STOXX Ltd.

Patent Trials and Appeals Board

Apr 24, 2020

14670392 - (D) (P.T.A.B. Apr. 24, 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.
14/670,392 03/26/2015 Jan-Carl Plagge 42-00003-US 6004
128144 7590 04/24/2020
Rimon PC
One Embarcadero Center
Suite 400
San Francisco, CA 94111
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/24/2020 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.rimonlaw@clarivate.com
eofficeaction@appcoll.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAN-CARL PLAGGE
____________

Appeal 2019-005820
Application 14/670,392
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
JAMIE T. WISZ, Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of claims 1–
19. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

CLAIMED SUBJECT MATTER
The Specification describes “computer systems, computer-
implemented methods and tangible computer-readable storage media
configured to calculate revenues of companies.” Spec. ¶ 1. The
Specification states that the heterogeneity of companies’ revenue data “poses
a significant burden on any attempt to analyze performance figures of
different companies.” Id. ¶ 4. The Specification further states that
[a] technique is provided that allows for decomposing revenues
of companies in a manner that overcomes the above described
disadvantages, e.g., by breaking down regional revenues to a
per country level. In doing so, data such as country-specific
export data is used in a new way to create novel data.
Id. ¶ 5.
Claims 1, 18, and 19 are independent claims. Claim 1 is illustrative
and is set forth below (annotated with bracketed numbers for reference to the
limitations in the claim):

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Stoxx, Ltd.
Appeal Br. 2.
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1. A computer system comprising a local database and one
or more processors, the processors being configured to:
[1] receive, from a company computing device that is
external to the system, region-specific revenue data indicating a
company’s revenue pertaining to a specific geographic region;
[2] determine the company's home country;
[3] receive, from a database service external to the
system, country-specific export data indicating a
macroeconomic export volume or export value from the
company’s home country to a given country within said
geographic region;
[4] store the region-specific revenue data and the
country-specific export data in the local database; and
[5] calculate and [6] store country-specific revenue data
estimating said company's revenue pertaining to said given
country within said geographic region based on said region-
specific revenue data and said country-specific export data
based on data from the local database.
Appeal Br. 22 (Claims Appendix). Independent claim 18 recites a
method implemented on a computer having similar steps and
independent claim 19 recites a “non-transitory computer-readable
storage medium” with instructions for performing these steps. Id. at
26–27.
REJECTIONS
The Examiner rejected claims 1–19 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
The Examiner rejected claims 1–19 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
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ISSUES AND ANALYSIS
Rejection of claims 1–19 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter
I. PRINCIPLES OF LAW
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
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 whether the claim recites an abstract idea. 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.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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that recite abstract ideas, but are nonetheless determined to be patent
eligible, include physical and chemical processes, such as “molding rubber
products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing,
making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182
n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we 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. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of

2 The Office issued further guidance on October 17, 2019. USPTO, October
2019 Update: Subject Matter Eligibility (the “October 2019 Update”)
(available at
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internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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

