STOXX Ltd.Download PDFPatent Trials and Appeals BoardApr 24, 202014670392 - (D) (P.T.A.B. Apr. 24, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 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 Appeal 2019-005820 Application 14/670,392 2 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. Appeal 2019-005820 Application 14/670,392 3 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. Appeal 2019-005820 Application 14/670,392 4 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 Appeal 2019-005820 Application 14/670,392 5 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 Appeal 2019-005820 Application 14/670,392 6 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. Appeal 2019-005820 Application 14/670,392 7 (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 Appeal 2019-005820 Application 14/670,392 8 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 Appeal 2019-005820 Application 14/670,392 9 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 Appeal 2019-005820 Application 14/670,392 10 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. Appeal 2019-005820 Application 14/670,392 11 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 Appeal 2019-005820 Application 14/670,392 12 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 Appeal 2019-005820 Application 14/670,392 13 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 Appeal 2019-005820 Application 14/670,392 14 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, Appeal 2019-005820 Application 14/670,392 15 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- Appeal 2019-005820 Application 14/670,392 16 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. Appeal 2019-005820 Application 14/670,392 17 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 Appeal 2019-005820 Application 14/670,392 18 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). Appeal 2019-005820 Application 14/670,392 19 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 Copy with citationCopy as parenthetical citation