provide an inventive
concept, but as noted above, an “abstract idea itself cannot supply the
inventive concept, ‘no matter how groundbreaking the advance.’” Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (quoting
SAP, 898 F.3d at 1170).
For the reasons discussed above, the additional elements in claim 1 do
not provide an inventive concept.
Conclusion
Therefore, we sustain the Examiner’s § 101 rejection of independent
claim 1. We also sustain the Examiner’s § 101 rejection of claims 6–10, 20–
22, 24–26, and 28–41, for which Appellants rely on the same arguments
made with respect to claim 1. Appeal Br. 4–24.
CONCLUSION
We conclude Appellants have not demonstrated the Examiner erred in
rejecting claims 1, 6–10, 20–22, 24–26, and 28–41 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s rejection of claims 1, 6–10, 20–22, 24–26,
and 28–41.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED