Xiangyang Li et al.

Patent Trials and Appeals Board

Feb 18, 2020

14122525 - (D) (P.T.A.B. Feb. 18, 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.
14/122,525 11/26/2013 Xiangyang Li LUTZ 201703US01 3477
48116 7590 02/18/2020
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
02/18/2020 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):
Nokia.IPR@nokia.com
docketing@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte XIANGYANG LI and YIGANG CAI
____________________

Appeal 2018-0062871
Application 14/122,525
Technology Center 3600
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE

Introduction
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 4–16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this opinion, we refer to: (1) the Final Office Action mailed
March 10, 2017 (“Final Act.”); (2) the Appeal Brief filed November 28,
2017 (“Appeal Br.”); (3) the Examiner’s Answer mailed April 3, 2018
(“Ans.”); and (4) the Reply Brief filed June 4, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Alcatel Lucent (Appeal Br. 1).
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Appellant’s Disclosed and Claimed Invention
Appellant’s disclosed invention pertains to a “Method and Apparatus
for Charging in a Communication Network” (Title), and more specifically to
mobile telecommunication technologies that allow for financial payments to
be made for web services provided to mobile devices (e.g., using a charging
protocol) (see Spec. 1:5–2:9). “If there is neither network information nor
policy information in a web service charging interface, then a charging or
expenditure of a web application will not reflect how an end user consumes
a network resource to access the web application, and a network operator
can not define a working expenditure plan to control the usage of the
network resource by the web service application. This is a drawback in an
existing charging policy of the operator” (Spec. 2:23–29). Accordingly,
Appellant’s disclosed and claimed invention provides for a charging process
that takes into account network context information of a web service that
includes network usage information (see Spec. 2:12–5:31; claims 1, 10, 13,
15).
Exemplary Claim
Exemplary claim 1 under appeal, with bracketed lettering and
emphases added to key portions of the claim at issue, reads as follows:
1. A method of initiating a web service charging request
in a communication network including a gateway, the method
comprising:
retrieving, by the gateway, network context information
of a web service from a data repository corresponding to the
web service in response to a first charging request from the web
service, the network context information comprising details
about usages of the network by respective sub-services in the
web service;
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generating, by the gateway, a second charging request
based on the network context information; and
transmitting, by the gateway, the second charging request
to a charging system, wherein the gateway is a web service
gateway or is an access gateway of the web service.
Appeal Br. 17, Claims Appendix (emphases added).
The Examiner’s Rejections
(1) Claims 1, 2, and 4–16 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter (an abstract idea). Final
Act. 2–5.
(2) Claims 1, 2, 4–6, and 8–16 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Aronsson et al. (US 2004/0243475 A1; published
Dec. 2, 2004) (hereinafter, “Aronsson”) and Otsuka et al. (US 2003/0172012
A1; published Sept. 11, 2003) (hereinafter, “Otsuka”). Final Act. 6–13.
(3) Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the base combination of Aronsson and Otsuka, taken with Miller et al.
(US 2008/0249936 A1; published Oct. 9, 2008) (hereinafter, “Miller”).
Final Act. 13–14.
Appellant’s Contentions
With regard to the patent eligibility rejection, Appellant contends the
claims are not directed to an abstract idea, but to (i) “particular
improvements made to selected network components” (Appeal Br. 6); (ii)
“methods and system components [that] are improvements to prior art
methods and system components that allow for use of a network-based
charging system for web service charging, distinguishing a charging portion
of network resource usage and network context based, and providing a
method or approach to retrieve network context information of web service”
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(Appeal Br. 6); (iii) communication network “methods and devices that
improve the processing of charging requests in the network” (Reply Br. 3–4)
which “is clearly an improvement in ‘computers’ (i.e., network equipment)
as tools” (Reply Br. 4 ). Appellant also contends the claims recite additional
elements like a web service gateway or an access gateway of a web service,
a data repository, and a charging system which are network elements that are
not generic computers performing generic functions (see Reply Br. 6–7).
Based on Appellant’s patent eligibility arguments, and because claims
1, 2, and 4–16 contain commensurate limitations, we select claim 1 as
representative of claims 1, 2, and 4–16 rejected under 35 U.S.C. § 101 for
patent-ineligibility.
With regard to the obviousness rejections, Appellant primarily argues
the merits of independent claim 1 (see Appeal Br. 7–11; Reply Br. 7–9), and
makes similar arguments as to the patentability of all remaining claims 2,
and 4–16 (see Appeal Br. 11–16; Reply Br. 7, 10). As to independent claim
1, Appellant contends (Appeal Br. 7–11; Reply Br. 7–9) that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103, because, inter alia, the
base combination of Aronsson and Otsuka fails to disclose, teach, or suggest
several limitations recited in claim 1. Specifically, Appellant argues that (i)
Aronsson fails to disclose any “network context information or the
generation of a second charging request” (Appeal Br. 8; Reply Br. 7); (ii)
Aronsson fails to “disclose or suggest having a web service transmitting a
charging request to any management system” (Appeal Br. 10); and (iii)
“while Otsuka refers generally to retrieving a usage log for charges, Otsuka
does not specifically disclose the claimed feature of the network context
information comprising details about usages of the network by respective
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sub-services in the web service. In fact, Otsuka does not mention the
concept of sub-services in the web service” (Appeal Br. 10; see also Reply
Br. 9).
Based on Appellant’s obviousness arguments, and because claims 1,
2, 4–6, and 8–16 contain commensurate limitations, we select claim 1 as
representative of claims 1, 2, 4–6, and 8–16 rejected under 35 U.S.C.
§ 103(a) for obviousness over the base combination of Aronsson and
Otsuka. For similar reasons, we decide the outcome of claim 7 (rejected
over the base combination taken with Miller), which ultimately depends
from independent claim 1, on the same bases as claim 1.
Principal Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 5–
16) and the Reply Brief (Reply Br. 3–10), the following principal issues are
presented on appeal:
(1) Has Appellant shown the Examiner erred in rejecting claims 1, 2,
and 4–16 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter (i.e., a judicial exception such as an abstract idea), without
significantly more)?
(2) Did the Examiner err in rejecting claims 1, 2, and 4–16 as being
unpatentable over the base combination of Aronsson and Otsuka because the
combination fails to teach or suggest the limitations of representative claim
1, including “retrieving, by the gateway, network context information of a
web service from a data repository corresponding to the web service in
response to a first charging request from the web service, the network
context information comprising details about usages of the network by
respective sub-services in the web service” (claim 1)(emphases added)?
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ANALYSIS
Patent Eligibility Under 35 U.S.C. § 101
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the 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 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. 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,
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such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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 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
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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.
The PTO published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, 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 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)) (9th Ed.,
Rev. 08.2017, 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception (Step 2B).
See Guidance, 84 Fed. Reg. at 54–56.
Even if the claim recites an abstract idea, the Federal Circuit explains
the “directed to” inquiry is not simply asking whether the claims involve a
patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
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every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether “their character as a
whole is directed to excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “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”).
Step 1
Under Step 1 of the patent-eligibility inquiry under § 101, we
determine whether a claim is directed to one of the four statutory categories
of invention, i.e., a process, machine, manufacture, or composition of matter.
In the instant case on appeal, representative claim 1 recites “[a]
method of initiating a web service charging request in a communication
network” including the steps of “retrieving . . . network context
information,” “generating . . . a second charging request,” and “transmitting .
. . the second charging request” (claim 1). Therefore, representative claim 1,
as a method claim, recites at least one step or act, and thereby falls into one
of the enumerated categories (e.g., process) of eligible subject matter in 35
U.S.C. § 101.
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As a result, as to representative claim 1, and claims 2 and 4–16
grouped therewith, we continue our analysis under Step 2A, Prong 1 of the
Guidance to determine whether representative the claims (1) recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above); and (2) are patent-eligible.

