Wayne Nunziata

Patent Trials and Appeals Board

Sep 23, 2019

13481053 - (D) (P.T.A.B. Sep. 23, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/481,053 05/25/2012 Wayne Nunziata 1425797.102US2 7355
21874 7590 09/23/2019
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
KWONG, CHO YIU
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WAYNE NUNZIATA
____________

Appeal 2018-008720
Application 13/481,053
Technology Center 3600
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–3, 5, 7–10, 12, 14, and 15, which are all the pending claims. Claims
4, 6, 11, and 13 are canceled. See App. Br. 20–23 (Claims App’x). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies Colonial Surety Company as the real party in interest.
App. Br. 2.
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Introduction
Appellant’s disclosed and claimed invention “generally relates to
bonds, including insurance bonds, and, more particularly, to a system and
method for improved bond purchasing.” Spec. 1:16–17.
Claims 1 and 9 are independent; claim 1 is representative:
1. A computer-implemented method for collection
and analysis of bond related information, said method being
implemented by a computer system that comprises one or more
physical processors executing one or more computer program
instructions which, when executed, perform the steps of:
receiving, via a computer bond processing system,
information from a user relating to a bond purchase request;
automatically validating said bond purchase request in
the computer bond processing system dependent upon said the
received information from the user relating to the bond
purchase request, wherein the validating comprises determining
an expiration date of a credit line of the user and comparing the
expiration date with a current date;
automatically adjusting, via the computer bond
processing system, the credit line of the user based on a bond
status for each bond available to the user, the bond status
including at least one of an open status and a lost status;
automatically increasing, via the computer bond
processing system, the credit line of the user based on each lost
status so that the user can submit a new bond purchase request
with higher limits;
issuing a bond responsive to the bond purchase request to
said user, in real-time,
contingent upon successful validation of said bond
purchase request and based on the credit line of the user;
enabling said user to immediately obtain the issued bond,
via an on-line computer device in communication with the
computer bond processing system;
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comparing, via the computer bond processing system, the
bond purchase request and competing one or more bond
purchase requests responsive to a report request received from
the user;
generating, via the computer bond processing system, a
report comprising comparison of bidding activity associated
with the bond purchase request based on the performed
comparison, wherein the bidding activity includes bid spread
percentage; and
issuing Error and Omissions insurance, responsive to
user’s request.
App. Br. 19–20 (Claims App’x).
The Pending Rejections
1. The Examiner rejected claims 1–5, 7–12, 14, and 15 under 35
U.S.C. § 101 as directed to a patent-ineligible judicial exception. Final Act.
2–3; see also Ans. 4–9.
2. The Examiner rejected claims 1–5, 7–12, 14, and 15 under
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Final Act. 4–5; see also Ans. 10–12.

ANALYSIS
A. Rejections of claims 4 and 11
In the Final Office Action, the Examiner rejected claims 4 and 11
under 35 U.S.C. § 101 and pre-AIA 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 2–5.
Appellant, however, had previously canceled claims 4 and 11. See Response
to Non-Final Office Action 3, 5, 7 (filed October 2, 2017). Accordingly, the
rejections of claims 4 and 11 under these grounds are moot.
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B. The § 101 rejection
Appellant argues the Examiner erred in the § 101 rejection of
independent claims 1 and 9, which recite similar limitations, and present no
separate arguments for dependent claims 2, 3, 5, 7, 8, 10, 12, 14, and 15
(which, accordingly, stand or fall with their respective parent independent
claims). App. Br. 6–14; 37 C.F.R. § 41.37(c)(1)(iv). For our analysis, we
select claim 1 as representative.
§ 101 General Legal Framework and the USPTO Guidance
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, 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) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). 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.
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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 determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” in Diamond v.
Diehr, 450 U.S. 175, 191 (1981).
If the claim is “directed to” an abstract idea, we turn to the second
step 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 (internal citation
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 requiring generic computer implementation fails
to transform that abstract idea into a patent-eligible invention.” Id. at 212.