https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception (“Step 2B”).
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
II. ANALYSIS
Applying the Revised Guidance to the facts on this record, we find
that claims 1–19 are directed to patent-ineligible subject matter.
Claim 1 is directed to a computer system configured to calculate
revenues of companies. Following the first step of the Mayo/Alice analysis,
we find that the claim is directed to a machine, and therefore falls into one of
the broad statutory categories of patent-eligible subject matter under 35
U.S.C. § 101. We thus proceed to Step 2A, Prong One, of the Eligibility
Guidance.
A. Guidance Step 2A, Prong 1
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings classified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human activity such as fundamental economic practices, and (3)
mental processes.
The Examiner finds that the claims are “abstract as concepts that can
be performed in the mind of a person (mental processes, for example
‘calculate ... country-specific revenue data...’). Also, the claims are abstract
as a fundamental economic practice and fall under certain methods of
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organizing human activity (e.g. ‘calculate and store country-specific revenue
data ...’). Ans. 5.
We agree with the Examiner that claim 1 recites judicial exceptions.
More specifically, claim 1, reproduced above, recites a computer system that
has processors configured to conduct the following steps: [1]
“receive…region-specific revenue data indicating a company’s revenue
pertaining to a specific geographic region,” [2] “determine the company’s
home country,” [3] “receive…country-specific export data,” [4] “store the
region-specific revenue data and country-specific export data,” [5]
“calculate,” and [6] “store country-specific revenue data estimating said
company’s revenue….” Appeal Br. 51–52. Under the broadest reasonable
interpretation, limitations [1] through [4] and [6] recite mental processes.
For instance, a claim recites a mental process when the claim
encompasses acts people can perform using their minds or 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). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev. Grp.,
Inc. 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.”); see also 2019 Eligibility 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
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components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”).
These limitations encompass acts people can perform using their
minds or pen and paper because people can perform the “receiving” steps by
simply obtaining information from a database. The human mind can also
perform the “determining” step by obtaining information. The human mind
can also “store” information by merely remembering the data or writing it
down on paper.
The claim further recites in step [5] that the company’s country-
specific revenue is calculated. The claim does not require how the
calculation is performed, and thus could be accomplished by simple addition
in adding up the revenue based on the region and country export data. The
Specification also discloses additional formulas which can be used to
perform the calculation. Spec. ¶¶ 7, 35. Thus, we find that step [5], in
which a calculation is performed, recites a mathematical concept, which is
an abstract idea.
Here, the claims recite a computer system configured to perform steps
for receiving and/or storing information, which people could perform in their
minds and with the aid of pen and paper. The claims also recite calculating
revenue data which is a mathematical concept. Accordingly, we conclude
that the steps of claim 1 recite the judicial exceptions of mental processes
and mathematical concepts.
B. Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, we next
consider whether the claims integrate the judicial exception into a practical
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application. “[I]ntegration into a practical application” requires that the
claim recite an additional element or a combination of elements, that when
considered individually or in combination, “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 judicial exception.” Guidance at 54.
Appellant asserts that the claims are directed to patent eligible subject
matter because they are directed to a distributed system as in Amdocs
(Israel) Ltd. V. Openet Telecom, Inc. 841 F.3d 1288 (Fed. Cir. 2016), in
which the Federal Circuit held that claims directed to a series of
mathematical operations enhancing data in a computer database to solve an
accounting problem were patent eligible. Appeal Br. 5, 10. Appellant
asserts that the claimed embodiment “gathers disparate information from
various remote devices, stores the data in a local database, and processes that
data to solve” the problem of diverse levels of granularity in revenue data in
company financial statements. Id. at 7–8. Appellant further asserts that the
claims “enhance a database to solve a problem.” Id. at 10.
We are not persuaded by Appellant’s arguments that the Examiner
erred. In Amdocs, the court found that the “claim entails an unconventional
technological solution (enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases).” 841 F.3d at 1300. The court further found that “the
claim’s enhancing limitation necessarily requires that these generic
components operate in an unconventional manner to achieve an
improvement in computer functionality.” Id. at 1300–1301.
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We agree with the Examiner that, unlike in Amdocs, Appellant did not
establish that the current claims recite an improvement to the technology.
Appellant asserts that the invention solves the problem of diverse levels of
granularity in revenue data in company financial statements; however, this is
not a technology problem akin to the problem in Amdocs of “network
bottlenecks” and “massive record information flow[ing] to one location,
making it very difficult to keep up with massive record flows from the
network devices and requiring huge databases.” 841 F.3d at 1292. Rather,
the problem identified by Appellant relates to the gathering of different types
of information.
Appellant also argues that the claims:
are clearly integrated into a practical application, because the
claims recite additional elements that apply or use the judicial
exception in a 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.
Appeal Br. 15. In support of this contention, Appellant points to claim