Step 2A, Prong 1
At a high level, representative claim 1 recites a method of initiating a
web service charging request based on certain data. The term “charging” is
used in the payment sense of “charg[ing] a user account for a product and a
service offered to a user” wherein the web service “can add or deduct some
non-money units from these accounts” (Spec. 2:1–9). More specifically, the
method is based on network context information (see claim 1). Network
context information is information (i) that indicates “how an end user
consumes a network resource to access the web application” (Spec. 2:25–
28); and (ii) assists a network operator in “defin[ing] a working expenditure
plan to control the usage of the network resource by the web service
application” (Spec. 2:26–28).
The Examiner determines, and we agree, that claim 1 is “directed to a
method of organizing human activities and an idea of itself.” Final Act. 2–3.
Specifically, the Examiner finds the abstract idea to comprise steps of
“retrieving information from a data repository in response to the first charge
request . . . generating a second charging request based on that retrieved
information, and transmitting the charging request.” Id. at 3. The Examiner
further determines that those recited elements cause claim 1 to be “directed
to an abstract idea because the concept of charging for some service relate[s]
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to economic practices in which monetary transactions between people are
managed” (Ans. 3–4). This is in agreement with Appellant’s disclosure that
the invention relates to a method for “charging in a mobile network” (Spec.
1:6; see also Title (“Method and Apparatus for Charging in a
Communication Network”)). Appellant contends “that this is not an
appropriate test for whether [the] claimed subject matter is statutory” (Reply
Br. 3). According to Appellant, “a claim is not directed to an abstract idea
merely because the claimed method can be carried out by a human being
using a computer/processor” (Appeal Br. 5).
We determine that the limitations of claim 1 are focused on, and
generally relate to commercial activities, i.e., the charging of web services in
a communication network, and/or business relations between people (see
generally claim 1; Fig. 2; Spec. 1:5–5:31; Abstract). As such, the claimed
invention recites certain methods of organizing human activity, which is an
abstract idea. See, e.g., Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (holding that concept of “local
processing of payments for remotely purchased goods’’ is a ‘‘fundamental
economic practice, which Alice made clear is, without more, outside the
patent system Clarilogic, Inc. v. Formfree Holdings Corp., 681 F. App’x.
950, 954–55 (Fed. Cir. 2017) (gathering, analyzing, and outputting financial
data/assessment is an abstract idea that is patent ineligible).
Because we conclude claim 1 recites an abstract idea, we proceed to
Step 2A, Prong 2 of the Guidance to determine whether claim 1 is “directed
to” the judicial exception, by determining whether additional elements of the
claim integrate the abstract idea into a practical application. Such additional
elements may reflect an improvement to a technology or technical field. See
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Guidance, 84 Fed. Reg. at 55.
Step 2A, Prong 2 – Practical Application
Under Step 2A, Prong 2, we determine whether the recited judicial
exception is integrated into a practical application of that exception. If the
recited judicial exception is integrated into a practical application by the
limitations that are recited in addition to the identified abstract idea (the
“additional limitations,” the claim is not directed to the judicial exception.
The claimed invention (see claim 1) retrieves data (e.g., network
context information), and then generates and transmits a charging request
based on the retrieved data – this is merely conventional data gathering and
analysis. See MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016). As such, based on the record before
us, we determine that the claimed invention is not integrated into a practical
application. And, we note our agreement with the Examiner that
the claims require no more than adding insignificant extra-
solution activity to the judicial exception, e.g., mere collecting
data (e.g. "retrieving ... network information ... ") and
performing of generic computer functions (e.g. processing and
transmitting information/data via network) that are well-
understood, routine and conventional activities previously
known to the industry.