In early 2019, the PTO published revised guidance on the application
of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look, in
step one of the Alice/Mayo analysis, 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) (“prong one”); and
(2) additional elements that integrate the judicial exception
into a practical application (“prong two”) (see MPEP
§ 2106.05(a)–(c), (e)–(h)).2

2 All references to the MPEP are to the 9th ed., Rev. 08.2017 (Jan. 2018).
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See Guidance, 84 Fed. Reg. at 53–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim adds “significantly more” under step two of the
Alice/Mayo analysis, i.e., whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); 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 Guidance, 84 Fed. Reg. at 56.
Prima Facie Case
Appellant argues the Examiner fails to set forth a prima facie case of
ineligible subject matter under § 101 because the Examiner’s analysis “is not
rooted in claim construction and does not account for all of the limitations in
the claims.” App. Br. 13, see id. at 12–13; Reply Br. 9–10. We disagree.
First, contrary to Appellant’s assertions, “[t]here has never been a
requirement for an examiner to make an on-the-record claim construction of
every term in every rejected claim . . . in order to make out a prima facie
rejection. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Second, as
discussed in further detail below, the Examiner’s rejection accounts for all
the limitations in the claims. See Final Act. 2–3, 10; Ans. 4–5, 8–9; see also
discussion infra (especially our response to Appellant’s argument that the
Examiner “ignores explicit claim limitations.”).

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Moreover, 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 court has held that the PTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection,
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.” Jung,
637 F.3d at 1362. Thus, all that is required of the Office is that it set forth
the statutory basis of the rejection in a sufficiently articulate and informative
manner as to meet the notice requirement of 35 U.S.C. § 132. Id.; see
also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section
132 “is violated when [the] rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.”).
Here, the Examiner’s findings easily suffice to satisfy the notice
requirement. In particular, the Examiner notified Appellant that the claims
are directed to an abstract idea, i.e., “bond purchase and [a] related reporting
service,” which the Examiner explains are “a fundamental economic activity
and idea of itself similar to the concepts that have been identified as abstract
by the courts, such as creating a contractual relationship . . . and comparing
new and collecting information, analyzing it, and displaying certain results.”
Final Act. 2–3 (citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
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1354 (Fed. Cir. 2016)); see also Ans. 4–7, 9. The Examiner then notified
Appellant that the claims
do not include additional elements that are sufficient to amount
to significantly more than the judicial exception because [the]
claims do not include an improvement to another technology or
technical field, an improvement to the functioning of the
computer itself, or meaningful limitations beyond generally
linking the use of an abstract idea to a particular technological
environment when considered both individually and as an
ordered combination do not amount to significantly more than
the abstract idea.
Final Act. 3; see also Ans. 7–9. The Examiner additionally notified
Appellant that the claims recite generic computing elements for performing
well-understood, routine and conventional activities. Final. Act. 3; see also
Ans. 8–9.
Thus, the Examiner set forth a prima facie case of unpatentability by
notifying Appellant of the reasons for the rejection “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C. § 132. We are not
persuaded that the rejection is “so uninformative that it prevents [Appellant]
from recognizing and seeking to counter the grounds for rejection.” Jung,
637 F.3d at 1362.
Alice/Mayo Step One, Guidance Step 2A, Prong One
(Do the Claims Recite a Patent-Ineligible Concept?)
Under the first prong of step 2A of the Guidance, we determine
whether the independent claims recites a patent-ineligible concept.
Claim 1 recites a method that collects and analyzes bond related
information by: receiving information from a user relating to a bond
purchase request; validating the bond purchase request based on the received
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information and by determining that user’s credit line has not reached its
expiration date; adjusting the credit line of the user based on a bond status
(open or lost) for each bond available to the user; increasing the credit line
of the user based on each lost status; issuing a bond responsive to the
validated bond purchase request; enabling said user to obtain the issued
bond; comparing the bond purchase request and competing bond purchase
requests responsive to a report request received from the user; generating a
report comprising comparison of bidding activity (including bid spread
percentage) associated with the bond purchase request based on the
performed comparison; and issuing Error and Omissions insurance,
responsive to the user’s request.