limitations [1] though [6]. Id.
Appellant further asserts that the practical application is to solve the
problem articulated in the Specification:
The diverse levels of granularity in this revenue data
make it extremely difficult to efficiently perform evaluations.
For instance, the heterogeneity of this data poses a significant
burden on any attempt to analyze performance figures of
different companies. It is also difficult to evaluate how certain
events occurring on a country level may influence a company's
value if this company reports its revenue on a coarser level such
as for a geographic region or even as total revenue.
A technique is provided that allows for decomposing
revenues of companies in a manner that overcomes the above
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described disadvantages, e.g., by breaking down regional
revenues to a per country level. In doing so, data such as
country-specific export data is used in a new way to create
novel data.
Id. at 15–16 (citing Spec. 4–5).
We are not persuaded by Appellant’s arguments. The limitations
recited by Appellant simply refer to the abstract ideas themselves as
discussed above. For example, the steps in the claim which comprise
receiving the data from different geographic regions and export data (steps
[1], [3]), are mental processes and/or insignificant pre-solution activity
which are not directed to a specific way in which the data is received or
gathered. As explained in McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016), the “abstract idea exception has been
applied to prevent patenting of claims that abstractly cover results where ‘it
matters not by what process or machinery the result is accomplished.’
[O’Reilly v. Morse, 56 U.S. 62, 113, (1853)]; see also Mayo, 132 S.Ct. at
1301.” McRO stated that therefore, a court must “look to whether the claims
in these patents focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery.”
McRO, 837 F.3d at 1314. In this case, steps [1] and [3] do not require the
data to be received or gathered in a specific manner and therefore invoke
preemption concerns. This same reasoning applies to step [5] in which a
calculation is performed. Other than the limitations directed to the abstract
idea, the invention is claimed at a very high level of generality without
integrating the abstract ideas into a practical application because Appellant
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did not explain sufficiently why the claims provide an additional element,
outside the abstract idea, that improves the technology or technical field.
Appellant also asserts that the dependent claims further integrate the
invention into a practical application. Appeal Br. 16–19. In making these
arguments, Appellant recites the additional limitations of these claims and
argues that these additional limitations integrate the invention into a
practical application. Id. However, as discussed below, the additional
limitations in these claims similarly are directed to abstract ideas and do not
result in an improvement in computer functionality.
For example, Appellant argues that claims 2 and 8 “recite selecting
different algorithms based on a company’s home geographic region” which
“further integrates the invention with the practical application of country
specific revenue estimation by customizing the outcome based on geography
and conditions related thereto.” Id. at 16. However, this additional
limitation of “selecting different algorithms” merely recites the abstract idea
of a mental process since algorithm selection can be performed in the mind
or through the aid of paper and pencil.
Appellant also argues that the additional limitations of claims 3 and 9
“further integrate[] the invention with the practical application of country
specific revenue estimation by customizing the outcome based on geography
and conditions related thereto.” Id. at 16–17. However, these additional
limitations merely recite the mental processes of “calculating,”
“subtracting,” and “apply[ing] [a] second algorithm” because these steps can
be performed in the mind or through the aid of paper and pencil.
Appellant also argues that the additional limitations of claims 4, 6,
and 13–16 “further integrate[] the invention with the practical application of
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country specific revenue estimation by customizing the outcome based on
geography and conditions related thereto.” Id. at 17–19. However, the
additional limitations of “calculat[ing],” “determin[ing],” “receiv[ing],” and
“gathering of data” are merely mental processes that can be performed in the
mind or through the aid of paper and pencil.
Appellant also argues that the additional limitation of claims 5 and 10
“further integrates the invention with the practical application of country
specific revenue estimation by considering revenue shares of other
companies.” Id. at 17. However, the additional limitation of “calculat[ing]”
is a mental process for the reasons discussed above.
Appellant similarly argues that the additional limitations of claim 7
“further integrate[] the invention with the practical application of country
specific revenue estimation by considering various economic and geographic
features.” Id. However, the additional limitations of “determin[ing]” and
“calculat[ing]” are merely mental process for the reasons discussed above.
Appellant further argues that the additional limitation of claim 11
“further integrates the invention with the practical application of country
specific revenue estimation by customizing the outcome based on geography
and specific economic conditions related thereto.” Id. at 18. However, the
additional limitation of “calculat[ing]” is a mental processes for the reasons
discussed above.
Lastly, Appellant argues that the additional limitations of claim 17
“further integrate[] the invention with the practical application of country
specific revenue estimation by customizing the outcome based on
geography, company and conditions related thereto.” Id. at 19. However,
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the additional limitations of “receiving,” “determining,” and “calculating”
are merely mental processes for the reasons discussed above.
Therefore, on this record, we conclude that the judicial exceptions in
Appellant’s claims are not integrated into a practical application.
C. Guidance Step 2B
Having determined that the judicial exceptions are not integrated into
a practical application, we next evaluate the additional elements individually