Final Act. 4. Appellant’s web service gateway retrieves information (useful
in processing charging requests) over a communication interface in the
network, “thereby performing more accurate charging” (Spec. 7:28).
Merely adding a programmed computer to perform generic computer
functions does not automatically overcome an eligibility rejection. Alice,
573 U.S. at 223–24. Furthermore, the use of a general purpose computer to
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apply an otherwise ineligible algorithm does not qualify as a particular
machine. See Ultramercial, 772 F.3d at 716–17; In re TLI Commc’ns LLC
v. AV Automotive, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (mere recitation
of concrete or tangible components is not an inventive concept); Eon Corp.
IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015)
(noting that Alappat’s rationale that an otherwise ineligible algorithm or
software could be made patent-eligible by merely adding a generic computer
to the claim was superseded by the Supreme Court’s Bilski and Alice
decisions). In the instant case, using a computer or network to charge more
accurately is nothing more than the abstract idea itself (i.e., handling web
service charging requests which is a fundamental economic practice).
For the reasons discussed above, we conclude Appellant’s claim 1
(and claims 2 and 4–16 grouped therewith) invokes generic computer and/or
network components (a “communication network” and a “gateway”) merely
as a tool in which the computer instructions apply the judicial exception and,
thus, the abstract idea is not integrated into a practical application. Because
Appellant has not persuaded us the Examiner’s determination that claim 1
recites an abstract idea under Step 2A is in error, and claim 1 recites a
judicial exception (i.e., the abstract idea of a method of organizing human
activity) that is not integrated into a practical application, in accordance with
the Guidance, we conclude claim 1 and claims 2 and 4–16 grouped
therewith, are directed to an abstract idea under Step 2A, and the eligibility
analysis with regard to claims 1, 2, and 4–16 proceeds to Step 2B.
Step 2B – Inventive Concept
Having determined claim 1 and claims 2 and 4–16 grouped therewith
are directed to an abstract idea that is not integrated into a practical
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application, we now evaluate whether the additional elements add a specific
limitation that is not well-understood, routine, or conventional activity in the
field, or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the abstract idea. See generally Guidance.
Here, claim 1 recites the additional elements of “a communication
network” (claim 1, preamble), “a data repository” (claim 1), “a charging
system” (claim 1, last paragraph), and “a gateway” (claim 1, preamble)
which “is a web service gateway [Figs. 1, 17] or is an access gateway of the
web service [Figs. 1, 12]” (claim 1). Considering claim 1 as a whole, none
of the additional elements applies or uses the abstract idea in a meaningful
way such that the claim as a whole is more than a drafting effort designed to
monopolize the exception.
Appellant has not shown claim 1 recites additional elements that
integrate the judicial exception into a practical application, either by way of
evidence or argument. In particular, Appellant has not shown the additional
computer and communication network elements, alone or in some
combination, integrate the judicial exception into a practical application.
In the instant case on appeal, the additional elements recited in claim
1 (“a communication network,” “gateway,” “data repository,” “charging
system”) do not “contain[] an ‘inventive concept’ sufficient to ‘transform’
the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S.
at 221 (internal quotation marks omitted), or “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). Instead, claim 1 merely requires a generic computer and/or
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communication network implementation and fails to transform that abstract
idea into a patent-eligible invention. Id.
Here, the Examiner determines, and we agree, that the only elements
beyond the abstract idea are generic computer components used to perform
generic computer functions (Final Act. 3–5; Ans. 4) — a determination that
is supported by Appellant’s Figures 1 and 4 and the accompanying
descriptions found in the Specification (see, e.g., Figs. 1, 4; Spec. 6:28–8:13,
13:17–14:3). Appellant’s Specification only shows (see Figs. 1, 4) and
describes (see Spec. 6:28–8:13, 13:17–14:3) well-understood, routine,
conventional computer and network components used for providing and
charging for web services (e.g., a computer, memory database, and processor
or engine) that are in a general purpose computing and communication
network environment in a manner that indicates the components and the
functions they perform were well-known in the art. See Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
(explaining that “a patent need not teach, and preferably omits, what is well
known in the art”); see also USPTO, Memorandum on Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19,
2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional);
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Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed.
Cir. 2017) (“The claimed mobile interface is so lacking in implementation
details that it amounts to merely a generic component (software, hardware,
or firmware) that permits the performance of the abstract idea, i.e., to