Under its broadest reasonable interpretation, claim 1 describes a
concept for the collection, analysis, and display of data, which a person can
perform mentally or with only pen and paper. For example, long before the
advent of computers, governments, banks, and other organizations have been
known to receive bond purchase data about different entities, analyze it, and
produce reports comparing said data. See, e.g., International Monetary Fund
Annual Report 1970, 96–98 (1970), https://www.imf.org/external/pubs/ft/ar/
archive/pdf/ar1970.pdf (last visited Sept. 6, 2019). Thus, claim 1 describes a
method for implementing a mental process, which our guiding courts have
found constitutes an abstract idea. See Guidance, 84 Fed. Reg. at 52
(describing mental processes as “concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)”). Contrary to
Appellant’s assertions (see App. Br. 11), that the claim recites various
computing elements does not compel a different result. See Guidance, 84
Fed. Reg. at 52 n.14 (citing, e.g., Versata Dev. Grp. v. SAP Am., Inc., 793
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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.”))
Claim 1 also describes a method of organizing human activity in the
form of a fundamental economic practice—i.e., a process for issuing
bonds—including the steps of receiving a bond purchase request from a
customer, validating the request, setting an appropriate credit line for the
customer, issuing the bond to the customer, enabling the customer to obtain
the bond, and issuing Error and Omissions insurance. The Supreme Court
and Federal Circuit have found claims reciting fundamental economic
practices such as this to be “squarely within the realm of ‘abstract ideas.’”
Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 52, 52 n.13
In view of the foregoing, we agree with the Examiner’s
characterization of the claims as being “directed to facilitating bond
purchase and [a] related reporting service”—i.e., “a fundamental economic
activity and idea of itself similar to the concepts that have been identified as
abstract by the courts, such as creating a contractual relationship . . . and
comparing new and collecting information, analyzing it, and displaying
certain results.” Final Act. 2–3 (citing buySAFE, 765 F.3d at 1355; Elec.
Power Grp., 830 F.3d at 1354).
Appellant argues the Examiner “over-generalizes and
mischaracterizes the subject matter as presently claimed” and “ignores
explicit claim limitations.” App. Br. 9; Reply Br. 7–8. We do not agree. The
Examiner has identified and considered the underlying steps of claim 1 as a
basis for describing and explaining the recited abstract ideas. See, e.g., Final
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Act. 2–3, 7; Ans. 4–5. For example, in determining that claim 1 is directed to
an abstract idea, the Examiner identifies relevant steps recited in claim 1 and
then explains the abstract idea those steps describe. Final Act. 2–3. The
Examiner also explains, and we agree, that the recited steps of adjusting the
credit line and issuing Error and Omission “are abstract elements relevant to
the abstract idea of bond purchasing” and, although specific, do not render
claim 1 patent-eligible because even “[a] specific abstract idea is nonetheless
an abstract idea.” Id. at 7. Contrary to Appellant’s assertions, the Examiner’s
approach is consistent with Supreme Court and Federal Circuit precedent,
which support reasonably synthesizing the claim language when identifying
a recited abstract idea. See, e.g., Bilski, 561 U.S. at 611 (“Claims 1 and 4 in
[P]etitioners’ application explain the basic concept of hedging, or protecting
against risk. . . . The concept of hedging, described in claim 1 and reduced to
a mathematical formula in claim 4, is an unpatentable abstract idea, just like
the algorithms at issue in Benson and Flook.”). We note that those claim
elements not addressed while identifying the recited abstract idea are
addressed as additional limitations in Step 2A, Prong Two or Step 2B of the
§ 101 analysis.