and in combination to determine whether they provide an inventive concept,
such as a specific limitation beyond the judicial exception that is not well-
understood, routine, conventional in the field, or simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See 84 Fed. Reg. 51.
Appellant did not direct us to anything in the Specification indicating
that any steps or components recited in the claims are not generic or
conventional. For example, the Specification describes a computer system
with one or more processors and a memory. Spec. ¶ 27. Appellant points to
no additional steps that could not be performed without using a generic
computer. The use of a generic computer to perform generic computer
functions that are “well-understood, routine, conventional activit[ies]”
previously known in the industry is not enough to transform the abstract idea
into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
We find that Appellant did not provide adequate evidence that the
claims require anything other than the use of conventional and well-
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understood techniques and equipment to gather, process, calculate, and store
revenue data according to the recited judicial exception.
Accordingly, the preponderance of evidence of record supports the
Examiner’s finding that Appellant’s claimed invention is directed to patent-
ineligible subject matter. The rejection of claim 1 under 35 U.S.C. § 101 is
affirmed. The rejection of dependent claims 2–17 is also affirmed for the
reasons stated above. Independent claims 18 and 19 suffer from the same
deficiencies as claim 1 and we affirm the rejection of these claims for the
reasons discussed above.
Rejection of claims 1–19 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the written description
requirement
The Examiner finds that there is no written description of the claim
term “local database” and that the only description of a database in the
Specification is found in paragraph 28 of the Specification:
As will be described in more detail below, the input data may
include a company's reported revenue data 130, country-
specific export data 140 and/or risk scores 150. Country-
specific export data 140 may be taken from various sources
such as the United Nations Comtrade and Service Trade
Database or the World Bank database.
Final Act. 19–20 (citing Spec. ¶ 28).
Appellant asserts that “local database” is supported by memory 120 in
Figure 1 and at paragraphs 27 and 32 of the application. Appeal Br. 19.
According to Appellant, “FIG. 1 clearly shows a local database at 120, i.e. a
local memory that stores data.” Id. Appellant further asserts that the
Specification teaches external devices at paragraphs 28 and 63. Id. at 20.
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The Examiner responds that Figure 1 teaches “Memory” and does not
use the word “database.” Ans. 22. The Examiner further finds that
“database is only used in the context of someone else’s database providing
data.” Id.
The written description requirement “requires an objective inquiry
into the four corners of the specification from the perspective of a person of
ordinary skill in the art.” Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). “Based on that inquiry, the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention
claimed.” Id. To satisfy the written description requirement, “the missing
descriptive matter must necessarily be present in the [original] application’s
specification such that one skilled in the art would recognize such a
disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir.
1998); see also Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir.
1987) (holding that the written description requirement is “not a question of
whether one skilled in the art might be able to construct the patentee’s device
from the teachings of the disclosure.... Rather, it is a question whether the
application necessarily discloses that particular device” (quoting Jepson v.
Coleman, 314 F.2d 533, 536 (CCPA 1963))).
We are not persuaded by Appellant’s argument. We agree with the
Examiner that the only recitation of the term “database” in the Specification
is in reference to the United Nations Comtrade and Service Trade Database
or the World Bank database at paragraph 28. Also, the term “local” is not
included in the Specification in conjunction with any particular database.
We find that one of ordinary skill in the art would not have understand what
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is meant by the term “local” in the context of the invention because it is not
sufficiently described in the Specification. Even though the Specification
describes “external sources” at paragraph 63, this disclosure does not
provide support for the term “local” because it is not clear in the context of
the Specification what is characterized as an “external source” versus a
“local” one.
While the Specification provides support for storing data in the
memory of the computer system (¶¶ 27, 32), it is not clear whether the
claimed “local database” requires additional structure than these elements
recited expressly in the Specification. For example, the term “database”
suggests a specific organization of the data in the computer memory.
Therefore, we find that the description in the Specification of “Memory” and
“external sources” is not enough to satisfy the written description
requirement for “local database.” See In re Huston, 308 F.3d 1267, 1277
(Fed. Cir. 2002) (“Entitlement to a filing date does not extend to subject
matter which is not disclosed, but would be obvious over what is expressly
disclosed.”); see also Ariad, 598 F.3d at 1352 (A “description that merely
renders the invention obvious does not satisfy the [written description]
requirement.”).
Accordingly, the rejection of claim 1 under 35 U.S.C. § 112 as failing
to comply with the written description requirement is affirmed. Independent
claims 18 and 19 also include the term “local database” and fail for the same
reasons as those discussed above. Dependent claims 2–17 are not separately
argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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CONCLUSION
For the reasons described herein and those already of record, we
affirm the Examiner’s rejection of claims 1–19.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19 101 Eligibility 1–19
1–19 112(a) Written
Description
1–19
Overall
Outcome
1–19
TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).

AFFIRMED