retrieve the user-specific resources.”).
As a result, we are not persuaded that the web service charging
request operations recited in claim 1 are anything beyond generic computer
and/or communication network functions as opposed to an improvement to a
fundamental economic practice and/or method of organizing human activity.
Considering the elements of claim 1 individually and as an ordered
combination, claim 1 does no more than simply instruct the practitioner to
implement the abstract idea on a generic computer, processor, database,
and/or communication network. Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1333–34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a
claim covering an abstract concept, without more, is insufficient to render
[a] claim patent eligible.”)
The Examiner concludes, and we agree, that (i) “merely using these
components to communicate/receive, process, and transmitting data cannot
be considered ‘particular improvements made to selected network
components’. It is merely adding insignificant extra-solution activities to the
judicial exception” (Ans. 4) (emphasis omitted); and (ii) “these components
are generic components in the web technology” (Ans. 4). See Elec. Power
Grp., 830 F.3d at 1355 (finding that use of “conventional computer,
network, and display technology for gathering, sending, and presenting the
desired information” does not add significantly more to the claimed abstract
idea); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l
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Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (discussing that data collection,
recognition, and storage is well-known); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“[T]he incidental use
of a computer to perform the [claimed process] does not impose a
sufficiently meaningful [limitation] on the claim’s scope.”).
Claim 1 neither explicitly recites (i) improving the efficiency or speed
of the computing system or engines components, nor (ii) reducing needed
memory storage space. Instead, claim 1 merely recites computer elements
performing generic computer functions to perform the abstract idea (i.e., a
fundamental economic practice such as business relations and/or commercial
practices like charging for web services), and does not “include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Alice, 573 U.S. at 221 (alterations in
original) (quoting Mayo, 566 U.S. at 77). Thus, the method of generating an
outcome prediction recited in Appellant’s claim 1 does not exhibit the type
of activity that distinguishes inventions having significantly more than the
abstract idea from those claims that do no more than generically link the use
of the method to a particular technological environment, that is, by
computers, memories, processors, communication networks including
gateways, or engines. Alice, 573 U.S. at 226. Instead, claim 1 merely
requires generic computer implementation and fails to transform that
abstract idea into a patent-eligible invention. Id.
Appellant does not persuasively argue any specific limitation or
combination thereof is not well-understood, routine, or conventional in the
field (see generally Appeal Br. 5–7; Reply Br. 3–6). Nor does Appellant
persuasively argues the Examiner erred in that aspect. In particular,
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Appellant’s attorney arguments that “such network elements are not fairly
characterized as ‘generic computers’ and that the claimed functions of these
network elements are not ‘generic functions’ of a generic computer” (Appeal
Br. 7), are unpersuasive, because they are not supported by competent
evidence. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); Meitzner
v. Mindick, 549 F.2d 775, 782 (Fed. Cir. 1977).
Additionally, as noted in MPEP § 2106.05(d)(II), the courts have
previously recognized that using computer processors and memories to
collect data and keep records, perform repetitive calculations, and/or
receive/send data are well‐understood, routine, and conventional functions
when they are claimed in a merely generic manner (e.g., at a high level of
generality) or as insignificant extra-solution activity (see MPEP
§ 2106.05(d)(II)(i)–(iv). See also Berkheimer v. HP Inc., 881 F.3d 1360,
1366 (Fed. Cir. 2018) (acts of parsing, comparing, storing, and editing data
are abstract ideas); SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1021
(Fed. Cir. 2018) (“merely presenting the results of abstract processes of
collecting and analyzing information . . . is abstract as an ancillary part of
such collection and analysis”); Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (“collecting, displaying,
and manipulating data” is an abstract idea); Smart Sys. Innovations, LLC v.
Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017)
(concluding “claims directed to the collection, storage, and recognition of
data are directed to an abstract idea.”).
As a result, Appellant’s contentions (Appeal Br. 5–7; Reply Br. 3–6)
that the Examiner has failed to make appropriate findings under Step 2B of
the analysis for patent eligibility are unpersuasive, and Appellant has not
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persuaded us the Examiner erred with respect to the Guidance’s Step 2B
analysis. See Guidance, 84 Fed. Reg. at Step 2B.
In view of the foregoing, Appellant has not sufficiently shown the
Examiner erred in determining claims 1, 2, and 4–16 are directed to patent-
ineligible subject matter (an abstract idea), without significantly more.