Certainly, Appellant has narrowed claim 1 by reciting how the bond
purchase request is validated (by “determining an expiration date of a credit
line of the user and comparing the expiration date with a current date”) and
criteria for adjusting or increasing a user’s credit line. But limiting an
abstract idea to a particular field of use does not convert an otherwise
ineligible concept into an inventive one. See Guidance, 84 Fed. Reg. at 55,
id. nn. 31–32. Moreover, that the claimed method may perform a specific set
of rules does not necessarily render the claim non-abstract. See, e.g.,
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Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(determining for a specific method of advertising and content distribution,
that “each of [the] eleven steps merely instructs the practitioner to
implement the abstract idea with routine, conventional activities,” and that
although “some of the eleven steps were not previously employed in this
art,” that was “not enough—standing alone—to confer patent eligibility
upon the claims at issue.”); accord Netflix, Inc. v. Rovi Corp., 114 F. Supp.
3d 927, 942 (N.D. Cal. 2015), aff’d, 670 F. App’x 704 (Fed. Cir. 2016).
Guidance Step 2A, Prong One Conclusion
Thus, in accordance with the Guidance, claim 1 recites abstract ideas
that fall within the mental processes and organizing human activities
groupings. See Guidance, 84 Fed. Reg. at 52. Here, we note that claim 1’s
recitation of more than one abstract idea does not make the claim any less
abstract. See, e.g., RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.”). Because claim 1 recites a
judicial exception (i.e., an abstract idea), we next proceed to the Guidance
step 2A prong two to consider whether each of the claims integrates its
recited judicial exception into a practical application. See Guidance, 84 Fed.
Reg. at 54. Before proceeding, we note that any differences between the
abstract ideas the Examiner has identified and the abstract ideas we identify
for claim 1 do not give rise to a reversible error—they do not amount to a
change in the thrust of the rejection.
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Alice/Mayo Step One, Guidance Step 2A, Prong Two
(Do the Claims Integrate the Abstract Idea into a Practical Application?)
To determine whether the judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
practical application. Guidance, 84 Fed. Reg. at 54–55 (emphasis added);
see also MPEP § 2106.05(a)–(c), (e)–(h).
Claim 1 additionally recites the computer-related terms of
“computer-implemented,” “computer system,” “one or more physical
processors,” “executing one or more computer program instructions,”
“computer bond processing system,” “on-line computer device,” “in real-
time,” and “automatically.”3
Although these computer-related recitations add a certain level of
specificity to the claim, they do not constitute an improvement to “the
functioning of the computer itself” or “any other technology or technical
field;” rather, they constitute use of generic components for automating
otherwise routine human activities. See MPEP § 2106.05(a) (quoting Alice,
573 U.S. at 225). Neither do these computer limitations qualify as applying
the judicial exception with “a particular machine,” because they perform
conventional functions and require no more than general purpose computer
equipment. See MPEP § 2106.05(b); see also Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709,716–17 (Fed. Cir. 2014); TLI Communications LLC v.
AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (explaining that

3 Similarly, independent claim 9 recites computer-related terms of “a
memory,” “a processor,” and “execute a plurality of instructions,” and
“automatically,” “real-time,” and “print . . . via an on-line computer device.”
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mere recitation of concrete or tangible components is not an inventive
concept). “In order for the addition of a machine to impose a meaningful
limit on the scope of a claim, it must play a significant part in permitting the
claimed method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly.” SiRF
Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).
Similarly, we are not persuaded that claim 1 effects a particular
transformation of the recited components, which are simply used for their
ordinary purposes, or that it adds any other meaningful (technological)
limitations, i.e., limitations beyond simply “linking the use” of the abstract
idea to generic technology. See MPEP § 2106.05 (c), (e)–(f), (g)–(h) (Use of
well-known limitations beyond the judicially excepted matter constitutes
“insignificant extra-solution activity” (g) and claim limitations “merely
indicating a field of use or technological environment in which to apply a
judicial exception do not amount to significantly more” (h).).
More specifically, we disagree with Appellant’s contentions that the
claims “encompass a technological process” (App. Br.10) or that “they
clearly relate to improvements to the technology field of analytical bond
processing systems” (id. at 11–12). The focus of the claims is on a process
for issuing a bond and reporting on bond purchase requests using a computer
and software as a tool, not on an improvement in the computer or software
itself as a tool. See Revised Guidance, 84 Fed. Reg. at 55 (explaining that
courts have identified “merely us[ing] a computer as a tool to perform an
abstract idea” as insufficient to integrate the judicial exception into a
practical application); Elec. Power Grp., 830 F.3d at 1354. Further, the
claim’s application to bond processing merely indicates the field of use or
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technological environment in which to apply the recited abstract idea and
does not amount to significantly more. See Revised Guidance, 84 Fed. Reg.
at 55, 55 n.32. Also, claim 1’s recitations of “receiving” data, “enabling said
user to . . . obtain the issued bond,” and “generating . . . a report” are the
type of extra-solution activity (i.e., in addition to the judicial exception) the
courts have determined insufficient to transform judicially excepted subject
matter into a patent-eligible application.4 See MPEP § 2106.05(g); 84 Fed.
Reg. at 55, 55 n.31; see Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of
Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011) aff’d, 687 F.3d 1266
(Fed. Cir. 2012) (explaining that “storing, retrieving, and providing data . . .
are inconsequential data gathering and insignificant post solution activity).
Appellant also unpersuasively argues that claim 1, similar to the
claims in Core Wireless,5 “are directed to an improved, unified, interface
which increases the efficiency of using computing bond processing
systems.” Reply Br. 9. In Core Wireless, the court concluded the claims
were not directed to an abstract idea, but rather were “directed to an
improved user interface for computing devices.” Core Wireless, 880 F.3d at
1362. The court noted that “[a]lthough the generic idea of summarizing
information certainly existed prior to the invention, . . . these claims recite a
specific improvement over prior systems.” Core Wireless, 880 F.3d at 1362–
63. Here, although claim 1 recites various computing elements, as discussed
further in Alice/Mayo, step two, Appellant does not identify anything in the

4 This analysis applies equally to claim 9’s similar recitations of “solicit
information relating to a bond purchase request from a user” and “enable
said user to . . . obtain and print the issued bond.”
5 Core Wireless S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363 (Fed. Cir.
2018).
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claims or the Specification to indicate that these elements amount to an
improvement over conventional computing elements, let alone interfaces.
We also are not persuaded by Appellant’s argument that the claims
cannot recite generic computer functions because there is no prior art
rejection. App. Br. 11–12. Subject-matter eligibility under 35 U.S.C. § 101
is a requirement separate from other patentability inquiries. See Mayo, 566
U.S. 66, 90 (recognizing that the § 101 inquiry and other patentability
inquiries “might sometimes overlap,” but that “shift[ing] the patent-
eligibility inquiry entirely to these [other] sections risks creating
significantly greater legal uncertainty, while assuming that those sections
can do work that they are not equipped to do”); see also Diehr, 450 U.S. at
188–89 (“[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”).
In sum, we find no evidence that the recited combination of computer
components is unconventional or non-generic because it is merely
performing the functions of receiving (or soliciting), validating, adjusting,
increasing, issuing, enabling, comparing, and generating data in a normal
and routine way, as any other generic and conventional computing system
would do.
Guidance Step 2A, Prong Two Conclusion
Because claim 1 recites a judicial exception and does not integrate it
into a practical application, we next proceed under the Guidance to
Alice/Mayo step two, to consider whether the claim recites significantly
more than its recited exception. Guidance, 84 Fed. Reg. at 54.