Obviousness Under 35 U.S.C. § 103
We have reviewed the Examiner’s obviousness rejection of
representative claim 1 (Final Act. 6–7) and response to Appellant’s
arguments in the Appeal Brief (Ans. 5–6), in light of Appellant’s arguments
in the Briefs (Appeal Br. 7–11; Reply Br. 7–9) that the Examiner has erred.
We disagree with Appellant’s arguments. With regard to representative
independent claim 1, we adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 6–7), and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Ans. 5–6) in response to Appellant’s Appeal Brief. We concur
with the findings and conclusions reached by the Examiner. We provide the
following for emphasis only.
Otsuka (see Otsuka ¶¶ 11, 17), and not Aronsson as argued by
Appellant, is relied on for teaching or suggesting the recited network context
information that include usage information about sub-services. Final Act. 6–
7. We note that each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(finding one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references).
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In this light, Appellant’s arguments presented as to the shortcomings in the
teachings of Aronsson and Otsuka individually are not persuasive inasmuch
as the Examiner relies on a properly made combination of Aronsson and
Otsuka to support the conclusion of obviousness of the subject matter of
claim 1.
We agree with the Examiner (Ans. 6) that the option of downloading
content described by Otsuka (Otsuka ¶ 17) is a sub-service. Appellant does
not dispute this finding in the Reply Brief with either evidence or argument.
In addition, Otsuka’s teachings of sub-services meets Appellant’s own
description in the Appeal Brief of the sub-services being “access
technologies” (see Appeal Br. 8). Furthermore, Appellant admits that
Otsuka teaches “retrieving a usage log for charges” (Appeal Br. 10).
Aronsson teaches a method and telecommunication network for
delivering and charging for services (see Aronsson Title; Abstract; ¶¶ 1, 3, 6,
8), and teaches or suggests first and second charging requests (see Aronsson
¶ 6 (multiple charging requests taught by paying each time you use a
service)). Aronsson also teaches or suggests (i) web service usage
information such as “information about the user’s right to the service, such
as information about the payment of the requested service” (Aronsson ¶ 29);
and (ii) handling the management of users and payments (Aronsson ¶ 37).
Appellant’s description of network context information as information
regarding a charging policy or about sub-services (see Spec. 8:27–9:4)
supports the Examiner’s findings (see Ans. 5–6) that (1) Aronsson and
Otsuka both teach network-based charging systems; and (2) Otsuka’s (a)
usage information is network context information (see Ans. 5), (b) digital
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data circulation service is a web service (Ans. 6), and (c) option to download
is a sub-service (Ans. 6).
Appellant has not adequately shown that the combination of Aronsson
and Otsuka teaches or suggests the web services charging method set forth
in claim 1. In view of the foregoing, Appellant’s contentions (Appeal Br. 7–
11; Reply Br. 7–9) that the Examiner erred in rejecting claim 1 as being
obvious over the combination of Aronsson and Otsuka are unpersuasive.

Summary
(1) As explained above, under the USPTO’s Revised Patent Eligibility
Guidance, based on the record before us, and informed by our governing
case law concerning 35 U.S.C. § 101, Appellant has not shown the Examiner
erred in rejecting claims 1, 2, and 4–16 as being directed to patent-ineligible
subject matter without significantly more, and we sustain the rejection of
claims 1, 2, and 4–16 under 35 U.S.C. § 101.
(2) Appellant has not shown the Examiner erred in rejecting claims 1,
2, and 4–16 as being unpatentable under 35 U.S.C. § 103. In view of the
foregoing, we sustain the obviousness rejection of representative claim 1, as
well as claims 2, 4–6, and 8–16 grouped therewith as being obvious over the
base combination of Aronsson and Otsuka. For similar reasons, and because
(i) Appellant relies on the arguments presented as to claim 1 in arguing
dependent claim 7; and (ii) claim 7 ultimately depends from claim 1, we also
sustain the remaining obviousness rejection of claim 7 over the base
combination taken with Miller.

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CONCLUSION
For all of the reasons above, we hold as follows:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4–
16
101 Eligibility 1, 2, 4–16
1, 2, 4–6,
8–16
103(a) Aronsson, Otsuka 1, 2, 4–6, 8–16
7 103(a) Aronsson, Otsuka,
Miller
7
Overall
Outcome
1, 2, 4–16

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)(1)(iv). See
37 C.F.R. §§ 41.50(f), 41.52(b) (2013).

AFFIRMED