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Alice/Mayo Step Two; Guidance Step 2B
In step two of the Alice/Mayo analysis, we consider whether there are
additional limitations that, individually or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As stated in the
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
been integrated into a practical application. Guidance, 84 Fed. Reg. at 56.
Thus, at this point of our analysis, we determine if the independent claims
add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field; or whether, in
addition to the recited judicial exception, they recite only well-understood,
routine, conventional activities at a high level of generality. Id.
Here, Appellant’s claim 1 does not recite specific limitations (or a
combination of limitations) that are beyond what was well-understood,
routine, and conventional. The Examiner determines, and we agree, that the
additional technological limitations recited in claim 1 constitute the use of
technology that was well-known to those of ordinary skill prior to the
invention. Final Act. 3, 9; Ans. 7. The Examiner’s determination is amply
supported by the Specification, which discloses that the invention may be
implemented as a general-purpose computing system and describes the
claimed technological features at no more than a generic level, using such
technology for routine, well understood, and conventional purposes. See,
e.g., Fig. 1A, Spec. 8:7–13:20. There is no evidence of any special
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technological improvement or advance for the computer-related components
recited in claim 1.
Conclusion
Appellant does not persuade us of reversible error in the § 101
rejection of independent claim 1. For similar reasons, Appellant has not
persuaded us of reversible error in the § 101 rejection of independent claim
9, which recites similar limitations, and the § 101 rejection of dependent
claims 2, 3, 5, 7, 8, 10, 12, 14, and 15, which Appellant does not argue
separately with particularity.
C. The § 112 rejection
Compliance with the written description requirement is a question of
fact that is context sensitive. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) (“[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology.”). The test is whether the disclosure “conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Id. The Specification must adequately describe
the claimed subject matter, but “the exact terms need not be used in haec
verba.” Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Claim 1 recites, in relevant part, “comparing . . . the bond purchase
request and competing one or more bond purchase requests . . . ; [and]
generating . . . a report comprising comparison of bidding activity associated
with the bond purchase request based on the performed comparison, wherein
the bidding activity includes bid spread percentage.” The Examiner
determines the Specification lacks written description support for
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“comparing . . . the bid spread percentage between bond purchase request
[sic] with competing one or more bond purchase requests” because “there is
no written content as to how or what specific comparison [sic] are performed
(i.e. formulas, algorithms, sequence of mathematical steps, process of
determination, for example) in order to ‘allow the client to perform an in
depth analysis of their competitor’s bidding history’ . . . such that any person
skilled in the art can make and use the invention.” Final Act. 4–5 (quoting
Spec. 17:22–23); see also Ans. 10–12.
Appellant argues the Examiner errs because
(1) the feature of “comparing . . . the bond purchase request
with competing one or more bond purchase requests” is at least
impliedly taught by the present application as it was originally
filed; and (2) art to which the claimed invention belongs is
mature and the predictable nature of the art mandates a
generally lower showing of possession.
App. Br. 15; Reply Br. 10–11. More specifically, Appellant cites the
Specification’s description of “using a comparison of user’s bidding results
to competitor’s bids” and asserts that one “of ordinary skill in the art would
understand that such a disclosure at least implies the calculation of
competitor’s spread percentage, especially in view of the maturity and
predictability of the subject art.” App. Br. 15 (citing Spec. 17:19–23).
Appellant further cites Figure 11’s illustration of an exemplary report
including bidding comparison percentages and asserts that one “of ordinary
skill in the art would understand that such a disclosure at least implies (and
arguably expressly describes) how to perform such comparison.” Id. at 16
(citing Fig. 11). In that regard, Appellant asserts that “one of ordinary skill
in the art simply by looking at FIG. 11 would have understood that, for
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example, Competitor Spread % can be calculated using the following
formula:
Competitor Spread% = (1-Competitor Bid/ My Bid)*100%.” Id.
The Examiner responds that the cited portion of the Specification “at
best provides written description support for comparing client’s bidding
results to that of a competitor,” but not “for the claimed comparing of the
bond purchase request with the competing ones because the comparison of
past record is fundamentally different from the comparison of biding request
that are current.” Ans. 10. In response to Appellant’s citation of Figure 11,
the Examiner cites the accompanying disclosure in the Specification and
asserts that “[n]o comparing of bond purchase request [sic] is described.” Id.
at 11 (citing Spec. 17:8–18). The Examiner also dismisses the equation
Appellant presents in the Appeal Brief, because “one skilled in art cannot
know for certain that claimed comparing is performed using such equation,”
and asserts that “[i]n fact, nowhere in the Original Disclosure discusses how
the claimed comparison is performed.” Id. at 11–12.
We agree with Appellant the Examiner errs in the written description
rejection. First, the Specification’s disclosure of comparing bidding results,
including bidding comparison percentages, of a client to those of a
competitor provides adequate written description disclosure of “comparing
. . . the bond purchase request and competing one or more bond purchase
requests.” See Spec. 17:19–23. Figure 11 illustrates this disclosure with an
account management report titled “My Bid vs. Competitors,” including a
comparison of a user’s bidding results with competitors’ bidding results. Fig.
11. We disagree with the Examiner that the claim requires the bids or bond
purchase requests being compared to be “current.” Rather, a plain and
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ordinary reading of claim language encompasses comparing bids or bond
purchase requests that occurred in the past, in accordance with Appellant’s
disclosures of comparing bidding results.
Second, Figure 11’s display of a report including competitor spread %
beside a winning spread % provides adequate written description support for
“a report comprising comparison of bidding activity associated with the
bond purchase request based on the performed comparison, wherein the
bidding activity includes bid spread percentage.” Fig. 11. Because the
Specification is viewed from the perspective of one of ordinary skill, in
some instances, Appellant may rely on that which is “well-known in the art”
for meeting the written description requirement. See Falko–Gunter Falkner
v. Inglis, 448 F.3d 1357, 1366–68 (Fed. Cir. 2006). This principle applies
here, especially because “the field of this invention is a predictable art such
that a lower level of detail is required to satisfy the written description
requirement than for unpredictable arts.” Hologic, Inc. v. Smith & Nephew,
Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018). Thus, as Appellant explains, and
we agree, Figure 11 provides adequate written description support for the
disputed limitation because one of ordinary skill in the art would recognize
that the displayed “Winning Spread %” and “Competitor Spread %” refer to
the user and competing “bid spread percentage[s]” as claimed and know how
these values were calculated using data readily available straight from the
report. See App. Br. 16.
We disagree with the Examiner’s assertion that the claim lacks written
description support because there are no formulae, algorithms, or the like,
explaining the claimed bid spread percentage comparison to “allow the
client to perform an in depth analysis of their competitor’s bidding history”
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(Final Act 11). The Examiner’s assertion is not commensurate with the
scope of the claim because it relies on a limitation—“allow the client to
perform an in depth analysis of their competitor’s bidding history”—recited
in the Specification (Spec. 17), not the claims. Care should be taken to avoid
reading limitations of the Specification into the claims. E.g., E-Pass Techs.,
Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Moreover, the
Examiner’s assertion is unavailing because the mere absence of explanatory
examples in the Specification does not compel a determination that there is a
failure to comply with the written description requirement. Falko–Gunter
Falkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006).
Accordingly, we do not sustain the Examiner’s rejection of claims 1–
3, 5, 7–10, 12, 14, and 15 under 35 U.S.C. § 112, first paragraph.
DECISION
We do not reach the 35 U.S.C. § 101 and pre-AIA 35 U.S.C. 112, first
paragraph, rejections of claims 4 and 11, because the rejections are moot.
We affirm the 35 U.S.C. § 101 rejection of claims 1–3, 5, 7–10, 12,
14, and 15.
We reverse the 35 U.S.C. § 112 rejection of claims 1–3, 5, 7–10, 12,
14, and 15.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED